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

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

---

gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

The fact that the URS is streamlined is precisely why there needs to be a robust review mechanism for errors (or even legitimate misunderstandings because of the extremely limited record). We all have our priors about what makes default likely (I believe that often it's because the URS claim is legitimate, but sometimes it's because the URS claim is scary or even just screened out as spam/some other incomprehensible message). What needs evidence, however, is a claim that many defaulters would take steps to initiate court proceedings if there were a provision making clear--as ICANN intended--that court proceedings are a backstop to the URS. I haven't seen that evidence, even though there are countries that do allow URS (and UDRP) losers to go to court. And I don't see any connection between cutting off URS review and allowing a court challenge; again, many countries do allow this and I've seen no evidence that there is gaming behavior in those countries, though perhaps Georges can provide some. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Nahitchevansky, Georges <ghn@kilpatricktownsend.com> Sent: Friday, October 12, 2018 11:22:49 AM To: Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Nat: Just a few comments. The case you refer to was not a fully litigated case, but was a settlement. As you likely know, people and companies often settle because they do not want the extensive cost of a US litigation , which can be in the hundreds of thousands of dollars (and even in the millions depending on the matter). So absent a litigated court decision, what you have are parties transacting a resolution – albeit in this case apparently favorable to the Respondent. It is not a decided case and has no precedential value. The court review proposal for the URS is actually something that is frought with issues. You have to begin that the URS is a streamlined/expedited procedure that is meant to address a very specific group of domain names being abused. The URS has a higher burden proof than the UDRP (clear and convincing versus preponderance of the evidence standard) and only results in suspension of the domain name for a short period as opposed to a full transfer of the domain name to the complainant, as is the case in the UDRP. That means there needs to be fairly compelling proof of abuse just to get a temporary suspension. Second the URS has already built in procedural measures that allow a Respondent to challenge a decision – namely, a defaulting Respondent has a time period after a decision is rendered to challenge the decision and there is an appeal mechanism in place. Third, the statistics prove that very few Respondents actually challenge the decisions rendered through the existing mechanisms. Now some argue with no evidence that the default rate is somehow based on a lack of notice, but quite frankly that is absurd. Domain name registrants at the very least have a provided a valid address to the registrars for their domain names (they have an obligation to do so). So they get an email that there is an action involving their domain name. There is no evidence that respondents are not receiving emails from providers. Moreover, perhaps the reason Respondents default in so many instances is the fact that their cases are indefensible and they know it. I would venture that a number of Respondents simply do not bother defending cases that they are likely going to lose. Simply look at the list of domains subject of the URS and it is fairly clear that the vast majority involve known brands either alone or with terms that relate to the businesses under the marks. Lastly, adding on a court review over a short term suspension (the relief currently in place) is likely to create a windfall to Respondents that will allow bad actors to easily defeat the entire URS process. I am not sure if you have ever litigated cases in countries around the world, but in some countries court proceedings can last for years (up to ten years in some instances). If a court proceeding can simply prevent the suspension, then I can see a situation where a Respondent falsely uses an address in a country where proceedings take forever and where they can be filed cheaply and essentially defeat the entire suspension period. So in all, if you want to pursue court proceedings post URS, then I think there needs to be procedural safeguards put in place for Complainants, such as (1) a shorter time frame for a Respondent to challenge a decision on a default, or the removal of such a procedure, (2) a shortened appeal period (20 to 30 days), (3) a transfer of the domain name post URS as opposed to a suspension and/or a lock preventing use of the domain name during proceedings, and (4) some form of bond being posted by a challenging respondent or complainant that wants to ultimately proceed in court. On the last point, the challenging party would need to file the appeal first and if the party lost the appeal it could then proceed to court, but would have to post a bond with the provider to cover costs if the appeal is deemed frivolous by a court. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> On Behalf Of Nat Cohen Sent: Thursday, October 11, 2018 10:28 AM To: George Kirikos <icann@leap.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) 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<https://urldefense.proofpoint.com/v2/url?u=http-3A__austinpain.com&d=DwMGaQ&...> dispute (http://kellywarnerlaw.com/udrp-law-ruling-overturned/<https://urldefense.proofpoint.com/v2/url?u=http-3A__kellywarnerlaw.com_udrp-2Dlaw-2Druling-2Doverturned_&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=W_Pdqp6xCcTbFl-yf9UnYNzdy2NMUbKRtUsLYsb_DDg&s=9ZMM_U-AL4F_p5KIXlWAsjtdqv9fNiDOZDj3xdrHivg&e=>). 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<mailto: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/<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.circleid.com_posts_20180103-5Fthe-5Fudrp-5Fand-5Fjudicial-5Freview_&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=W_Pdqp6xCcTbFl-yf9UnYNzdy2NMUbKRtUsLYsb_DDg&s=EVq1ts2B1k-7avaTP-uhRZUHXusXwxXoHtIY4wTqx8g&e=> 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://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_en_help_dndr_udrp_policy&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=W_Pdqp6xCcTbFl-yf9UnYNzdy2NMUbKRtUsLYsb_DDg&s=uKuIdss5k9MvarqJVkAa8oDptDTbsZ8rTQlLnHn9Jpk&e=> https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_resources_pages_udrp-2Drules-2D2015-2D03-2D11-2Den&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=W_Pdqp6xCcTbFl-yf9UnYNzdy2NMUbKRtUsLYsb_DDg&s=hZ8X2T8vlWDecCK21-FoZM3aTw_-Yc3yyKKWVHt8hu4&e=> 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-recommendations-11dec09-en.pdf<https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_sites_default_files_filefield-5F8000_sti-2Dwt-2Drecommendations-2D11dec09-2Den.pdf&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=W_Pdqp6xCcTbFl-yf9UnYNzdy2NMUbKRtUsLYsb_DDg&s=Z3iU2rmYWnRyw8RmFbCE9_BQWeeUjRKKkD7a-6f7ly8&e=> 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<https://urldefense.proofpoint.com/v2/url?u=http-3A__newgtlds.icann.org_en_applicants_urs_procedure-2D01mar13-2Den.pdf&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=W_Pdqp6xCcTbFl-yf9UnYNzdy2NMUbKRtUsLYsb_DDg&s=Nm_7KzrdDmIH5PWBH5QvM3GmyPwaaK2w7xUZNCurpSU&e=> http://newgtlds.icann.org/en/applicants/urs/rules-28jun13-en.pdf<https://urldefense.proofpoint.com/v2/url?u=http-3A__newgtlds.icann.org_en_applicants_urs_rules-2D28jun13-2Den.pdf&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=W_Pdqp6xCcTbFl-yf9UnYNzdy2NMUbKRtUsLYsb_DDg&s=TQA3lx1W9KqF6rFS7iR4vo2Xt6kCb-cRXWEI4Rp3Qqw&e=> 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/<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=W_Pdqp6xCcTbFl-yf9UnYNzdy2NMUbKRtUsLYsb_DDg&s=y3PDMq2GyJAJJqlvyGv9zd0AX9CcJ9wOBZAp4hIUJdQ&e=> On Wed, Oct 10, 2018 at 9:47 PM, claudio di gangi <ipcdigangi@gmail.com<mailto: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<mailto:icann@leap.com>> wrote:

...

Hi Kristine,

On Wed, Oct 10, 2018 at 7:11 PM, Dorrain, Kristine <dorraink@amazon.com<mailto: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/<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=W_Pdqp6xCcTbFl-yf9UnYNzdy2NMUbKRtUsLYsb_DDg&s=y3PDMq2GyJAJJqlvyGv9zd0AX9CcJ9wOBZAp4hIUJdQ&e=> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Drpm-2Dwg&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=W_Pdqp6xCcTbFl-yf9UnYNzdy2NMUbKRtUsLYsb_DDg&s=X03FSCaoprFnXUEOHOjqCTA0GUnkTOm5yL8HjX9bovY&e=>

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If you do that survey to provide evidence, it would be very helpful to have standards for what's "bogus." Any system has those who abuse it on both sides, but I do not accept assertions that settlements inherently reflect the weakness of the domain name registrant's case and the strength of the trademark owner's, or that UDRP/URS litigation is frivolous--it would be nice to have a standard for evidence that wasn't "heads I win, tails you lose." If you are proposing to remove the ability of any registrant to take the claim to national courts--which would seem to be the logical consequence of your argument, since it's odd to have national variation on what you claim is wasteful and abusive litigation potential--then you should propose that change and provide evidence. If not, the variation in ability to go to court seems arbitrary and unfair. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com> Sent: Friday, October 12, 2018 12:33:05 PM To: Tushnet, Rebecca; Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org Subject: RE: [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Gaming does occur and there have been a number of frivolous lawsuits filed by losing Respondents in UDRPs, for instance, for the sole purpose of trying to obtain a settlement and $$$. Complainants, as you well know, may end up settling rather than fight and spend a fortune, and suing Respondents may take lower amounts of $ to just to cover their costs. In other words, there are a bunch of unreported cases (and others can chime in) where a party files a lawsuit just to get some money back, knowing that the costs to the complainant of pursuing the lawsuit will be high. The point is that if you did a survey you would find dozens upon dozens of bogus cases filed in jurisdictions that are low cost. Some examples include filings in China and Korea post-UDRP (and often in districts with Judges unfamiliar with the Hague convention and normal due process issues). My point is that if you are going to treat the URS like the UDRP when the relief you get in a URS is simply a suspension and not a transfer, the you need to make a bunch of changes to the URS that will balance the equation and provide procedural safeguards (as I set forth in my email). Yes the URS is a streamlined procedure, but the burden of proof is much higher and there is a built in appeal procedure already. That procedure could be reviewed and provide for more robust submissions and a loser pay model. One other thing is that I do not believe the existing URS cases have revealed some overall penchant of bad decisions under the URS. Nevertheless I think that any further layer of court procedures for the URS requires some balance to protect the party subject to the appeal (or at least equalize the playing field post-URS decision). As to whether a URS claim is scary or filtered through a spam filter, I’m not sure we have any evidence showing that this is the case or to what extent this happens as opposed to folks simply not defending because they know they have no basis for registering the domain name in question. Moreover, at some point, the person who defaulted will know their domain name is suspended and has been the subject of a proceeding – and one would think that given the very generous time frames that exist on defaults and appeals that the whole thing would be less scary and/or that they would take action to salvage their domain. The fact that few do anything even with a year period being provided suggest that it is more likely than not that even after they have notice they simply chose not to fight it out – particularly when they know the claim against the domain name is legitimate. From: Tushnet, Rebecca <rtushnet@law.harvard.edu> Sent: Friday, October 12, 2018 12:06 PM To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com>; Nat Cohen <ncohen@telepathy.com>; George Kirikos <icann@leap.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) The fact that the URS is streamlined is precisely why there needs to be a robust review mechanism for errors (or even legitimate misunderstandings because of the extremely limited record). We all have our priors about what makes default likely (I believe that often it's because the URS claim is legitimate, but sometimes it's because the URS claim is scary or even just screened out as spam/some other incomprehensible message). What needs evidence, however, is a claim that many defaulters would take steps to initiate court proceedings if there were a provision making clear--as ICANN intended--that court proceedings are a backstop to the URS. I haven't seen that evidence, even though there are countries that do allow URS (and UDRP) losers to go to court. And I don't see any connection between cutting off URS review and allowing a court challenge; again, many countries do allow this and I've seen no evidence that there is gaming behavior in those countries, though perhaps Georges can provide some. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Sent: Friday, October 12, 2018 11:22:49 AM To: Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Nat: Just a few comments. The case you refer to was not a fully litigated case, but was a settlement. As you likely know, people and companies often settle because they do not want the extensive cost of a US litigation , which can be in the hundreds of thousands of dollars (and even in the millions depending on the matter). So absent a litigated court decision, what you have are parties transacting a resolution – albeit in this case apparently favorable to the Respondent. It is not a decided case and has no precedential value. The court review proposal for the URS is actually something that is frought with issues. You have to begin that the URS is a streamlined/expedited procedure that is meant to address a very specific group of domain names being abused. The URS has a higher burden proof than the UDRP (clear and convincing versus preponderance of the evidence standard) and only results in suspension of the domain name for a short period as opposed to a full transfer of the domain name to the complainant, as is the case in the UDRP. That means there needs to be fairly compelling proof of abuse just to get a temporary suspension. Second the URS has already built in procedural measures that allow a Respondent to challenge a decision – namely, a defaulting Respondent has a time period after a decision is rendered to challenge the decision and there is an appeal mechanism in place. Third, the statistics prove that very few Respondents actually challenge the decisions rendered through the existing mechanisms. Now some argue with no evidence that the default rate is somehow based on a lack of notice, but quite frankly that is absurd. Domain name registrants at the very least have a provided a valid address to the registrars for their domain names (they have an obligation to do so). So they get an email that there is an action involving their domain name. There is no evidence that respondents are not receiving emails from providers. Moreover, perhaps the reason Respondents default in so many instances is the fact that their cases are indefensible and they know it. I would venture that a number of Respondents simply do not bother defending cases that they are likely going to lose. Simply look at the list of domains subject of the URS and it is fairly clear that the vast majority involve known brands either alone or with terms that relate to the businesses under the marks. Lastly, adding on a court review over a short term suspension (the relief currently in place) is likely to create a windfall to Respondents that will allow bad actors to easily defeat the entire URS process. I am not sure if you have ever litigated cases in countries around the world, but in some countries court proceedings can last for years (up to ten years in some instances). If a court proceeding can simply prevent the suspension, then I can see a situation where a Respondent falsely uses an address in a country where proceedings take forever and where they can be filed cheaply and essentially defeat the entire suspension period. So in all, if you want to pursue court proceedings post URS, then I think there needs to be procedural safeguards put in place for Complainants, such as (1) a shorter time frame for a Respondent to challenge a decision on a default, or the removal of such a procedure, (2) a shortened appeal period (20 to 30 days), (3) a transfer of the domain name post URS as opposed to a suspension and/or a lock preventing use of the domain name during proceedings, and (4) some form of bond being posted by a challenging respondent or complainant that wants to ultimately proceed in court. On the last point, the challenging party would need to file the appeal first and if the party lost the appeal it could then proceed to court, but would have to post a bond with the provider to cover costs if the appeal is deemed frivolous by a court. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Nat Cohen Sent: Thursday, October 11, 2018 10:28 AM To: George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) 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<https://urldefense.proofpoint.com/v2/url?u=http-3A__austinpain.com&d=DwMGaQ&...> dispute (http://kellywarnerlaw.com/udrp-law-ruling-overturned/<https://urldefense.proofpoint.com/v2/url?u=http-3A__kellywarnerlaw.com_udrp-2Dlaw-2Druling-2Doverturned_&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=W_Pdqp6xCcTbFl-yf9UnYNzdy2NMUbKRtUsLYsb_DDg&s=9ZMM_U-AL4F_p5KIXlWAsjtdqv9fNiDOZDj3xdrHivg&e=>). 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<mailto: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/<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.circleid.com_posts_20180103-5Fthe-5Fudrp-5Fand-5Fjudicial-5Freview_&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=W_Pdqp6xCcTbFl-yf9UnYNzdy2NMUbKRtUsLYsb_DDg&s=EVq1ts2B1k-7avaTP-uhRZUHXusXwxXoHtIY4wTqx8g&e=> 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://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_en_help_dndr_udrp_policy&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=W_Pdqp6xCcTbFl-yf9UnYNzdy2NMUbKRtUsLYsb_DDg&s=uKuIdss5k9MvarqJVkAa8oDptDTbsZ8rTQlLnHn9Jpk&e=> https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.icann.org_resources_pages_udrp-2Drules-2D2015-2D03-2D11-2Den&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=W_Pdqp6xCcTbFl-yf9UnYNzdy2NMUbKRtUsLYsb_DDg&s=hZ8X2T8vlWDecCK21-FoZM3aTw_-Yc3yyKKWVHt8hu4&e=> 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-recommendations-11dec09-en.pdf<https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_sites_default_files_filefield-5F8000_sti-2Dwt-2Drecommendations-2D11dec09-2Den.pdf&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=W_Pdqp6xCcTbFl-yf9UnYNzdy2NMUbKRtUsLYsb_DDg&s=Z3iU2rmYWnRyw8RmFbCE9_BQWeeUjRKKkD7a-6f7ly8&e=> 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<https://urldefense.proofpoint.com/v2/url?u=http-3A__newgtlds.icann.org_en_applicants_urs_procedure-2D01mar13-2Den.pdf&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=W_Pdqp6xCcTbFl-yf9UnYNzdy2NMUbKRtUsLYsb_DDg&s=Nm_7KzrdDmIH5PWBH5QvM3GmyPwaaK2w7xUZNCurpSU&e=> http://newgtlds.icann.org/en/applicants/urs/rules-28jun13-en.pdf<https://urldefense.proofpoint.com/v2/url?u=http-3A__newgtlds.icann.org_en_applicants_urs_rules-2D28jun13-2Den.pdf&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=W_Pdqp6xCcTbFl-yf9UnYNzdy2NMUbKRtUsLYsb_DDg&s=TQA3lx1W9KqF6rFS7iR4vo2Xt6kCb-cRXWEI4Rp3Qqw&e=> 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/<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=W_Pdqp6xCcTbFl-yf9UnYNzdy2NMUbKRtUsLYsb_DDg&s=y3PDMq2GyJAJJqlvyGv9zd0AX9CcJ9wOBZAp4hIUJdQ&e=> On Wed, Oct 10, 2018 at 9:47 PM, claudio di gangi <ipcdigangi@gmail.com<mailto: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<mailto:icann@leap.com>> wrote:

...

Hi Kristine,

On Wed, Oct 10, 2018 at 7:11 PM, Dorrain, Kristine <dorraink@amazon.com<mailto: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/<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=W_Pdqp6xCcTbFl-yf9UnYNzdy2NMUbKRtUsLYsb_DDg&s=y3PDMq2GyJAJJqlvyGv9zd0AX9CcJ9wOBZAp4hIUJdQ&e=> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://urldefense.proofpoint.com/v2/url?u=https-3A__mm.icann.org_mailman_listinfo_gnso-2Drpm-2Dwg&d=DwMGaQ&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=W_Pdqp6xCcTbFl-yf9UnYNzdy2NMUbKRtUsLYsb_DDg&s=X03FSCaoprFnXUEOHOjqCTA0GUnkTOm5yL8HjX9bovY&e=>

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You're welcome to consult the extensively coded spreadsheet we produced; of the things you mentioned, phishing is mentioned in a small subset of cases but I refer you to that spreadsheet. The justification for the proposed clarification is one founded in procedural justice and original intent: the intent was not to make the URS the last resort if someone wanted a judicial determination; the procedural justice aspect is that it is wrong that one's access to courts varies depending on which court system one has access to. The evidence for those two things has been provided by George K. and I found both parts persuasive. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Scott Austin <SAustin@vlplawgroup.com> Sent: Friday, October 12, 2018 1:31:04 PM To: Tushnet, Rebecca; Nahitchevansky, Georges; Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Rebecca: Surely you're not inferring that only Georges and rightsholders need to provide evidence. Where is the evidence of cases supporting your suggestion of respondent defaults because the URS is scary or a URS notice was screened out as spam. More importantly, beyond gaming, has your research uncovered any domains suspended under URS that were owned by serial cybersquatters, criminals or intended to support sites for more malicious abuses such as human trafficking, spear phishing, identity theft schemes, etc. And where is the cost-benefit analysis to show that the errors in URS decisions to date have been so great to warrant nullifying the extraterritorial benefits of the URS and force small businesses to litigate all over the world. Scott Sent from my T-Mobile 4G LTE Device -------- Original message -------- From: "Tushnet, Rebecca" <rtushnet@law.harvard.edu> Date: 10/12/18 12:06 PM (GMT-05:00) To: "Nahitchevansky, Georges" <ghn@kilpatricktownsend.com>, Nat Cohen <ncohen@telepathy.com>, George Kirikos <icann@leap.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) The fact that the URS is streamlined is precisely why there needs to be a robust review mechanism for errors (or even legitimate misunderstandings because of the extremely limited record). We all have our priors about what makes default likely (I believe that often it's because the URS claim is legitimate, but sometimes it's because the URS claim is scary or even just screened out as spam/some other incomprehensible message). What needs evidence, however, is a claim that many defaulters would take steps to initiate court proceedings if there were a provision making clear--as ICANN intended--that court proceedings are a backstop to the URS. I haven't seen that evidence, even though there are countries that do allow URS (and UDRP) losers to go to court. And I don't see any connection between cutting off URS review and allowing a court challenge; again, many countries do allow this and I've seen no evidence that there is gaming behavior in those countries, though perhaps Georges can provide some. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Nahitchevansky, Georges <ghn@kilpatricktownsend.com> Sent: Friday, October 12, 2018 11:22:49 AM To: Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Nat: Just a few comments. The case you refer to was not a fully litigated case, but was a settlement. As you likely know, people and companies often settle because they do not want the extensive cost of a US litigation , which can be in the hundreds of thousands of dollars (and even in the millions depending on the matter). So absent a litigated court decision, what you have are parties transacting a resolution – albeit in this case apparently favorable to the Respondent. It is not a decided case and has no precedential value. The court review proposal for the URS is actually something that is frought with issues. You have to begin that the URS is a streamlined/expedited procedure that is meant to address a very specific group of domain names being abused. The URS has a higher burden proof than the UDRP (clear and convincing versus preponderance of the evidence standard) and only results in suspension of the domain name for a short period as opposed to a full transfer of the domain name to the complainant, as is the case in the UDRP. That means there needs to be fairly compelling proof of abuse just to get a temporary suspension. Second the URS has already built in procedural measures that allow a Respondent to challenge a decision – namely, a defaulting Respondent has a time period after a decision is rendered to challenge the decision and there is an appeal mechanism in place. Third, the statistics prove that very few Respondents actually challenge the decisions rendered through the existing mechanisms. Now some argue with no evidence that the default rate is somehow based on a lack of notice, but quite frankly that is absurd. Domain name registrants at the very least have a provided a valid address to the registrars for their domain names (they have an obligation to do so). So they get an email that there is an action involving their domain name. There is no evidence that respondents are not receiving emails from providers. Moreover, perhaps the reason Respondents default in so many instances is the fact that their cases are indefensible and they know it. I would venture that a number of Respondents simply do not bother defending cases that they are likely going to lose. Simply look at the list of domains subject of the URS and it is fairly clear that the vast majority involve known brands either alone or with terms that relate to the businesses under the marks. Lastly, adding on a court review over a short term suspension (the relief currently in place) is likely to create a windfall to Respondents that will allow bad actors to easily defeat the entire URS process. I am not sure if you have ever litigated cases in countries around the world, but in some countries court proceedings can last for years (up to ten years in some instances). If a court proceeding can simply prevent the suspension, then I can see a situation where a Respondent falsely uses an address in a country where proceedings take forever and where they can be filed cheaply and essentially defeat the entire suspension period. So in all, if you want to pursue court proceedings post URS, then I think there needs to be procedural safeguards put in place for Complainants, such as (1) a shorter time frame for a Respondent to challenge a decision on a default, or the removal of such a procedure, (2) a shortened appeal period (20 to 30 days), (3) a transfer of the domain name post URS as opposed to a suspension and/or a lock preventing use of the domain name during proceedings, and (4) some form of bond being posted by a challenging respondent or complainant that wants to ultimately proceed in court. On the last point, the challenging party would need to file the appeal first and if the party lost the appeal it could then proceed to court, but would have to post a bond with the provider to cover costs if the appeal is deemed frivolous by a court. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> On Behalf Of Nat Cohen Sent: Thursday, October 11, 2018 10:28 AM To: George Kirikos <icann@leap.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) 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<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com...> dispute (http://kellywarnerlaw.com/udrp-law-ruling-overturned/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fkellywarnerlaw.com-5Fudrp-2D2Dlaw-2D2Druling-2D2Doverturned-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253d9ZMM-5FU-2DAL4F-5Fp5KIXlWAsjtdqv9fNiDOZDj3xdrHivg-2526e-253d-26c-3DE-2C1-2C8b5Jobp3R08bXgqn7Cqvv-2DWo9-5FV3iR5bRRqOWbc-5FWcZg5QYMx8bFnK71mdaH8Kwf8w3yVcMZTCYkvdGaidse00-2DuJDqpcLkHXPHrd567b4GGhiCKi-2Dg-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=0HUWSALxzUinFWs6Yk1MUo6W_kUovrl0s3xd2rgjKk0&e=>). 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<mailto: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/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fwww.circleid.com-5Fposts-5F20180103-2D5Fthe-2D5Fudrp-2D5Fand-2D5Fjudicial-2D5Freview-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dEVq1ts2B1k-2D7avaTP-2DuhRZUHXusXwxXoHtIY4wTqx8g-2526e-253d-26c-3DE-2C1-2Crp4SjAK5DtwVFVGfxls9mS1vnjR-5FZx5tNOVoElCaE6-2DmKS7JOOODHTyVNJpbA-2Dk1wyAL3acQH09-5FwwGJd0p8i4-2DnhVC-5F4KWb-2DGQM3-2DhqMxG2eVCuuBA-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=OvSQmhnDhy760Nyu2q1TRIRplO6AUHnSQTa3xu2b3Hg&e=> 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://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fwww.icann.org-5Fen-5Fhelp-5Fdndr-5Fudrp-5Fpolicy-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253duKuIdss5k9MvarqJVkAa8oDptDTbsZ8rTQlLnHn9Jpk-2526e-253d-26c-3DE-2C1-2CY8hu78OqqgK-2D4PclB8NIH8qou6w0I7m6QMncfjDZ6tUESh6FHPJsKNrfIpsRqCbzuAUJgiIrAQLIld6hMNKYbAc-2DPJyhoKSlkJJi0YR3QAjCBAwElQI3aoI-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=Dtfmuy4hHhgGTZ_eGQDfIHQPYVOsj355vExGWr3sUVk&e=> https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fwww.icann.org-5Fresources-5Fpages-5Fudrp-2D2Drules-2D2D2015-2D2D03-2D2D11-2D2Den-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dhZ8X2T8vlWDecCK21-2DFoZM3aTw-5F-2DYc3yyKKWVHt8hu4-2526e-253d-26c-3DE-2C1-2CnUXo25-5FLhDf6UOBaTuaExE7KnXCEX2Fp2MNgTvXZQKipJ3kYQkA98Tts3B5Eg3Wv6R6xk3gWVPpt1I7jKE3eQILg5-2D2KhdVAGzq8Y56Nv26fuw-2DmORzLt2rL-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=xGBTqmMXvwzLOrikFM2snroZFrTyrv9UvgNlHrkzwWU&e=> 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-recommendations-11dec09-en.pdf<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fgnso.icann.org-5Fsites-5Fdefault-5Ffiles-5Ffilefield-2D5F8000-5Fsti-2D2Dwt-2D2Drecommendations-2D2D11dec09-2D2Den.pdf-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dZ3iU2rmYWnRyw8RmFbCE9-5FBQWeeUjRKKkD7a-2D6f7ly8-2526e-253d-26c-3DE-2C1-2CiKYOSGbpTc7AWo3YjDDqdT5qzAtTHjGe0hTB7TZQMaWWVr-5Fsq4XKy3H-2DEi4FgncjarpodErETjwpOymwGgqilNNjeh1Qlh2rw-5FKHKQYQ3WuNq7QYffcrCw-2C-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=vWto8KOBz0YDRPXyb6ax5XJXeoRbUc_DN86rS7gtuQA&e=> 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<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fnewgtlds.icann.org-5Fen-5Fapplicants-5Furs-5Fprocedure-2D2D01mar13-2D2Den.pdf-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dNm-5F7KzrdDmIH5PWBH5QvM3GmyPwaaK2w7xUZNCurpSU-2526e-253d-26c-3DE-2C1-2CzHVuDfSsOkb4wL5qP53LSU2ui6qNrmT8yejL63K-2Du-2DHovAWQh1n2Bzu7tCufu4Q8GW4UDPdH1eQSRkWBhV6MGh-2DgSFAf6w3Lxg4x1utv4Q-2C-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=mQth00wv-EH5t7CBgKlzB7bDnzJWvxx6MT_Fr-Vl9cQ&e=> http://newgtlds.icann.org/en/applicants/urs/rules-28jun13-en.pdf<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fnewgtlds.icann.org-5Fen-5Fapplicants-5Furs-5Frules-2D2D28jun13-2D2Den.pdf-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dTQA3lx1W9KqF6rFS7iR4vo2Xt6kCb-2DcRXWEI4Rp3Qqw-2526e-253d-26c-3DE-2C1-2C0UooF8PexaML6hjiaRlIt6FQ9sSz5P11Qxh5l2rQUooKce5lbiUbQy-2DUBTuYkbl6fBrRc8EfTO44PKqoBpHLogLSFoSX7JEIz1VLsxxswMUm-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=v60WTZWUcirsGc0mg-9JWa6wJw5P6Yc_TIo1F4UWPVs&e=> 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/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fwww.leap.com-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dy3PDMq2GyJAJJqlvyGv9zd0AX9CcJ9wOBZAp4hIUJdQ-2526e-253d-26c-3DE-2C1-2CFti54hDGcTwEVLKKsQQ-5FvYlTpJXxQe3LuOlkSxX9OWXRlvnGkNnC3NR6vQZJOr5rvT9t4bOiOrAsQRe3yYgPfXMVX5RvtRIgqxLK86XNXEk19-5FrWtFDuBHCY-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=WQZgR_yg-yL0SS8MqVyK_4nr41KIsgWPydf__AaXSTk&e=> On Wed, Oct 10, 2018 at 9:47 PM, claudio di gangi <ipcdigangi@gmail.com<mailto: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<mailto:icann@leap.com>> wrote:

...

Hi Kristine,

On Wed, Oct 10, 2018 at 7:11 PM, Dorrain, Kristine <dorraink@amazon.com<mailto: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/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fwww.leap.com-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dy3PDMq2GyJAJJqlvyGv9zd0AX9CcJ9wOBZAp4hIUJdQ-2526e-253d-26c-3DE-2C1-2Ct-5F-5FRSDknlncrsMrw1RGb5jSVqglkNGIPKoFCtKfrEog7-2DNB3pG0HEahyJBFM4r9pQR-2DopaUf6YDgUcrv89KW-5Fu9Qc98hac2un1a8FED6ue8-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=pO2IRBtkLMOqtF-iFNXifo7sELEYWyu5PJNEpG9YVnw&e=> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fmm.icann.org-5Fmailman-5Flistinfo-5Fgnso-2D2Drpm-2D2Dwg-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dX03FSCaoprFnXUEOHOjqCTA0GUnkTOm5yL8HjX9bovY-2526e-253d-26c-3DE-2C1-2CkSJMGAk8mIPIww9YuM1-5FKBP4l0RCwWDoapHctpsGA-5FNU20I65M-2Do-5FYgWo-2Dm22HUHS5mipO-5FhKi1qe-2D1GreI9J-2Dt2V-5Fey9IPE2iIhcsMulgsCfyPImRYDI6o-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=GqutlLAAvUZE8K4boGQiIvOfAivqQtB9bBOmpLJl2Q4&e=>

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My expectations about reactions to receipt of a notice are based on my experience with many small content creators over the years, not being a professor; more to the point, the proposal to reaffirm the ability to get judicial review is one based on the goals of (1) adhering to what ICANN intended for the URS and (2) avoiding arbitrary distinctions between registrants. You appear to agree that (2) doesn't need changing, unless you're proposing removing judicial review entirely. I disagree. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com> Sent: Friday, October 12, 2018 1:45:40 PM To: Tushnet, Rebecca; Scott Austin; Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org Subject: RE: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Rebecca; Your extensive spreadsheet had issues as I noted based on some of the coding done by your student research assistants. But putting that aside, you have two sets of standards: you want surveys done to prove that bogus suits are filed but want us to accept that people default because complaints are scary or they caught in spam filters based on you saying so as a professor. Simply put, where is your survey? My point is that what you are proposing is not a balanced system, so if you want to push that agenda then there is need to amend the URS per the proposals I suggested in prior emails to create a balance for parties who are the subject of appeals From: Tushnet, Rebecca <rtushnet@law.harvard.edu> Sent: Friday, October 12, 2018 1:37 PM To: Scott Austin <SAustin@vlplawgroup.com>; Nahitchevansky, Georges <ghn@kilpatricktownsend.com>; Nat Cohen <ncohen@telepathy.com>; George Kirikos <icann@leap.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) You're welcome to consult the extensively coded spreadsheet we produced; of the things you mentioned, phishing is mentioned in a small subset of cases but I refer you to that spreadsheet. The justification for the proposed clarification is one founded in procedural justice and original intent: the intent was not to make the URS the last resort if someone wanted a judicial determination; the procedural justice aspect is that it is wrong that one's access to courts varies depending on which court system one has access to. The evidence for those two things has been provided by George K. and I found both parts persuasive. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>> Sent: Friday, October 12, 2018 1:31:04 PM To: Tushnet, Rebecca; Nahitchevansky, Georges; Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Rebecca: Surely you're not inferring that only Georges and rightsholders need to provide evidence. Where is the evidence of cases supporting your suggestion of respondent defaults because the URS is scary or a URS notice was screened out as spam. More importantly, beyond gaming, has your research uncovered any domains suspended under URS that were owned by serial cybersquatters, criminals or intended to support sites for more malicious abuses such as human trafficking, spear phishing, identity theft schemes, etc. And where is the cost-benefit analysis to show that the errors in URS decisions to date have been so great to warrant nullifying the extraterritorial benefits of the URS and force small businesses to litigate all over the world. Scott Sent from my T-Mobile 4G LTE Device -------- Original message -------- From: "Tushnet, Rebecca" <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Date: 10/12/18 12:06 PM (GMT-05:00) To: "Nahitchevansky, Georges" <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>, Nat Cohen <ncohen@telepathy.com<mailto:ncohen@telepathy.com>>, George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) The fact that the URS is streamlined is precisely why there needs to be a robust review mechanism for errors (or even legitimate misunderstandings because of the extremely limited record). We all have our priors about what makes default likely (I believe that often it's because the URS claim is legitimate, but sometimes it's because the URS claim is scary or even just screened out as spam/some other incomprehensible message). What needs evidence, however, is a claim that many defaulters would take steps to initiate court proceedings if there were a provision making clear--as ICANN intended--that court proceedings are a backstop to the URS. I haven't seen that evidence, even though there are countries that do allow URS (and UDRP) losers to go to court. And I don't see any connection between cutting off URS review and allowing a court challenge; again, many countries do allow this and I've seen no evidence that there is gaming behavior in those countries, though perhaps Georges can provide some. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Sent: Friday, October 12, 2018 11:22:49 AM To: Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Nat: Just a few comments. The case you refer to was not a fully litigated case, but was a settlement. As you likely know, people and companies often settle because they do not want the extensive cost of a US litigation , which can be in the hundreds of thousands of dollars (and even in the millions depending on the matter). So absent a litigated court decision, what you have are parties transacting a resolution – albeit in this case apparently favorable to the Respondent. It is not a decided case and has no precedential value. The court review proposal for the URS is actually something that is frought with issues. You have to begin that the URS is a streamlined/expedited procedure that is meant to address a very specific group of domain names being abused. The URS has a higher burden proof than the UDRP (clear and convincing versus preponderance of the evidence standard) and only results in suspension of the domain name for a short period as opposed to a full transfer of the domain name to the complainant, as is the case in the UDRP. That means there needs to be fairly compelling proof of abuse just to get a temporary suspension. Second the URS has already built in procedural measures that allow a Respondent to challenge a decision – namely, a defaulting Respondent has a time period after a decision is rendered to challenge the decision and there is an appeal mechanism in place. Third, the statistics prove that very few Respondents actually challenge the decisions rendered through the existing mechanisms. Now some argue with no evidence that the default rate is somehow based on a lack of notice, but quite frankly that is absurd. Domain name registrants at the very least have a provided a valid address to the registrars for their domain names (they have an obligation to do so). So they get an email that there is an action involving their domain name. There is no evidence that respondents are not receiving emails from providers. Moreover, perhaps the reason Respondents default in so many instances is the fact that their cases are indefensible and they know it. I would venture that a number of Respondents simply do not bother defending cases that they are likely going to lose. Simply look at the list of domains subject of the URS and it is fairly clear that the vast majority involve known brands either alone or with terms that relate to the businesses under the marks. Lastly, adding on a court review over a short term suspension (the relief currently in place) is likely to create a windfall to Respondents that will allow bad actors to easily defeat the entire URS process. I am not sure if you have ever litigated cases in countries around the world, but in some countries court proceedings can last for years (up to ten years in some instances). If a court proceeding can simply prevent the suspension, then I can see a situation where a Respondent falsely uses an address in a country where proceedings take forever and where they can be filed cheaply and essentially defeat the entire suspension period. So in all, if you want to pursue court proceedings post URS, then I think there needs to be procedural safeguards put in place for Complainants, such as (1) a shorter time frame for a Respondent to challenge a decision on a default, or the removal of such a procedure, (2) a shortened appeal period (20 to 30 days), (3) a transfer of the domain name post URS as opposed to a suspension and/or a lock preventing use of the domain name during proceedings, and (4) some form of bond being posted by a challenging respondent or complainant that wants to ultimately proceed in court. On the last point, the challenging party would need to file the appeal first and if the party lost the appeal it could then proceed to court, but would have to post a bond with the provider to cover costs if the appeal is deemed frivolous by a court. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Nat Cohen Sent: Thursday, October 11, 2018 10:28 AM To: George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) 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<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com...> dispute (http://kellywarnerlaw.com/udrp-law-ruling-overturned/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fkellywarnerlaw.com-5Fudrp-2D2Dlaw-2D2Druling-2D2Doverturned-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253d9ZMM-5FU-2DAL4F-5Fp5KIXlWAsjtdqv9fNiDOZDj3xdrHivg-2526e-253d-26c-3DE-2C1-2C8b5Jobp3R08bXgqn7Cqvv-2DWo9-5FV3iR5bRRqOWbc-5FWcZg5QYMx8bFnK71mdaH8Kwf8w3yVcMZTCYkvdGaidse00-2DuJDqpcLkHXPHrd567b4GGhiCKi-2Dg-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=0HUWSALxzUinFWs6Yk1MUo6W_kUovrl0s3xd2rgjKk0&e=>). 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<mailto: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/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fwww.circleid.com-5Fposts-5F20180103-2D5Fthe-2D5Fudrp-2D5Fand-2D5Fjudicial-2D5Freview-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dEVq1ts2B1k-2D7avaTP-2DuhRZUHXusXwxXoHtIY4wTqx8g-2526e-253d-26c-3DE-2C1-2Crp4SjAK5DtwVFVGfxls9mS1vnjR-5FZx5tNOVoElCaE6-2DmKS7JOOODHTyVNJpbA-2Dk1wyAL3acQH09-5FwwGJd0p8i4-2DnhVC-5F4KWb-2DGQM3-2DhqMxG2eVCuuBA-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=OvSQmhnDhy760Nyu2q1TRIRplO6AUHnSQTa3xu2b3Hg&e=> 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://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fwww.icann.org-5Fen-5Fhelp-5Fdndr-5Fudrp-5Fpolicy-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253duKuIdss5k9MvarqJVkAa8oDptDTbsZ8rTQlLnHn9Jpk-2526e-253d-26c-3DE-2C1-2CY8hu78OqqgK-2D4PclB8NIH8qou6w0I7m6QMncfjDZ6tUESh6FHPJsKNrfIpsRqCbzuAUJgiIrAQLIld6hMNKYbAc-2DPJyhoKSlkJJi0YR3QAjCBAwElQI3aoI-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=Dtfmuy4hHhgGTZ_eGQDfIHQPYVOsj355vExGWr3sUVk&e=> https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fwww.icann.org-5Fresources-5Fpages-5Fudrp-2D2Drules-2D2D2015-2D2D03-2D2D11-2D2Den-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dhZ8X2T8vlWDecCK21-2DFoZM3aTw-5F-2DYc3yyKKWVHt8hu4-2526e-253d-26c-3DE-2C1-2CnUXo25-5FLhDf6UOBaTuaExE7KnXCEX2Fp2MNgTvXZQKipJ3kYQkA98Tts3B5Eg3Wv6R6xk3gWVPpt1I7jKE3eQILg5-2D2KhdVAGzq8Y56Nv26fuw-2DmORzLt2rL-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=xGBTqmMXvwzLOrikFM2snroZFrTyrv9UvgNlHrkzwWU&e=> 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-recommendations-11dec09-en.pdf<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fgnso.icann.org-5Fsites-5Fdefault-5Ffiles-5Ffilefield-2D5F8000-5Fsti-2D2Dwt-2D2Drecommendations-2D2D11dec09-2D2Den.pdf-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dZ3iU2rmYWnRyw8RmFbCE9-5FBQWeeUjRKKkD7a-2D6f7ly8-2526e-253d-26c-3DE-2C1-2CiKYOSGbpTc7AWo3YjDDqdT5qzAtTHjGe0hTB7TZQMaWWVr-5Fsq4XKy3H-2DEi4FgncjarpodErETjwpOymwGgqilNNjeh1Qlh2rw-5FKHKQYQ3WuNq7QYffcrCw-2C-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=vWto8KOBz0YDRPXyb6ax5XJXeoRbUc_DN86rS7gtuQA&e=> 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<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fnewgtlds.icann.org-5Fen-5Fapplicants-5Furs-5Fprocedure-2D2D01mar13-2D2Den.pdf-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dNm-5F7KzrdDmIH5PWBH5QvM3GmyPwaaK2w7xUZNCurpSU-2526e-253d-26c-3DE-2C1-2CzHVuDfSsOkb4wL5qP53LSU2ui6qNrmT8yejL63K-2Du-2DHovAWQh1n2Bzu7tCufu4Q8GW4UDPdH1eQSRkWBhV6MGh-2DgSFAf6w3Lxg4x1utv4Q-2C-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=mQth00wv-EH5t7CBgKlzB7bDnzJWvxx6MT_Fr-Vl9cQ&e=> http://newgtlds.icann.org/en/applicants/urs/rules-28jun13-en.pdf<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fnewgtlds.icann.org-5Fen-5Fapplicants-5Furs-5Frules-2D2D28jun13-2D2Den.pdf-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dTQA3lx1W9KqF6rFS7iR4vo2Xt6kCb-2DcRXWEI4Rp3Qqw-2526e-253d-26c-3DE-2C1-2C0UooF8PexaML6hjiaRlIt6FQ9sSz5P11Qxh5l2rQUooKce5lbiUbQy-2DUBTuYkbl6fBrRc8EfTO44PKqoBpHLogLSFoSX7JEIz1VLsxxswMUm-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=v60WTZWUcirsGc0mg-9JWa6wJw5P6Yc_TIo1F4UWPVs&e=> 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/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fwww.leap.com-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dy3PDMq2GyJAJJqlvyGv9zd0AX9CcJ9wOBZAp4hIUJdQ-2526e-253d-26c-3DE-2C1-2CFti54hDGcTwEVLKKsQQ-5FvYlTpJXxQe3LuOlkSxX9OWXRlvnGkNnC3NR6vQZJOr5rvT9t4bOiOrAsQRe3yYgPfXMVX5RvtRIgqxLK86XNXEk19-5FrWtFDuBHCY-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=WQZgR_yg-yL0SS8MqVyK_4nr41KIsgWPydf__AaXSTk&e=> On Wed, Oct 10, 2018 at 9:47 PM, claudio di gangi <ipcdigangi@gmail.com<mailto: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<mailto:icann@leap.com>> wrote:

...

Hi Kristine,

On Wed, Oct 10, 2018 at 7:11 PM, Dorrain, Kristine <dorraink@amazon.com<mailto: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/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fwww.leap.com-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dy3PDMq2GyJAJJqlvyGv9zd0AX9CcJ9wOBZAp4hIUJdQ-2526e-253d-26c-3DE-2C1-2Ct-5F-5FRSDknlncrsMrw1RGb5jSVqglkNGIPKoFCtKfrEog7-2DNB3pG0HEahyJBFM4r9pQR-2DopaUf6YDgUcrv89KW-5Fu9Qc98hac2un1a8FED6ue8-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=pO2IRBtkLMOqtF-iFNXifo7sELEYWyu5PJNEpG9YVnw&e=> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fmm.icann.org-5Fmailman-5Flistinfo-5Fgnso-2D2Drpm-2D2Dwg-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dX03FSCaoprFnXUEOHOjqCTA0GUnkTOm5yL8HjX9bovY-2526e-253d-26c-3DE-2C1-2CkSJMGAk8mIPIww9YuM1-5FKBP4l0RCwWDoapHctpsGA-5FNU20I65M-2Do-5FYgWo-2Dm22HUHS5mipO-5FhKi1qe-2D1GreI9J-2Dt2V-5Fey9IPE2iIhcsMulgsCfyPImRYDI6o-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=GqutlLAAvUZE8K4boGQiIvOfAivqQtB9bBOmpLJl2Q4&e=>

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Griffin, While it is certainly true that the Mutual Jurisdiction is either (a) the location of the registrar or (b) the location of the registrant, it is the Complainant that gets to select which.  Most use the registrar (option (a)).  Please understand that registrants do not select registrars based upon the jurisdiction in which the registrar is located (although I advise using US registrars for high value domains because it allows access to the ACPA).  The selection is often based upon pricing but also may not even be up to the registrant to decide (e.g. domains acquired at auction or via escrow).  Many registrars have a 60-90 day hold on transfers following any change to WHOIS (e.g. a change of registrant after acquisition).  Further, some “registrars” are not really registrars but rather resellers acting on behalf of registrars.  This is not always apparent to the registrant AND it is not always clear who the actual registrar is until the registration process is completed and the domain is already registered. The above aside, however, the foundational underpinning of the UDRP (and the URS) was that the decisions would remain subject to court action (either during or following the UDRP).  Most if not all of the drafters of the UDRP were US based (attorneys and non-attorneys) and in all honesty not much thought was spent questioning if in fact causes of action existed to ensure that the foundational underpinning was even possible. The problem most often arises in the post-UDRP environment in which the losing respondent has only 10 days to file an action. The rules require that the action be filed in a court in the Mutual Jurisdiction (selected by the complainant).  More often than not the courts in the MJ do not recognize the possibility of the claim.  There is no time for the respondent to file for an injunction in any other court and thus the UDRP decision is acted upon and the domain transferred.  The respondent is thus denied this basic right.  This can be corrected.  For example, we could allow the respondent to file in any court and placing the burden upon the complainant (defendant) to challenge jurisdiction.  This requires only a minor change of language changing the reference from a court in the “Mutual Jurisdiction” to a court of “competent jurisdiction”. Now that we are considering the issues, it is important that this foundational assumption be corrected so that it actually does what everyone thought and desired that it do. I see no logical reason behind the movement to make this correction. Hope this helps. Paul Keating From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Griffin Barnett <Griffin@Winterfeldt.law> Date: Friday, October 12, 2018 at 8:00 PM To: "Tushnet, Rebecca" <rtushnet@law.harvard.edu>, Georges Nahitchevansky <ghn@kilpatricktownsend.com>, Scott Austin <SAustin@vlplawgroup.com>, Nat Cohen <ncohen@telepathy.com>, George Kirikos <icann@leap.com> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Hi all, Just a quick point regarding the proposals aimed at addressing a purported lack of recourse through judicial review of URS cases: let’s not forget that jurisdiction (and whether there will ultimately be recourse through a particular court) is often dictated by the registrant itself in its choice of registrar or other ISP. Best, Griffin From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Tushnet, Rebecca Sent: Friday, October 12, 2018 1:53 PM To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com>; Scott Austin <SAustin@vlplawgroup.com>; Nat Cohen <ncohen@telepathy.com>; George Kirikos <icann@leap.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) My expectations about reactions to receipt of a notice are based on my experience with many small content creators over the years, not being a professor; more to the point, the proposal to reaffirm the ability to get judicial review is one based on the goals of (1) adhering to what ICANN intended for the URS and (2) avoiding arbitrary distinctions between registrants. You appear to agree that (2) doesn't need changing, unless you're proposing removing judicial review entirely. I disagree. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com> Sent: Friday, October 12, 2018 1:45:40 PM To: Tushnet, Rebecca; Scott Austin; Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org Subject: RE: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Rebecca; Your extensive spreadsheet had issues as I noted based on some of the coding done by your student research assistants. But putting that aside, you have two sets of standards: you want surveys done to prove that bogus suits are filed but want us to accept that people default because complaints are scary or they caught in spam filters based on you saying so as a professor. Simply put, where is your survey? My point is that what you are proposing is not a balanced system, so if you want to push that agenda then there is need to amend the URS per the proposals I suggested in prior emails to create a balance for parties who are the subject of appeals From: Tushnet, Rebecca <rtushnet@law.harvard.edu> Sent: Friday, October 12, 2018 1:37 PM To: Scott Austin <SAustin@vlplawgroup.com>; Nahitchevansky, Georges <ghn@kilpatricktownsend.com>; Nat Cohen <ncohen@telepathy.com>; George Kirikos <icann@leap.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) You're welcome to consult the extensively coded spreadsheet we produced; of the things you mentioned, phishing is mentioned in a small subset of cases but I refer you to that spreadsheet. The justification for the proposed clarification is one founded in procedural justice and original intent: the intent was not to make the URS the last resort if someone wanted a judicial determination; the procedural justice aspect is that it is wrong that one's access to courts varies depending on which court system one has access to. The evidence for those two things has been provided by George K. and I found both parts persuasive. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 From: Scott Austin <SAustin@vlplawgroup.com> Sent: Friday, October 12, 2018 1:31:04 PM To: Tushnet, Rebecca; Nahitchevansky, Georges; Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Rebecca: Surely you're not inferring that only Georges and rightsholders need to provide evidence. Where is the evidence of cases supporting your suggestion of respondent defaults because the URS is scary or a URS notice was screened out as spam. More importantly, beyond gaming, has your research uncovered any domains suspended under URS that were owned by serial cybersquatters, criminals or intended to support sites for more malicious abuses such as human trafficking, spear phishing, identity theft schemes, etc. And where is the cost-benefit analysis to show that the errors in URS decisions to date have been so great to warrant nullifying the extraterritorial benefits of the URS and force small businesses to litigate all over the world. Scott Sent from my T-Mobile 4G LTE Device -------- Original message -------- From: "Tushnet, Rebecca" <rtushnet@law.harvard.edu> Date: 10/12/18 12:06 PM (GMT-05:00) To: "Nahitchevansky, Georges" <ghn@kilpatricktownsend.com>, Nat Cohen <ncohen@telepathy.com>, George Kirikos <icann@leap.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) The fact that the URS is streamlined is precisely why there needs to be a robust review mechanism for errors (or even legitimate misunderstandings because of the extremely limited record). We all have our priors about what makes default likely (I believe that often it's because the URS claim is legitimate, but sometimes it's because the URS claim is scary or even just screened out as spam/some other incomprehensible message). What needs evidence, however, is a claim that many defaulters would take steps to initiate court proceedings if there were a provision making clear--as ICANN intended--that court proceedings are a backstop to the URS. I haven't seen that evidence, even though there are countries that do allow URS (and UDRP) losers to go to court. And I don't see any connection between cutting off URS review and allowing a court challenge; again, many countries do allow this and I've seen no evidence that there is gaming behavior in those countries, though perhaps Georges can provide some. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Nahitchevansky, Georges <ghn@kilpatricktownsend.com> Sent: Friday, October 12, 2018 11:22:49 AM To: Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Nat: Just a few comments. The case you refer to was not a fully litigated case, but was a settlement. As you likely know, people and companies often settle because they do not want the extensive cost of a US litigation , which can be in the hundreds of thousands of dollars (and even in the millions depending on the matter). So absent a litigated court decision, what you have are parties transacting a resolution – albeit in this case apparently favorable to the Respondent. It is not a decided case and has no precedential value. The court review proposal for the URS is actually something that is frought with issues. You have to begin that the URS is a streamlined/expedited procedure that is meant to address a very specific group of domain names being abused. The URS has a higher burden proof than the UDRP (clear and convincing versus preponderance of the evidence standard) and only results in suspension of the domain name for a short period as opposed to a full transfer of the domain name to the complainant, as is the case in the UDRP. That means there needs to be fairly compelling proof of abuse just to get a temporary suspension. Second the URS has already built in procedural measures that allow a Respondent to challenge a decision – namely, a defaulting Respondent has a time period after a decision is rendered to challenge the decision and there is an appeal mechanism in place. Third, the statistics prove that very few Respondents actually challenge the decisions rendered through the existing mechanisms. Now some argue with no evidence that the default rate is somehow based on a lack of notice, but quite frankly that is absurd. Domain name registrants at the very least have a provided a valid address to the registrars for their domain names (they have an obligation to do so). So they get an email that there is an action involving their domain name. There is no evidence that respondents are not receiving emails from providers. Moreover, perhaps the reason Respondents default in so many instances is the fact that their cases are indefensible and they know it. I would venture that a number of Respondents simply do not bother defending cases that they are likely going to lose. Simply look at the list of domains subject of the URS and it is fairly clear that the vast majority involve known brands either alone or with terms that relate to the businesses under the marks. Lastly, adding on a court review over a short term suspension (the relief currently in place) is likely to create a windfall to Respondents that will allow bad actors to easily defeat the entire URS process. I am not sure if you have ever litigated cases in countries around the world, but in some countries court proceedings can last for years (up to ten years in some instances). If a court proceeding can simply prevent the suspension, then I can see a situation where a Respondent falsely uses an address in a country where proceedings take forever and where they can be filed cheaply and essentially defeat the entire suspension period. So in all, if you want to pursue court proceedings post URS, then I think there needs to be procedural safeguards put in place for Complainants, such as (1) a shorter time frame for a Respondent to challenge a decision on a default, or the removal of such a procedure, (2) a shortened appeal period (20 to 30 days), (3) a transfer of the domain name post URS as opposed to a suspension and/or a lock preventing use of the domain name during proceedings, and (4) some form of bond being posted by a challenging respondent or complainant that wants to ultimately proceed in court. On the last point, the challenging party would need to file the appeal first and if the party lost the appeal it could then proceed to court, but would have to post a bond with the provider to cover costs if the appeal is deemed frivolous by a court. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> On Behalf Of Nat Cohen Sent: Thursday, October 11, 2018 10:28 AM To: George Kirikos <icann@leap.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) 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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Paul: Please see my personal comments and inquiries below. Any further response would be welcome. Philip Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Friday, October 12, 2018 4:34 PM To: Griffin Barnett <Griffin@Winterfeldt.law>; Tushnet, Rebecca <rtushnet@law.harvard.edu>; Nahitchevansky, Georges <ghn@kilpatricktownsend.com>; Scott Austin <SAustin@vlplawgroup.com>; Nat Cohen <ncohen@telepathy.com>; George Kirikos <icann@leap.com> Cc: gnso-rpm-wg@icann.org Subject: [EXTERNAL] Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Griffin, While it is certainly true that the Mutual Jurisdiction is either (a) the location of the registrar or (b) the location of the registrant, it is the Complainant that gets to select which. Most use the registrar (option (a)). – Are you stating that the Complainant can control which national court the Respondent can utilize to seek de novo review of the alleged infringement that gave rise to a UDRP decision adverse to the Respondent? Please understand that registrants do not select registrars based upon the jurisdiction in which the registrar is located (although I advise using US registrars for high value domains because it allows access to the ACPA). The selection is often based upon pricing but also may not even be up to the registrant to decide (e.g. domains acquired at auction or via escrow). Many registrars have a 60-90 day hold on transfers following any change to WHOIS (e.g. a change of registrant after acquisition). – But after the hold period ends the registrant may transfer the domain(s) to any other registrar. Further, some “registrars” are not really registrars but rather resellers acting on behalf of registrars. This is not always apparent to the registrant AND it is not always clear who the actual registrar is until the registration process is completed and the domain is already registered. – This would seem to argue for greater education of registrants and transparency in the registration process. The above aside, however, the foundational underpinning of the UDRP (and the URS) was that the decisions would remain subject to court action (either during or following the UDRP). Most if not all of the drafters of the UDRP were US based (attorneys and non-attorneys) and in all honesty not much thought was spent questioning if in fact causes of action existed to ensure that the foundational underpinning was even possible. – Agreed. The UDRP was adopted in 1999, when the public Internet and DNS was in its infancy, Cyberlaw was in a primitive state, and the Internet was highly US-Centric. It was also the year in which the ACPA was enacted, and that was likely a prominent influence on UDRP drafters. But given that environment, the only “grand bargain” that could have been intended was that the availability of the UDRP would not block access to any other available legal proceeding – and that bargain has been fully kept. There could have been no intention to guarantee that such legal process would be available to all potential global domain registrants, or that the UDRP would be available only against registrants who had such judicial access. The problem most often arises in the post-UDRP environment in which the losing respondent has only 10 days to file an action. The rules require that the action be filed in a court in the Mutual Jurisdiction (selected by the complainant). More often than not the courts in the MJ do not recognize the possibility of the claim. There is no time for the respondent to file for an injunction in any other court and thus the UDRP decision is acted upon and the domain transferred. The respondent is thus denied this basic right. This can be corrected. For example, we could allow the respondent to file in any court and placing the burden upon the complainant (defendant) to challenge jurisdiction. This requires only a minor change of language changing the reference from a court in the “Mutual Jurisdiction” to a court of “competent jurisdiction”. – It is unclear to me how ICANN could confer jurisdiction where insufficient ties were found by the court itself. For example, even if ICANN adopted the “competent jurisdiction” standard you propose, why would a US Court ever hear an ACPA challenge brought, e.g., by a Swiss national who had used a French registrar? Now that we are considering the issues, it is important that this foundational assumption be corrected so that it actually does what everyone thought and desired that it do. – The proposed “correction” might lay the groundwork for new problems. If ICANN were to adopt a policy that a URS (or UDRP) could only be brought against a registrant who had effective access to judicial appeal, wouldn’t it be reasonable to assume that some individuals/organizations seeking to profit from large-scale cybersquatting would establish a domain-acquiring entity, and utilize a registrar located within, a nation which provided no adequate law or right of action for redress of domain registrants; and that also had an inefficient and corrupt judicial system? Such a bad actor could thereby make itself immune from the available ICANN DRPs and also know that a trademark owner would face significant obstacles to judicial redress. I see no logical reason behind the movement to make this correction. Hope this helps. Paul Keating From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Griffin Barnett <Griffin@Winterfeldt.law<mailto:Griffin@Winterfeldt.law>> Date: Friday, October 12, 2018 at 8:00 PM To: "Tushnet, Rebecca" <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>, Georges Nahitchevansky <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>, Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>>, Nat Cohen <ncohen@telepathy.com<mailto:ncohen@telepathy.com>>, George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Hi all, Just a quick point regarding the proposals aimed at addressing a purported lack of recourse through judicial review of URS cases: let’s not forget that jurisdiction (and whether there will ultimately be recourse through a particular court) is often dictated by the registrant itself in its choice of registrar or other ISP. Best, Griffin From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Tushnet, Rebecca Sent: Friday, October 12, 2018 1:53 PM To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>; Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>>; Nat Cohen <ncohen@telepathy.com<mailto:ncohen@telepathy.com>>; George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) My expectations about reactions to receipt of a notice are based on my experience with many small content creators over the years, not being a professor; more to the point, the proposal to reaffirm the ability to get judicial review is one based on the goals of (1) adhering to what ICANN intended for the URS and (2) avoiding arbitrary distinctions between registrants. You appear to agree that (2) doesn't need changing, unless you're proposing removing judicial review entirely. I disagree. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 _____ From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Sent: Friday, October 12, 2018 1:45:40 PM To: Tushnet, Rebecca; Scott Austin; Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Rebecca; Your extensive spreadsheet had issues as I noted based on some of the coding done by your student research assistants. But putting that aside, you have two sets of standards: you want surveys done to prove that bogus suits are filed but want us to accept that people default because complaints are scary or they caught in spam filters based on you saying so as a professor. Simply put, where is your survey? My point is that what you are proposing is not a balanced system, so if you want to push that agenda then there is need to amend the URS per the proposals I suggested in prior emails to create a balance for parties who are the subject of appeals From: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Sent: Friday, October 12, 2018 1:37 PM To: Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>>; Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>; Nat Cohen <ncohen@telepathy.com<mailto:ncohen@telepathy.com>>; George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) You're welcome to consult the extensively coded spreadsheet we produced; of the things you mentioned, phishing is mentioned in a small subset of cases but I refer you to that spreadsheet. The justification for the proposed clarification is one founded in procedural justice and original intent: the intent was not to make the URS the last resort if someone wanted a judicial determination; the procedural justice aspect is that it is wrong that one's access to courts varies depending on which court system one has access to. The evidence for those two things has been provided by George K. and I found both parts persuasive. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 _____ From: Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>> Sent: Friday, October 12, 2018 1:31:04 PM To: Tushnet, Rebecca; Nahitchevansky, Georges; Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Rebecca: Surely you're not inferring that only Georges and rightsholders need to provide evidence. Where is the evidence of cases supporting your suggestion of respondent defaults because the URS is scary or a URS notice was screened out as spam. More importantly, beyond gaming, has your research uncovered any domains suspended under URS that were owned by serial cybersquatters, criminals or intended to support sites for more malicious abuses such as human trafficking, spear phishing, identity theft schemes, etc. And where is the cost-benefit analysis to show that the errors in URS decisions to date have been so great to warrant nullifying the extraterritorial benefits of the URS and force small businesses to litigate all over the world. Scott Sent from my T-Mobile 4G LTE Device -------- Original message -------- From: "Tushnet, Rebecca" <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Date: 10/12/18 12:06 PM (GMT-05:00) To: "Nahitchevansky, Georges" <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>, Nat Cohen <ncohen@telepathy.com<mailto:ncohen@telepathy.com>>, George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) The fact that the URS is streamlined is precisely why there needs to be a robust review mechanism for errors (or even legitimate misunderstandings because of the extremely limited record). We all have our priors about what makes default likely (I believe that often it's because the URS claim is legitimate, but sometimes it's because the URS claim is scary or even just screened out as spam/some other incomprehensible message). What needs evidence, however, is a claim that many defaulters would take steps to initiate court proceedings if there were a provision making clear--as ICANN intended--that court proceedings are a backstop to the URS. I haven't seen that evidence, even though there are countries that do allow URS (and UDRP) losers to go to court. And I don't see any connection between cutting off URS review and allowing a court challenge; again, many countries do allow this and I've seen no evidence that there is gaming behavior in those countries, though perhaps Georges can provide some. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 _____ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Sent: Friday, October 12, 2018 11:22:49 AM To: Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Nat: Just a few comments. The case you refer to was not a fully litigated case, but was a settlement. As you likely know, people and companies often settle because they do not want the extensive cost of a US litigation , which can be in the hundreds of thousands of dollars (and even in the millions depending on the matter). So absent a litigated court decision, what you have are parties transacting a resolution – albeit in this case apparently favorable to the Respondent. It is not a decided case and has no precedential value. The court review proposal for the URS is actually something that is frought with issues. You have to begin that the URS is a streamlined/expedited procedure that is meant to address a very specific group of domain names being abused. The URS has a higher burden proof than the UDRP (clear and convincing versus preponderance of the evidence standard) and only results in suspension of the domain name for a short period as opposed to a full transfer of the domain name to the complainant, as is the case in the UDRP. That means there needs to be fairly compelling proof of abuse just to get a temporary suspension. Second the URS has already built in procedural measures that allow a Respondent to challenge a decision – namely, a defaulting Respondent has a time period after a decision is rendered to challenge the decision and there is an appeal mechanism in place. Third, the statistics prove that very few Respondents actually challenge the decisions rendered through the existing mechanisms. Now some argue with no evidence that the default rate is somehow based on a lack of notice, but quite frankly that is absurd. Domain name registrants at the very least have a provided a valid address to the registrars for their domain names (they have an obligation to do so). So they get an email that there is an action involving their domain name. There is no evidence that respondents are not receiving emails from providers. Moreover, perhaps the reason Respondents default in so many instances is the fact that their cases are indefensible and they know it. I would venture that a number of Respondents simply do not bother defending cases that they are likely going to lose. Simply look at the list of domains subject of the URS and it is fairly clear that the vast majority involve known brands either alone or with terms that relate to the businesses under the marks. Lastly, adding on a court review over a short term suspension (the relief currently in place) is likely to create a windfall to Respondents that will allow bad actors to easily defeat the entire URS process. I am not sure if you have ever litigated cases in countries around the world, but in some countries court proceedings can last for years (up to ten years in some instances). If a court proceeding can simply prevent the suspension, then I can see a situation where a Respondent falsely uses an address in a country where proceedings take forever and where they can be filed cheaply and essentially defeat the entire suspension period. So in all, if you want to pursue court proceedings post URS, then I think there needs to be procedural safeguards put in place for Complainants, such as (1) a shorter time frame for a Respondent to challenge a decision on a default, or the removal of such a procedure, (2) a shortened appeal period (20 to 30 days), (3) a transfer of the domain name post URS as opposed to a suspension and/or a lock preventing use of the domain name during proceedings, and (4) some form of bond being posted by a challenging respondent or complainant that wants to ultimately proceed in court. On the last point, the challenging party would need to file the appeal first and if the party lost the appeal it could then proceed to court, but would have to post a bond with the provider to cover costs if the appeal is deemed frivolous by a court. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Nat Cohen Sent: Thursday, October 11, 2018 10:28 AM To: George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) 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<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com...> dispute (http://kellywarnerlaw.com/udrp-law-ruling-overturned/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fkellywarnerlaw.com-5Fudrp-2D2Dlaw-2D2Druling-2D2Doverturned-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253d9ZMM-5FU-2DAL4F-5Fp5KIXlWAsjtdqv9fNiDOZDj3xdrHivg-2526e-253d-26c-3DE-2C1-2C8b5Jobp3R08bXgqn7Cqvv-2DWo9-5FV3iR5bRRqOWbc-5FWcZg5QYMx8bFnK71mdaH8Kwf8w3yVcMZTCYkvdGaidse00-2DuJDqpcLkHXPHrd567b4GGhiCKi-2Dg-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=0HUWSALxzUinFWs6Yk1MUo6W_kUovrl0s3xd2rgjKk0&e=>). 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<mailto: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/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fwww.circleid.com-5Fposts-5F20180103-2D5Fthe-2D5Fudrp-2D5Fand-2D5Fjudicial-2D5Freview-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dEVq1ts2B1k-2D7avaTP-2DuhRZUHXusXwxXoHtIY4wTqx8g-2526e-253d-26c-3DE-2C1-2Crp4SjAK5DtwVFVGfxls9mS1vnjR-5FZx5tNOVoElCaE6-2DmKS7JOOODHTyVNJpbA-2Dk1wyAL3acQH09-5FwwGJd0p8i4-2DnhVC-5F4KWb-2DGQM3-2DhqMxG2eVCuuBA-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=OvSQmhnDhy760Nyu2q1TRIRplO6AUHnSQTa3xu2b3Hg&e=> 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://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fwww.icann.org-5Fen-5Fhelp-5Fdndr-5Fudrp-5Fpolicy-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253duKuIdss5k9MvarqJVkAa8oDptDTbsZ8rTQlLnHn9Jpk-2526e-253d-26c-3DE-2C1-2CY8hu78OqqgK-2D4PclB8NIH8qou6w0I7m6QMncfjDZ6tUESh6FHPJsKNrfIpsRqCbzuAUJgiIrAQLIld6hMNKYbAc-2DPJyhoKSlkJJi0YR3QAjCBAwElQI3aoI-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=Dtfmuy4hHhgGTZ_eGQDfIHQPYVOsj355vExGWr3sUVk&e=> https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fwww.icann.org-5Fresources-5Fpages-5Fudrp-2D2Drules-2D2D2015-2D2D03-2D2D11-2D2Den-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dhZ8X2T8vlWDecCK21-2DFoZM3aTw-5F-2DYc3yyKKWVHt8hu4-2526e-253d-26c-3DE-2C1-2CnUXo25-5FLhDf6UOBaTuaExE7KnXCEX2Fp2MNgTvXZQKipJ3kYQkA98Tts3B5Eg3Wv6R6xk3gWVPpt1I7jKE3eQILg5-2D2KhdVAGzq8Y56Nv26fuw-2DmORzLt2rL-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=xGBTqmMXvwzLOrikFM2snroZFrTyrv9UvgNlHrkzwWU&e=> 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-recommendations-11dec09-en.pdf<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fgnso.icann.org-5Fsites-5Fdefault-5Ffiles-5Ffilefield-2D5F8000-5Fsti-2D2Dwt-2D2Drecommendations-2D2D11dec09-2D2Den.pdf-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dZ3iU2rmYWnRyw8RmFbCE9-5FBQWeeUjRKKkD7a-2D6f7ly8-2526e-253d-26c-3DE-2C1-2CiKYOSGbpTc7AWo3YjDDqdT5qzAtTHjGe0hTB7TZQMaWWVr-5Fsq4XKy3H-2DEi4FgncjarpodErETjwpOymwGgqilNNjeh1Qlh2rw-5FKHKQYQ3WuNq7QYffcrCw-2C-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=vWto8KOBz0YDRPXyb6ax5XJXeoRbUc_DN86rS7gtuQA&e=> 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<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fnewgtlds.icann.org-5Fen-5Fapplicants-5Furs-5Fprocedure-2D2D01mar13-2D2Den.pdf-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dNm-5F7KzrdDmIH5PWBH5QvM3GmyPwaaK2w7xUZNCurpSU-2526e-253d-26c-3DE-2C1-2CzHVuDfSsOkb4wL5qP53LSU2ui6qNrmT8yejL63K-2Du-2DHovAWQh1n2Bzu7tCufu4Q8GW4UDPdH1eQSRkWBhV6MGh-2DgSFAf6w3Lxg4x1utv4Q-2C-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=mQth00wv-EH5t7CBgKlzB7bDnzJWvxx6MT_Fr-Vl9cQ&e=> http://newgtlds.icann.org/en/applicants/urs/rules-28jun13-en.pdf<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fnewgtlds.icann.org-5Fen-5Fapplicants-5Furs-5Frules-2D2D28jun13-2D2Den.pdf-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dTQA3lx1W9KqF6rFS7iR4vo2Xt6kCb-2DcRXWEI4Rp3Qqw-2526e-253d-26c-3DE-2C1-2C0UooF8PexaML6hjiaRlIt6FQ9sSz5P11Qxh5l2rQUooKce5lbiUbQy-2DUBTuYkbl6fBrRc8EfTO44PKqoBpHLogLSFoSX7JEIz1VLsxxswMUm-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=v60WTZWUcirsGc0mg-9JWa6wJw5P6Yc_TIo1F4UWPVs&e=> 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/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fwww.leap.com-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dy3PDMq2GyJAJJqlvyGv9zd0AX9CcJ9wOBZAp4hIUJdQ-2526e-253d-26c-3DE-2C1-2CFti54hDGcTwEVLKKsQQ-5FvYlTpJXxQe3LuOlkSxX9OWXRlvnGkNnC3NR6vQZJOr5rvT9t4bOiOrAsQRe3yYgPfXMVX5RvtRIgqxLK86XNXEk19-5FrWtFDuBHCY-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=WQZgR_yg-yL0SS8MqVyK_4nr41KIsgWPydf__AaXSTk&e=> On Wed, Oct 10, 2018 at 9:47 PM, claudio di gangi <ipcdigangi@gmail.com<mailto: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<mailto:icann@leap.com>> wrote:

...

Hi Kristine,

On Wed, Oct 10, 2018 at 7:11 PM, Dorrain, Kristine <dorraink@amazon.com<mailto: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/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fwww.leap.com-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dy3PDMq2GyJAJJqlvyGv9zd0AX9CcJ9wOBZAp4hIUJdQ-2526e-253d-26c-3DE-2C1-2Ct-5F-5FRSDknlncrsMrw1RGb5jSVqglkNGIPKoFCtKfrEog7-2DNB3pG0HEahyJBFM4r9pQR-2DopaUf6YDgUcrv89KW-5Fu9Qc98hac2un1a8FED6ue8-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=pO2IRBtkLMOqtF-iFNXifo7sELEYWyu5PJNEpG9YVnw&e=> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fmm.icann.org-5Fmailman-5Flistinfo-5Fgnso-2D2Drpm-2D2Dwg-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dX03FSCaoprFnXUEOHOjqCTA0GUnkTOm5yL8HjX9bovY-2526e-253d-26c-3DE-2C1-2CkSJMGAk8mIPIww9YuM1-5FKBP4l0RCwWDoapHctpsGA-5FNU20I65M-2Do-5FYgWo-2Dm22HUHS5mipO-5FhKi1qe-2D1GreI9J-2Dt2V-5Fey9IPE2iIhcsMulgsCfyPImRYDI6o-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=GqutlLAAvUZE8K4boGQiIvOfAivqQtB9bBOmpLJl2Q4&e=>

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Thank you Paul. My further personal responses below. Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: Paul Keating [mailto:Paul@law.es] Sent: Monday, October 15, 2018 7:53 AM To: Corwin, Philip <pcorwin@verisign.com>; Griffin@Winterfeldt.law; rtushnet@law.harvard.edu; ghn@kilpatricktownsend.com; SAustin@vlplawgroup.com; ncohen@telepathy.com; icann@leap.com Cc: gnso-rpm-wg@icann.org; Zak Muscovitch <zak@muscovitch.com>; John berryhill <john@johnberryhill.com>; Jason Schaeffer <jason@esqwire.com>; Nat Cohen <ncohen@telepathy.com>; Ari Goldberg <ari@esqwire.com>; gmlevine <gmlevine@researchtheworld.com> Subject: [EXTERNAL] Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Hi Phil, My further comments are below for simplicity. Further debate is more than welcomed. PRK From: "Corwin, Philip" <pcorwin@verisign.com<mailto:pcorwin@verisign.com>> Date: Monday, October 15, 2018 at 2:25 AM To: Paul Keating <Paul@law.es<mailto:Paul@law.es>>, "Griffin@Winterfeldt.law<mailto:Griffin@Winterfeldt.law>" <Griffin@Winterfeldt.law<mailto:Griffin@Winterfeldt.law>>, "rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>" <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>, Georges Nahitchevansky <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>, "SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>" <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>>, Nat Cohen <ncohen@telepathy.com<mailto:ncohen@telepathy.com>>, "icann@leap.com<mailto:icann@leap.com>" <icann@leap.com<mailto:icann@leap.com>> Cc: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: RE: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Paul: Please see my personal comments and inquiries below. Any further response would be welcome. Philip Philip S. Corwin Policy Counsel VeriSign, Inc. 12061 Bluemont Way Reston, VA 20190 703-948-4648/Direct 571-342-7489/Cell "Luck is the residue of design" -- Branch Rickey From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Friday, October 12, 2018 4:34 PM To: Griffin Barnett <Griffin@Winterfeldt.law<mailto:Griffin@Winterfeldt.law>>; Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>; Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>; Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>>; Nat Cohen <ncohen@telepathy.com<mailto:ncohen@telepathy.com>>; George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: [EXTERNAL] Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Griffin, While it is certainly true that the Mutual Jurisdiction is either (a) the location of the registrar or (b) the location of the registrant, it is the Complainant that gets to select which. Most use the registrar (option (a)). – Are you stating that the Complainant can control which national court the Respondent can utilize to seek de novo review of the alleged infringement that gave rise to a UDRP decision adverse to the Respondent? PRK: Yes. The rules state that the UDRP decision will be implemented unless the Respondent files an action in the Mutual Jurisdiction selected by the Complainant. The actual text is: We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. This is certainly something that can be discussed in Phase 2 of our work when we turn to the UDRP. Please understand that registrants do not select registrars based upon the jurisdiction in which the registrar is located (although I advise using US registrars for high value domains because it allows access to the ACPA). The selection is often based upon pricing but also may not even be up to the registrant to decide (e.g. domains acquired at auction or via escrow). Many registrars have a 60-90 day hold on transfers following any change to WHOIS (e.g. a change of registrant after acquisition). – But after the hold period ends the registrant may transfer the domain(s) to any other registrar. PRK: yes this is correct. However, most investors end up with domains in multiple registers. This is the result of a combination of factors including time, difficulty in dealing with multiple renewal periods, etc. During this time the registrant is subject to whatever rules may apply. Further, some “registrars” are not really registrars but rather resellers acting on behalf of registrars. This is not always apparent to the registrant AND it is not always clear who the actual registrar is until the registration process is completed and the domain is already registered. – This would seem to argue for greater education of registrants and transparency in the registration process. PRK: Agreed. However, this does not justify continuing with a system that in reality does not provide the remedy that formed the fundamental basis for the UDRP/URS – judicial review. The UDRP system cannot provide judicial review, it can merely step back when either party invokes relevant national law in which it has a right of action, whether that occurs before, during, or after the UDRP – and it does so. Providing access to relevant law in various jurisdictions in which a domain registrant has a right of action is a task of industry trade and cyber-rights groups. The above aside, however, the foundational underpinning of the UDRP (and the URS) was that the decisions would remain subject to court action (either during or following the UDRP). Most if not all of the drafters of the UDRP were US based (attorneys and non-attorneys) and in all honesty not much thought was spent questioning if in fact causes of action existed to ensure that the foundational underpinning was even possible. – Agreed. The UDRP was adopted in 1999, when the public Internet and DNS was in its infancy, Cyberlaw was in a primitive state, and the Internet was highly US-Centric. It was also the year in which the ACPA was enacted, and that was likely a prominent influence on UDRP drafters. But given that environment, the only “grand bargain” that could have been intended was that the availability of the UDRP would not block access to any other available legal proceeding – and that bargain has been fully kept. There could have been no intention to guarantee that such legal process would be available to all potential global domain registrants, or that the UDRP would be available only against registrants who had such judicial access. PRK: I disagree. Your position is akin to the old laws in the US which guaranteed blacks the right to vote but in which those same people were faced with huge and unfair hurdles to register to vote. This is highly inappropriate and inflammatory reference – we are discussing trademark law, not voting rights in the “Jim Crow” era. The bargain has not been fully kept as evidenced by the lack of the available remedy. The fact that “domain law” was in its infancy or that the authors of the UDRP were US Centric is no excuse. The fundamental bargain was that the parties would have access to judicial review. While I agree that the UDRP/URS as contractual provisions cannot obligate a court to accept jurisdiction, there remain many options to more appropriately ensure that the respondent benefits from having access to the judicial process without having to risk loss of the domain. For example, a US complainant bringing a UDRP against an English registrant with registration at Fabulous.com would face the barrier. Regardless of the MJ selected by the Complainant the respondent has no recourse under Rule 4(k) because neither the UK nor Australia recognize a post-UDRP claim as a result of the lack of subject matter jurisdiction. The respondent could file in the US but would not benefit form the 10 day rule. By the time the respondent obtained an injunction – even via TRO – the domain would be gone. At least my minor suggestion of changing the language to permit filing in any court of competent jurisdiction would provide relief. There would be no real detriment to the complainant as the domain would remain locked pending a determination as to either jurisdiction or the merits. The domain would, however, remain registered in the name of the respondent during that time. We simply disagree on what the “bargain” was when the UDRP was established. It was a guarantee that available legal rights would be respected and be superior to the UDRP, not a guarantee that they would be available – and certainly there was no understanding that a domain registrant would be immune from a UDRP if the relevant mutual jurisdictions failed to provide adequate legal rights or associated cause of action. The cure for this situation is an expansion of domain registrant rights or causes of actions in jurisdictions where they are now lacking – or, in the alternative, discussion of an internal appeals process when such rights are unavailable. The problem most often arises in the post-UDRP environment in which the losing respondent has only 10 days to file an action. The rules require that the action be filed in a court in the Mutual Jurisdiction (selected by the complainant). More often than not the courts in the MJ do not recognize the possibility of the claim. There is no time for the respondent to file for an injunction in any other court and thus the UDRP decision is acted upon and the domain transferred. The respondent is thus denied this basic right. This can be corrected. For example, we could allow the respondent to file in any court and placing the burden upon the complainant (defendant) to challenge jurisdiction. This requires only a minor change of language changing the reference from a court in the “Mutual Jurisdiction” to a court of “competent jurisdiction”. – It is unclear to me how ICANN could confer jurisdiction where insufficient ties were found by the court itself. For example, even if ICANN adopted the “competent jurisdiction” standard you propose, why would a US Court ever hear an ACPA challenge brought, e.g., by a Swiss national who had used a French registrar? PRK: I am not attempting to force courts to accept a jurisdictional selection clause included in a Contract. That remains up to the court. Again, I am merely expanding the potential jurisdictions where a respondent may go to seek relief while the domain remains locked and under registration in the name of the respondent. Now that we are considering the issues, it is important that this foundational assumption be corrected so that it actually does what everyone thought and desired that it do. – The proposed “correction” might lay the groundwork for new problems. If ICANN were to adopt a policy that a URS (or UDRP) could only be brought against a registrant who had effective access to judicial appeal, wouldn’t it be reasonable to assume that some individuals/organizations seeking to profit from large-scale cybersquatting would establish a domain-acquiring entity, and utilize a registrar located within, a nation which provided no adequate law or right of action for redress of domain registrants; and that also had an inefficient and corrupt judicial system? Such a bad actor could thereby make itself immune from the available ICANN DRPs and also know that a trademark owner would face significant obstacles to judicial redress. PRK: I think you are creating a strawman. If you really examine what you stated and check back in history you will find that that exact attempt was made with respect to India and a certain Indian registrar. At least as to non .IN domains that effort collapsed after the complainants sought redress in courts willing to act in a proper and legitimate manner. Further, if a complainant were concerned with such activity they could bring their own legal claim and not rely upon the UDRP/URS. And of course, it is entirely improper IMHO to use such a fear mongering set of facts to deprive the many other legitimate registrants of their rights. In a world where criminal organizations thrive on IP infringement, and shady governments share in the gains, raising this concern cannot fairly be characterized as fear mongering. And the Indian example you cite is not on point because we are now discussing a hypothetical where UDRP policy would be altered to explicitly provide immunity from that DRP for a domain registrant who structured his business to take advantage of that new loophole. Summing up, I have no personal objection to efforts to assure that domain registrants have appropriate legal rights and causes of action. But the proposal at issue does nothing to advance that cause, and is designed to lessen the ability of rights holders to utilize an effective and expeditious means of addressing clear-cut cybersquatting, based upon a mythical “bargain” that I do not believe ever existed or was intended. I see no logical reason behind the movement to make this correction. Hope this helps. Paul Keating From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Griffin Barnett <Griffin@Winterfeldt.law<mailto:Griffin@Winterfeldt.law>> Date: Friday, October 12, 2018 at 8:00 PM To: "Tushnet, Rebecca" <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>>, Georges Nahitchevansky <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>, Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>>, Nat Cohen <ncohen@telepathy.com<mailto:ncohen@telepathy.com>>, George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: "gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>" <gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org>> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Hi all, Just a quick point regarding the proposals aimed at addressing a purported lack of recourse through judicial review of URS cases: let’s not forget that jurisdiction (and whether there will ultimately be recourse through a particular court) is often dictated by the registrant itself in its choice of registrar or other ISP. Best, Griffin From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Tushnet, Rebecca Sent: Friday, October 12, 2018 1:53 PM To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>; Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>>; Nat Cohen <ncohen@telepathy.com<mailto:ncohen@telepathy.com>>; George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) My expectations about reactions to receipt of a notice are based on my experience with many small content creators over the years, not being a professor; more to the point, the proposal to reaffirm the ability to get judicial review is one based on the goals of (1) adhering to what ICANN intended for the URS and (2) avoiding arbitrary distinctions between registrants. You appear to agree that (2) doesn't need changing, unless you're proposing removing judicial review entirely. I disagree. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 _____ From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Sent: Friday, October 12, 2018 1:45:40 PM To: Tushnet, Rebecca; Scott Austin; Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Rebecca; Your extensive spreadsheet had issues as I noted based on some of the coding done by your student research assistants. But putting that aside, you have two sets of standards: you want surveys done to prove that bogus suits are filed but want us to accept that people default because complaints are scary or they caught in spam filters based on you saying so as a professor. Simply put, where is your survey? My point is that what you are proposing is not a balanced system, so if you want to push that agenda then there is need to amend the URS per the proposals I suggested in prior emails to create a balance for parties who are the subject of appeals From: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Sent: Friday, October 12, 2018 1:37 PM To: Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>>; Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>; Nat Cohen <ncohen@telepathy.com<mailto:ncohen@telepathy.com>>; George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) You're welcome to consult the extensively coded spreadsheet we produced; of the things you mentioned, phishing is mentioned in a small subset of cases but I refer you to that spreadsheet. The justification for the proposed clarification is one founded in procedural justice and original intent: the intent was not to make the URS the last resort if someone wanted a judicial determination; the procedural justice aspect is that it is wrong that one's access to courts varies depending on which court system one has access to. The evidence for those two things has been provided by George K. and I found both parts persuasive. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 _____ From: Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>> Sent: Friday, October 12, 2018 1:31:04 PM To: Tushnet, Rebecca; Nahitchevansky, Georges; Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Rebecca: Surely you're not inferring that only Georges and rightsholders need to provide evidence. Where is the evidence of cases supporting your suggestion of respondent defaults because the URS is scary or a URS notice was screened out as spam. More importantly, beyond gaming, has your research uncovered any domains suspended under URS that were owned by serial cybersquatters, criminals or intended to support sites for more malicious abuses such as human trafficking, spear phishing, identity theft schemes, etc. And where is the cost-benefit analysis to show that the errors in URS decisions to date have been so great to warrant nullifying the extraterritorial benefits of the URS and force small businesses to litigate all over the world. Scott Sent from my T-Mobile 4G LTE Device -------- Original message -------- From: "Tushnet, Rebecca" <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Date: 10/12/18 12:06 PM (GMT-05:00) To: "Nahitchevansky, Georges" <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>, Nat Cohen <ncohen@telepathy.com<mailto:ncohen@telepathy.com>>, George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) The fact that the URS is streamlined is precisely why there needs to be a robust review mechanism for errors (or even legitimate misunderstandings because of the extremely limited record). We all have our priors about what makes default likely (I believe that often it's because the URS claim is legitimate, but sometimes it's because the URS claim is scary or even just screened out as spam/some other incomprehensible message). What needs evidence, however, is a claim that many defaulters would take steps to initiate court proceedings if there were a provision making clear--as ICANN intended--that court proceedings are a backstop to the URS. I haven't seen that evidence, even though there are countries that do allow URS (and UDRP) losers to go to court. And I don't see any connection between cutting off URS review and allowing a court challenge; again, many countries do allow this and I've seen no evidence that there is gaming behavior in those countries, though perhaps Georges can provide some. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 _____ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Sent: Friday, October 12, 2018 11:22:49 AM To: Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Nat: Just a few comments. The case you refer to was not a fully litigated case, but was a settlement. As you likely know, people and companies often settle because they do not want the extensive cost of a US litigation , which can be in the hundreds of thousands of dollars (and even in the millions depending on the matter). So absent a litigated court decision, what you have are parties transacting a resolution – albeit in this case apparently favorable to the Respondent. It is not a decided case and has no precedential value. The court review proposal for the URS is actually something that is frought with issues. You have to begin that the URS is a streamlined/expedited procedure that is meant to address a very specific group of domain names being abused. The URS has a higher burden proof than the UDRP (clear and convincing versus preponderance of the evidence standard) and only results in suspension of the domain name for a short period as opposed to a full transfer of the domain name to the complainant, as is the case in the UDRP. That means there needs to be fairly compelling proof of abuse just to get a temporary suspension. Second the URS has already built in procedural measures that allow a Respondent to challenge a decision – namely, a defaulting Respondent has a time period after a decision is rendered to challenge the decision and there is an appeal mechanism in place. Third, the statistics prove that very few Respondents actually challenge the decisions rendered through the existing mechanisms. Now some argue with no evidence that the default rate is somehow based on a lack of notice, but quite frankly that is absurd. Domain name registrants at the very least have a provided a valid address to the registrars for their domain names (they have an obligation to do so). So they get an email that there is an action involving their domain name. There is no evidence that respondents are not receiving emails from providers. Moreover, perhaps the reason Respondents default in so many instances is the fact that their cases are indefensible and they know it. I would venture that a number of Respondents simply do not bother defending cases that they are likely going to lose. Simply look at the list of domains subject of the URS and it is fairly clear that the vast majority involve known brands either alone or with terms that relate to the businesses under the marks. Lastly, adding on a court review over a short term suspension (the relief currently in place) is likely to create a windfall to Respondents that will allow bad actors to easily defeat the entire URS process. I am not sure if you have ever litigated cases in countries around the world, but in some countries court proceedings can last for years (up to ten years in some instances). If a court proceeding can simply prevent the suspension, then I can see a situation where a Respondent falsely uses an address in a country where proceedings take forever and where they can be filed cheaply and essentially defeat the entire suspension period. So in all, if you want to pursue court proceedings post URS, then I think there needs to be procedural safeguards put in place for Complainants, such as (1) a shorter time frame for a Respondent to challenge a decision on a default, or the removal of such a procedure, (2) a shortened appeal period (20 to 30 days), (3) a transfer of the domain name post URS as opposed to a suspension and/or a lock preventing use of the domain name during proceedings, and (4) some form of bond being posted by a challenging respondent or complainant that wants to ultimately proceed in court. On the last point, the challenging party would need to file the appeal first and if the party lost the appeal it could then proceed to court, but would have to post a bond with the provider to cover costs if the appeal is deemed frivolous by a court. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Nat Cohen Sent: Thursday, October 11, 2018 10:28 AM To: George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) 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<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com...> dispute (http://kellywarnerlaw.com/udrp-law-ruling-overturned/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fkellywarnerlaw.com-5Fudrp-2D2Dlaw-2D2Druling-2D2Doverturned-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253d9ZMM-5FU-2DAL4F-5Fp5KIXlWAsjtdqv9fNiDOZDj3xdrHivg-2526e-253d-26c-3DE-2C1-2C8b5Jobp3R08bXgqn7Cqvv-2DWo9-5FV3iR5bRRqOWbc-5FWcZg5QYMx8bFnK71mdaH8Kwf8w3yVcMZTCYkvdGaidse00-2DuJDqpcLkHXPHrd567b4GGhiCKi-2Dg-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=0HUWSALxzUinFWs6Yk1MUo6W_kUovrl0s3xd2rgjKk0&e=>). 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<mailto: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/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fwww.circleid.com-5Fposts-5F20180103-2D5Fthe-2D5Fudrp-2D5Fand-2D5Fjudicial-2D5Freview-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dEVq1ts2B1k-2D7avaTP-2DuhRZUHXusXwxXoHtIY4wTqx8g-2526e-253d-26c-3DE-2C1-2Crp4SjAK5DtwVFVGfxls9mS1vnjR-5FZx5tNOVoElCaE6-2DmKS7JOOODHTyVNJpbA-2Dk1wyAL3acQH09-5FwwGJd0p8i4-2DnhVC-5F4KWb-2DGQM3-2DhqMxG2eVCuuBA-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=OvSQmhnDhy760Nyu2q1TRIRplO6AUHnSQTa3xu2b3Hg&e=> 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://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fwww.icann.org-5Fen-5Fhelp-5Fdndr-5Fudrp-5Fpolicy-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253duKuIdss5k9MvarqJVkAa8oDptDTbsZ8rTQlLnHn9Jpk-2526e-253d-26c-3DE-2C1-2CY8hu78OqqgK-2D4PclB8NIH8qou6w0I7m6QMncfjDZ6tUESh6FHPJsKNrfIpsRqCbzuAUJgiIrAQLIld6hMNKYbAc-2DPJyhoKSlkJJi0YR3QAjCBAwElQI3aoI-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=Dtfmuy4hHhgGTZ_eGQDfIHQPYVOsj355vExGWr3sUVk&e=> https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fwww.icann.org-5Fresources-5Fpages-5Fudrp-2D2Drules-2D2D2015-2D2D03-2D2D11-2D2Den-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dhZ8X2T8vlWDecCK21-2DFoZM3aTw-5F-2DYc3yyKKWVHt8hu4-2526e-253d-26c-3DE-2C1-2CnUXo25-5FLhDf6UOBaTuaExE7KnXCEX2Fp2MNgTvXZQKipJ3kYQkA98Tts3B5Eg3Wv6R6xk3gWVPpt1I7jKE3eQILg5-2D2KhdVAGzq8Y56Nv26fuw-2DmORzLt2rL-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=xGBTqmMXvwzLOrikFM2snroZFrTyrv9UvgNlHrkzwWU&e=> 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-recommendations-11dec09-en.pdf<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fgnso.icann.org-5Fsites-5Fdefault-5Ffiles-5Ffilefield-2D5F8000-5Fsti-2D2Dwt-2D2Drecommendations-2D2D11dec09-2D2Den.pdf-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dZ3iU2rmYWnRyw8RmFbCE9-5FBQWeeUjRKKkD7a-2D6f7ly8-2526e-253d-26c-3DE-2C1-2CiKYOSGbpTc7AWo3YjDDqdT5qzAtTHjGe0hTB7TZQMaWWVr-5Fsq4XKy3H-2DEi4FgncjarpodErETjwpOymwGgqilNNjeh1Qlh2rw-5FKHKQYQ3WuNq7QYffcrCw-2C-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=vWto8KOBz0YDRPXyb6ax5XJXeoRbUc_DN86rS7gtuQA&e=> 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<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fnewgtlds.icann.org-5Fen-5Fapplicants-5Furs-5Fprocedure-2D2D01mar13-2D2Den.pdf-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dNm-5F7KzrdDmIH5PWBH5QvM3GmyPwaaK2w7xUZNCurpSU-2526e-253d-26c-3DE-2C1-2CzHVuDfSsOkb4wL5qP53LSU2ui6qNrmT8yejL63K-2Du-2DHovAWQh1n2Bzu7tCufu4Q8GW4UDPdH1eQSRkWBhV6MGh-2DgSFAf6w3Lxg4x1utv4Q-2C-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=mQth00wv-EH5t7CBgKlzB7bDnzJWvxx6MT_Fr-Vl9cQ&e=> http://newgtlds.icann.org/en/applicants/urs/rules-28jun13-en.pdf<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fnewgtlds.icann.org-5Fen-5Fapplicants-5Furs-5Frules-2D2D28jun13-2D2Den.pdf-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dTQA3lx1W9KqF6rFS7iR4vo2Xt6kCb-2DcRXWEI4Rp3Qqw-2526e-253d-26c-3DE-2C1-2C0UooF8PexaML6hjiaRlIt6FQ9sSz5P11Qxh5l2rQUooKce5lbiUbQy-2DUBTuYkbl6fBrRc8EfTO44PKqoBpHLogLSFoSX7JEIz1VLsxxswMUm-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=v60WTZWUcirsGc0mg-9JWa6wJw5P6Yc_TIo1F4UWPVs&e=> 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/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fwww.leap.com-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dy3PDMq2GyJAJJqlvyGv9zd0AX9CcJ9wOBZAp4hIUJdQ-2526e-253d-26c-3DE-2C1-2CFti54hDGcTwEVLKKsQQ-5FvYlTpJXxQe3LuOlkSxX9OWXRlvnGkNnC3NR6vQZJOr5rvT9t4bOiOrAsQRe3yYgPfXMVX5RvtRIgqxLK86XNXEk19-5FrWtFDuBHCY-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=WQZgR_yg-yL0SS8MqVyK_4nr41KIsgWPydf__AaXSTk&e=> On Wed, Oct 10, 2018 at 9:47 PM, claudio di gangi <ipcdigangi@gmail.com<mailto: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<mailto:icann@leap.com>> wrote:

...

Hi Kristine,

On Wed, Oct 10, 2018 at 7:11 PM, Dorrain, Kristine <dorraink@amazon.com<mailto: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/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fwww.leap.com-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dy3PDMq2GyJAJJqlvyGv9zd0AX9CcJ9wOBZAp4hIUJdQ-2526e-253d-26c-3DE-2C1-2Ct-5F-5FRSDknlncrsMrw1RGb5jSVqglkNGIPKoFCtKfrEog7-2DNB3pG0HEahyJBFM4r9pQR-2DopaUf6YDgUcrv89KW-5Fu9Qc98hac2un1a8FED6ue8-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=pO2IRBtkLMOqtF-iFNXifo7sELEYWyu5PJNEpG9YVnw&e=> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fmm.icann.org-5Fmailman-5Flistinfo-5Fgnso-2D2Drpm-2D2Dwg-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dX03FSCaoprFnXUEOHOjqCTA0GUnkTOm5yL8HjX9bovY-2526e-253d-26c-3DE-2C1-2CkSJMGAk8mIPIww9YuM1-5FKBP4l0RCwWDoapHctpsGA-5FNU20I65M-2Do-5FYgWo-2Dm22HUHS5mipO-5FhKi1qe-2D1GreI9J-2Dt2V-5Fey9IPE2iIhcsMulgsCfyPImRYDI6o-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=GqutlLAAvUZE8K4boGQiIvOfAivqQtB9bBOmpLJl2Q4&e=>

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P.S. Just to add to the "history" of the development of the UDRP 4(k), see: http://www.dnso.org/dnso/notes/19990729.NCwga-report.html " The need to address the situation wherein a domain name registrant who has been unsuccessful in the ADR process is effectively prevented from �appealing� the result in a court due to the absence of a cause of action in contract, tort, regulation, statute or constitutional right. It was noted that there is an imbalance in the WIPO process in that an unsuccessful complainant will always be able to judicially challenge an ADR result by virtue of the jurisdiction of the registry being imposed over the dispute by the WIPO Report. One suggested solution to this problem which WG-A agrees merits further consideration, is the requirement that a complainant enter into a contract with the registrant (or the arbitral institution in a jurisdiction that recognizes third party beneficiary agreements) as a condition of initiating ADR, that provides for consent to be sued in the jurisdiction where the registrant is ordinarily resident, and in the jurisdiction where the subject registrar is located (assuming both parties do not agree to voluntarily contract out of the right to subsequent litigation). " As I noted earlier, 4(k) of the UDRP (and the corresponding version in the URS) attempted to address the problem, but weren't effective. They weren't a proper solution to the problem identified back in 1999, that persists today. URS Proposal #18 is completely effective at addressing the situation, and solves the problem. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Tue, Oct 16, 2018 at 2:57 PM, George Kirikos <icann@leap.com> wrote:

Hi folks,

1. All the use of colour doesn't get archived properly in the web archive, so folks should try to be aware of that (i.e. if you look at the web archive, it's difficult to see who is making which argument).

2. I've trimmed all the "cc"s to just the mailing list.

3. Responding to some of the point that were made:

(a) Phil Corwin wrote:

"The UDRP system cannot provide judicial review, it can merely step back when either party invokes relevant national law in which it has a right of action, whether that occurs before, during, or after the UDRP – and it does so. Providing access to relevant law in various jurisdictions in which a domain registrant has a right of action is a task of industry trade and cyber-rights groups."

and also:

"We simply disagree on what the “bargain” was when the UDRP was established. It was a guarantee that available legal rights would be respected and be superior to the UDRP, not a guarantee that they would be available – and certainly there was no understanding that a domain registrant would be immune from a UDRP if the relevant mutual jurisdictions failed to provide adequate legal rights or associated cause of action. The cure for this situation is an expansion of domain registrant rights or causes of actions in jurisdictions where they are now lacking – or, in the alternative, discussion of an internal appeals process when such rights are unavailable."

These statement are entirely at odds with the history of the UDRP, as documented at:

https://www.icann.org/resources/pages/schedule-2012-02-25-en https://www.icann.org/resources/unthemed-pages/white-paper-2012-02-25-en

"The proposals were designed to provide trademark holders with the ****same rights**** they have in the physical world, to ensure transparency, and to guarantee a dispute resolution mechanism *****with resort to a court system.***** " (emphasis added)

Notice the "same rights" and "with resort to a court system." It can't get much clearer than that.

The White Paper goes on to say:

"Further, it should be clear that whatever dispute resolution mechanism is put in place by the new corporation, that mechanism should be directed toward disputes about cybersquatting and cyberpiracy and not to settling the disputes between two parties with legitimate competing interests in a particular mark. ****Where legitimate competing rights are concerned, disputes are rightly settled in an appropriate court.**** (emphasis added)

That counters the incorrect notion being advanced these DRPs were intended to be the "final word". The only purpose of the DRPs (both UDRP and URS) is to provide a low cost alternative to litigation, not to replace the courts.

It's not up to "industry trade groups" etc. to create new laws. It's up to us to design the UDRP/URS in such a manner that the access to courts is preserved, so that disputes are rightly settled in the courts. A bad ICANN implementation of DRPs that *thwarts* having disputes getting settled in an appropriate court means that we need to fix the implementation of the DRPs, not change the courts/national laws.

Now, section 4(k) of the UDRP and the corresponding URS rules were an attempt to accomplish that, but they are not entirely effective. Indeed, if one goes to the Staff report:

http://archive.icann.org/en/meetings/santiago/udrp-staff-report.htm

"DNSO Recommendation 4(b): The need to address the situation wherein a domain name registrant who has been unsuccessful in the ADR process is effectively prevented from "appealing" the result in a court due to the absence of a cause of action in contract, tort, regulation, statute or constitutional right. It was noted that there is an imbalance in the WIPO process in that an unsuccessful complainant will always be able to judicially challenge an ADR result by virtue of the jurisdiction of the registry being imposed over the dispute by the WIPO Report;

Staff Suggestion on DNSO Recommendation 4(b): The staff agrees that both registrants and challengers should have equal opportunities to "appeal" an outcome of the administrative dispute-resolution procedure. Some commentators have suggested that the DNSO-recommended proposal would afford challengers significantly superior "appeal" rights. The staff notes that this result would be a clearly unintended consequence of the DNSO proposal. The staff believes that this concern can and should be fully addressed in the implementation of the dispute-resolution policy, which should explicitly negate this possibility."

So, not only was this "absence of a cause of action" issue KNOWN in 1999, staff recognized it as a problem. However, they failed to fully address things in the implementation.

But, have no fear, the "A-Team" is here. :-) URS Proposal #18 *fully* addresses this problem, unlike Section 4(k) etc. (proposal 19 also solves it, albeit less elegantly, and proposal 20 is another way to address it).

So, this is exactly WHY a review of the DRPs is needed, because their current *implementation* doesn't always work (because they introduced that "role reversal" issue that I've talked about, whereas the URS Proposal #18 doesn't have that problem). i.e. the "unintended consequences" that were noted in 1999 are *still* present, but would be fixed by Proposal #18.

(b) Paul Keating wrote: "I disagree. Your position is akin to the old laws in the US which guaranteed blacks the right to vote but in which those same people were faced with huge and unfair hurdles to register to vote."

Phil Corwin responded: " This is highly inappropriate and inflammatory reference – we are discussing trademark law, not voting rights in the “Jim Crow” era."

I agree with Paul Keating, and that was an apt *metaphor* which brings into focus the issues. It wasn't "inappropriate" or "inflammatory". We're adults here, and should be able to point to historical legal references, to be able to present our arguments. Paul Keating showed how a bad *implementation* can thwart the claimed "right". In his case, it involved the right to vote. In our case, it involves the right to have the dispute handled by the courts. URS Proposal #18 doesn't suffer from the same bad implementation that 4(k) and its equivalent experiences, in trying to get matters to the courts if either side objects to the outcome of the URS (or UDRP in phase 2).

Sincerely,

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

On Mon, Oct 15, 2018 at 7:01 PM, Corwin, Philip <pcorwin@verisign.com> wrote:

...

Thank you Paul.

My further personal responses below.

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

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

From: Paul Keating [mailto:Paul@law.es] Sent: Monday, October 15, 2018 7:53 AM To: Corwin, Philip <pcorwin@verisign.com>; Griffin@Winterfeldt.law; rtushnet@law.harvard.edu; ghn@kilpatricktownsend.com; SAustin@vlplawgroup.com; ncohen@telepathy.com; icann@leap.com Cc: gnso-rpm-wg@icann.org; Zak Muscovitch <zak@muscovitch.com>; John berryhill <john@johnberryhill.com>; Jason Schaeffer <jason@esqwire.com>; Nat Cohen <ncohen@telepathy.com>; Ari Goldberg <ari@esqwire.com>; gmlevine <gmlevine@researchtheworld.com>

Subject: [EXTERNAL] Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20)

Hi Phil,

My further comments are below for simplicity. Further debate is more than welcomed.

PRK

From: "Corwin, Philip" <pcorwin@verisign.com> Date: Monday, October 15, 2018 at 2:25 AM To: Paul Keating <Paul@law.es>, "Griffin@Winterfeldt.law" <Griffin@Winterfeldt.law>, "rtushnet@law.harvard.edu" <rtushnet@law.harvard.edu>, Georges Nahitchevansky <ghn@kilpatricktownsend.com>, "SAustin@vlplawgroup.com" <SAustin@vlplawgroup.com>, Nat Cohen <ncohen@telepathy.com>, "icann@leap.com" <icann@leap.com> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20)

Paul:

Please see my personal comments and inquiries below. Any further response would be welcome.

Philip

Philip S. Corwin

Policy Counsel

VeriSign, Inc.

12061 Bluemont Way Reston, VA 20190

703-948-4648/Direct

571-342-7489/Cell

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

From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Paul Keating Sent: Friday, October 12, 2018 4:34 PM To: Griffin Barnett <Griffin@Winterfeldt.law>; Tushnet, Rebecca <rtushnet@law.harvard.edu>; Nahitchevansky, Georges <ghn@kilpatricktownsend.com>; Scott Austin <SAustin@vlplawgroup.com>; Nat Cohen <ncohen@telepathy.com>; George Kirikos <icann@leap.com> Cc: gnso-rpm-wg@icann.org Subject: [EXTERNAL] Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20)

Griffin,

While it is certainly true that the Mutual Jurisdiction is either (a) the location of the registrar or (b) the location of the registrant, it is the Complainant that gets to select which. Most use the registrar (option (a)). – Are you stating that the Complainant can control which national court the Respondent can utilize to seek de novo review of the alleged infringement that gave rise to a UDRP decision adverse to the Respondent?

PRK: Yes. The rules state that the UDRP decision will be implemented unless the Respondent files an action in the Mutual Jurisdiction selected by the Complainant. The actual text is:

We will then implement the decision unless we have received from

you during that ten (10) business day period official documentation (such as

a copy of a complaint, file-stamped by the clerk of the court) that you have

commenced a lawsuit against the complainant in a jurisdiction to which the

complainant has submitted under Paragraph 3(b)(xiii) of the Rules of

Procedure.

This is certainly something that can be discussed in Phase 2 of our work when we turn to the UDRP.

Please understand that registrants do not select registrars based upon the jurisdiction in which the registrar is located (although I advise using US registrars for high value domains because it allows access to the ACPA). The selection is often based upon pricing but also may not even be up to the registrant to decide (e.g. domains acquired at auction or via escrow). Many registrars have a 60-90 day hold on transfers following any change to WHOIS (e.g. a change of registrant after acquisition). – But after the hold period ends the registrant may transfer the domain(s) to any other registrar.

PRK: yes this is correct. However, most investors end up with domains in multiple registers. This is the result of a combination of factors including time, difficulty in dealing with multiple renewal periods, etc. During this time the registrant is subject to whatever rules may apply.

Further, some “registrars” are not really registrars but rather resellers acting on behalf of registrars. This is not always apparent to the registrant AND it is not always clear who the actual registrar is until the registration process is completed and the domain is already registered. – This would seem to argue for greater education of registrants and transparency in the registration process.

PRK: Agreed. However, this does not justify continuing with a system that in reality does not provide the remedy that formed the fundamental basis for the UDRP/URS – judicial review.

The UDRP system cannot provide judicial review, it can merely step back when either party invokes relevant national law in which it has a right of action, whether that occurs before, during, or after the UDRP – and it does so. Providing access to relevant law in various jurisdictions in which a domain registrant has a right of action is a task of industry trade and cyber-rights groups.

The above aside, however, the foundational underpinning of the UDRP (and the URS) was that the decisions would remain subject to court action (either during or following the UDRP). Most if not all of the drafters of the UDRP were US based (attorneys and non-attorneys) and in all honesty not much thought was spent questioning if in fact causes of action existed to ensure that the foundational underpinning was even possible. – Agreed. The UDRP was adopted in 1999, when the public Internet and DNS was in its infancy, Cyberlaw was in a primitive state, and the Internet was highly US-Centric. It was also the year in which the ACPA was enacted, and that was likely a prominent influence on UDRP drafters. But given that environment, the only “grand bargain” that could have been intended was that the availability of the UDRP would not block access to any other available legal proceeding – and that bargain has been fully kept. There could have been no intention to guarantee that such legal process would be available to all potential global domain registrants, or that the UDRP would be available only against registrants who had such judicial access.

PRK: I disagree. Your position is akin to the old laws in the US which guaranteed blacks the right to vote but in which those same people were faced with huge and unfair hurdles to register to vote. This is highly inappropriate and inflammatory reference – we are discussing trademark law, not voting rights in the “Jim Crow” era.

The bargain has not been fully kept as evidenced by the lack of the available remedy. The fact that “domain law” was in its infancy or that the authors of the UDRP were US Centric is no excuse. The fundamental bargain was that the parties would have access to judicial review. While I agree that the UDRP/URS as contractual provisions cannot obligate a court to accept jurisdiction, there remain many options to more appropriately ensure that the respondent benefits from having access to the judicial process without having to risk loss of the domain. For example, a US complainant bringing a UDRP against an English registrant with registration at Fabulous.com would face the barrier. Regardless of the MJ selected by the Complainant the respondent has no recourse under Rule 4(k) because neither the UK nor Australia recognize a post-UDRP claim as a result of the lack of subject matter jurisdiction. The respondent could file in the US but would not benefit form the 10 day rule. By the time the respondent obtained an injunction – even via TRO – the domain would be gone. At least my minor suggestion of changing the language to permit filing in any court of competent jurisdiction would provide relief. There would be no real detriment to the complainant as the domain would remain locked pending a determination as to either jurisdiction or the merits. The domain would, however, remain registered in the name of the respondent during that time.

We simply disagree on what the “bargain” was when the UDRP was established. It was a guarantee that available legal rights would be respected and be superior to the UDRP, not a guarantee that they would be available – and certainly there was no understanding that a domain registrant would be immune from a UDRP if the relevant mutual jurisdictions failed to provide adequate legal rights or associated cause of action. The cure for this situation is an expansion of domain registrant rights or causes of actions in jurisdictions where they are now lacking – or, in the alternative, discussion of an internal appeals process when such rights are unavailable.

The problem most often arises in the post-UDRP environment in which the losing respondent has only 10 days to file an action. The rules require that the action be filed in a court in the Mutual Jurisdiction (selected by the complainant). More often than not the courts in the MJ do not recognize the possibility of the claim. There is no time for the respondent to file for an injunction in any other court and thus the UDRP decision is acted upon and the domain transferred. The respondent is thus denied this basic right. This can be corrected.

For example, we could allow the respondent to file in any court and placing the burden upon the complainant (defendant) to challenge jurisdiction. This requires only a minor change of language changing the reference from a court in the “Mutual Jurisdiction” to a court of “competent jurisdiction”. – It is unclear to me how ICANN could confer jurisdiction where insufficient ties were found by the court itself. For example, even if ICANN adopted the “competent jurisdiction” standard you propose, why would a US Court ever hear an ACPA challenge brought, e.g., by a Swiss national who had used a French registrar?

PRK: I am not attempting to force courts to accept a jurisdictional selection clause included in a Contract. That remains up to the court. Again, I am merely expanding the potential jurisdictions where a respondent may go to seek relief while the domain remains locked and under registration in the name of the respondent.

Now that we are considering the issues, it is important that this foundational assumption be corrected so that it actually does what everyone thought and desired that it do. – The proposed “correction” might lay the groundwork for new problems. If ICANN were to adopt a policy that a URS (or UDRP) could only be brought against a registrant who had effective access to judicial appeal, wouldn’t it be reasonable to assume that some individuals/organizations seeking to profit from large-scale cybersquatting would establish a domain-acquiring entity, and utilize a registrar located within, a nation which provided no adequate law or right of action for redress of domain registrants; and that also had an inefficient and corrupt judicial system? Such a bad actor could thereby make itself immune from the available ICANN DRPs and also know that a trademark owner would face significant obstacles to judicial redress.

PRK: I think you are creating a strawman. If you really examine what you stated and check back in history you will find that that exact attempt was made with respect to India and a certain Indian registrar. At least as to non .IN domains that effort collapsed after the complainants sought redress in courts willing to act in a proper and legitimate manner. Further, if a complainant were concerned with such activity they could bring their own legal claim and not rely upon the UDRP/URS.

And of course, it is entirely improper IMHO to use such a fear mongering set of facts to deprive the many other legitimate registrants of their rights.

In a world where criminal organizations thrive on IP infringement, and shady governments share in the gains, raising this concern cannot fairly be characterized as fear mongering. And the Indian example you cite is not on point because we are now discussing a hypothetical where UDRP policy would be altered to explicitly provide immunity from that DRP for a domain registrant who structured his business to take advantage of that new loophole.

Summing up, I have no personal objection to efforts to assure that domain registrants have appropriate legal rights and causes of action. But the proposal at issue does nothing to advance that cause, and is designed to lessen the ability of rights holders to utilize an effective and expeditious means of addressing clear-cut cybersquatting, based upon a mythical “bargain” that I do not believe ever existed or was intended.

I see no logical reason behind the movement to make this correction.

Hope this helps.

Paul Keating

From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Griffin Barnett <Griffin@Winterfeldt.law> Date: Friday, October 12, 2018 at 8:00 PM To: "Tushnet, Rebecca" <rtushnet@law.harvard.edu>, Georges Nahitchevansky <ghn@kilpatricktownsend.com>, Scott Austin <SAustin@vlplawgroup.com>, Nat Cohen <ncohen@telepathy.com>, George Kirikos <icann@leap.com> Cc: "gnso-rpm-wg@icann.org" <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20)

Hi all,

Just a quick point regarding the proposals aimed at addressing a purported lack of recourse through judicial review of URS cases: let’s not forget that jurisdiction (and whether there will ultimately be recourse through a particular court) is often dictated by the registrant itself in its choice of registrar or other ISP.

Best,

Griffin

From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Tushnet, Rebecca Sent: Friday, October 12, 2018 1:53 PM To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com>; Scott Austin <SAustin@vlplawgroup.com>; Nat Cohen <ncohen@telepathy.com>; George Kirikos <icann@leap.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20)

My expectations about reactions to receipt of a notice are based on my experience with many small content creators over the years, not being a professor; more to the point, the proposal to reaffirm the ability to get judicial review is one based on the goals of (1) adhering to what ICANN intended for the URS and (2) avoiding arbitrary distinctions between registrants. You appear to agree that (2) doesn't need changing, unless you're proposing removing judicial review entirely. I disagree.

Rebecca Tushnet

Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759

________________________________

From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com> Sent: Friday, October 12, 2018 1:45:40 PM To: Tushnet, Rebecca; Scott Austin; Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org Subject: RE: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20)

Rebecca;

Your extensive spreadsheet had issues as I noted based on some of the coding done by your student research assistants. But putting that aside, you have two sets of standards: you want surveys done to prove that bogus suits are filed but want us to accept that people default because complaints are scary or they caught in spam filters based on you saying so as a professor. Simply put, where is your survey? My point is that what you are proposing is not a balanced system, so if you want to push that agenda then there is need to amend the URS per the proposals I suggested in prior emails to create a balance for parties who are the subject of appeals

From: Tushnet, Rebecca <rtushnet@law.harvard.edu> Sent: Friday, October 12, 2018 1:37 PM To: Scott Austin <SAustin@vlplawgroup.com>; Nahitchevansky, Georges <ghn@kilpatricktownsend.com>; Nat Cohen <ncohen@telepathy.com>; George Kirikos <icann@leap.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20)

You're welcome to consult the extensively coded spreadsheet we produced; of the things you mentioned, phishing is mentioned in a small subset of cases but I refer you to that spreadsheet. The justification for the proposed clarification is one founded in procedural justice and original intent: the intent was not to make the URS the last resort if someone wanted a judicial determination; the procedural justice aspect is that it is wrong that one's access to courts varies depending on which court system one has access to. The evidence for those two things has been provided by George K. and I found both parts persuasive.

Rebecca Tushnet

Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759

________________________________

From: Scott Austin <SAustin@vlplawgroup.com> Sent: Friday, October 12, 2018 1:31:04 PM To: Tushnet, Rebecca; Nahitchevansky, Georges; Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20)

Rebecca:

Surely you're not inferring that only Georges and rightsholders need to provide evidence. Where is the evidence of cases supporting your suggestion of respondent defaults because the URS is scary or a URS notice was screened out as spam. More importantly, beyond gaming, has your research uncovered any domains suspended under URS that were owned by serial cybersquatters, criminals or intended to support sites for more malicious abuses such as human trafficking, spear phishing, identity theft schemes, etc.

And where is the cost-benefit analysis to show that the errors in URS decisions to date have been so great to warrant nullifying the extraterritorial benefits of the URS and force small businesses to litigate all over the world.

Scott

Sent from my T-Mobile 4G LTE Device

-------- Original message --------

From: "Tushnet, Rebecca" <rtushnet@law.harvard.edu>

Date: 10/12/18 12:06 PM (GMT-05:00)

To: "Nahitchevansky, Georges" <ghn@kilpatricktownsend.com>, Nat Cohen <ncohen@telepathy.com>, George Kirikos <icann@leap.com>

Cc: gnso-rpm-wg@icann.org

Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20)

The fact that the URS is streamlined is precisely why there needs to be a robust review mechanism for errors (or even legitimate misunderstandings because of the extremely limited record). We all have our priors about what makes default likely (I believe that often it's because the URS claim is legitimate, but sometimes it's because the URS claim is scary or even just screened out as spam/some other incomprehensible message).

What needs evidence, however, is a claim that many defaulters would take steps to initiate court proceedings if there were a provision making clear--as ICANN intended--that court proceedings are a backstop to the URS. I haven't seen that evidence, even though there are countries that do allow URS (and UDRP) losers to go to court. And I don't see any connection between cutting off URS review and allowing a court challenge; again, many countries do allow this and I've seen no evidence that there is gaming behavior in those countries, though perhaps Georges can provide some.

Rebecca Tushnet

Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759

________________________________

From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Nahitchevansky, Georges <ghn@kilpatricktownsend.com> Sent: Friday, October 12, 2018 11:22:49 AM To: Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20)

Nat:

Just a few comments. The case you refer to was not a fully litigated case, but was a settlement. As you likely know, people and companies often settle because they do not want the extensive cost of a US litigation , which can be in the hundreds of thousands of dollars (and even in the millions depending on the matter). So absent a litigated court decision, what you have are parties transacting a resolution – albeit in this case apparently favorable to the Respondent. It is not a decided case and has no precedential value.

The court review proposal for the URS is actually something that is frought with issues. You have to begin that the URS is a streamlined/expedited procedure that is meant to address a very specific group of domain names being abused. The URS has a higher burden proof than the UDRP (clear and convincing versus preponderance of the evidence standard) and only results in suspension of the domain name for a short period as opposed to a full transfer of the domain name to the complainant, as is the case in the UDRP. That means there needs to be fairly compelling proof of abuse just to get a temporary suspension. Second the URS has already built in procedural measures that allow a Respondent to challenge a decision – namely, a defaulting Respondent has a time period after a decision is rendered to challenge the decision and there is an appeal mechanism in place. Third, the statistics prove that very few Respondents actually challenge the decisions rendered through the existing mechanisms. Now some argue with no evidence that the default rate is somehow based on a lack of notice, but quite frankly that is absurd. Domain name registrants at the very least have a provided a valid address to the registrars for their domain names (they have an obligation to do so). So they get an email that there is an action involving their domain name. There is no evidence that respondents are not receiving emails from providers. Moreover, perhaps the reason Respondents default in so many instances is the fact that their cases are indefensible and they know it. I would venture that a number of Respondents simply do not bother defending cases that they are likely going to lose. Simply look at the list of domains subject of the URS and it is fairly clear that the vast majority involve known brands either alone or with terms that relate to the businesses under the marks. Lastly, adding on a court review over a short term suspension (the relief currently in place) is likely to create a windfall to Respondents that will allow bad actors to easily defeat the entire URS process. I am not sure if you have ever litigated cases in countries around the world, but in some countries court proceedings can last for years (up to ten years in some instances). If a court proceeding can simply prevent the suspension, then I can see a situation where a Respondent falsely uses an address in a country where proceedings take forever and where they can be filed cheaply and essentially defeat the entire suspension period.

So in all, if you want to pursue court proceedings post URS, then I think there needs to be procedural safeguards put in place for Complainants, such as (1) a shorter time frame for a Respondent to challenge a decision on a default, or the removal of such a procedure, (2) a shortened appeal period (20 to 30 days), (3) a transfer of the domain name post URS as opposed to a suspension and/or a lock preventing use of the domain name during proceedings, and (4) some form of bond being posted by a challenging respondent or complainant that wants to ultimately proceed in court. On the last point, the challenging party would need to file the appeal first and if the party lost the appeal it could then proceed to court, but would have to post a bond with the provider to cover costs if the appeal is deemed frivolous by a court.

From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> On Behalf Of Nat Cohen Sent: Thursday, October 11, 2018 10:28 AM To: George Kirikos <icann@leap.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20)

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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No, you can’t. And it depended: legal notices are often frightening to nonlawyers, and as I’m sure you know it is rarely easy to give absolute answers about risks. Individuals who have good defenses often choose not to fight even with a very high chance of prevailing. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Oct 17, 2018, at 7:28 PM, Michael Graham (ELCA) <migraham@expedia.com<mailto:migraham@expedia.com>> wrote: Rebecca: Can I presume that experience is with small content creators that were the objects of URS complaints? And, if so, were you able to provide reassuring counsel? Michael R. From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Tushnet, Rebecca Sent: Friday, October 12, 2018 10:53 AM To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>; Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>>; Nat Cohen <ncohen@telepathy.com<mailto:ncohen@telepathy.com>>; George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) My expectations about reactions to receipt of a notice are based on my experience with many small content creators over the years, not being a professor; more to the point, the proposal to reaffirm the ability to get judicial review is one based on the goals of (1) adhering to what ICANN intended for the URS and (2) avoiding arbitrary distinctions between registrants. You appear to agree that (2) doesn't need changing, unless you're proposing removing judicial review entirely. I disagree. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Sent: Friday, October 12, 2018 1:45:40 PM To: Tushnet, Rebecca; Scott Austin; Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Rebecca; Your extensive spreadsheet had issues as I noted based on some of the coding done by your student research assistants. But putting that aside, you have two sets of standards: you want surveys done to prove that bogus suits are filed but want us to accept that people default because complaints are scary or they caught in spam filters based on you saying so as a professor. Simply put, where is your survey? My point is that what you are proposing is not a balanced system, so if you want to push that agenda then there is need to amend the URS per the proposals I suggested in prior emails to create a balance for parties who are the subject of appeals From: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Sent: Friday, October 12, 2018 1:37 PM To: Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>>; Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>; Nat Cohen <ncohen@telepathy.com<mailto:ncohen@telepathy.com>>; George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) You're welcome to consult the extensively coded spreadsheet we produced; of the things you mentioned, phishing is mentioned in a small subset of cases but I refer you to that spreadsheet. The justification for the proposed clarification is one founded in procedural justice and original intent: the intent was not to make the URS the last resort if someone wanted a judicial determination; the procedural justice aspect is that it is wrong that one's access to courts varies depending on which court system one has access to. The evidence for those two things has been provided by George K. and I found both parts persuasive. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>> Sent: Friday, October 12, 2018 1:31:04 PM To: Tushnet, Rebecca; Nahitchevansky, Georges; Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Rebecca: Surely you're not inferring that only Georges and rightsholders need to provide evidence. Where is the evidence of cases supporting your suggestion of respondent defaults because the URS is scary or a URS notice was screened out as spam. More importantly, beyond gaming, has your research uncovered any domains suspended under URS that were owned by serial cybersquatters, criminals or intended to support sites for more malicious abuses such as human trafficking, spear phishing, identity theft schemes, etc. And where is the cost-benefit analysis to show that the errors in URS decisions to date have been so great to warrant nullifying the extraterritorial benefits of the URS and force small businesses to litigate all over the world. Scott Sent from my T-Mobile 4G LTE Device -------- Original message -------- From: "Tushnet, Rebecca" <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Date: 10/12/18 12:06 PM (GMT-05:00) To: "Nahitchevansky, Georges" <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>, Nat Cohen <ncohen@telepathy.com<mailto:ncohen@telepathy.com>>, George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) The fact that the URS is streamlined is precisely why there needs to be a robust review mechanism for errors (or even legitimate misunderstandings because of the extremely limited record). We all have our priors about what makes default likely (I believe that often it's because the URS claim is legitimate, but sometimes it's because the URS claim is scary or even just screened out as spam/some other incomprehensible message). What needs evidence, however, is a claim that many defaulters would take steps to initiate court proceedings if there were a provision making clear--as ICANN intended--that court proceedings are a backstop to the URS. I haven't seen that evidence, even though there are countries that do allow URS (and UDRP) losers to go to court. And I don't see any connection between cutting off URS review and allowing a court challenge; again, many countries do allow this and I've seen no evidence that there is gaming behavior in those countries, though perhaps Georges can provide some. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Sent: Friday, October 12, 2018 11:22:49 AM To: Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Nat: Just a few comments. The case you refer to was not a fully litigated case, but was a settlement. As you likely know, people and companies often settle because they do not want the extensive cost of a US litigation , which can be in the hundreds of thousands of dollars (and even in the millions depending on the matter). So absent a litigated court decision, what you have are parties transacting a resolution – albeit in this case apparently favorable to the Respondent. It is not a decided case and has no precedential value. The court review proposal for the URS is actually something that is frought with issues. You have to begin that the URS is a streamlined/expedited procedure that is meant to address a very specific group of domain names being abused. The URS has a higher burden proof than the UDRP (clear and convincing versus preponderance of the evidence standard) and only results in suspension of the domain name for a short period as opposed to a full transfer of the domain name to the complainant, as is the case in the UDRP. That means there needs to be fairly compelling proof of abuse just to get a temporary suspension. Second the URS has already built in procedural measures that allow a Respondent to challenge a decision – namely, a defaulting Respondent has a time period after a decision is rendered to challenge the decision and there is an appeal mechanism in place. Third, the statistics prove that very few Respondents actually challenge the decisions rendered through the existing mechanisms. Now some argue with no evidence that the default rate is somehow based on a lack of notice, but quite frankly that is absurd. Domain name registrants at the very least have a provided a valid address to the registrars for their domain names (they have an obligation to do so). So they get an email that there is an action involving their domain name. There is no evidence that respondents are not receiving emails from providers. Moreover, perhaps the reason Respondents default in so many instances is the fact that their cases are indefensible and they know it. I would venture that a number of Respondents simply do not bother defending cases that they are likely going to lose. Simply look at the list of domains subject of the URS and it is fairly clear that the vast majority involve known brands either alone or with terms that relate to the businesses under the marks. Lastly, adding on a court review over a short term suspension (the relief currently in place) is likely to create a windfall to Respondents that will allow bad actors to easily defeat the entire URS process. I am not sure if you have ever litigated cases in countries around the world, but in some countries court proceedings can last for years (up to ten years in some instances). If a court proceeding can simply prevent the suspension, then I can see a situation where a Respondent falsely uses an address in a country where proceedings take forever and where they can be filed cheaply and essentially defeat the entire suspension period. So in all, if you want to pursue court proceedings post URS, then I think there needs to be procedural safeguards put in place for Complainants, such as (1) a shorter time frame for a Respondent to challenge a decision on a default, or the removal of such a procedure, (2) a shortened appeal period (20 to 30 days), (3) a transfer of the domain name post URS as opposed to a suspension and/or a lock preventing use of the domain name during proceedings, and (4) some form of bond being posted by a challenging respondent or complainant that wants to ultimately proceed in court. On the last point, the challenging party would need to file the appeal first and if the party lost the appeal it could then proceed to court, but would have to post a bond with the provider to cover costs if the appeal is deemed frivolous by a court. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Nat Cohen Sent: Thursday, October 11, 2018 10:28 AM To: George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) 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<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com...> dispute (http://kellywarnerlaw.com/udrp-law-ruling-overturned/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fkellywarnerlaw.com-5Fudrp-2D2Dlaw-2D2Druling-2D2Doverturned-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253d9ZMM-5FU-2DAL4F-5Fp5KIXlWAsjtdqv9fNiDOZDj3xdrHivg-2526e-253d-26c-3DE-2C1-2C8b5Jobp3R08bXgqn7Cqvv-2DWo9-5FV3iR5bRRqOWbc-5FWcZg5QYMx8bFnK71mdaH8Kwf8w3yVcMZTCYkvdGaidse00-2DuJDqpcLkHXPHrd567b4GGhiCKi-2Dg-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=0HUWSALxzUinFWs6Yk1MUo6W_kUovrl0s3xd2rgjKk0&e=>). 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<mailto: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/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fwww.circleid.com-5Fposts-5F20180103-2D5Fthe-2D5Fudrp-2D5Fand-2D5Fjudicial-2D5Freview-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dEVq1ts2B1k-2D7avaTP-2DuhRZUHXusXwxXoHtIY4wTqx8g-2526e-253d-26c-3DE-2C1-2Crp4SjAK5DtwVFVGfxls9mS1vnjR-5FZx5tNOVoElCaE6-2DmKS7JOOODHTyVNJpbA-2Dk1wyAL3acQH09-5FwwGJd0p8i4-2DnhVC-5F4KWb-2DGQM3-2DhqMxG2eVCuuBA-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=OvSQmhnDhy760Nyu2q1TRIRplO6AUHnSQTa3xu2b3Hg&e=> 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://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fwww.icann.org-5Fen-5Fhelp-5Fdndr-5Fudrp-5Fpolicy-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253duKuIdss5k9MvarqJVkAa8oDptDTbsZ8rTQlLnHn9Jpk-2526e-253d-26c-3DE-2C1-2CY8hu78OqqgK-2D4PclB8NIH8qou6w0I7m6QMncfjDZ6tUESh6FHPJsKNrfIpsRqCbzuAUJgiIrAQLIld6hMNKYbAc-2DPJyhoKSlkJJi0YR3QAjCBAwElQI3aoI-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=Dtfmuy4hHhgGTZ_eGQDfIHQPYVOsj355vExGWr3sUVk&e=> https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fwww.icann.org-5Fresources-5Fpages-5Fudrp-2D2Drules-2D2D2015-2D2D03-2D2D11-2D2Den-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dhZ8X2T8vlWDecCK21-2DFoZM3aTw-5F-2DYc3yyKKWVHt8hu4-2526e-253d-26c-3DE-2C1-2CnUXo25-5FLhDf6UOBaTuaExE7KnXCEX2Fp2MNgTvXZQKipJ3kYQkA98Tts3B5Eg3Wv6R6xk3gWVPpt1I7jKE3eQILg5-2D2KhdVAGzq8Y56Nv26fuw-2DmORzLt2rL-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=xGBTqmMXvwzLOrikFM2snroZFrTyrv9UvgNlHrkzwWU&e=> 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-recommendations-11dec09-en.pdf<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fgnso.icann.org-5Fsites-5Fdefault-5Ffiles-5Ffilefield-2D5F8000-5Fsti-2D2Dwt-2D2Drecommendations-2D2D11dec09-2D2Den.pdf-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dZ3iU2rmYWnRyw8RmFbCE9-5FBQWeeUjRKKkD7a-2D6f7ly8-2526e-253d-26c-3DE-2C1-2CiKYOSGbpTc7AWo3YjDDqdT5qzAtTHjGe0hTB7TZQMaWWVr-5Fsq4XKy3H-2DEi4FgncjarpodErETjwpOymwGgqilNNjeh1Qlh2rw-5FKHKQYQ3WuNq7QYffcrCw-2C-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=vWto8KOBz0YDRPXyb6ax5XJXeoRbUc_DN86rS7gtuQA&e=> 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<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fnewgtlds.icann.org-5Fen-5Fapplicants-5Furs-5Fprocedure-2D2D01mar13-2D2Den.pdf-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dNm-5F7KzrdDmIH5PWBH5QvM3GmyPwaaK2w7xUZNCurpSU-2526e-253d-26c-3DE-2C1-2CzHVuDfSsOkb4wL5qP53LSU2ui6qNrmT8yejL63K-2Du-2DHovAWQh1n2Bzu7tCufu4Q8GW4UDPdH1eQSRkWBhV6MGh-2DgSFAf6w3Lxg4x1utv4Q-2C-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=mQth00wv-EH5t7CBgKlzB7bDnzJWvxx6MT_Fr-Vl9cQ&e=> http://newgtlds.icann.org/en/applicants/urs/rules-28jun13-en.pdf<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fnewgtlds.icann.org-5Fen-5Fapplicants-5Furs-5Frules-2D2D28jun13-2D2Den.pdf-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dTQA3lx1W9KqF6rFS7iR4vo2Xt6kCb-2DcRXWEI4Rp3Qqw-2526e-253d-26c-3DE-2C1-2C0UooF8PexaML6hjiaRlIt6FQ9sSz5P11Qxh5l2rQUooKce5lbiUbQy-2DUBTuYkbl6fBrRc8EfTO44PKqoBpHLogLSFoSX7JEIz1VLsxxswMUm-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=v60WTZWUcirsGc0mg-9JWa6wJw5P6Yc_TIo1F4UWPVs&e=> 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/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fwww.leap.com-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dy3PDMq2GyJAJJqlvyGv9zd0AX9CcJ9wOBZAp4hIUJdQ-2526e-253d-26c-3DE-2C1-2CFti54hDGcTwEVLKKsQQ-5FvYlTpJXxQe3LuOlkSxX9OWXRlvnGkNnC3NR6vQZJOr5rvT9t4bOiOrAsQRe3yYgPfXMVX5RvtRIgqxLK86XNXEk19-5FrWtFDuBHCY-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=WQZgR_yg-yL0SS8MqVyK_4nr41KIsgWPydf__AaXSTk&e=> On Wed, Oct 10, 2018 at 9:47 PM, claudio di gangi <ipcdigangi@gmail.com<mailto: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<mailto:icann@leap.com>> wrote:

...

Hi Kristine,

On Wed, Oct 10, 2018 at 7:11 PM, Dorrain, Kristine <dorraink@amazon.com<mailto: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/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fwww.leap.com-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dy3PDMq2GyJAJJqlvyGv9zd0AX9CcJ9wOBZAp4hIUJdQ-2526e-253d-26c-3DE-2C1-2Ct-5F-5FRSDknlncrsMrw1RGb5jSVqglkNGIPKoFCtKfrEog7-2DNB3pG0HEahyJBFM4r9pQR-2DopaUf6YDgUcrv89KW-5Fu9Qc98hac2un1a8FED6ue8-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=pO2IRBtkLMOqtF-iFNXifo7sELEYWyu5PJNEpG9YVnw&e=> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fmm.icann.org-5Fmailman-5Flistinfo-5Fgnso-2D2Drpm-2D2Dwg-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dX03FSCaoprFnXUEOHOjqCTA0GUnkTOm5yL8HjX9bovY-2526e-253d-26c-3DE-2C1-2CkSJMGAk8mIPIww9YuM1-5FKBP4l0RCwWDoapHctpsGA-5FNU20I65M-2Do-5FYgWo-2Dm22HUHS5mipO-5FhKi1qe-2D1GreI9J-2Dt2V-5Fey9IPE2iIhcsMulgsCfyPImRYDI6o-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=GqutlLAAvUZE8K4boGQiIvOfAivqQtB9bBOmpLJl2Q4&e=>

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Thanks. I do recognize all this – but I don’t think you’d want to base proposals on unsupported expectations or possibilities. I certainly did not see such suppositions supported by your team’s extensive investigation and findings. Michael R. From: Tushnet, Rebecca [mailto:rtushnet@law.harvard.edu] Sent: Wednesday, October 17, 2018 5:05 PM To: Michael Graham (ELCA) <migraham@expedia.com> Cc: Nahitchevansky, Georges <ghn@kilpatricktownsend.com>; Scott Austin <SAustin@vlplawgroup.com>; Nat Cohen <ncohen@telepathy.com>; George Kirikos <icann@leap.com>; gnso-rpm-wg@icann.org Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) No, you can’t. And it depended: legal notices are often frightening to nonlawyers, and as I’m sure you know it is rarely easy to give absolute answers about risks. Individuals who have good defenses often choose not to fight even with a very high chance of prevailing. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School Sent from my phone. Apologies for terseness/typos. On Oct 17, 2018, at 7:28 PM, Michael Graham (ELCA) <migraham@expedia.com<mailto:migraham@expedia.com>> wrote: Rebecca: Can I presume that experience is with small content creators that were the objects of URS complaints? And, if so, were you able to provide reassuring counsel? Michael R. From: GNSO-RPM-WG [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Tushnet, Rebecca Sent: Friday, October 12, 2018 10:53 AM To: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>; Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>>; Nat Cohen <ncohen@telepathy.com<mailto:ncohen@telepathy.com>>; George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) My expectations about reactions to receipt of a notice are based on my experience with many small content creators over the years, not being a professor; more to the point, the proposal to reaffirm the ability to get judicial review is one based on the goals of (1) adhering to what ICANN intended for the URS and (2) avoiding arbitrary distinctions between registrants. You appear to agree that (2) doesn't need changing, unless you're proposing removing judicial review entirely. I disagree. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Sent: Friday, October 12, 2018 1:45:40 PM To: Tushnet, Rebecca; Scott Austin; Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: RE: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Rebecca; Your extensive spreadsheet had issues as I noted based on some of the coding done by your student research assistants. But putting that aside, you have two sets of standards: you want surveys done to prove that bogus suits are filed but want us to accept that people default because complaints are scary or they caught in spam filters based on you saying so as a professor. Simply put, where is your survey? My point is that what you are proposing is not a balanced system, so if you want to push that agenda then there is need to amend the URS per the proposals I suggested in prior emails to create a balance for parties who are the subject of appeals From: Tushnet, Rebecca <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Sent: Friday, October 12, 2018 1:37 PM To: Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>>; Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>; Nat Cohen <ncohen@telepathy.com<mailto:ncohen@telepathy.com>>; George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) You're welcome to consult the extensively coded spreadsheet we produced; of the things you mentioned, phishing is mentioned in a small subset of cases but I refer you to that spreadsheet. The justification for the proposed clarification is one founded in procedural justice and original intent: the intent was not to make the URS the last resort if someone wanted a judicial determination; the procedural justice aspect is that it is wrong that one's access to courts varies depending on which court system one has access to. The evidence for those two things has been provided by George K. and I found both parts persuasive. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: Scott Austin <SAustin@vlplawgroup.com<mailto:SAustin@vlplawgroup.com>> Sent: Friday, October 12, 2018 1:31:04 PM To: Tushnet, Rebecca; Nahitchevansky, Georges; Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Rebecca: Surely you're not inferring that only Georges and rightsholders need to provide evidence. Where is the evidence of cases supporting your suggestion of respondent defaults because the URS is scary or a URS notice was screened out as spam. More importantly, beyond gaming, has your research uncovered any domains suspended under URS that were owned by serial cybersquatters, criminals or intended to support sites for more malicious abuses such as human trafficking, spear phishing, identity theft schemes, etc. And where is the cost-benefit analysis to show that the errors in URS decisions to date have been so great to warrant nullifying the extraterritorial benefits of the URS and force small businesses to litigate all over the world. Scott Sent from my T-Mobile 4G LTE Device -------- Original message -------- From: "Tushnet, Rebecca" <rtushnet@law.harvard.edu<mailto:rtushnet@law.harvard.edu>> Date: 10/12/18 12:06 PM (GMT-05:00) To: "Nahitchevansky, Georges" <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>>, Nat Cohen <ncohen@telepathy.com<mailto:ncohen@telepathy.com>>, George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) The fact that the URS is streamlined is precisely why there needs to be a robust review mechanism for errors (or even legitimate misunderstandings because of the extremely limited record). We all have our priors about what makes default likely (I believe that often it's because the URS claim is legitimate, but sometimes it's because the URS claim is scary or even just screened out as spam/some other incomprehensible message). What needs evidence, however, is a claim that many defaulters would take steps to initiate court proceedings if there were a provision making clear--as ICANN intended--that court proceedings are a backstop to the URS. I haven't seen that evidence, even though there are countries that do allow URS (and UDRP) losers to go to court. And I don't see any connection between cutting off URS review and allowing a court challenge; again, many countries do allow this and I've seen no evidence that there is gaming behavior in those countries, though perhaps Georges can provide some. Rebecca Tushnet Frank Stanton Professor of First Amendment Law, Harvard Law School 703 593 6759 ________________________________ From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> on behalf of Nahitchevansky, Georges <ghn@kilpatricktownsend.com<mailto:ghn@kilpatricktownsend.com>> Sent: Friday, October 12, 2018 11:22:49 AM To: Nat Cohen; George Kirikos Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Nat: Just a few comments. The case you refer to was not a fully litigated case, but was a settlement. As you likely know, people and companies often settle because they do not want the extensive cost of a US litigation , which can be in the hundreds of thousands of dollars (and even in the millions depending on the matter). So absent a litigated court decision, what you have are parties transacting a resolution – albeit in this case apparently favorable to the Respondent. It is not a decided case and has no precedential value. The court review proposal for the URS is actually something that is frought with issues. You have to begin that the URS is a streamlined/expedited procedure that is meant to address a very specific group of domain names being abused. The URS has a higher burden proof than the UDRP (clear and convincing versus preponderance of the evidence standard) and only results in suspension of the domain name for a short period as opposed to a full transfer of the domain name to the complainant, as is the case in the UDRP. That means there needs to be fairly compelling proof of abuse just to get a temporary suspension. Second the URS has already built in procedural measures that allow a Respondent to challenge a decision – namely, a defaulting Respondent has a time period after a decision is rendered to challenge the decision and there is an appeal mechanism in place. Third, the statistics prove that very few Respondents actually challenge the decisions rendered through the existing mechanisms. Now some argue with no evidence that the default rate is somehow based on a lack of notice, but quite frankly that is absurd. Domain name registrants at the very least have a provided a valid address to the registrars for their domain names (they have an obligation to do so). So they get an email that there is an action involving their domain name. There is no evidence that respondents are not receiving emails from providers. Moreover, perhaps the reason Respondents default in so many instances is the fact that their cases are indefensible and they know it. I would venture that a number of Respondents simply do not bother defending cases that they are likely going to lose. Simply look at the list of domains subject of the URS and it is fairly clear that the vast majority involve known brands either alone or with terms that relate to the businesses under the marks. Lastly, adding on a court review over a short term suspension (the relief currently in place) is likely to create a windfall to Respondents that will allow bad actors to easily defeat the entire URS process. I am not sure if you have ever litigated cases in countries around the world, but in some countries court proceedings can last for years (up to ten years in some instances). If a court proceeding can simply prevent the suspension, then I can see a situation where a Respondent falsely uses an address in a country where proceedings take forever and where they can be filed cheaply and essentially defeat the entire suspension period. So in all, if you want to pursue court proceedings post URS, then I think there needs to be procedural safeguards put in place for Complainants, such as (1) a shorter time frame for a Respondent to challenge a decision on a default, or the removal of such a procedure, (2) a shortened appeal period (20 to 30 days), (3) a transfer of the domain name post URS as opposed to a suspension and/or a lock preventing use of the domain name during proceedings, and (4) some form of bond being posted by a challenging respondent or complainant that wants to ultimately proceed in court. On the last point, the challenging party would need to file the appeal first and if the party lost the appeal it could then proceed to court, but would have to post a bond with the provider to cover costs if the appeal is deemed frivolous by a court. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org<mailto:gnso-rpm-wg-bounces@icann.org>> On Behalf Of Nat Cohen Sent: Thursday, October 11, 2018 10:28 AM To: George Kirikos <icann@leap.com<mailto:icann@leap.com>> Cc: gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) 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<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com...> dispute (http://kellywarnerlaw.com/udrp-law-ruling-overturned/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fkellywarnerlaw.com-5Fudrp-2D2Dlaw-2D2Druling-2D2Doverturned-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253d9ZMM-5FU-2DAL4F-5Fp5KIXlWAsjtdqv9fNiDOZDj3xdrHivg-2526e-253d-26c-3DE-2C1-2C8b5Jobp3R08bXgqn7Cqvv-2DWo9-5FV3iR5bRRqOWbc-5FWcZg5QYMx8bFnK71mdaH8Kwf8w3yVcMZTCYkvdGaidse00-2DuJDqpcLkHXPHrd567b4GGhiCKi-2Dg-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=0HUWSALxzUinFWs6Yk1MUo6W_kUovrl0s3xd2rgjKk0&e=>). 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<mailto: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/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fwww.circleid.com-5Fposts-5F20180103-2D5Fthe-2D5Fudrp-2D5Fand-2D5Fjudicial-2D5Freview-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dEVq1ts2B1k-2D7avaTP-2DuhRZUHXusXwxXoHtIY4wTqx8g-2526e-253d-26c-3DE-2C1-2Crp4SjAK5DtwVFVGfxls9mS1vnjR-5FZx5tNOVoElCaE6-2DmKS7JOOODHTyVNJpbA-2Dk1wyAL3acQH09-5FwwGJd0p8i4-2DnhVC-5F4KWb-2DGQM3-2DhqMxG2eVCuuBA-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=OvSQmhnDhy760Nyu2q1TRIRplO6AUHnSQTa3xu2b3Hg&e=> 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://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fwww.icann.org-5Fen-5Fhelp-5Fdndr-5Fudrp-5Fpolicy-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253duKuIdss5k9MvarqJVkAa8oDptDTbsZ8rTQlLnHn9Jpk-2526e-253d-26c-3DE-2C1-2CY8hu78OqqgK-2D4PclB8NIH8qou6w0I7m6QMncfjDZ6tUESh6FHPJsKNrfIpsRqCbzuAUJgiIrAQLIld6hMNKYbAc-2DPJyhoKSlkJJi0YR3QAjCBAwElQI3aoI-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=Dtfmuy4hHhgGTZ_eGQDfIHQPYVOsj355vExGWr3sUVk&e=> https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fwww.icann.org-5Fresources-5Fpages-5Fudrp-2D2Drules-2D2D2015-2D2D03-2D2D11-2D2Den-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dhZ8X2T8vlWDecCK21-2DFoZM3aTw-5F-2DYc3yyKKWVHt8hu4-2526e-253d-26c-3DE-2C1-2CnUXo25-5FLhDf6UOBaTuaExE7KnXCEX2Fp2MNgTvXZQKipJ3kYQkA98Tts3B5Eg3Wv6R6xk3gWVPpt1I7jKE3eQILg5-2D2KhdVAGzq8Y56Nv26fuw-2DmORzLt2rL-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=xGBTqmMXvwzLOrikFM2snroZFrTyrv9UvgNlHrkzwWU&e=> 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-recommendations-11dec09-en.pdf<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fgnso.icann.org-5Fsites-5Fdefault-5Ffiles-5Ffilefield-2D5F8000-5Fsti-2D2Dwt-2D2Drecommendations-2D2D11dec09-2D2Den.pdf-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dZ3iU2rmYWnRyw8RmFbCE9-5FBQWeeUjRKKkD7a-2D6f7ly8-2526e-253d-26c-3DE-2C1-2CiKYOSGbpTc7AWo3YjDDqdT5qzAtTHjGe0hTB7TZQMaWWVr-5Fsq4XKy3H-2DEi4FgncjarpodErETjwpOymwGgqilNNjeh1Qlh2rw-5FKHKQYQ3WuNq7QYffcrCw-2C-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=vWto8KOBz0YDRPXyb6ax5XJXeoRbUc_DN86rS7gtuQA&e=> 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<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fnewgtlds.icann.org-5Fen-5Fapplicants-5Furs-5Fprocedure-2D2D01mar13-2D2Den.pdf-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dNm-5F7KzrdDmIH5PWBH5QvM3GmyPwaaK2w7xUZNCurpSU-2526e-253d-26c-3DE-2C1-2CzHVuDfSsOkb4wL5qP53LSU2ui6qNrmT8yejL63K-2Du-2DHovAWQh1n2Bzu7tCufu4Q8GW4UDPdH1eQSRkWBhV6MGh-2DgSFAf6w3Lxg4x1utv4Q-2C-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=mQth00wv-EH5t7CBgKlzB7bDnzJWvxx6MT_Fr-Vl9cQ&e=> http://newgtlds.icann.org/en/applicants/urs/rules-28jun13-en.pdf<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fnewgtlds.icann.org-5Fen-5Fapplicants-5Furs-5Frules-2D2D28jun13-2D2Den.pdf-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dTQA3lx1W9KqF6rFS7iR4vo2Xt6kCb-2DcRXWEI4Rp3Qqw-2526e-253d-26c-3DE-2C1-2C0UooF8PexaML6hjiaRlIt6FQ9sSz5P11Qxh5l2rQUooKce5lbiUbQy-2DUBTuYkbl6fBrRc8EfTO44PKqoBpHLogLSFoSX7JEIz1VLsxxswMUm-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=v60WTZWUcirsGc0mg-9JWa6wJw5P6Yc_TIo1F4UWPVs&e=> 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/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fwww.leap.com-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dy3PDMq2GyJAJJqlvyGv9zd0AX9CcJ9wOBZAp4hIUJdQ-2526e-253d-26c-3DE-2C1-2CFti54hDGcTwEVLKKsQQ-5FvYlTpJXxQe3LuOlkSxX9OWXRlvnGkNnC3NR6vQZJOr5rvT9t4bOiOrAsQRe3yYgPfXMVX5RvtRIgqxLK86XNXEk19-5FrWtFDuBHCY-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=WQZgR_yg-yL0SS8MqVyK_4nr41KIsgWPydf__AaXSTk&e=> On Wed, Oct 10, 2018 at 9:47 PM, claudio di gangi <ipcdigangi@gmail.com<mailto: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<mailto:icann@leap.com>> wrote:

...

Hi Kristine,

On Wed, Oct 10, 2018 at 7:11 PM, Dorrain, Kristine <dorraink@amazon.com<mailto: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/<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttp-2D3A-5F-5Fwww.leap.com-5F-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dy3PDMq2GyJAJJqlvyGv9zd0AX9CcJ9wOBZAp4hIUJdQ-2526e-253d-26c-3DE-2C1-2Ct-5F-5FRSDknlncrsMrw1RGb5jSVqglkNGIPKoFCtKfrEog7-2DNB3pG0HEahyJBFM4r9pQR-2DopaUf6YDgUcrv89KW-5Fu9Qc98hac2un1a8FED6ue8-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=pO2IRBtkLMOqtF-iFNXifo7sELEYWyu5PJNEpG9YVnw&e=> _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<mailto:gnso-rpm-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://urldefense.proofpoint.com/v2/url?u=https-3A__linkprotect.cudasvc.com_url-3Fa-3Dhttps-253a-252f-252furldefense.proofpoint.com-252fv2-252furl-253fu-253dhttps-2D3A-5F-5Fmm.icann.org-5Fmailman-5Flistinfo-5Fgnso-2D2Drpm-2D2Dwg-2526d-253dDwMGaQ-2526c-253dWO-2DRGvefibhHBZq3fL85hQ-2526r-253dE-2DM4OQvQBo8UWqE1LwEiDR3PcWlfM0I-2D0jiI1c4ous0-2526m-253dW-5FPdqp6xCcTbFl-2Dyf9UnYNzdy2NMUbKRtUsLYsb-5FDDg-2526s-253dX03FSCaoprFnXUEOHOjqCTA0GUnkTOm5yL8HjX9bovY-2526e-253d-26c-3DE-2C1-2CkSJMGAk8mIPIww9YuM1-5FKBP4l0RCwWDoapHctpsGA-5FNU20I65M-2Do-5FYgWo-2Dm22HUHS5mipO-5FhKi1qe-2D1GreI9J-2Dt2V-5Fey9IPE2iIhcsMulgsCfyPImRYDI6o-2C-26typo-3D1&d=DwMF-g&c=WO-RGvefibhHBZq3fL85hQ&r=E-M4OQvQBo8UWqE1LwEiDR3PcWlfM0I-0jiI1c4ous0&m=i_WGSq_3sT0OTxlSClF5s5MnHXjwLH1RB1qByhRPzXc&s=GqutlLAAvUZE8K4boGQiIvOfAivqQtB9bBOmpLJl2Q4&e=>

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+1 From: GNSO-RPM-WG <gnso-rpm-wg-bounces@icann.org> on behalf of Nat Cohen <ncohen@telepathy.com> Date: Friday, October 12, 2018 at 9:55 PM To: Georges Nahitchevansky <ghn@kilpatricktownsend.com> Cc: <gnso-rpm-wg@icann.org> Subject: Re: [GNSO-RPM-WG] [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) Georges, Thank you for your thoughtful and considered response. I would like to respond to your comments on- 1. the relevance of settled court challenges to UDRP transfer orders 2. the nature of the URS sanction 3. the likelihood that respondents will go to court to challenge a URS decision 4. how much weight to give to the 'clear and convincing' standard You are right that most of the UDRP transfers challenged in court are settled, for as you mention due to the high costs involved that is usually the sensible thing to do for both parties. While these settled cases may not have precedential value in a court of law, those cases do offer us useful information for our considerations. When I review with my attorney whether to go to court, we carefully weigh the merits of our position and our likelihood of success should the case go all the way to judgment. The UDRP complainant/defendant engages in a similar evaluation in deciding whether to settle and for how much. While other considerations may come into play besides only the merits of the case, that a domain owner is willing to risk tens of thousands of dollars in legal fees to have a judge weigh the merits of the case, and that the complainant/defendant is willing to pay tens of thousands of dollars in a settlement rather than proceed to a decision by the court, is not divorced entirely from the underlying merits of the case. In short, some domains owners so strongly believe that the UDRP transfer order was wrongly issued that they are willing to go to court to overturn the panel decision. Whether the domain owner is correct on the merits is not even that important. Rather it points to the strong desire of respondents to be able to avail of a court for determination of the issues raised in the UDRP dispute. The consequences of losing a URS are currently in flux as numerous proposals have been raised in this WG including the transfer of rights from respondent to complainant. As I understand how the URS is current written, the domain owner loses the right to use the disputed domain, to transfer the domain, and eventually to renew the domain name. This is equivalent to a loss of ownership rights to the domain, even in the absence of a transfer. Unless I misunderstand, the consequence is much greater than a temporary suspension after which the domain owner gains back full rights to the domain. Since the domain owner is being deprived of rights to his or her asset, it is appropriate to allow the domain owner to bring the matter to court to ensure that the URS decision is consistent with national laws. That the loser of a URS decision would challenge the decision in court strikes me as an exceedingly rare possibility. As you point out, nearly all cases are defaults as the domain owner's position is indefensible. These are also mostly throwaway domains - registered for $10 and worth little more than that to either party. Why would a domain owner spend substantial sums to engage in a court proceeding over a domain that has so little value to the domain owner? I also recognized that the URS is less vulnerable to hijacking attempts because transfer of the domain is not available and because of the higher standard of proof. To address your concern that domain owners would go to court as a way to defeat the URS, as unlikely as that seems, perhaps a way to address that is to leave the domain suspended pending the outcome of the court case. The court case would be about the domain owner's ultimate rights to remain the lawful owner of the domain, and as to whether the domain owner can show it has a lawful use for the domain. In the view of many domain owners, and at times neutral observers, UDRP transfer decisions are sometimes made where the evidence falls far below a preponderance of the evidence standard. The URS is still new. The ability of any panelist to unilaterally decide how much weight to give to any evidence, or any inference from evidence, means that "clear and convincing" is ultimately a subjective standard that differs from panelist to panelist. So whether, in the absence of clear and binding community guidelines, "clear and convincing" degrades over time to "preponderance" or worse, remains to be seen. Like the children's game of "telephone" (https://en.wikipedia.org/wiki/Chinese_whispers), the nuance of precedential decisions is often lost when cited by future panelists. Telstra held that under certain circumstances, including that the mark is famous, passive holding can be evidence of bad faith. Over time that holding degraded to some panelists citing Telstra for the view that "passive holding is evidence of bad faith". Similarly, the retroactive bad faith theory, illegitimate as it was, started with rulings limited to intentional repurposing of a domain to target late arriving trademark rights. Over time that degraded to panelists finding that an unintended appearance of a Google ad on landing page converted a good faith registration into a bad faith registration. The lack of predictability in both the UDRP and the URS is a challenge for both the IP side and domain registrant side in trying to find common ground. We each have our own set of outlier cases that cause us concern. My view is that the domain registrants have more cause for concern as the IP side controls all aspects of the process while it is the domain registrants' assets that are at risk. Addressing the underlying sources of unpredictability would allow us all to collaborate more productively on improvements to the policies. Regards, Nat On Fri, Oct 12, 2018 at 11:22 AM Nahitchevansky, Georges <ghn@kilpatricktownsend.com> wrote: Nat: Just a few comments. The case you refer to was not a fully litigated case, but was a settlement. As you likely know, people and companies often settle because they do not want the extensive cost of a US litigation , which can be in the hundreds of thousands of dollars (and even in the millions depending on the matter). So absent a litigated court decision, what you have are parties transacting a resolution – albeit in this case apparently favorable to the Respondent. It is not a decided case and has no precedential value. The court review proposal for the URS is actually something that is frought with issues. You have to begin that the URS is a streamlined/expedited procedure that is meant to address a very specific group of domain names being abused. The URS has a higher burden proof than the UDRP (clear and convincing versus preponderance of the evidence standard) and only results in suspension of the domain name for a short period as opposed to a full transfer of the domain name to the complainant, as is the case in the UDRP. That means there needs to be fairly compelling proof of abuse just to get a temporary suspension. Second the URS has already built in procedural measures that allow a Respondent to challenge a decision – namely, a defaulting Respondent has a time period after a decision is rendered to challenge the decision and there is an appeal mechanism in place. Third, the statistics prove that very few Respondents actually challenge the decisions rendered through the existing mechanisms. Now some argue with no evidence that the default rate is somehow based on a lack of notice, but quite frankly that is absurd. Domain name registrants at the very least have a provided a valid address to the registrars for their domain names (they have an obligation to do so). So they get an email that there is an action involving their domain name. There is no evidence that respondents are not receiving emails from providers. Moreover, perhaps the reason Respondents default in so many instances is the fact that their cases are indefensible and they know it. I would venture that a number of Respondents simply do not bother defending cases that they are likely going to lose. Simply look at the list of domains subject of the URS and it is fairly clear that the vast majority involve known brands either alone or with terms that relate to the businesses under the marks. Lastly, adding on a court review over a short term suspension (the relief currently in place) is likely to create a windfall to Respondents that will allow bad actors to easily defeat the entire URS process. I am not sure if you have ever litigated cases in countries around the world, but in some countries court proceedings can last for years (up to ten years in some instances). If a court proceeding can simply prevent the suspension, then I can see a situation where a Respondent falsely uses an address in a country where proceedings take forever and where they can be filed cheaply and essentially defeat the entire suspension period. So in all, if you want to pursue court proceedings post URS, then I think there needs to be procedural safeguards put in place for Complainants, such as (1) a shorter time frame for a Respondent to challenge a decision on a default, or the removal of such a procedure, (2) a shortened appeal period (20 to 30 days), (3) a transfer of the domain name post URS as opposed to a suspension and/or a lock preventing use of the domain name during proceedings, and (4) some form of bond being posted by a challenging respondent or complainant that wants to ultimately proceed in court. On the last point, the challenging party would need to file the appeal first and if the party lost the appeal it could then proceed to court, but would have to post a bond with the provider to cover costs if the appeal is deemed frivolous by a court. From: gnso-rpm-wg <gnso-rpm-wg-bounces@icann.org> On Behalf Of Nat Cohen Sent: Thursday, October 11, 2018 10:28 AM To: George Kirikos <icann@leap.com> Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] "Lack of cause of action" followup (URS proposals #18, #19, #20) 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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