[Gnso-igo-ingo-crp] Swaine report -- questions/comments

[George Kirikos]

Here are some of my thoughts/observations:

A. Preliminary Comment
---------------------------------
1. It would be great if all paragraphs of a future draft or final
report were numbered sequentially in some manner, to make it easier to
reference/cite them in future comments/analysis.


B. Questions
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1. Page 8 appears very confused. (both the paragraph above
"Discussion", and the paragraph after it). The base scenario, in the
absence of the UDRP, is that the IGO would file a complaint in court,
thereby explicitly waiving any immunity, as they brought the action.
The "imagined scenario" used in the paper is not helpful at all,
because "legitimate expectations" absent the UDRP for an IGO are vary.
"Immunity" is only a defense to an action, so of course the IGO will
have "legitimate expectations" in defending a lawsuit that it did not
initiate. However, "legitimate expectations" when an IGO *initiates* a
dispute are quite different! The legitimate expectations are that if
it initiates a court case, then it waives immunity.

So, I believe the professor needs to go back and look at that, because
the statement "imagining that scenario usefully isolates the question
as to whether an IGO has a legitimate expectation that it would be
entitled to immunity *absent* the UDRP and its concessions" is simply
wrong, because of that asymmetry (between initiating vs defending a
dispute). Thus, one can't *isolate* the question by focusing on one,
because the answers are different due to that asymmetry.

Indeed, if one reads on, this has important bearings on the paper. "If
such immunity is minimal or uncertain, then any compromises required
by the UDRP loom less large."

Absent the UDRP, immunity is *non-existent* for the IGO that initiates
a dispute in court. Thus, "any compromises required by the UDRP" in
reality do "loom less large." This goes to the heart of everything
(i.e. argues for the maintenance of the status quo).

Indeed, if one jumps to page 23, the professor writes:

"Beyond tolerating an infringement of its interests, an IGO might in
principle elect instead to proceed first (or solely) to court. This is
undoubtedly unappealing, because it would accomplish waiver by other
means. Even so, that would be the alternative were the UDRP not to
exist in its present form; it is not as though a preexisting or
independent privilege were being conditioned or withdrawn. IGOs might
also take some consolation from the advantages afforded them by the
UDRP, which—but for cases in which judicial review is later sought by
a losing registrant—affords them an efficient recourse to which they
are not otherwise entitled."

which again reinforces my position (i.e. that the legitimate
expectation absent the UDRP is that the IGO *would* waive immunity
when filing a complaint in court).

So, combining pages 8 and 23, there's really only one valid
conclusion, namely that "any compromises required by the UDRP" in
reality do "loom less large."


2. Did the Professor consider the fact that UDRP panels do not
actually have the power to implement the transfer of the domain name?
i.e. they render a verdict, but it's up to the *registrar* to actually
transfer the domain name? For example, Facebook recently transferred
the Instagram.com domain name to its own registrar, in response to a
possible adverse decision in a Chinese court, see:

http://domainincite.com/20290-facebook-under-chinese-court-threat-transfers-instagram-com-to-its-new-registrar

RegistrarSEC is located in the USA:

http://www.internic.net/registrars/registrar-2475.html

If a Chinese court made an adverse ruling, and the registrar refused
the transfer, the Chinese "winner" would still need to sue in a US
court to force the registrar to transfer the domain. (i.e. it's one
thing for a US registrar to be in contempt of a Chinese court order;
it's another thing entirely for a US registrar to be in contempt of a
US court order)

Even if an IGO won a UDRP, isn't there a real scenario where a
registrar refuses the transfer, and the IGO is thus compelled to seek
enforcement via the courts. (thereby, once again, waiving immunity)
Similarly, the original registrant might sue ICANN and/or the
registrar and/or the registry, to freeze the status quo (not requiring
the IGO to participate, regardless of its immunity), and seek
declaratory relief in the absence of the IGO. i.e. until such time as
the domain name actually transfers to the IGO, the domain name isn't
yet "property" of the IGO that enjoys immunity. Indeed, one might
consider the use of an "in rem" lawsuit to dispute a UDRP decision (if
permitted by the court) -- Ontario law has already decided that domain
names of an Ontario registrant at an Ontario registrar are Ontario
property. While the IGO might assert "immunity" (if it was not
waived), the property itself (the object of the in rem action) would
be unable to make that same assertion. Litigation involving
interpretation of the RAA would likely ensue, if ICANN and/or the IGO
sought enforcement against the registrar. Even if enforcement was
sought against the registry operator, that also requires going to the
courts (and waiving immunity).

Indeed, even if a UDRP is won by the IGO, and the domain name is
transferred to the IGO (say, at the original registrant's registrar),
given all domain name registration agreements contain language
consenting to the jurisdiction of the courts in that jurisdiction,
isn't that in itself a waiver? (e.g. the language in the Tucows
registration agreement is, via
http://www.loffs.com/Domains/Legal/master.html):

"GOVERNING LAW. THIS AGREEMENT SHALL BE GOVERNED BY AND INTERPRETED
AND ENFORCED IN ACCORDANCE WITH THE LAWS OF PROVINCE OF ONTARIO AND
THE FEDERAL LAWS OF CANADA APPLICABLE THEREIN WITHOUT REFERENCE TO
RULES GOVERNING CHOICE OF LAWS. ANY ACTION RELATING TO THIS AGREEMENT
MUST BE BROUGHT IN ONTARIO AND YOU IRREVOCABLY CONSENT TO THE
JURISDICTION OF SUCH COURTS."

For Network Solutions
(https://www.networksolutions.com/purchase-it/dynamic-service-agreement-popup.jsp):

"Notwithstanding the forgoing, for the adjudication of third party
disputes (i.e., disputes between yourself and another party, not
Network Solutions) concerning or arising from use of domain names
registered hereunder, you acknowledge and agree that you shall submit,
without prejudice to other potentially applicable jurisdictions, to
the jurisdiction of the courts (i) of the domain name holder's
domicile, and (ii) where Network Solutions' principal place of
business is located, currently Jacksonville, Florida."

Section 3.7.7.10 of the RAA requires such terms:

https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en

"3.7.7.10 For the adjudication of disputes concerning or arising from
use of the Registered Name, the Registered Name Holder shall submit,
without prejudice to other potentially applicable jurisdictions, to
the jurisdiction of the courts (1) of the Registered Name Holder's
domicile and (2) where Registrar is located."

Thus, even if the waiver of immunity was eliminated in the UDRP, that
change would be ineffective unless every ICANN-accredited registrar
also modified its registration agreement (giving new immunity to IGOs
that doesn't exist today, for their own domain name registrations,
regardless of whether the dispute was UDRP-related or not). If this
"immunity" was so important to IGOs, it begs the question as to why
they've not fought for it within the RAA? (indeed, by their own domain
name registrations, it seems they've made the decision to waive
immunity, one they make routinely when it's to receive a commensurate
benefit)

3. The professor discussed policy alternatives (even though this was
not asked for). I'd like to ask the Professor to give his thoughts as
to whether it wouldn't be more consistent with the language of section
1(a) of Article 6ter

http://www.wipo.int/article6ter/en/legal_texts/article_6ter.html

to simply authorize the Attorney Generals or other authorities of the
relevant "countries of the Union" (i.e. the attorney general in the
same jurisdiction as the domain name registrant) to bring the UDRP on
behalf of an IGO, to meet their country's treaty obligations. e.g. if
a domain name registrant of Example.com is in China, the Chinese
authorities could bring the action in the UDRP. Any appeal could be to
the Chinese courts, which of course the Chinese authorities would be
subject to already (so there's no issue of immunity involved).

Although, as noted previously, some governments might decline to do
so. See http://www.state.gov/s/l/38648.htm (as reiterated by the
professor in footnote 8), leaving it up to the IGOs to file in court
to enforce their perceived rights. The fact that the US State
Department explicitly gave that opinion in that letter (i.e. "These
laws satisfy U.S. obligations under article 6ter.....Responsibility
for evaluating potentially infringing use of trademarks and other
intellectual property, and for taking enforcement action when deemed
appropriate, however, rests with the party whose interests are
affected.") should not be overlooked. Those are sufficient, and it's
not up to us to make new law.

However, some governments might be willing to step in (given they have
made this an issue in the GAC) and file the UDRP on behalf of an IGO,
if they're sympathetic in certain circumstances. Indeed, we've seen
the US and other governments do domain name seizures for counterfeits,
for example (do a Google search for "domain name seizures", so it
seems inconsistent that law enforcement would choose not to get
involved if they were permitted to file UDRPs on behalf of IGOs.

This avoids the issue of immunity of IGOs entirely, just as in the
assignment/agent "workaround" (page 25, footnote 89) which we've
previously discussed.

4. While the professor provides examples where parties entering into
an contract with an IGO have agreed to binding arbitration mechanisms,
can he provide any examples that exist where those IGOs are *not* a
party to the contract? (e.g. consider the case of a random person in
the United States or Canada starts selling "UNESCO" or "WORLD BANK"
cookies, isn't it true that the relevant IGO cannot compel those
persons into arbitration? what makes domain names so "special"
compared to other kinds of trademark infringement where IGOs must go
to the courts?) Indeed, can the professor provide any examples where
the immunity "shield" of IGOs was transformed into a "sword" that
compelled unrelated 3rd parties into a forced arbitration in a dispute
initiated by IGOs??

5. Page 30 says " At the same time, it would not require that an IGO
waive immunity to which it would otherwise be entitled." I think we've
already established (question #1 above) that absent the UDRP, where
the complainant is an IGO, they'd not have a legitimate expectation of
immunity, where they're the ones initiating the legal dispute in a
court.

C. Important Takeaways / Comments
-------------------------------------------------

1. "The merits of such an action will depend on the law of the
jurisdiction concerned…" (page 2) And "Results may vary, of course, by
jurisdiction." (page 7) These are very important statements. No
non-judicial alternatives to national courts are in a superior
position to rule on "the law of the jurisdiction concerned" than the
courts (including appeals courts) of that jurisdiction. Replacing
those courts with non-judicial facsimiles is thus highly prejudicial
to a registrant who would rely on those national courts and their
interpretations of national law. Indeed, the inability of a registrant
to appeal to those national courts would mean that UDRP panelists
would be in a position to persistently deviate in their rulings from
the relevant national laws, instead of having their decisions
circumscribed by those laws. The same applies to binding arbitrations
(under alternatives discussed by the professor later on). It would
also mean that the UDRP "test" would become de facto law (as would the
remedies, i.e. transfer or cancellation), whereas a court could award
money damages, grant injunctive relief to stop a particular confusing
usage (but allow one to retain the domain name for other uses), etc.
or find a different legal test, according to its own national laws.

2. The document is replete with non-neutral language, for example,
"curing the immunity concession presently made by IGOs" (last
paragraph of page 3) implies (a) the contractual term is somehow
defective (it's not), and (b) that it's a "concession" (a more
appropriate word might be "term"). This happens throughout the
document (I'm not going to point out each occurrence). It would be
like calling the filing fees of the UDRP a "concession made by IGOs"
-- it's not, it's just a term that applies to all complainants, with
IGOs being no exception.

3. "What is more controversial…" (page 6) That's not controversial at
all. If it's "controversial", it's as controversial as compelling a
domain registrant to participate in the UDRP in the first place. See
comment #2.

4. "except insofar as in any particular case it has expressly waived
its immunity." (page 12) An important takeaway, that it's not "out of
the ordinary" for IGOs to waive immunity - it's explicitly
contemplated by UN Charters, treaties, etc.

5. "To an extent, this is simply a matter of balancing equities."
(page 28) This ignores the fact that the UDRP was *already* a product
of compromise. It's like saying to domain name registrants, "you've
reached a compromise" (i.e. you wanted "X", and got "Y" (which is less
than "X"). Now you're coming back to them and wanting them to *start*
from "Y", and compromise again to reach "Z" (which is less than "Y")??
Without getting anything in return? We're not talking about trivial or
minor things to give up, either (e.g. changing the length of a
response from 5000 to 4000 words, or something). We're talking about
giving up access to the national courts, which is huge. (indeed, in
the Universal Declaration of Human Rights, Article 8, etc..)

Once again, above that on page 28, I note the non-neutral language of
the "forced concession made by IGOs submitting to Mutual Jurisdiction"
(there's no forced concession, given that they are free to not use the
UDRP at all, which is simply an extra option beyond filing a court
case, where there's no immunity). Page 27 is already describing things
in terms of a contract of adhesion, i.e. "the IGO’s counterpart would
not be entering into this alternative procedure of its free will"

6. We're not tasked to create "new law". Deviating from the status quo
(a non-mandatory UDRP procedure, given the appeal mechanism to
national courts, which thus cannot override national law), into a
forced arbitration, one where the national courts are no longer an
option for registrants would be the creation of "new law", since such
a system would decouple itself and not be bound to follow national
laws (given there's no appeal mechanism to the national courts).

Sincerely,

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