Response of Philip S. Corwin to the IGO CRP WG Consensus Call Request

Note: This response is based upon the document “CONSENSUS CALL ON FOUR POLICY RECOMMENDATIONS & SIX ADDITIONAL OPTIONS FOR A POSSIBLE RECOMMENDATION FIVE; Prepared by ICANN staff (25 May 2018)”

IGO CRP WG RECOMMENDATIONS FOR WHICH TEXT HAS BEEN AGREED OR DISCUSSED

#1 – I support Recommendation #1. The WG determined that International Non-Governmental Organizations (INGOs) stood in the same position as other private parties bringing a UDRP or URS, and had no valid claim to judicial immunity that required additional policy consideration or any potential change in CRP rules.  The WG requested a Charter change eliminating INGOs from our purview and the GNSO Council granted that request, effectively closing this matter.

#2 – I support Recommendation #2 in the form in which it has been modified from the version contained in the WG’s Initial Report,  this modification having been undertaken in response to feedback from several public commenters. Consideration of an IGO’s compliance with the requisite communication and notification procedure in accordance with Article 6ter of the Paris Convention for the Protection of Industrial Property as potentially determinative evidence of the IGO having the requisite standing to file a complaint under the UDRP or URS should be permitted, subject to discretionary review by the CRP Examiner; such 6ter filing should not provide automatic standing as was originally proposed in the Initial Report.  This revised approach is consistent with Section 1.3 of the “WIPO Jurisprudential Overview 3.0”, which allows a Complainant to submit specific evidence supporting assertions of acquired distinctiveness to establish unregistered or common law trademark rights. And, as that Section instructs, “Even where a panel finds that a complainant has UDRP standing based on unregistered or common law trademark rights, the strength of the complainant’s mark may be considered relevant in evaluating the second and third elements.”

#3 – I support recommendation #3. ICANN’s creation and issuance of Policy Guidance outlining the various procedural filing options available to IGOs, bringing this Policy Guidance to the attention of IGOs and the Governmental Advisory Committee (GAC), and publishing it along with the procedures and rules applicable to the UDRP and URS in aggregated form on the ICANN website, will provide useful guidance to IGOs considering the initiation of a CRP filing in response to perceived cybersquatting.

#4 – I support the current proposed language of Recommendation #4, stating that:

…the Working Group recognizes that the feasibility of providing IGOs with access to the UDRP and URS at no or nominal cost to the IGOs is one that must be addressed directly through discussions between the ICANN Board with the GAC and IGOs; while further noting that many Working Group members believe that a respondent should also be eligible to receive financial support for its defense in a case where ICANN has subsidized the complainant.

This revised language clearly indicates that the WG is not recommending ICANN subsidization of CRP filings brought by IGOs, but is merely recognizing that is has no authority to commit ICANN funds.

VIEWS ON SIX POLICY OPTIONS FOR A POSSIBLE RECOMMENDATION FIVE

The four prior recommendations constitute mere window dressing around the edges of the IGO CRP issue, and do not directly address the central question which underpinned the creation of this WG and which has generated so much discussion and controversy over the nearly four years of its existence.

That question can be introduced and summarized as follows:

The UDRP and URS both provide a losing domain registrant/respondent with a right to file a judicial appeal where the registrant has ties to a jurisdiction providing a relevant right of action. Both CRPs do that by permitting appeal to a court of mutual jurisdiction; that being a court jurisdiction at the location of either (a) the principal office of the Registrar or (b) the domain-name holder's address as shown for the registration of the domain name in the Registrar's WHOIS database at the time the complaint is submitted to the Provider.

Both CRPs also provide either party to a dispute with the right to file a judicial action prior to the initiation of or during the pendency of the CRP, with the examiner free to suspend or terminate the proceeding, or to continue on to determination (however, if the proceeding continues on to determination, any subsequent court decision is controlling as regards disposition of the domain). The URS also provides for an internal administrative appeal process that is not relevant to the overarching question before the WG.

Domain registrants who are either located within a jurisdiction that allows for litigation of a domain-related trademark dispute to be initiated by the registrant, or that have obtained a favorable “mutual jurisdiction” through deliberate selection of a registrar principally located in such a jurisdiction, value that legal right and do not want ICANN to require that they surrender it in deference to any party as a condition for domain registration.

However, IGOs claim broad jurisdictional immunity from litigation, and both relevant law and judicial decisions provide support for that position, although the ultimate answer as to whether an IGO enjoys such immunity in regard to a particular dispute can only be determined by the national court in which an immunity defense is raised. The issue of whether an IGO has waived its jurisdictional immunity as a consequence of filing a CRP action is also one that can only be answered by a national court when and if such an immunity defense is asserted; the “Swaine memo” described the analytical approaches that would be employed by a court in this situation and noted that different approaches, in combination to differing national law and judicial precedents, could result in different decisions in similar cases. Whatever the ultimate merits of an IGO’s claim to judicial immunity, IGOs do not want ICANN to require that they surrender any claim to judicial immunity as a condition for filing a CRP action. In the view of IGOs, their legal rights – and the WG has discerned no available rights other than those conferred under the  “trademark or service mark” standard of the UDRP and URS as being the proper basis – should be sufficient to establish standing without further condition.

There is no indication that the potential legal clash between domain registrants and IGOs (or entities possessing sovereign immunity generally) was ever considered when the mutual jurisdiction clause of the UDRP was adopted. How, then, are the clashing legal rights of domain registrants and IGOs to be balanced? And, in particular, what should occur when a losing respondent files a judicial appeal from a UDRP or URS decision, and the IGO targeted by the resulting lawsuit successfully asserts its defensive claim of judicial immunity and the litigation is dismissed by the court?

This question is likely to arise very infrequently, as the percentage of UDRP cases that are judicially appealed is quite small, as is the number of CRP actions initiated by IGOs. But unless this question can be answered in a manner that has a reasonable chance of being adopted as policy by the GNSO Council, and subsequently by the ICANN Board – after the Board considers any relevant GAC advice – this WG will have failed in its primary responsibility. While a WG’s final recommendations should not be determined solely by internal ICANN political considerations, a WG’s members must also recognize that its output must be reasonably attuned to receiving a harmonious reception from the broader ICANN community as the policymaking process moves beyond its initial PDP stage.

Given this introductory background, I shall now provide my views on the six options before the WG.

#1 – I strongly oppose Option 1, which would vitiate the decision rendered against the registrant in the predecessor UDRP or URS if the IGO succeeded in its assertion of judicial immunity in a subsequent appeal, for the following reasons:

• ICANN is a California non-profit corporation. It has no right or authority to override, or make any determination regarding the validity or scope of, the legal rights of either party to a CRP whether the law in question is that of California, the United States, or any other nation. I have been unable to support the GAC consensus advice on this matter because it requested that ICANN preemptively deny domain registrants their right, where available, to appeal a UDRP or URS decision to a court of competent and mutual jurisdiction. Similarly, ICANN has no authority to determine whether an IGO’s filing of a CRP constituted a complete waiver of the procedural and substantive components of its judicial immunity, as that question of waiver can only be determined by a national court based upon its own approach to analyzing issues of sovereign immunity, relevant statutes and case law, and the facts of the dispute. Finally, ICANN has no authority to compel jurisdiction over an IGO in any national court  that  has determined that a party appearing before it is possesses lawful immunity and is not subject to its authority.
• This option would single out IGOs – and only IGOs among all possible classes of CRP Complainants -- for punitive treatment for successfully raising a judicial defense in a court appeal from a URDP or URS decision. A trademark dispute is a civil case, and it is common in such cases for the defendant to seek summary dismissal or otherwise assert available defenses for the purpose of terminating the action. UDRP Rule 4k makes clear that an adverse administrative decision will be implemented against the domain registrant if the panel receives satisfactory evidence that the lawsuit has been dismissed or withdrawn, regardless of the reason for dismissal. Proponents of Option 1 appear to feel that an assertion of judicial immunity is a violation of the “mutual jurisdiction” provision, but that is an incorrect reading; an IGO’s refusal to participate in a subsequent judicial appeal would be such a violation (and would likely result in a default judicial judgment for the domain registrant/plaintiff), but in the contemplated situation an IGO would have procedurally recognized and acquiesced to the court’s jurisdiction through its appearance before it, while retaining its right to assert relevant substantive defenses.  
• This option fails to satisfy the charge contained in the WG Charter that we “provide the GNSO Council with policy recommendations regarding whether to amend the UDRP and URS to allow access to and use of these mechanisms by IGOs and INGOs”, as it would further discourage use of available CRPs by IGOs by making clear that such utilization requires an advance capitulation on any substantive claim of jurisdictional immunity raised in a subsequent court appeal. While the WG has determined that a handful of IGOs have utilized CRP, that does not necessarily negate the assertions of IGO representatives that the potential loss of judicial immunity deters many IGOs from utilizing existing CRP avenues. Indeed, ICANN has frozen the registration of all domains matching IGO acronyms at all new gTLDs pending resolution of this issue in a belief that present CRP policy would leave IGOs more vulnerable to cybersquatting.
• The notion of vitiating a previously issued decision in a CRP based upon a successful assertion of rights by a party in a subsequent judicial proceeding (as opposed to a final court decision) is of questionable legality.
• This option, regardless of support level or subsequent action by the GNSO Council, is highly unlikely to ever be adopted by the ICANN Board given the near-certainty of strong adverse advice from the GAC. That opposition would stem not just from the distance between it and prior GAC advice (which, as noted, I do not support), but from two other significant factors. First, it would create a precedent that any successful assertion of sovereign immunity vitiates a prior adverse CRP decision, and that precedent would logically be applicable not just to IGOs but to any unit of a national government that files a CRP action. Second, it would encourage bad actor domain registrants that had lost a CRP decision to file a judicial appeal against an IGO known to guard its sovereign immunity, as that would present the IGO with a difficult choice between abandoning assertion of its legal status or, if succeeding in such assertion, seeing the cybersquatting determined to exist at the domain in question continue unabated without any adequate remedy to protect its own interests or those of the public.

#2 – I strongly oppose Option 2 as it features all the defects of Option 1 while also adopting a two-tier system of CRP administration with attendant administrative complexities. Domain registrants have no credible basis for believing that if a relevant ICANN Consensus Policy is amended through the PDP approach it would only apply to domains created after its effective date, with all other registrants being “grandfathered” under the terms of the Policy in effect at the time of initial registration. When the rules change they change for everybody.

#3 – I strongly support Option 3 for the following reasons:

• It acknowledges that ICANN has no right or authority to restrict or extinguish the legal rights and protections of domain registrants or IGOs.
• It properly leaves determination of the merits of an IGO’s claim of judicial immunity to the court of competent and mutual jurisdiction in which it is raised.
• It provides the domain registrant with an ability to receive a determination of the legality of its domain use under relevant national law through an arbitration procedure in the wake of an IGO’s successful assertion of judicial immunity. This is a substantial improvement over current UDRP practice, where the prior UDRP decision would take effect upon dismissal of the litigation. If fulfills ICANN’s commitment to provide a domain registrant with a second opinion under law of a mutual jurisdiction via arbitration when the relevant national court determines that it has no authority  over one of the parties to the suit and therefore cannot hear the matter. (For the record, I would not support such an arbitration right where the court has authority over both parties and has dismissed the suit based on other substantive or procedural grounds.)
• As the only Option that restricts ICANN to its proper remit by restraining it from interference with any party’s legal rights and protections, that recognizes and attempts to balance the respective rights of domain registrants and IGOs, and that introduces the concept of arbitration (which is contained in the GAC advice on this subject), it is the sole Option that has any realistic chance of being adopted by both GNSO Council and the ICANN Board.  While it is imperfect, as are most policy options addressing conflicts of legal rights, it is reasonable and balanced.

#4 – I oppose Option 4 as an abdication of responsibility that attempts to kick this matter down the road and saddle an already heavily burdened WG with a potential “poison pill” issue. The general issue of a judicial immunity based upon a sovereign immunity claim, and its specific application to IGOs, while important, has no broader implications for UDRP/URS appeals practice and can and should be resolved now, by this WG, under a Charter that specifically empowers it to recommend policy changes. If a singularly focused WG cannot provide a viable answer to this question after nearly four years of work then it is insupportable to ask that it be taken up by a WG that already faces the daunting challenge of multiple difficult issues. Proponents of this Option have also failed to identify with any specificity what other aspects of the UDRP and URS might be implicated by a rifle shot policy recommendation.

I do appreciate that the language of this Option has been amended to recommend GNSO Council consultation with the leadership and members of the RPM Review WG as well as with IGOs, and would switch my position to strong opposition if it reverted to earlier language urging Council to impose this issue on the RPM review WG absent such consultation.

Finally, I would note two things. First, that the Charter of the RPM review WG already directs it to consider the issue of appeals, and the members of the WG are quite capable of determining whether it should address any special attention to the matter of sovereign immunity defenses in that context. And second, that some proponents of Option 4 also support Option 1, and that in my view it is entirely inconsistent to state that no policy changes should be recommended at this time while simultaneously recommending a highly significant policy change targeting IGOs that also implicates nation-states and their agencies.

#5 – I do not support this Option as the concept of “in rem” litigation is not recognized in all judicial systems. Further, as it does not relate to the central issue of IGO immunity it is a matter more properly and generally raised and discussed within the context of the RPM Review WG.

#6 – I oppose this Option for a number of reasons:

• Its imprecise language seems to confuse voluntary arbitration with mandatory binding arbitration.
• While voluntary mediation may be worthy of encouragement, it should not be required when the resulting delay may permit harmful cybersquatting to continue for additional weeks.
• Just as this WG has no authority to commit ICANN funds to subsidize the filing of CRP actions by IGOs, we have no authority to order CRP providers to provide mediation services at no cost to the parties.
• To the extent that it requires vitiation of a prior UDRP or URS decision, it suffers from the same fatal defects as Option 1.

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way
Reston, VA 20190

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571-342-7489/Cell

"Luck is the residue of design" -- Branch Rickey

From: Gnso-igo-ingo-crp [mailto:gnso-igo-ingo-crp-bounces@icann.org] On Behalf Of Steve Chan
Sent: Friday, May 25, 2018 6:16 PM
To: gnso-igo-ingo-crp@icann.org
Subject: [EXTERNAL] [Gnso-igo-ingo-crp] CONSENSUS CALL on the WG's Recommendations and Remaining Options
Importance: High

Dear WG Members,

Attached, please find the compilation of the Working Group’s recommendations and six (6) options related to Recommendation 5. This message is intended to kick of the consensus call process for the WG’s recommendations and remaining options under Recommendation 5. For those WG members who wish to participate in the consensus call, we ask that you respond on the email list to note your support or non-support for all recommendations (i.e., recommendations 1-4) AND the six (6) remaining options under recommendation 5. Please provide your response on or before Friday, 8 June.

Subsequently, the WG Chair will consider response to the consensus call and seek to designate final consensus levels on the recommendations and options, which will be published to the WG’s email list for WG consideration. WG members will then have the opportunity to object to the designations and the WG may choose to conduct another call on Thursday, 14 June to discuss; WG members will also have the opportunity to file minority statements if applicable, which will be incorporated into a Final Report for the Council by 17 June.

Note, based on the discussion on the WG’s call held on Friday, 25 May, a handful of changes were made to the attached recommendations/options document, highlighted in yellow (e.g., Recommendation 2, Recommendation 4, Option 4). In addition, footnotes were added, linking to the original rationale and suggestions made by Zak Muscovitch (Option 4), George Kirikos (Option 5) and Paul Tattersfield (Option 6). The same was not done for the first three options as those had been discussed extensively before the additional three options were added and are included unchanged from the text presented in the October 2017 poll.

If you have any questions, please let us know.

Best,

Steve & Mary

Steven Chan


Policy Director, GNSO Support

ICANN

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Los Angeles, CA 90094-2536


steve.chan@icann.org

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