[GNSO-RPM-WG] ICE domain name seizures -- potential source of data for RPM PDP?

Fri Jan 4 20:29:51 UTC 2019

Thanks for your reply, Phil, as I'm trying to understand your point of view.

Unlike yourself, I don't "take it as a given" as to what future
consensus decisions of this PDP might be.

>From my perspective (and perhaps others might share my point of view),
extrajudicial and non-judicial procedures are inherently dangerous, as
they don't have the same due process protections as courts. In my
view, there should be an appropriate test with a high hurdle to
determine whether they should be created in the first place, and
ongoing tests to determine whether they should be retained, as they
can outlive their initial justification/purpose. What might have been
appropriate two decades ago might not be appropriate today, given the
maturity and evolution of the courts in handling internet-related
disputes, and the availability of more streamlined options (e.g.
availability of online courts in China, as noted previously on this
mailing list, see:
https://www.chinalawblog.com/2018/12/chinas-internet-courts-are-spreading-online-dispute-resolution-is-working.html
which didn't exist in the past).

I'm a little bit confused by your explanation though, as you appear to
be asserting that the UDRP/URS involve only "simple" trademark
disputes. Is it your perspective that non-judicial or extra-judicial
procedures should be limited only to the "simple" disputes??

If that's the case, then, had these "simple" disputes been brought to
court, wouldn't they have been disposed of rather quickly and at low
cost, given that you are saying they were really simple disputes?

I put forth proposals in the URS stage of our work, for example, to
help ensure that certain types of more "complex" disputes (e.g.
domains created more than 2 years from the time of the dispute, via a
limitation period) would be prevented from being brought, but faced
some opposition from others. I hope you will be an ally in ensuring
that, if the URS and UDRP survive as mandatory policies, that they be
restricted only to simple and clearcut cases of cybersquatting.

As a counterexample, last August I posted about the OpenTime.com UDRP case:

https://mm.icann.org/pipermail/gnso-rpm-wg/2018-August/003219.html
https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-2328

whose incorrect decision was appealed in court by the domain name
registrant (see court judgment as the PDF attachment at the bottom of
that email). If you read that UDRP decision, the panelist (Georges
Nahitchevansky) was confronted with a complex dispute, where the
registrant/respondent was the owner of its own competing Japanese
trademark. Rather than taking the position that "this dispute belongs
in the courts as it is complex", the panelist in a long decision
(demonstrating the complexity of the underlying dispute!) made a
judgment call, a flawed one, picking one side's rights over another
party's rights.

There have been other disputes brought besides that one, where
panelists are overstepping their authority in complex cases, for
example, claiming in decisions that logos appear similar (when they're
not) or determining that certain valuations are incorrect, e.g. the
infamous ADO.com decision:

https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2017-1661
http://www.circleid.com/posts/20180212_whats_so_outrageous_asking_high_prices_for_domain_names/
http://www.circleid.com/posts/20180301_ica_statement_on_adocom_udrp_decision_overreaching_panelists/
https://domainnamewire.com/2018/02/05/wipo-panel-screws-domaining-com-owner-francois-carrillo-ado-com/
https://domainnamewire.com/2018/02/13/much-ado-ado-com-carrillo-sues-bus-company-bad-udrp-decision/

Indeed, I posted about the historical development of the UDRP in October:

https://mm.icann.org/pipermail/gnso-rpm-wg/2018-October/003444.html
https://mm.icann.org/pipermail/gnso-rpm-wg/2018-October/003449.html

and the original Whitepaper even said:

"Further, it should be clear that whatever dispute resolution
mechanism is put in place by the new corporation, that mechanism
should be directed toward disputes about cybersquatting and
cyberpiracy and not to settling the disputes between two parties with
legitimate competing interests in a particular mark. ****Where
legitimate competing rights are concerned, disputes are rightly
settled in an appropriate court.**** (emphasis added)

Yet, the OpenTime.com UDRP panelist at WIPO took it upon himself to
disregard the fact there were legitimate competing rights, i.e. a more
complex dispute (and not the "simple" dispute you wrote about).

Anyhow, if you'd like to explain your reasoning further, so working
group members can better understand your perspective, please do,
although we've gone off on a tangent somewhat (as the initial post of
this thread was intended to seek out data on the recent ICE domain
seizures, which may be of assistance in our research/review).

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/

On Fri, Jan 4, 2019 at 2:33 PM Corwin, Philip <pcorwin at verisign.com> wrote:
>
> Errata -- First sentence should read, " I was not involved with ICANN until late 2006, so I was not  a participant in the discussions that led to the UDRP being established at its inception."
>
> Philip S. Corwin
> Policy Counsel
> VeriSign, Inc.
> 12061 Bluemont Way
> Reston, VA 20190
> 703-948-4648/Direct
> 571-342-7489/Cell
>
> "Luck is the residue of design" -- Branch Rickey
>
> -----Original Message-----
> From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Corwin, Philip via GNSO-RPM-WG
> Sent: Friday, January 04, 2019 2:29 PM
> To: icann at leap.com; gnso-rpm-wg at icann.org
> Subject: [EXTERNAL] Re: [GNSO-RPM-WG] ICE domain name seizures -- potential source of data for RPM PDP?
>
> I was not involved with ICANN until late 2006, so I was not  PrticipNT in the discussions that led to the UDRP being established at its inception. Other members of this WG likely were and could knowledgeably respond to your initial question. While this WG's Charter requires it to consider whether URS should become an ICANN Consensus Policy, UDRP already has that status and I take it as a given that there is unlikely to ever be consensus within the ICANN community to do away with it. I therefore believe that our Phase 2 efforts will be better focused on improving it.
>
> As to the provision of non-judicial alternatives to resolution of other types of legal disputes, I would note that UDRP is not applicable to all types of trademark disputes concerning domains, but only one narrow and rather simple type of trademark dispute that can be resolved quickly and without personal appearances, discovery, or other attributes of full judicial process.  Complex civil disputes do not lend themselves to that type of approach; antitrust/competition law disputes, for example, involve exceedingly complex legal and econometric analysis and extended discovery and other procedural attributes, and generally extend for years between initial filing and final appeals.
>
> Philip S. Corwin
> Policy Counsel
> VeriSign, Inc.
> 12061 Bluemont Way
> Reston, VA 20190
> 703-948-4648/Direct
> 571-342-7489/Cell
>
> "Luck is the residue of design" -- Branch Rickey
>
> -----Original Message-----
> From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of George Kirikos
> Sent: Friday, January 04, 2019 1:08 PM
> To: gnso-rpm-wg at icann.org
> Subject: [EXTERNAL] Re: [GNSO-RPM-WG] ICE domain name seizures -- potential source of data for RPM PDP?
>
> Phil:
>
> Remind me, what was so special about trademark owners that merit them having non-judicial RPMs?
>
> If a party had a dispute with a registrar or registry, that would typically be handled by the courts. e.g. if someone wanted to bring an anti-trust action against Verisign, that would happen in the courts.
> Are you in favour of the creation of non-judicial alternatives to civil litigation for those other entities and causes of action too, that would expose Verisign to anti-trust decisions outside of courts?
> If the "justification" for the ICANN-created RPMs is that they're lower cost alternatives to the courts, why not do the same for other causes of actions against registrars and registries, in the name of "self-help" which you appear to argue is desirable?
>
> Where are the non-judicial "self-help" remedies for removing entries from the TMCH, for example?
>
> Sincerely,
>
> George Kirikos
> 416-588-0269
> http://www.leap.com/
>
> On Fri, Jan 4, 2019 at 12:43 PM Corwin, Philip <pcorwin at verisign.com> wrote:
> >
> > Thanks for your feedback, Susan.
> >
> >
> >
> > A few additional personal comments—
> >
> > It appears from the ICE press release that a number of other national law enforcement agencies may have been involved in the seizures.
> > While the seizure may have been “free” to the trademark owner if the domain was one that met the criteria for bringing a UDRP or URS, there is considerable expenditure of public funds in these efforts.
> > These law enforcement agency domain actions are directed at criminal activity, whereas the great majority of UDRP and URS actions focus on domains that could be the subject of civil trademark litigation. I would not favor eliminating the availability of self-help to trademark registrants via non-judicial RPMs, but one unintended result of doing so might be to encourage some trademark owners to seek law enforcement actions against domains that previously would have merited the filing of a UDRP or URS.
> >
> >
> >
> > Best to all,
> >
> > Philip
> >
> >
> >
> > Philip S. Corwin
> >
> > Policy Counsel
> >
> > VeriSign, Inc.
> >
> > 12061 Bluemont Way
> > Reston, VA 20190
> >
> > 703-948-4648/Direct
> >
> > 571-342-7489/Cell
> >
> >
> >
> > "Luck is the residue of design" -- Branch Rickey
> >
> >
> >
> > From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of
> > Susan Payne
> > Sent: Friday, January 04, 2019 5:41 AM
> > To: George Kirikos <icann at leap.com>; gnso-rpm-wg
> > <gnso-rpm-wg at icann.org>
> > Subject: [EXTERNAL] Re: [GNSO-RPM-WG] ICE domain name seizures -- potential source of data for RPM PDP?
> >
> >
> >
> > I completely agree with Phil's comments.
> >
> >
> >
> > In addition:
> >
> > 1. Can we try to remember that not all rights infringement or enforcement happens in the US or has a US-connection.  From ICE's website the mission is "to protect the national security and public safety of the United States by disrupting and dismantling transnational criminal organizations that engage in cross-border crime".
> >
> >
> >
> > 2. Also from ICE's website: "Due to the lapse in federal funding, this website will not be actively managed".  Presumably there are also other impacts on ICE activity, and this is hardly the first time this has happened.
> >
> >
> >
> > Let's not argue for replacement of ICANN measures by a so-called "free" option which is not available to all, where any action taken depends on the US's current priorities, and whose funding generally is subject to whatever US political squabble happens to be occurring.
> >
> >
> >
> > Susan Payne
> >
> > Head of Legal Policy
> >
> >
> >
> > Valideus
> >
> > 28-30 Little Russell Street
> >
> > London WC1A 2HN
> >
> > United Kingdom
> >
> >
> >
> > E: susan.payne at valideus.com
> >
> > www.valideus.com
> >
> >
> >
> > Liability cannot be accepted for statements made which are clearly the sender’s own and not made on behalf of Valideus.
> >
> > This message is intended solely for the addressee and may contain confidential information. If you have received this message in error, please send it back to us, and immediately and permanently delete it. Do not use, copy or disclose the information contained in this message or in any attachment.
> >
> > Valideus Ltd is registered in England and Wales with company number 06181291 and VAT number 272 9057 85.  Our registered office is at 28-30 Little Russell Street, London, WC1A 2HN.
> >
> >
> >
> >
> >
> > -----Original Message-----
> >
> > From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of
> > George Kirikos
> >
> > Sent: 02 January 2019 21:13
> >
> > To: gnso-rpm-wg <gnso-rpm-wg at icann.org>
> >
> > Subject: Re: [GNSO-RPM-WG] ICE domain name seizures -- potential source of data for RPM PDP?
> >
> >
> >
> > Hi Theo,
> >
> >
> >
> > If it was only about copyright issues, then the list will likely be useless, as I agree that it's out of our scope.
> >
> >
> >
> > But, it's possible (as per the TechDirt article) that it was actually TM issues too, in which case ICE might have gone after cybersquatting.
> >
> > One will be able to quickly determine things by looking at the actual list of domains.
> >
> >
> >
> > In the last paragraph of the TechDirt article, the author writes:
> >
> >
> >
> > "I've fired off a FOIA request asking for the details of these "seized" domains and the communications with those industry partners.
> >
> > Should ICE ever decide to obey the law and respond to the FOIA, we'll share it here."
> >
> >
> >
> > But, perhaps someone else here already has the list and is allowed to publish it.
> >
> >
> >
> > Sincerely,
> >
> >
> >
> > George Kirikos
> >
> > 416-588-0269
> >
> > http://www.leap.com/
> >
> >
> >
> > On Wed, Jan 2, 2019 at 4:03 PM theo geurts <gtheo at xs4all.nl> wrote:
> >
> > >
> >
> > > Hi George,
> >
> > >
> >
> > > Is a full list going to help us here? ICE is focussed on copyright "issues."
> >
> > > Sure we can discuss if they do it correctly or not, but it seems to
> > > be
> >
> > > out of our scope.
> >
> > > Our bylaws are pretty clear, not to mention;
> >
> > > https://www.icann.org/news/blog/icann-is-not-the-internet-content-po
> > > li
> >
> > > ce
> >
> > >
> >
> > > Feel free to correct me, I somewhat lost track of this group, so I
> >
> > > apologize in advance.
> >
> > >
> >
> > > Thanks,
> >
> > >
> >
> > > Theo Geurts CIPP/E
> >
> > >
> >
> > >
> >
> > > On 2-1-2019 17:48, George Kirikos wrote:
> >
> > > > Hi folks,
> >
> > > >
> >
> > > > Happy New Year.
> >
> > > >
> >
> > > > There was news about ICE seizing over 1 million domain names, see:
> >
> > > >
> >
> > > > https://www.ice.gov/news/releases/over-million-websites-seized-glo
> > > > ba
> >
> > > > l-operation
> >
> > > >
> >
> > > > https://www.techdirt.com/articles/20181213/18030341224/ice-seizes-
> > > > ov
> >
> > > > er-1-million-websites-with-no-due-process-apparently-unaware-that-
> > > > co
> >
> > > > pyright-trademark-are-different.shtml
> >
> > > >
> >
> > > > I was curious whether anyone (maybe a registrar, registry, or TM
> >
> > > > holders who were involved, i.e. the "industry partners") has and
> > > > can
> >
> > > > share the complete list of domain names that were seized, as that
> >
> > > > might be a potential source of data for our work.
> >
> > > >
> >
> > > > Sincerely,
> >
> > > >
> >
> > > > George Kirikos
> >
> > > > 416-588-0269
> >
> > > > http://www.leap.com/
> >
> > > > _______________________________________________
> >
> > > > GNSO-RPM-WG mailing list
> >
> > > > GNSO-RPM-WG at icann.org
> >
> > > > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
> >
> > _______________________________________________
> >
> > GNSO-RPM-WG mailing list
> >
> > GNSO-RPM-WG at icann.org
> >
> > https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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