[Gnso-igo-ingo-crp] Comments on our Options and suggested solution

Wed May 16 00:22:16 UTC 2018

Dear Petter,

Good to see the first positive post in months, however we have a very
serious problem and that problem must be resolved BEFORE we try to move on
to solutions.

The whole of the Swaine Memo is premised on being able to transfer rights
to jurisdictional immunity from the scenario where an IGO is defending it's
own domain to where an IGO is initiating a case to seize a domain. I can
find no other forum, on any matter (not just domains) in any jurisdiction
where it is possible for an IGO to do this.

Further I have set out very clearly where and how I believe Prof. Swaine's
Memo is fundamentally flawed and so far no one has shown that Professor
Swaine is in fact correct. This error has very serious implications for the
WGs final report, as a Co-chair please can you show me how Swaine can
possibly be correct?

Many thanks,

Paul

For completeness the extract of relevant section of the Swaine Memo and the
reasoning showing the VERY serious problem

>From the Swaine Memo:

*“3. Discussion (Bottom of page 8)The core question is whether an IGO is
“entitled to immunity,” but the baseline assumptions may be disaggregated.
The scope of IGO immunity would most clearly be at issue if the Mutual
Jurisdiction provision were irrelevant and the IGO had not itself initiated
judicial proceedings, since that would risk waiving any immunity to which
it may be entitled, including to counterclaims. 20 This might be the case,
for example, if a domain-name registrant sought a declaratory judgment
against an IGO in relation to some actual or potential infringement. 21
That scenario, though not otherwise of concern here, does usefully isolate
the question as to whether an IGO has a legitimate expectation that it
would be entitled to immunity absent the UDRP. If such immunity is minimal
or uncertain, then any compromises required by the UDRP loom less large; if
the IGO would otherwise be entitled to immunity, however, its potential
sacrifice seems more substantial.As explained in Part A, the answer
depends. IGOs generally enjoy immunity under international law, but
different jurisdictions apply the law differently, and even within the same
jurisdiction different IGOs may be treated differently. Part B then
introduces the complication that any such immunity may be waived through
the Mutual Jurisdiction provision, and affording such waiver is not the
same thing as violating an IGO’s immunity. Part C then discusses
alternative ways to resolve the situation. … “*

Green   Initiating proceedings waives immunity including counterclaims
Blue     Scenario (a) below
Red      Transfers those rights of scenario (a) to scenario (b)

The rest of the memo is then based on the incorrect assumption that rights
can be transferred between the two scenarios.

*Proof*

Absent UDRP there are two possible ways the immunity question could come
before a court:

(a) A TM owner seeks to acquire a domain which an IGO has registered
(b) An IGO seeks to acquire a domain which a domain registrant has
registered

In (a) the IGO would be entitled to raise an immunity defence
In (b) the IGO would be required to waive immunity for the court to
consider the matter.

As the UDRP is an administrative procedure to help take less complex cases
out of the judicial system if UDRP is to afford the same protections as any
other forum then UDRP needs to take into account both cases.

(a) A TM owner seeks to acquire a domain which an IGO has registered by
bringing a UDRP
(b) An IGO seeks to acquire a domain which a domain registrant has
registered by bringing a UDRP

*Conclusion*
The working group has not considered (a) which hides the fact that in (b)
an IGO is never entitled to jurisdictional immunity after choosing to
initiate proceedings. The incorrect Swaine reasoning introduces irrelevant
complexity which confuses rather than clarifies and should therefore have
no place in the working group’s final report.

On Tue, May 15, 2018 at 11:52 PM, Petter Rindforth <
petter.rindforth at fenixlegal.eu> wrote:

> Dear All,
>
> I promised to come back with my personal comments, as well as suggestions
> to find a decent solution, that I ask you to consider before you make a
> decision.
>
> And, as these comments are my personal views, I – so to speak - take my
> chair hat off at this moment, and make this proposal as an ordinary working
> group member.
>
> Let me start with:
>
> *Option 4 (proposed by Zak Muscovitch and presented on the Working Group’s
> 14 December 2017 call):*
> “Our initial report and recommendation (that no change is required)
> remains valid and should be reflected in the published report of this WG.
> Our report should advise that even if a change were advisable or
> appropriate, such would necessarily require modifications to the UDRP and
> its accompanying rules.  As such changes are within the ambit of the RPM
> WG, we feel it inappropriate to inject our proposals in that regard.
> Accordingly, the IGO WG strongly recommends that any changes to how the
> UDRP procedure is drafted and employed for IGO's, if any, should be
> referred to the RPM WG for consideration within its broader mandate to
> review the UDRP.”
>
> I think, and hope, that we all can agree that our long work in this WG
> have indeed given us knowledge of the topic enough to make our own
> conclusions and recommendations. If we say “this is not for us, pass this
> topic on to another WG, that will have at least another year or more to
> come to a conclusion”, it would indeed be a disaster, and also a clear
> signal to GAC that they shall not wait for a solution from GNSO, but
> instead turn directly to the Board with their claims & solution. My vote on
> this is a clear: No!
>
> So, let me instead rephrase Option 4 to be a *recommendation* that our
> final conclusions regarding IGO’s, may also be considered when generally
> study URS and UDRP, taking into consideration the investigations, work and
> majority/minority recommendations from our WG.
>
> This is a decent way to recommend RPM WG to also look at our result and
> work, when dealing generally with URS / UDRP.
>
> I then pass on to:
>
> *Option 1 (unchanged from the text presented for the October 2017 poll):*
> *“Where a losing registrant challenges the initial UDRP/URS decision by
> filing suit in a national court of mutual jurisdiction and the IGO that
> succeeded in its initial UDRP/URS complaint also succeeds in asserting
> jurisdictional immunity in that court, the decision rendered against the
> registrant in the predecessor UDRP or URS shall be vitiated (i.e. set
> aside).”*
>
> This option will not solve the problem. We know - from inputs of GAC and
> IGO’s – that this is not accepted. And, independent from Prof. Swain’s
> report: it is not clear how all national courts around would deal with the
> “jurisdictional immunity”. If they accept, and it is the domain holder that
> has taken the case to court, the system is indeed not neutral to both
> parties. Also the domain holders need to have the possibility to have the
> case handled by a court or arbitration forum.
>
> Also, as we know that IGO’s are clearly against this option, if the WG
> decides in favour of Option 1, it would be a clear message to GAC and IGO’s
> that GNSO cannot (don’t want to) solve the problem, and I am sure that GAC
> will turn to the ICANN Board to ask them to decide 100% in favour of GAC’s
> own solution: A separate dispute resolution system for IGO’s.
>
> *So, my vote is a clear NO to Option 1.*
>
>
> *Option 2 (unchanged from the text presented for the October 2017 poll):*
> *In relation to domain names with a CREATION DATE before the (Policy
> Effective Date), then Option [1] applies. In relation to domain names with
> a CREATION DATE on or after the (Policy Effective Date), Option [3] shall
> apply. After five (5) years or 10 instances of Option [3] being utilized,
> whichever occurs first, ICANN and the various dispute resolution providers
> (including any who have administered arbitration proceedings under the new
> Option [3] will conduct a review to determine the impact, both positive and
> negative, as a result of “trying out” Option [3].*
>
> The problem with this option is that it is an unworkable mix of option 1
> and option 3, and thereby not solving the topic.  Also, as explained before
> by Mr Kirikos on a direct question: the meaning of “creation date” is the
> date when a domain name was initially registered, not taking into
> consideration that it may have been transferred a number of times after
> that to other domain holders.
>
> Option 2 is definitely not a solution, and from what I can see from others
> comments, the majority of this WG agree to that.
>
>
> *Option 5 (proposed by George Kirikos, modified from an earlier proposal
> and also noted as a proposal that can be included in Option 4 in the event
> of a referral to the RPM Working Group):*
> *“The text of both the UDRP and URS rules and policies shall be modified
> so that, in the event a domain name dispute (UDRP or URS) is initiated by
> an IGO as complainant and a registrant commences an "in rem" action in a
> court of mutual jurisdiction concerning that domain name, the registrar
> shall treat that court action in the same manner as if an "in personam"
> action had been brought directly against the IGO”.*
>
> This is one of the options that at least has some active solution
> proposed. It may sound easy from a pure US legal view. However, “in rem” is
> not a globally clear solution or accepted by courts in general. I am not
> convinced that this option will work. Have in mind that a majority of the
> IGO’s in fact have their head offices in Europe (Switzerland) with other
> legal praxis than USA.
> My vote is therefore: NO.
>
> *Option 6 (proposed by Paul Tattersfield, with a slight amendment to the
> text following discussion on the Working Group’s 14 December call):*
> *"**We should arrange for the UDRP providers [to] provide [mediation] at
> no cost to the parties. The UDRP already permits the resolution of disputes
> through arbitration - I would bind the IGOs to arbitration in the same way
> the Mutual Jurisdiction clause binds complainants to the registrant’s
> judicial system. Where an IGO refuses to take part in a judicial proceeding
> or judicial or arbitral proceedings, or successfully asserts immunity in a
> judicial proceeding, any prior UDRP determination would be quashed."*
>
> My comments: Mediation may work also in some kind of domain disputes. It
> is established in some ccTLD disputes as a first step. However, my
> experience from domain disputes in Denmark, Finland and Norway (where this
> system is included) is that it is in most cases only a step that both
> parties need to pass on – with no result – in order to get to the final
> proceeding. It will definitely not work for URS, as this is already a fast
> procedure. It may be something to further discuss generally when we talk
> about possible changes of the UDRP (and can therefore be a part of our
> recommendation for that WG to consider, or each members of this WG is free
> to make their own separate recommendations in the RPM WG).
>
> Although I have mediated in a number of complicated business disputes with
> a good result for both parties involved, I am not convinced that this is a
> workable solution for IGO disputes.
>
> However, if the majority of this WG think it is worthwhile to consider as
> an initial step, I am prepared to find a way to include it in Option 3
> below.
>
> *Option 3 (unchanged from the text presented for the October 2017 poll):*
> “*Where a complainant IGO succeeds in a UDRP/URS proceeding, the losing
> registrant proceeds to file suit in a court of mutual jurisdiction, and the
> IGO subsequently succeeds in asserting jurisdictional immunity, the
> registrant shall have the option to transfer the dispute to an arbitration
> forum meeting certain pre-established criteria for determination under the
> national law that the original appeal was based upon, with such action
> limited to deciding the ownership of the domain name. The respondent shall
> be given 10 days (or a longer period of time if able to cite a national
> statute or procedure that grants a period longer than 10 days) to either:
> (1) inform the UDRP/URS provider [and the registrar] that it intends to
> seek arbitration under this limited mechanism; or (2) request that the
> UDRP/URS decision continue to be stayed, as the respondent has filed, or
> intends to file, a judicial appeal against the IGO’s successful assertion
> of immunity. An IGO which files a complaint under the UDRP/URS shall be
> required to agree to this limited arbitration mechanism when filing the
> complaint. If, subsequently. it refuses to participate in the arbitration,
> the enforcement of the underlying UDRP/URS decision will be permanently
> stayed. The parties shall have the option to mutually agree to limit the
> original judicial proceedings to solely determining the ownership of the
> domain name. Subject to agreement by the registrant concerned, the parties
> shall also be free to utilize the limited arbitration mechanism described
> above at any time prior to the registrant filing suit in a court of mutual
> jurisdiction. In agreeing to utilize the limited arbitration mechanism,
> both the complainant and respondent are required to inform ICANN”*.
>
>
> This is definitely the best solution.  It takes into consideration the
> legal aspects of both groups of interest: the IGOs as well as the domain
> holder. Especially if we include the possibility for the parties to utilize
> the limited arbitration mechanism at any time prior to the registrant
> filing suit in a court of mutual jurisdiction.
>
> Arbitration, promoted as a way to resolve disputes efficiently, proponents
> of arbitration commonly point to a number of advantages it offers over
> litigation, court hearings, and trials.
>
> *Avoids hostility:*
> Because the parties in an arbitration are usually encouraged to
> participate fully and sometimes even to help structure the resolution, they
> are often more likely to work together peaceably rather than escalate their
> angst and hostility toward one another, as is often the case in litigation.
>
> *Usually cheaper than litigation:*
> There are also developed possibilities for online arbitration, that can
> cut the costs and time, and will work out very well when it comes to domain
> name disputes.
>
> *Faster than litigation:*
> A court case normally takes from 18 months to three years to wend its way
> through the courts.
>
> *Flexible:*
> Unlike trials, which must be worked into overcrowded court calendars,
> arbitration hearings can usually be scheduled around the needs and
> availabilities of those involved, including weekends and evenings.
>
> *Simplified rules of evidence and procedure:*
> The often convoluted rules of evidence and procedure do not apply in
> arbitration proceedings -- making them less stilted and more easily adapted
> to the needs of those involved.
>
> *Private:*
> Arbitration proceedings are generally held in private. And parties
> sometimes agree to keep the proceedings and terms of the final resolution
> confidential. Both of these safeguards can be a boon if the subject matter
> of the dispute might cause some embarrassment or reveal private
> information, such as a company's client list (meaning for example the list
> of users of the domain holder).
>
> So: YES!! This (Option 3) is the only way to move forward, having the
> interest of both IGO’s and domain holders in mind.
>
>
> And now I put my chair hat on again, and look forward to your comments and
> solutions, again hoping that you all agree with me that we shall take this
> possibility to come to our own conclusions and recommendation, and not just
> pass it on to another WG or say that we make no changes/solutions.
>
> Best regards,
> Petter
>
> --
> Petter Rindforth, LL M
>
>
>
>
>
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> Stureplan 4c, 4tr
> 114 35 Stockholm
> Sweden
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> E-mail: petter.rindforth at fenixlegal.eu
> www.fenixlegal.eu
>
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