[gnso-igo-wt] Following up on action items from the IGO Work Track's 2 August call

Jeff Neuman jeff at jjnsolutions.com
Fri Aug 6 17:26:14 UTC 2021

The following is my personal view and not in my official capacity.

The issue (as I see it) is that this is all untested and once it is tested, I believe the issue that IGOs are worried about is likely to happen only that once or twice.  In other words a Court (at least in the US) has never had to examine the issue of IGO jurisdictional immunity in the context of a UDRP-based action filed by a registrant where an IGO has NOT consented to mutual jurisdiction.  Once it does, that will likely be the only time where a registrant may be able to do both (go to court AND arbitration).  Why?

  1.  If a Registrant loses a UDRP against an IGO and decides to challenge it in court, the IGO will likely raise the issue of jurisdictional immunity.  If the case is dismissed for lack of jurisdiction (and ultimately upheld), then I can’t think of any reason why future registrants in this position would want to waste its money in trying to go to court to face the same outcome.
  2.  If a registrant loses the UDRP, AND is able to get jurisdiction over the IGO despite the IGO’s arguments of jurisdictional immunity, however, then Registrants will likely choose either the Court option OR the Arbitration option.  But in either case, the action will be decided on the merits (which is what I understood Jay’s main concern was).

So at the end of the day, if we went with Jay’s proposal of allowing a Registrant to go to arbitration IF a case is dismissed due to lack of jurisdiction, in the long run, aren’t we really only dealing with one or two possible examples where the concerns expressed by the IGOs would happen?

At the end of the day, the purpose of this group was to (a) come up with a way whereby the IGOs would not have to consent to Mutual Jurisdiction as a condition to filing a UDRP, and (b) ensuring that Registrants who lose a UDRP still have the right to a re-hearing decided on the merits.

Jay’s proposal checks of both boxes and accomplished our mission.  Yes, in the short term we may have to deal with some inefficiencies until this is tested in the judicial arena.  But it also allows the courts to test out what has not been tested before.  Other than some short term additional costs (for both Registrants and IGOs), why is this not a win?

Again, this is being presented in my personal capacity.

[cid:image001.png at 01D78AC6.664BA470]
Jeffrey J. Neuman
Founder & CEO
JJN Solutions, LLC
p: +1.202.549.5079
E: jeff at jjnsolutions.com<mailto:jeff at jjnsolutions.com>

From: gnso-igo-wt <gnso-igo-wt-bounces at icann.org> On Behalf Of BECKHAM Brian via gnso-igo-wt
Sent: Friday, August 6, 2021 12:36 PM
To: gnso-igo-wt at icann.org
Subject: Re: [gnso-igo-wt] Following up on action items from the IGO Work Track's 2 August call

Thanks Alex, and dear all,

I would like to offer an observation:  in the context of Phase 2a work, several topics were called out for professionally mediated calls;  they have not been recorded.

And this is not to say we have not had useful and cordial conversations in our own WT, but it is a rather a chance for fresh outside perspective to assist, and it seems to have been well received in that WG.

In particular noting the second bullet set out by Jay below (not to exclude other points), and the points raised by Alex, personally I feel this topic could be a good candidate for a similar attempt at bridging some understandings.

For your consideration.


From: gnso-igo-wt <gnso-igo-wt-bounces at icann.org<mailto:gnso-igo-wt-bounces at icann.org>> On Behalf Of Alexandra.EXCOFFIER-NOSOV--- via gnso-igo-wt
Sent: Friday, August 6, 2021 5:50 PM
To: gnso-igo-wt at icann.org<mailto:gnso-igo-wt at icann.org>
Subject: Re: [gnso-igo-wt] Following up on action items from the IGO Work Track's 2 August call

Dear all,

While we respect that different members of the WG have different opinions regarding “fairness”, we categorically disagree with the characterisation of a Respondent choosing whether to go to court or arbitration as “not a fair choice.”

It is also not fair that IGOs are currently without recourse to address abuse of their identifiers in the DNS, whereby not only IGOs, but potentially defrauded Internet users/private citizens pay the price.

It is also not clear what fairness is represented in a proposed scheme that would give a party an additional opportunity to have its case heard after losing both in a UDRP case and in court.  This proposal also overlooks observed behavior that appeals themselves can beget a form of gaming: https://www.wipo.int/amc/en/docs/icann090409.pdf<https://eur02.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.wipo.int%2Famc%2Fen%2Fdocs%2Ficann090409.pdf&data=04%7C01%7CAlexandra.EXCOFFIER-NOSOV%40oecd.org%7Cfb4c1d5a08d04bcde27f08d958ecf42d%7Cac41c7d41f61460db0f4fc925a2b471c%7C0%7C1%7C637638597006695391%7CUnknown%7CTWFpbGZsb3d8eyJWIjoiMC4wLjAwMDAiLCJQIjoiV2luMzIiLCJBTiI6Ik1haWwiLCJXVCI6Mn0%3D%7C1000&sdata=xarBzooSjEnaxpDbj9BVHh8Fn%2BAlZpdBgLFVw5Rt4Hc%3D&reserved=0>.  And these several levels of “appeals” clearly benefit those with deep pockets who can afford to spend years and hundreds of thousands in court and then again in an arbitral process, while the offending website continues to function.  How is that fair?

There are considerations of legal certainty and economic efficiency that need to be taken into account that derive from both parties knowing ex ante what the process will be and this is certainly “fair” to all. The advantages of arbitration over courts and the various procedural and substantive complexities and time and costs they engender, have been well-explained by IGOs as well as by the US Government representative to the WG, and the circuitous proposal simply chooses to ignore these realities.  It also chooses to ignore that arbitration is a well-accepted means of resolving disputes globally (including in registrar-registrant contracts, and in ICANN’s own RA).

Such considerations are expressed quite well in UK case law where the final court to pronounce itself on the matter ([2012] EWHC 517 (Ch)) stated that:

“Looking at the scheme as a whole [DRS (like UDRP) + internal appeals], it was apparently intended to create a self-contained dispute resolution mechanism which is closely regulated, cheap, quick and (apparently) efficient. To add a parallel route of applying to court (which I fear would not always attract all those adjectives) would be inimical to the apparent intention of the parties.”

This proposal also reflects a very US centric view of the world, while the issue is one of global application.  It also ignores the realities of how IGO privileges and immunities work in practice.

In short, we submit that this proposal misses the bigger picture and indeed the task this WG has set out to solve.

We remain hopeful that WG members, and indeed potential case parties would yet see the efficiencies in an arbitral appeal without the need to resort to costly and time-consuming court options.

From: gnso-igo-wt <gnso-igo-wt-bounces at icann.org<mailto:gnso-igo-wt-bounces at icann.org>> On Behalf Of Jay Chapman via gnso-igo-wt
Sent: 05 August, 2021 11:16 PM
To: Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>>
Cc: gnso-igo-wt at icann.org<mailto:gnso-igo-wt at icann.org>
Subject: Re: [gnso-igo-wt] Following up on action items from the IGO Work Track's 2 August call

Thank you, Mary and Staff, and hello, everyone.

I appreciate the opportunity.  For clarity and focus, I narrowed the bullet points to the following:

  *   Following the UDRP of a winning IGO Complainant, the current proposal - that a losing Respondent must choose between going to court or agreeing to arbitration - is not a fair choice. This is why:  Per the current proposal, should the Respondent choose to go to court, and the court dismisses the case on non-substantive (i.e., jurisdictional) grounds, the current proposal would bar the Respondent from accessing and utilizing the arbitration mechanism to seek substantive, merit-based relief. This is especially impactful to Respondents when considering the corresponding proposal to remove the Mutual Jurisdiction Requirement for IGOs. Such a configuration would seem to unfairly coerce losing Respondents to “choose" arbitration, otherwise risking that the Respondent could be left without a remedy.
  *   While the UDRP has been and is successful in thwarting bad actors, there have been and are controversial UDRP decisions that have resulted in domain names being canceled or transferred away from legitimate, good faith Respondents (businesses, organizations, as well as individuals). These legitimate, good faith Respondents have and do rely on the due process protections that a court provides, such as the ability to appeal and other built-in checks and balances, to ensure fairness.
  *   In the original IGO/INGO PDP Working Group, there had been a proposal that the option to arbitrate remains available after there has been a judicial proceeding in which the court finds that the IGO is jurisdictionally immune. This  preserves the ability to obtain a substantive decision on the merits of a Respondent's case, should the immunity question be decided in favor of the IGO Complainant.  This proposal does not alter the opportunity for the parties to agree to go straight to arbitration, nor does it affect the ability of a Respondent who has no cause of action in their (or their registrar's) jurisdiction from choosing to go straight to arbitration.

Again, thank you.

Jay Chapman

On Thu, Aug 5, 2021 at 1:58 PM Mary Wong via gnso-igo-wt <gnso-igo-wt at icann.org<mailto:gnso-igo-wt at icann.org>> wrote:
Dear all,

Staff had two action items from this past Monday’s IGO Work Track call: (1) to provide a summary of the concerns that Jay Chapman, on behalf of the BC, had expressed on the call; and (2) to update the draft recommendations document based on suggestions and discussions during the call. We’ve completed both items, as further described below.

On action item (1):
Jay’s intervention was based on the GNSO Council’s directions when creating the Work Track; i.e., address the issues with the original IGO-INGO Access to Curative Rights PDP’s Recommendation #5 by finding a solution that recognizes IGO immunities and privileges while preserving a registrant’s right and ability to have a UDRP panel decision reviewed on the merits. As requested, here is the summary of the concerns Jay outlined on the call – Jay and others, please let us know if this is not accurate:

  *   Removing the requirement for an IGO Complainant to agree to submit to a Mutual Jurisdiction when filing a UDRP complaint results in a “false choice” for a losing registrant as between going to court and agreeing to arbitration. By removing the Mutual Jurisdiction requirement for IGOs, a registrant is essentially left without a remedy should a court rule that it cannot hear the case due to the IGO’s having immunity from the jurisdiction of that court.
  *   There have been controversial UDRP decisions and cases of reverse domain name hijacking (RDNH) that have resulted in domain names being canceled or transferred away from legitimate, good faith registrants. Registrants rely on the due process protections that a court provides, such as the ability to appeal and other built-in checks and balances, to ensure fairness.
  *   The current Work Track proposal allows an IGO Complainant to select the forum (staff note: presumably, by selecting the UDRP dispute resolution provider to file its case with) and have the proceeding decided by panelist(s) who are almost exclusively trademark practitioners. Requiring the registrant to choose between arbitration and going to court in these circumstances would appear to be the kind of situation that a judge may wish to review (in the absence of the immunity issue).
  *   In the original PDP Working Group, there had been a suggestion that the option to arbitrate remains available after there has been a judicial proceeding in which the court finds that the IGO is jurisdictionally immune. This alternative seems to preserve the ability to obtain a substantive decision on the merits of a registrant’s case, should the immunity question be decided in favor of the IGO Complainant.

On action item (2):
Staff has updated the group’s working document: https://drive.google.com/file/d/1GHfvQzZG8s6BdgUsHm3KoyWtRcPO1EYU/view?usp=sharing<https://eur02.safelinks.protection.outlook.com/?url=https%3A%2F%2Fdrive.google.com%2Ffile%2Fd%2F1GHfvQzZG8s6BdgUsHm3KoyWtRcPO1EYU%2Fview%3Fusp%3Dsharing&data=04%7C01%7CAlexandra.EXCOFFIER-NOSOV%40oecd.org%7C13c7adad21474656119408d958565b0c%7Cac41c7d41f61460db0f4fc925a2b471c%7C0%7C0%7C637637950186252204%7CUnknown%7CTWFpbGZsb3d8eyJWIjoiMC4wLjAwMDAiLCJQIjoiV2luMzIiLCJBTiI6Ik1haWwiLCJXVCI6Mn0%3D%7C1000&sdata=f93pECa0AuBp7T8B1v4BY0zSjAJhrD0hYdvP2VgAgfc%3D&reserved=0>. I’m also attaching a Word version in case you are not able to access or view the Google Doc. Since the Google Doc now contains comments and redlined updates from the past two weeks, it may be somewhat difficult to read. For your convenient reference, you will find the additions and edits made by staff as a result of Monday’s call toward the bottom of Page 3 and continuing on Page 4.

Thanks and cheers
Steve, Berry & Mary

From: gnso-igo-wt <gnso-igo-wt-bounces at icann.org<mailto:gnso-igo-wt-bounces at icann.org>> on behalf of Berry Cobb via gnso-igo-wt <gnso-igo-wt at icann.org<mailto:gnso-igo-wt at icann.org>>
Reply-To: Berry Cobb <Berry.Cobb at icann.org<mailto:Berry.Cobb at icann.org>>
Date: Thursday, July 29, 2021 at 2:07 PM
To: "gnso-igo-wt at icann.org<mailto:gnso-igo-wt at icann.org>" <gnso-igo-wt at icann.org<mailto:gnso-igo-wt at icann.org>>
Subject: [gnso-igo-wt] Agenda RPM - IGO Curative Rights Work Track for 2 Aug 2021 15:00 UTC Meeting

Dear RPM - IGO Curative Rights Work Track,

Please see below the proposed agenda for the meeting scheduled on 2 Aug 2021 15:00 UTC.

  *   Roll Call & SOI Updates (5 minutes)
  *   Welcome & Chair updates (Chair) (10 minutes)
  *   Continued Discussion of Working Proposal (70 minutes)

     *   Link to Proposed Recommendations Doc: https://docs.google.com/document/d/1GHfvQzZG8s6BdgUsHm3KoyWtRcPO1EYU/edit<https://eur02.safelinks.protection.outlook.com/?url=https%3A%2F%2Fdocs.google.com%2Fdocument%2Fd%2F1GHfvQzZG8s6BdgUsHm3KoyWtRcPO1EYU%2Fedit&data=04%7C01%7CAlexandra.EXCOFFIER-NOSOV%40oecd.org%7C13c7adad21474656119408d958565b0c%7Cac41c7d41f61460db0f4fc925a2b471c%7C0%7C0%7C637637950186252204%7CUnknown%7CTWFpbGZsb3d8eyJWIjoiMC4wLjAwMDAiLCJQIjoiV2luMzIiLCJBTiI6Ik1haWwiLCJXVCI6Mn0%3D%7C1000&sdata=xn1Rf4gZqx7OrZ1kORcYz5ctrTiaKs61kDIMrEjn7iI%3D&reserved=0> (PDF attached)

  *   Next steps & closing (5 minutes)

     *   Next meeting 09 August 2021 @ 15:00 UTC

Action Items:

  *   Brian to add his proposed redlines to the Google doc - COMPLETE - Note, staff created the next version in a new google doc, link provided above. The old version has been closed.
  *   Staff to prepare next draft of working proposal - IN PROGRESS - Staff awaits Brian's action to be completed.
  *   Staff to update flowchart - COMPLETE; Updated chart added to google doc, and also attached here.
  *   Brian to propose edits Rec #2 regarding selection of law for arbitration - IN PROGRESS


GNSO Policy Staff
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