[gnso-rpm-wg] Food for Thought: DMCA procedure at YouTube contrast with URS/UDRP

Mon Jan 8 16:04:39 UTC 2018

Hi Claudio,

Thanks for your reply. Yes, the current implementation of the URS
appears to leave much to be desired.

I believe the intent was that the domain name would be suspended, and
then go through the normal expiration cycle (which meant deletion
after expiry). But, the actual implementation wasn't so clean.

I'm not sure that implementing immediate cancellation would make the
TM holder better off (i.e. keeping the domain name out of circulation
for a while, and not having to pay for the renewals themselves might
be perferable, compared with a quicker deletion). A delayed
cancellation process also is desirable for a good faith domain name
registrant, to allow ample time for appeal (within the URS) and/or
external review by the courts (outside the URS).

To show how "ugly" the current implementation is, consider this "bug"
(REGISTRARS pay attention!). In the "URS Technical Requirements"

https://newgtlds.icann.org/en/applicants/urs
https://newgtlds.icann.org/en/applicants/urs/tech-requirements-17oct13-en.pdf

one of the registrar requirements (page 5) is:

"Registrar Requirement 3: Registrar MUST offer the option for the URS
Complainant to extend a URS Suspended domain name's registration for
up to one additional year (if allowed by the maximum validity period
of the TLD) in cases where the URS Complainant prevailed. Registrar
MUST pay the renewal fee for such domain name to the Registry
Operator."

Imagine a scenario where a registrar has domains that were registered
for pennies. The registry later raises the renewal price to a very
high amount (as we've seen some registries do), say $5 million (just
for the sake of argument). Since the ***registrar*** MUST pay that
renewal fee, they could be on the hook for some enormous payments to
the registry!

If you want to imagine an even "crazier" scenario, suppose a registry
operator registers those domains *themselves* (or via a related party
or shell company), sets up some URS disputes against "themselves" (and
loses), raises the renewal fees, and then compels the registrar to pay
for that renewal! Rinse, and repeat.....

I think I've just discovered a new "innovative" business model for new
gTLD registry operators! ;-)

Sincerely,

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

On Mon, Jan 8, 2018 at 10:26 AM, claudio di gangi <ipcdigangi at gmail.com> wrote:
> George, all,
>
> Thanks for this note.
>
> Just for clarification on the last point, as I understand the current
> remedies available under the URS does not include cancellation of the
> domain.
>
> As a result, upon expiry the suspended domain can be renewed and used
> (including for abusive purposes) by the losing registrant of the URS
> decision.
>
> To address this issue we can consider adding cancellation as a remedy (or
> otherwise modifying the URS) to minimize the need for repeated, serial
> enforcement against previously suspended domains.
>
> Best regards,
> Claudio
>
> On Mon, Jan 8, 2018 at 8:09 AM, George Kirikos <icann at leap.com> wrote:
>>
>> Hi Paul,
>>
>> Thanks for your thoughts. I agree that they are different. Just
>> pointing out that there are other systems out there that don't have
>> that role reversal feature.
>>
>> Also, I believe some folks had mused about the possibility of a single
>> DRP that integrated the URS and UDRP. The issue of creation of a
>> "Notice of Dispute", that preceded the actual dispute, also has
>> arisen. If such a system also handled the high number of defaults
>> differently than today, then one result might be a much lower cost
>> procedure in the case of defaults (i.e. it could be very lightweight
>> like the YouTube procedure), and then reference to the courts for the
>> disputes when both sides show up and are heavily contesting the
>> matter.
>>
>> In terms of integration, one way to look at the URS is that it's very
>> similar to a UDRP where the Complainant (TM holder) asks only for
>> cancellation, albeit that the URS cancellation happens with a delay
>> (under the UDRP, the cancellation would happen almost immediately,
>> after allowing for the appeal to the courts)
>>
>> Sincerely,
>>
>> George Kirikos
>> 416-588-0269
>> http://www.leap.com/
>>
>> On Mon, Jan 8, 2018 at 6:30 AM, Paul Keating <Paul at law.es> wrote:
>> > George,
>> >
>> > I know that a response has already been posted but I wanted to add my
>> > quick thoughts.
>> >
>> > I agree that the DMCA and the UDRP/URS are not identical.  In fact the
>> > roles remain reversed throughout the UDRP/URS process.  The DMCA merely
>> > provides a notice, take-down followed by the opportunity to revive the
>> > posting.  Once reposting occurs the issue remains as it was before the
>> > notice - the copyright owner must proceed with litigation.  The UDRP/URS
>> > however, results in the domain being transferred/suspended or not.  In
>> > the
>> > case of transfer, it is the registrant that must file.  In the case the
>> > complaint is denied then the trademark owner has that burden (like the
>> > copyright owner in the DMCA example).
>> >
>> > PRK
>> >
>> > On 1/6/18, 12:23 AM, "gnso-rpm-wg on behalf of George Kirikos"
>> > <gnso-rpm-wg-bounces at icann.org on behalf of icann at leap.com> wrote:
>> >
>> >>Hi folks,
>> >>
>> >>There was an interesting article published today about a copyright
>> >>dispute involving "white noise" videos on YouTube:
>> >>
>>
>> >> >>https://gizmodo.com/man-s-youtube-video-of-white-noise-hit-with-five-copyr
>> >>i-1821804093
>> >>
>> >>which linked to the dispute procedure that YouTube follows:
>> >>
>> >>https://support.google.com/youtube/answer/2797454
>> >>
>> >>Going through the various links, it was very interesting that they
>> >>even have a "Copyright School", see:
>> >>
>> >>https://support.google.com/youtube/answer/2814000
>> >>
>> >>(expand the "How to resolve a copyright strike" to see the link to
>> >>it), which is quite interesting, given how often the education aspect
>> >>for registrants has come up in our PDP's work.
>> >>
>> >>Also of interest is the section on "Counter Notification Basics":
>> >>
>> >>https://support.google.com/youtube/answer/2807684
>> >>
>> >>where importantly it says:
>> >>
>> >>"After we process your counter notification by forwarding it to the
>> >>claimant, the claimant has 10 business days to provide us with
>> >>evidence that they have initiated a court action to keep the content
>> >>down."
>> >>
>> >>and it's the content creator who posts the relevant jurisdiction:
>> >>
>> >>https://support.google.com/youtube/answer/6005919
>> >>
>> >>""I consent to the jurisdiction of the Federal District Court for the
>> >>district in which my address is located, or if my address is outside
>> >>of the United States, the judicial district in which YouTube is
>> >>located, and will accept service of process from the claimant."
>> >>
>> >>As noted in prior threads, various issues arise under the URS (and
>> >>UDRP) when the natural role of plaintiffs vs. defendants (had the
>> >>URS/UDRP not existed) gets reversed (e.g. the Yoyo.email UK "cause of
>> >>action issue", as well as IGO and other groups' claimed "sovereign
>> >>immunity").
>> >>
>> >>With the dispute resolution procedure followed by YouTube, instead the
>> >>onus is on the copyright owner (the "claimant") to file the lawsuit,
>> >>in the same natural way that would exist had that dispute resolution
>> >>procedure not existed. Thus, none of the issues due to reversal of
>> >>plaintiff/defendant arise.
>> >>
>> >>I thought it would be of interest, especially as it also might also
>> >>give insights as to how "defaults" are handled.
>> >>
>> >>Food for thought.
>> >>
>> >>Sincerely,
>> >>
>> >>George Kirikos
>> >>416-588-0269
>> >>http://www.leap.com/
>> >>_______________________________________________
>> >>gnso-rpm-wg mailing list
>> >>gnso-rpm-wg at icann.org
>> >>https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>> >
>> >
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