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

Sun Nov 19 23:59:50 UTC 2017

George,

Thanks for bringing this case to our attention. I haven't had the benefit
of reading it yet, but based on your description I have a few preliminary
thoughts:

1) is the decision in the case you cite appealable to a higher court? If
yes, the issue may not be 'settled law' until that potential appeal is
raised by the moving party and considered by a 'higher' court within the
jurisdiction.

2) whether a court has jurisdiction over a particular case is a legal issue
that can be changed potentially by passing a new statutory law (or
sometimes even by amending the constitution). For example, this happened in
the United States with the anti-cybersquatting legislation you mentioned.
If this jurisprudence is limited to the UK and Australia, then it's
possible the laws in these countries can be updated to bring them more in
line with international norms.

One other thought: if the solution you mention in #2 below were to be
adopted, then cybersquatters could simply register their domains with false
Whois information corresponding to that country, and the ADR procedures
would no longer be applicable. This would be an exception that swallows the
rule.

I recall this type of gaming has happened on a similar topic: a company
based in India was offering 'services' to registrants because the appeals
process takes a long time in India, so a trademark owner would have to wait
years before they could get the domain transferred, see:

https://www.inta.org/INTABulletin/Pages/UDRPHijackingAvoidinganInvoluntaryPassagetoIndia.aspx

I am qualifying my statements because I have not read the case you
identified, but hope you find this feedback helpful.

Best,
Claudio

On Sun, Nov 19, 2017 at 5:51 PM George Kirikos <icann at leap.com> wrote:

> 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/
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> gnso-rpm-wg at icann.org
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>
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