[gnso-rpm-wg] Availability of Court for Domain Name owners challenging a URS decision -- false assumption?

[George Kirikos]

Hi folks,

I brought up this topic on Wednesday's RPM PDP call, and Kathy
suggested that I put the issue in writing for the benefit of the
broader working group that hadn't attended the call.

There's been an implicit and fundamental assumption that the URS (and
similarly, the UDRP) doesn't interfere with the existing legal rights
of a TM holder or a domain name registrant, and that either party can
bring an action in court, heard on a de novo basis, to challenge the
outcome of a URS (or a UDRP), either before, during or after the ADR
procedure devised by ICANN. The ADR was intended to complement
existing law, and wasn't intended to interfere with or replace
existing law.

Is that assumption correct in all jurisdictions worldwide? If not,
what must be done to correct the situation? (since this violates the
fundamental "bargain" that led to the establishment of those policies
in the first place)

This is not some theoretical concern. Consider the Yoyo.email case,
described at:

https://www.out-law.com/en/articles/2015/december/ruling-means-uk-courts-will-not-overturn-decisions-by-domain-name-dispute-resolution-panels-says-expert/
https://www.lexology.com/library/detail.aspx?g=b19a14df-9dc5-494e-bb6e-6351f7e0e35b
https://www.lexology.com/library/detail.aspx?g=4f1b77cc-8474-4e9f-b02d-f6547ef7490f
http://www.bailii.org/ew/cases/EWHC/Ch/2015/3509.html

"31. My conclusions on the application to strike out the Claim are:

1) adopting the reasoning of Ms Proudman in Patel drives me to hold
that on a proper construction of the UDRP clause 4k does not give rise
to a separate cause of action in favour of the claimant;

2) nor does it afford any jurisdiction to this Court to act as an
appeal or review body from the Decision;"

While the Yoyo.email court complainant is not a sympathetic party to
some, the above decision attacks the very foundation of the URS (and
UDRP). This should be a high priority for remedial policymaking, as it
was an unintended consequence that is now having real-world effects.

While the above is in the context of a court challenge to a UDRP
decision against a domain name registrant, the exact same analysis
applies to the URS. Thus, now is the appropriate time to tackle the
issue (and kill two birds with one stone).

This jurisprudence appears limited to the UK, and perhaps Australia
where apparently a few other cases may have encountered the same
problem (as has been discussed in the IGOs PDP where I and a few other
members of this RPM PDP first discussed the issue).

The cause of the problem is easy to identify.

If there was no URS (or UDRP) policy in place what would be the "law"
and the procedural path to justice? Clearly, a trademark holder would
have a "cause of action" under trademark law against a domain name
registrant. The TM holder would file a lawsuit (as plaintiff) against
the domain name registrant (as defendant).

With the URS (or UDRP), the procedural path to justice is altered in
the event a TM holder uses it and is successful under the ADR. To
challenge the outcome of the ADR, the domain name registrant now has
the role of the plaintiff in court, and the TM holder is the
defendant. The parties have switched their prior positions as
plaintiffs and defendants, and it turns out that might cause a
significant problem in some jurisdictions. i.e. it might make a
difference which party to the dispute files in court as plaintiff in
some jurisdictions.

That UK court is saying that ICANN can't simply conjure a "cause of
action" out of thin air. If the domain name registrant brings a case
in that UK court, that court is saying "you have no cause of action,
ICANN can't create one for you, bye bye, case dismissed."

Now, under the ACPA in the USA, there is a clear cause of action for
domain name registrants that they can follow, so it's not a problem.
And other courts in other jurisdictions have heard cases similarly
brought by a domain name registrant challenging ADR procedures devised
by ICANN.

If we look at the language of URS itself:

http://newgtlds.icann.org/en/applicants/urs/procedure-01mar13-en.pdf

"13. Other Available Remedies
The URS Determination shall not preclude any other remedies available
to the appellant, such as UDRP (if appellant is the Complainant), or
other remedies as may be available in a court of competent
jurisdiction. A URS Determination for or against a party shall not
prejudice the party in UDRP or any other proceedings."

It's clear that in some jurisdictions, there appears to be that exact
"prejudice" to the domain name registrant, who now becomes a
"plaintiff with no cause of action". Without the procedure, they would
have been a "defendant with available defenses to the cause of action
brought by the trademark holder." The ADR procedure itself, by
switching who becomes plaintiff and who becomes defendant in a
lawsuit, is interfering with the rights those parties had before the
policies were adopted by ICANN.

What could be done to restore the proper balance?

(1) the URS (and/or UDRP) could be eliminated entirely (or made
optional for the domain name owner),

or

(2) in the event a court refuses to hear a case brought by the domain
name owner challenging a URS (or UDRP) ruling, then the URS (or UDRP)
decision needs to be set aside, and the TM owner can instead file a TM
dispute themselves directly in real court if they want to take the
dispute further.

Paul McGrady suggested a third option on Wednesday, namely:

(3) allowing all domain registrants to file actions in US courts

which, I think would be problematic for obvious reasons (but I do
applaud him for participating in the active discussions, thinking on
his feet and helping to brainstorm during a live call). [Why should a
Chinese registrant in a dispute with a Pakistani TM holder for a
domain at an Irish TLD / registry operator and a German registrar be
compelled to have the dispute heard in the USA?] We have to make
policies that are robust to global law and international
jurisdictions.

I look forward to a productive discussion on this important topic.

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/