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

Phil Corwin psc at vlaw-dc.com
Wed May 11 15:12:01 UTC 2016 

Thanks Mary, and George.

Mary, as regards your response on B.4, I would think we would only want to inquire into the UNCITRAL Rules if we decide that the UDRP's right to appeal to a court of mutual jurisdiction actually violates the recognized immunity of at least some subset of IGOs, and we are not there yet. In any event, I remain unconvinced that an ICANN rule barring such judicial appeal would be observed by a court if an aggrieved registrant simply chose to ignore it and filed a lawsuit to enjoin a registrar from transferring its domain.

I'll be providing my own questions and  comments later today.

Best, Philip

Philip S. Corwin, Founding Principal
Virtualaw LLC
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-----Original Message-----
From: gnso-igo-ingo-crp-bounces at icann.org [mailto:gnso-igo-ingo-crp-bounces at icann.org] On Behalf Of Mary Wong
Sent: Wednesday, May 11, 2016 4:22 AM
To: George Kirikos; gnso-igo-ingo-crp at icann.org
Subject: Re: [Gnso-igo-ingo-crp] Swaine report -- questions/comments

Dear George,

Thanks so much for the detailed questions and comments. We will compile them with any others that may come in by the deadline for discussion during our next WG call on 12 May as well as for forwarding on to Professor Swaine.

Without venturing to provide a legal opinion for which I’m not qualified and which would in any case be inappropriate for ICANN staff to do, I hope that the following comments on your Questions B.3 and B.4 can be of assistance in moving our WG discussion forward on our call tomorrow:

B.3 - on the possibility of authorizing a State’s Attorney-General (or equivalent authority) to file a UDRP complaint on behalf of an IGO: this would not be something that ICANN can effectively do. It would seem to require a multilateral agreement that is very unlikely to happen, outside ICANN’s remit and ability. Note also that Article 6ter covers only State obligations to provide certain protections for IGO identifiers consonant with their national trademark laws and does not itself confer rights. 

B.4 - on arbitration as between an IGO and a person/entity with which the IGO does not have contractual relations: an arbitration proceeding arises only when the parties in question have agreed to use this option to litigation. In the case where this has not been specified in a contract between the parties, this can normally be agreed to even after the dispute arises, as is the case with the UNCITRAL Rules mentioned by Professor Swaine, which apply to international commercial disputes. WG members may wish to note that the UNCITRAL Rules can apply to a wide variety of “commercial” transactions, including situations where the relationship between the parties is not contractual in nature. Should the WG decide to investigate this possibility, we will likely need to further explore and understand the scope and applicability of these types of arbitral rules to domain name disputes.

Thanks and cheers
Mary

Mary Wong
Senior Policy Director
Internet Corporation for Assigned Names and Numbers (ICANN)
Email: mary.wong at icann.org
Telephone: +1-603-5744889











On 5/11/16, 12:35, "gnso-igo-ingo-crp-bounces at icann.org on behalf of George Kirikos" <gnso-igo-ingo-crp-bounces at icann.org on behalf of icann at leap.com> wrote:

>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
>-----------------
>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-trans
>fers-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/
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