[gnso-rpm-wg] Supplemental information on URS proposal #6

Fri Oct 5 22:42:02 UTC 2018

Fellow RPM colleagues,

I have provided some supplemental information below on URS Proposal #6, in
response to the feedback provided by working group members on our Monday,
September 17th teleconference meeting.

For ease of reference, proposal #6  is available in PDF at:
https://community.icann.org/download/attachments/93126760/URS-Proposal-6.pdf?api=v2

I hope this is helpful in clarifying the nature and purpose of the
proposal; if there are any additional questions, please let me know at your
convenience.

Thanks and have a great weekend!

Best regards,
Claudio

----

*Description of Proposal*

"The recommendation is to permit multiple unrelated complainants to bring a
single complaint jointly against a single domain name registrant (or
related registrants) who has registered multiple domain names, by deleting
the following procedural element within Section 1.1.3 of the URS
Procedure:  "One Complaint is acceptable for multiple related companies
against one Registrant, but only if the companies complaining are related"

*Supplemental Information*

The basis of the proposal is to harmonize the UDRP and URS mechanisms on
this element of the complaint.

The intended benefits are to: 1) create efficiencies; 2) enhance the
utility of the URS by allowing consolidation under appropriate
circumstances; and 3) reduce the cost burdens on all parties, in a manner
that promotes fairness.

   - On the respondent-side, registrants can avoid the need to respond to
   multiple complaints, which may be brought independently over an extended
   period of time. By allowing multiple complainants to bring a single
   complaint jointly, the respondent can raise their arguments and defenses in
   one consolidated action against multiple unrelated complainants, and have
   the case disposed in one action.

   - On the complaint-side, multiple complainants can bring a single
   complaint jointly against one registrant who has registered multiple domain
   names under a common occurrence or scheme.

To be clear, there is no specific component of the proposal that is
designed to allow unrelated complainants to join their complaints against
one registrant who has registered multiple domain names "randomly" or
without an underlying pattern to the registrations. *Rather, the proposal
is designed to address the circumstance when* *a domain registrant
registers multiple domain names targeting unrelated complainants under a
common occurrence or scheme, as per existing UDRP jurisprudence*.

For example, the proposal would apply to the scenario when a cybersquatting
registrant targets multiple brands by registering hundreds of domain names
in a single occurrence. The companies targeted by the registration abuse
may bear no formal legal relationship with each other, but may be part of
the same industry, market sector, or provide similar goods and services in
the marketplace. Under the current URS rules, these companies are not
permitted to bring a single complaint jointly against the single domain
name registrant, but must each bring separate, independent complaints,
because they are considered unrelated entities. *This outcome is not an
efficient use of resources for anyone, including Providers, and is
unjustified as a matter of policy.*

*Existing UDRP Rules*:

see "3(c), The Complaint" which states the following: "The complaint may
relate to more than one domain name, provided that the domain names are
registered by the same domain-name holder."

see "10(e), General Powers of Panel, which states: "A Panel shall decide a
request by a Party to consolidate multiple domain name disputes in
accordance with the Policy and these Rules."

*Link to UDRP case law:*

http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2013-0685

*London Court of International Arbitration (LCIA), International Chamber of
Commerce (ICC), Singapore International Arbitration Centre (SIAC),
Arbitration Institute of the Stockholm Chamber of Commerce (SCC), American
Arbitration Association/International Center for Dispute Resolution
(AAA/ICDR) v. ICSID Lawyers*, LLC, D2013-0685 (WIPO, June 21, 2013)

Here is the relevant text from the *London Court of Arbitration* decision,
which cites *Fulham Football Club (1987) Limited v. Domains by Proxy, Inc./
Official Tickets Ltd*, WIPO Case No. D2009-0331 as the basis of the holding.

*6. Discussion and Findings *

A. Multiple Complainants

The Complaint is brought by 5 separate Complainants, each of which is a
separate arbitral institution. In Fulham Football Club (1987) Limited v.
Domains by Proxy, Inc./ Official Tickets Ltd, WIPO Case No. D2009-0331, the
Panel outlined the circumstances in which it might be appropriate to permit
a consolidated complaint involving multiple complainants and multiple
domain names against a single domain name registrant to proceed.

The relevant extract of that decision is below: “General Principles
Applicable to Consolidation Under the UDRP In the National Dial A Word case
(see supra), the panel held that the consolidation of multiple complaints
in a single complaint should be permitted if the complainants: (i) have a
common grievance against the respondent; and (ii) it would be equitable and
procedurally efficient to permit the consolidation of complaints. With
regard to the first limb of the test, to establish a common grievance
against the respondent the panel in the National Dial A Word case held that
multiple complainants must; (i) have a common legal interest in the trade
mark rights on which the complaint is based; or (ii) be the target of
common conduct by the respondent which has clearly affected their
individual legal interests in a similar fashion. Instances where multiple
complainants may establish a common legal interest would include where: (i)
the multiple complainants have a shared interest in a trade mark, such as
may exist between a licensor and a licensee; or (ii) the multiple
complainants form part of a single entity such as where individual
companies are part of a larger corporate group or joint venture; or (iii)
the multiple complainants are members of an established association or
league (such as a sporting association) in which individual members have
rights authorized to be enforced by the association, both the association
and the members should have standing to appear as multiple complainants in
a consolidated complaint against a single respondent.

If multiple complainants cannot establish a common legal interest
sufficient to justify their consolidation in a single complaint, to satisfy
the “common grievance” limb of the test the complainants must establish
that the respondent has engaged in common conduct that has affected their
individual rights in a similar fashion. Such common conduct may be found to
exist: (i) where the rights relied on and the disputed domain names in
question involve readily identifiable commonalities; or (ii) where there is
a clear pattern of registration and use of all the disputed domain names in
question. If the multiple complainants establish that a common grievance
exists against the respondent then the panelist considered that the second
limb of the test should be addressed: would it be equitable and
procedurally efficient to permit consolidation of the complainants?”

The Panel, in considering whether the present proceeding should be allowed,
adopts the test outlined above. In the present proceeding the Complainants
do not appear to have a common legal interest that has been affected by the
Respondent's conduct, as they do not share trade mark rights. Each of the
Complainants own and is seeking to protect its trade mark rights
separately, not jointly with each other. However the Complainants have
established that the Respondent has engaged in common conduct which has
affected their legal rights in a similar fashion. Indications of such
common conduct on the part of the Respondent include: (i) the fact that the
Domain Names, with the exception of <stockholmarbitration.com> each
consists of the name or acronym of a Complainant, usually with the word
“arbitration” or “arbitrations” appended on the end; (ii) 14 of the 17
Domain Names were registered on the same date and all of them were
registered with the same Registrar; and (iii) Each of the Domain Names
currently or previously resolved to the Respondent’s Website, which points
to a clear pattern of use of all the Domain Names for the same purpose.

In the Panel's view it is equitable and procedurally efficient to permit
consolidation of the Complainants' complaints because: (i) although each of
the Complainants operates under its own trade mark and each of the Domain
Names incorporates elements of each of the Complainants' differing trade
marks, in effect the Respondent is using the Complainants' trade marks for
the same purposes. Therefore, the commencement of separate proceedings by
each of the Complainants in relation to an otherwise common complaint would
be inefficient and unnecessary under the Policy; (ii) the Complainants'
substantive arguments made under each of the three elements of the Policy
are common to the Domain Names; (iii) all the Complainants are represented
by a single authorized representative for the purposes of the proceedings;
and (iv) the Complainants have clearly stipulated each Domain Name, the
individual Complainant making a claim thereto, the rights relied upon by
that Complainant, and the registrar with whom the Domain Name is
registered.

Any transfer, if found to be justified and ordered by the Panel, will be to
the individual Complainant holding the corresponding trade mark.
Accordingly the Panel determines that the Complainants should, for the
reasons discussed above, be permitted to have their complaints consolidated
into a single Complaint for the purpose of the present proceedings under
the Policy. Overall this is clearly a case fitting within the “common
conduct” category in which it would be equitable and fair to permit
consolidation.

On Fri, Oct 5, 2018 at 5:25 PM claudio di gangi <ipcdigangi at gmail.com>
wrote:

> Dear RPM colleagues,
>
> This note is to provide the supplemental information that I promised to
> provide in response to the feedback on my URS proposal, available at:
> https://community.icann.org/download/attachments/93126760/URS-Proposal-6.pdf?api=v2
>
> The proposal states the following:
>
> "The recommendation is to permit multiple unrelated complainants to bring
> a single complaint jointly against a single domain name registrant (or
> related registrants) who has registered multiple domain names, by deleting
> the following procedural element within Section 1.1.3 of the URS
> Procedure:  "One Complaint is acceptable for multiple related companies
> against one Registrant, but only if the companies complaining are related"
>
> ----
>
> The basis of this proposal is to harmonize the UDRP and URS on this
> element of the complaint, which will create significant efficiencies and
> enhance the utility of the mechanism by consolidating the process in a
> manner that promotes fairness, e.g. respondents can avoid the need to
> respond to multiple independent complaints, but can raise their arguments
> and defenses in one consolidated action against multiple unrelated
> complainants. On the complaint-side, the ability for unrelated complainants
> to join their claims into one complaint against one registrant who has
> multiple domain names under a common occurrence or scheme.
>
> To be clear, there is no component of the proposal that permits
> complainants to join their complaints against one registrant who has
> registered multiple domain names "randomly" or without an underlying
> connection or pattern. Rather, the proposal is designed to address the
> scenario when a single registrant registers multiple domain names under a
> common occurrence or scheme.
>
> There are examples when a cybersquatting registrant targets brands for
> fraudulent purposes, by registering hundreds of domain names in a single
> occurrence. The companies targeted by the registration abuse will bear no
> formal legal relationship with each other, but rather are part of the same
> industry, market sector, or provide similar goods and services in the
> marketplace. Under the current URS, these trademark owners are unable to
> bring a single complaint jointly against the single domain name registrant,
> but must each bring separate, independent complaints. As a result, this
> increases the resources required to administer the disputes since the cases
> can not be consolidated.
>
>
>
>
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