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

McGrady, Paul D. PMcGrady at taftlaw.com
Thu Jul 1 16:07:32 UTC 2021


Thanks Brian, from your paragraph 2 it appears that you are suggesting that there will be no court jurisdictions available to a losing respondent to file a complaint in order to stay implementation of the UDRP decision.  This essentially forces a losing respondent into arbitration with no real recourse to the courts.  This seems very heavy handed.  Is that what you meant?  If not, we still have to solve in what courts a provider will take a notice of complaint filing to stay the implementation of the UDRP decision should a losing respondent choose not to consent to binding arbitration.  If so, I’ll let the registrant’s rights people speak up, but my reaction to that is “yikes.”

From: BECKHAM Brian <brian.beckham at wipo.int>
Sent: Thursday, July 1, 2021 10:53 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]
I don’t see why we couldn’t build in a process for the parties to agree;  they could e.g., be given a week to try.  Just to bring in a question in the email from Mary, there is no reason the applicable provision could not say that the arbitrator should, subject to its ultimate discretion, take into account the locations of and fairness to the parties (and moreover impose time limits wherever necessary).

As to the court for stay purposes, I thought we agreed the request to arbitrate served that purpose (and recall that we have said this is on the basis that the IGO has accepted this by filing the UDRP, so there is no risk that the IGO could thwart the respondent’s request to arbitrate), and if there is no agreement by the respondent to arbitrate, the UDRP decision kicks in?

And in that scenario, the respondent can still go to whichever court it chooses to plead whatever cause of action it considers appropriate – which is possible today following implementation of, or even absent a UDRP case.

From: McGrady, Paul D. <PMcGrady at taftlaw.com<mailto:PMcGrady at taftlaw.com>>
Sent: Thursday, July 1, 2021 5:36 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.  So I think this approach puts us only with the remit of 2 and 3, which is fine, but we just have to be realistic about the downward pressure it will put on losing respondents choosing to consent to arbitration rather than take their chances in their local courts.  We also still have to solve in what courts a provider will take a notice of complaint filing to stay the implementation of the UDRP decision should a losing respondent choose not to consent to binding arbitration.  It seems like the status quo was what some were pushing for, and that is fine with me, i.e. the courts where the registrar or registrant are located.

From: BECKHAM Brian <brian.beckham at wipo.int<mailto:brian.beckham at wipo.int>>
Sent: Thursday, July 1, 2021 10:21 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]
Of course – happy to continue here – the 3 citations below as well as the mentioned GoDaddy TOS – which themselves invoke the AAA Rules (see below quoted language) leave this to agreement between the parties (i.e., not just one of them) or the arbitrator if the parties fail to agree.

If an in-person hearing is to be held and if the parties do not agree to the locale where the hearing is to be held, the AAA initially will determine the locale of the arbitration. If a party does not agree with the AAA’s decision, that party can ask the arbitrator, once appointed, to make a final determination. The locale determination will be made after considering the positions of the parties, the circumstances of the parties and the dispute, and the [AAA internal] Consumer Due Process Protocol.

Giving one party the sole option to decide here may provide opportunities for conduct intended to frustrate the good order of these proceedings, see e.g., page 3 of this letter regarding court appeals:  https://www.wipo.int/amc/en/docs/icann090409.pdf.

Perhaps therefore, joint party agreement, or failing that the discretion of the arbitrator, would seem to be an accepted basis across international arbitral bodies that we might want to consider adopting here.

--

Brian

From: McGrady, Paul D. <PMcGrady at taftlaw.com<mailto:PMcGrady at taftlaw.com>>
Sent: Thursday, July 1, 2021 4:40 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.  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<mailto:brian.beckham at wipo.int>>
Sent: Thursday, July 1, 2021 9:32 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]
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<https://www.godaddy.com/legal/agreements/universal-terms-of-service-agreement>.


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

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

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

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
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