George, Thanks for providing this background. Speaking for myself, and I believe many other domain registrants, the ability to have judicial review of any URS/UDRP decision is an important safeguard. Even unanimous 3-member panel UDRP transfer orders have been overturned in court, as with the austinpain.com dispute ( http://kellywarnerlaw.com/udrp-law-ruling-overturned/). The IGO/INGO WG just spent years wrestling with the issue of whether a variant of the UDRP could be devised specifically for IGOs that would indeed be the "final word". The strongly held view of many participants in that WG was that access to the courts for a final determination of any issues in dispute was a fundamental right, and could not be conceded. I support the effort to ensure that a respondent, wherever they may be in the world, has access to judicial review of a URS decision. Regards, Nat Cohen On Thu, Oct 11, 2018 at 12:02 AM George Kirikos <icann@leap.com> wrote:
Hi Claudio,
David Maher gave a history in the context of the UDRP, when discussing this various issue of access to the courts, see:
http://www.circleid.com/posts/20180103_the_udrp_and_judicial_review/
which goes back to the very early WIPO Recommendations:
""140. It is recommended that any dispute-resolution system, which is alternative to litigation and to which domain name applicants are required to submit, should not deny the parties to the dispute access to court litigation."
One can also look to section 4(k) of the UDRP policy, and sections 3(b)(xii) and 18 of the UDRP Rules to see that UDRP was never intended to be the final word.
https://www.icann.org/en/help/dndr/udrp/policy https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en
For the history of the URS, you can go back to the reports that preceded its adoption, such as the STI:
https://gnso.icann.org/sites/default/files/filefield_8000/sti-wt-recommendat...
Section 8.3 at the bottom of page 21 (and continuing to page 22), unanimous consensus, stated:
"A URS decision should 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 finding in URS for or against a party should not prejudice the party in UDRP."
or look to the text of the URS Policy (e.g. section 13) and section 3(b)(ix) of the URS Rules to see that the URS was never intended to be the final word.
http://newgtlds.icann.org/en/applicants/urs/procedure-01mar13-en.pdf http://newgtlds.icann.org/en/applicants/urs/rules-28jun13-en.pdf
I hope that answers your question sufficiently. Some of the people who were on the teams that developed the UDRP and URS are members of this PDP, so you can simply ask them (or consult the archived documents on ICANN's website that led to the policies).
If you're asserting that the UDRP/URS *were* intended to be the "final word", that's a very bold claim to make (unlike mine, which was non-controversial), and I think the onus is on you to back that claim. And, even if that claim could be backed (which I doubt), I think that would be a scary thought, and reinforce the need to properly review the policies to eliminate such errors in policymaking.
In other words, I've been trying to correct what I (and many others) feel are *unintended consequences* of poor drafting of the UDRP/URS. If you're asserting that those are the *intended outcomes* (i.e. inability to have one's day in court, to challenge the outcome of a UDRP/URS), that's a bold claim.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Wed, Oct 10, 2018 at 9:47 PM, claudio di gangi <ipcdigangi@gmail.com> wrote:
George,
I’m getting the sense that we are going to start talking past each other soon, if not already.
Since this concerns your proposal, my recommendation is that you supply reference materials, e.g. a link, a citation, quoted language, etc. to the following clause:
“That means the URS violating the principles upon which these policies were adopted, namely that they *wouldn't* be the final word, that both side would have recourse to the courts to challenge the outcome, if they disagreed with it.”
This language does not appear in the UDRP or URS policy, rules and/or implementation documents.
Once we have this language to review, we can examine and analyze the material to see if we can obtain a shared understanding of the relevant issues and facts to help steer the discussion in a positive manner.
Thank you.
Best regards, Claudio
On Wednesday, October 10, 2018, George Kirikos <icann@leap.com> wrote:
Hi Kristine,
On Wed, Oct 10, 2018 at 7:11 PM, Dorrain, Kristine <dorraink@amazon.com
wrote:
I am still trying to understand what specific language you could insert into the URS (or UDRP) that would obligate a UK national court to decide to take jurisdiction or accept a cause of action. Those are issues of sovereignty for individual countries. The URS has no authority over national courts. They alone decide what they will and won't hear.
Thanks for your post. In reviewing the call again this evening, the proposals seem to be misunderstood, I'm hopeful I can provider greater clarity in this email.
When you said " The URS has no authority over national courts. They alone decide what they will and won't hear." I agree! that's the proper identification of the underlying *problem*. i.e. in some jurisdictions, they won't permit a registrant (who loses a URS/UDRP and wants to challenge the outcome in court) to bring a case in the court. That means the URS outcome would be the "final word", violating the principles upon which these policies were adopted, namely that they *wouldn't* be the final word, that both side would have recourse to the courts to challenge the outcome, if they disagreed with it.
So, I agree with you 100%, we *cannot* tell the courts what to do. We cannot force them to permit a registrant to have a cause of action. But, what we can do is make the URS (and UDRP later) policy not get into that situation in the first place. We know the underlying problem is caused by the role reversal (i.e. the registrant, as things stands now, would be forced to become the complainant in court, if they want to challenge an adverse URS/UDRP; but the natural role of the registrant, had these procedures never existed, is to be the *defendant*, and have the TM holder be the plaintiff in court.
How do we accomplish this? Proposal #18 does this by allowing the losing registrant to simply file a "Notice of Objection" after losing and paying the fee (and accepting that if a court action happens and they don't do any better, they'll be on the hook for additional legal costs at the discretion of the courts) -- just like in that British Columbia Civil Resolution Tribunal system. So, under Proposal #18, the registrant is *not* the complainant in court anymore. It's the TM holder who would file a TM infringement case/cybersquatting claim in court. The registrant makes a defense to that cybersquatting claim, and the case proceeds in court de novo without the interference of the prior URS/UDRP outcome. This is what we **wanted** all along, the underlying dispute in the courts, with a fresh slate, and both sides in their "natural" roles (TM holder as complainant, registrant as defendant).
Proposal #19 also fixes the role reversal problem, albeit in a more circuitous and inelegant manner. In proposal #19, the losing registrant who wants to challenge the outcome of the URS/UDRP initially files a court case, like today. If there's a cause of action, it proceeds as normal, just like today. But, if this "lack of cause of action" issue is encountered (e.g in the UK), denying the registrant a de novo hearing of the dispute on the merits but instead dismissing the action on a "technicality", then that would trigger something "new", namely that the URS/UDRP outcome would be completely set aside (vitiated). i.e. it's saying that the right to access the courts is so important that we're going to fix the problem (lack of court access in this scenario) by undoing the URS/UDRP, and letting the parties go back to court with the TM holder as the plaintiff in court (assuming they still want to pursue the matter), and with the domain registrant as the defendant.
Proposal #20 doesn't address the problem in the same manner, but instead says "Registrant can file a court case in the USA, where we know a cause of action exists.
So, let me make it clear, since the proposals seem to be misunderstood --- I am not proposing any language at all to obligate any courts to decide to take jurisdiction of a case, or accept a cause of action. That's entirely up to them.
But, we do know that trademark holders will have a cause of action as plaintiff in the courts (for cybersquatting, TM infringement, etc.), and courts will always allow registrants to put up a defense!
Now, if someone wants to raise the issue of "Well, what if courts don't allow a Trademark holder to bring an action as plaintiff?" My response would be "Too bad for you!" The URS/UDRP wasn't designed to give TM holders *greater* rights or superior outcomes than those that exist in the courts. If it turns out that TM holders don't have a cause of action in a court for their dispute, then that's the PROPER OUTCOME.
If it turns out that registrants don't have a cause of action, because of this role reversal created by the URS/UDRP, then the solution is to eliminate that role reversal in the current policies themselves (which proposals #18 and #19 accomplish, albeit in different manners; #18 is more elegant, and matches how it's actually done by an existing tribunal in BC).
If you allow a losing respondent (who has lost a case because the use of the domain name was so transparently infringing to a jurist that they found against the respondent in their absence or despite their participation) to strip a complainant of their URS win in order to force them to court, it has the effect of nullifying the URS...why bother? I realize that you have a proposal in to remove the URS entirely, so perhaps this is just another way to achieve the same goal, but I'm merely trying to address practicality here.
Frankly, I'm shocked by the above statement. This is suggesting that the URS/UDRP outcome is always correct, and should never be appealed. But, we know that's not the case. We've seen reversals in the courts, the various cases brought up on this mailing list repeatedly (the ones that WIPO won't post to their website, for example!). Why bother to have courts of appeal? Why bother to have a Supreme Court? It's because lower courts can get it wrong! In the URS/UDRP especially, there's no cross examination, no discovery, nor all the other due process protections of a court. The URS/UDRP can and do get it wrong from time to time. Even judges make mistakes.
This isn't attempting to deprive the TM holder of anything. The expectation of all sides has been that the matter can go to the courts. If it requires, procedurally, that the only way to get to that proper state is to undo the URS/UDRP outcome, then that's how it has to be done. The domain name registrant wants the matter decided by a court. They have that right (unless the TM side wants to eliminate that right --- be transparent about that if that's the case; i.e. not fixing the problem achieves that outcome). If the domain name registrant can't have their day in court as plaintiff, then make them be the defendant instead, and force the TM holder to return to their natural role as Plaintiff. The domain name owner isn't trying to "pull a fast one" --- under Proposal #18, the domain name registrant would make a good faith payment to file that Notice of Objection, and also suffer cost consequences if they do no better in the courts. Under proposal #19, the domain name registrant *already* went to court, but the case got tossed on a technicality, and wasn't able to be heard on the merits.
So, I'm not trying to "remove the URS" via these two proposals (#18 and #19). I'm instead trying to ensure that the URS/UDRP are not the final word, and that there's real recourse (on the merits, de novo) to the courts. If either side *insists* that the courts be the final arbiter, then that is a *right*. They shouldn't lose that right to have the court be the final arbiter, just because the URS/UDRP weren't drafted properly, or made assumptions that are incorrect. Losing that right to court access means that ICANN has implicitly created NEW LAW, eliminating rights for registrants that they had prior to the adoption of the policies, namely the right to have their disputes decided in court.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
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