[gnso-igo-wt] Kick off email for discuss

Thu Jul 1 15:30:42 UTC 2021

Hello everyone, to follow up on this discussion (with thanks to Paul, Brian and Kavouss), the current option of post-UDRP arbitration contemplates that:
Step 1: The IGO Complainant elects arbitration as its preferred option at the time it files the complaint with the UDRP provider; and
Step 2: The losing respondent is only required to make its choice to arbitrate (or not) after the initial UDRP panel decision and within X days following notification by the provider.

As such, staff suggests that it may be helpful for Work Track members to also consider a few process implications around the question of applicable/governing law (i.e. choice of law) for the arbitration, as summarized by Paul:

  1.  The parties deciding at the time of agreeing to arbitration

  *   How will this work in view of the current process as described above – e.g. will the IGO propose what it believes should be the governing law at the time it files its complaint, to be communicated by the UDRP provider when notifying the losing respondent, and if the respondent decides NOT to accept the IGO’s suggestion, the parties will then attempt to negotiate in good faith?
  *   If so, should there be a maximum timeframe for that negotiation and outcome (which may be no agreement)? (Note: the actual number of days within that timeframe can be determined during implementation)
  *   If the outcome is that there is no agreement on the law applicable to the dispute, should the next step be Option 3 (below) or will this mean no arbitration at all?

  1.  The arbitrator making the decision in all cases

  *   This will simplify the process and likely be speedier, but (as was noted during the Work Track call this past Monday) may not be as helpful an incentive to arbitrate.
  *   The arbitrator is not limited to determining whether the applicable law is either that of the registrant’s or registrar’s location; while an unlikely outcome, it may end up being a law that neither the IGO Complainant nor the respondent would have agreed to (Note: while not necessarily the case, we assume that Option 1 (above) will likely revolve around either the registrar’s or registrant’s location or a third alternative preferred by the IGO.)

  1.  The arbitrator making the decision in cases where the parties agree to arbitration but cannot agree on a Choice of Law

  *   This will likely lengthen the time required to complete the arbitration.
  *   As with Option 2 (above), the arbitrator may determine that the applicable law is one that neither the IGO nor the respondent may have wanted.

We hope these notes and questions are useful.

Thanks and cheers
Steve, Berry & Mary

From: gnso-igo-wt <gnso-igo-wt-bounces at icann.org> on behalf of "McGrady, Paul D. via gnso-igo-wt" <gnso-igo-wt at icann.org>
Reply-To: "McGrady, Paul D." <PMcGrady at taftlaw.com>
Date: Thursday, July 1, 2021 at 10:40 AM
To: BECKHAM Brian <brian.beckham at wipo.int>, Arasteh <kavouss.arasteh at gmail.com>, "gnso-igo-wt at icann.org" <gnso-igo-wt at icann.org>
Subject: Re: [gnso-igo-wt] Kick off email for discuss

Thanks Brian.  I agree that is where we were heading, but are we still heading there if the IGO can’t have input on the Choice of Law?  If so, great.  We can just leave it to the losing respondent to choose the Choice of Law for the arbitration proceedings.

Also, I think better to play this out on this list than for you and I to try to schedule a call (not only due to the US holiday bearing down on us) but also so that the WT can follow along and give their own inputs.  Like my 7th grade math teacher, Mrs. Rutter, used to tell me – jumping to the right answer “without showing your work” isn’t OK.  ☺

Best,
Paul

From: BECKHAM Brian <brian.beckham at wipo.int>
Sent: Thursday, July 1, 2021 9:32 AM
To: McGrady, Paul D. <PMcGrady at taftlaw.com>; Arasteh <kavouss.arasteh at gmail.com>; gnso-igo-wt at icann.org
Subject: RE: [gnso-igo-wt] Kick off email for discuss

[EXTERNAL MESSAGE]
Hi Paul, and sorry for all the questions (and maybe we can have a call if that would be easier) but I thought we were working under the assumption that the IGO would have consented from the outset when filing the UDRP case, and that a losing registrant’s filing of the request to arbitrate would stand in for the court stay provision now available under 4(k).

I would also point out that IGOs have been seeking to use the accepted arbitration model all along – which even registrars such as GoDaddy use [godaddy.com]<https://urldefense.com/v3/__https:/www.godaddy.com/legal/agreements/universal-terms-of-service-agreement__;!!PtGJab4!rxO_S7CQI44RM_cA4boCwnBHyAcg_Uyy8-aAsR6mBsYFMAlNxIva-8AAmNJPCqBks7cZFiw$>.

Brian

--

Going back to the original question, here are a few citations on the choice of law question:

UNCITRAL Notes on Organizing  Arbitral Proceedings:
https://uncitral.un.org/sites/uncitral.un.org/files/media-documents/uncitral/en/arb-notes-2016-e.pdf [uncitral.un.org]<https://urldefense.com/v3/__https:/uncitral.un.org/sites/uncitral.un.org/files/media-documents/uncitral/en/arb-notes-2016-e.pdf__;!!PtGJab4!rxO_S7CQI44RM_cA4boCwnBHyAcg_Uyy8-aAsR6mBsYFMAlNxIva-8AAmNJPCqBkHou6Zzs$>

The  parties  may  agree  on  the  place  (or  “seat”)  of  arbitration.  If  the  place  of  arbitration  has  not  been  agreed  by  the  parties,  typically  the   arbitral   tribunal   or   the   arbitral   institution   administering   the   arbitration  will  have  to  determine  the  place  of  arbitration  at  the  outset   of   the   arbitral   proceedings.   Arbitration   rules   of   some   institutions  contain  a  default  place  of  arbitration,  applicable  where  the  parties  have  not  chosen  one.

ICC:  https://iccwbo.org/dispute-resolution-services/arbitration/rules-of-arbitration/#article_21 [iccwbo.org]<https://urldefense.com/v3/__https:/iccwbo.org/dispute-resolution-services/arbitration/rules-of-arbitration/*article_21__;Iw!!PtGJab4!rxO_S7CQI44RM_cA4boCwnBHyAcg_Uyy8-aAsR6mBsYFMAlNxIva-8AAmNJPCqBkmW9Tz1M$>

The parties shall be free to agree upon the rules of law to be applied by the arbitral tribunal to the merits of the dispute. In the absence of any such agreement, the arbitral tribunal shall apply the rules of law which it determines to be appropriate.

WIPO:  https://www.wipo.int/amc/en/arbitration/rules/index.html#awa2 [wipo.int]<https://urldefense.com/v3/__https:/www.wipo.int/amc/en/arbitration/rules/index.html*awa2__;Iw!!PtGJab4!rxO_S7CQI44RM_cA4boCwnBHyAcg_Uyy8-aAsR6mBsYFMAlNxIva-8AAmNJPCqBkvy2WdaU$>

The Tribunal shall decide the substance of the dispute in accordance with the law or rules of law chosen by the parties. Any designation of the law of a given State shall be construed, unless otherwise expressed, as directly referring to the substantive law of that State and not to its conflict of laws rules. Failing a choice by the parties, the Tribunal shall apply the law or rules of law that it determines to be appropriate.

From: McGrady, Paul D. <PMcGrady at taftlaw.com<mailto:PMcGrady at taftlaw.com>>
Sent: Thursday, July 1, 2021 3:40 PM
To: BECKHAM Brian <brian.beckham at wipo.int<mailto:brian.beckham at wipo.int>>; Arasteh <kavouss.arasteh at gmail.com<mailto:kavouss.arasteh at gmail.com>>; gnso-igo-wt at icann.org<mailto:gnso-igo-wt at icann.org>
Subject: RE: [gnso-igo-wt] Kick off email for discuss

Thanks Brian.  That is a good question.  I suppose we have to parse out the difference between not requiring an IGO to consent to a court jurisdiction vs. what jurisdictions the losing respondent could file in that would work the same automatic stay of the UDRP proceedings that respondents now enjoy.  Otherwise, what possible reason would an IGO have to agree to arbitration?

From: BECKHAM Brian <brian.beckham at wipo.int<mailto:brian.beckham at wipo.int>>
Sent: Thursday, July 1, 2021 8:27 AM
To: McGrady, Paul D. <PMcGrady at taftlaw.com<mailto:PMcGrady at taftlaw.com>>; Arasteh <kavouss.arasteh at gmail.com<mailto:kavouss.arasteh at gmail.com>>; gnso-igo-wt at icann.org<mailto:gnso-igo-wt at icann.org>
Subject: RE: [gnso-igo-wt] Kick off email for discuss

[EXTERNAL MESSAGE]
Thanks – helpful indeed.

So, if you will indulge one more question, if (whether due to failure to agree on choice of law or otherwise) there is no agreement to arbitrate, would the idea be that the UDRP decision kicks in?

Brian

From: McGrady, Paul D. <PMcGrady at taftlaw.com<mailto:PMcGrady at taftlaw.com>>
Sent: Thursday, July 1, 2021 3:24 PM
To: BECKHAM Brian <brian.beckham at wipo.int<mailto:brian.beckham at wipo.int>>; Arasteh <kavouss.arasteh at gmail.com<mailto:kavouss.arasteh at gmail.com>>; gnso-igo-wt at icann.org<mailto:gnso-igo-wt at icann.org>
Subject: RE: [gnso-igo-wt] Kick off email for discuss

Thanks Brian.  The choice whether or not to arbitrate would be based on the process we decide, rather than being decided within the process.  Once a party commits to arbitration, they will be bound to do so.  The question is which of these (so far) 3 options is more like to induce a party to agree to arbitration in the first place.  For me, #1 would be the most attractive since going in blind on the Choice of Law issue would not be my favorite thing.  Hope that helps.

Best,
Paul

From: BECKHAM Brian <brian.beckham at wipo.int<mailto:brian.beckham at wipo.int>>
Sent: Thursday, July 1, 2021 8:16 AM
To: McGrady, Paul D. <PMcGrady at taftlaw.com<mailto:PMcGrady at taftlaw.com>>; Arasteh <kavouss.arasteh at gmail.com<mailto:kavouss.arasteh at gmail.com>>; gnso-igo-wt at icann.org<mailto:gnso-igo-wt at icann.org>
Subject: RE: [gnso-igo-wt] Kick off email for discuss

[EXTERNAL MESSAGE]
Thanks Paul for setting this out.

As we had discussed the idea of a fallback provision on our last call, I had understood option 3 as being applied in something of a bifurcated fashion, e.g., step 1 agree to arbitrate, step 2 try to agree on choice of law, but if the parties are unable to agree the arbitrator(s) decide?

Can you help me understand a bit better how that would work with the idea that a party could decide not to engage in arbitration if they did not get their choice of law?

Brian

From: gnso-igo-wt <gnso-igo-wt-bounces at icann.org<mailto:gnso-igo-wt-bounces at icann.org>> On Behalf Of McGrady, Paul D. via gnso-igo-wt
Sent: Thursday, July 1, 2021 2:41 PM
To: Arasteh <kavouss.arasteh at gmail.com<mailto:kavouss.arasteh at gmail.com>>
Cc: gnso-igo-wt at icann.org<mailto:gnso-igo-wt at icann.org>
Subject: Re: [gnso-igo-wt] Kick off email for discuss

Thanks Kavouss.

All, it appears we now have three options regarding Choice of Law:

1.  The parties deciding at the time of agreeing to arbitration;
2.  The arbitrator making the decision in all cases; or
3.  The arbitrator making the decision in cases where the parties agree to arbitration but cannot agree on a Choice of Law.

I can live with any of these three, since ultimately a party can decide not to engage in arbitration of they do not have control over the Choice of Law.  If we wish to promote the use of binding arbitration, it seems to me that 1 is the most likely to do so, followed by 3 and then lastly 2.

Best,
Paul

From: Arasteh <kavouss.arasteh at gmail.com<mailto:kavouss.arasteh at gmail.com>>
Sent: Tuesday, June 29, 2021 2:26 AM
To: McGrady, Paul D. <PMcGrady at taftlaw.com<mailto:PMcGrady at taftlaw.com>>
Cc: gnso-igo-wt at icann.org<mailto:gnso-igo-wt at icann.org>
Subject: Re: [gnso-igo-wt] Kick off email for discuss

[EXTERNAL MESSAGE]
Dear Paul
Tks
But these are not two independent options but two stepwise options
In other words , if the parties do not agree on the choice of law  then the arbiter acts as in option 2
Regards
Kavouss

Envoyé de mon iPhone

Le 28 juin 2021 à 18:19, McGrady, Paul D. via gnso-igo-wt <gnso-igo-wt at icann.org<mailto:gnso-igo-wt at icann.org>> a écrit :
Regarding Choice of Law, I can live with either:

1.  The parties deciding at the time of agreeing to arbitration; or
2.  The arbitrator making the decision (which will affect whether or not the parties ultimately agree to the arbitration).

Discuss!

Best,
Paul

Taft /

Paul D. McGrady / Partner
Taft Stettinius & Hollister LLP
111 E. Wacker Drive, Suite 2800
Chicago, Illinois 60601-3713
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