Hi Claudio, Thanks for your response. On Sun, Nov 19, 2017 at 6:59 PM, claudio di gangi <ipcdigangi@gmail.com> wrote:

1) is the decision in the case you cite appealable to a higher court? If yes, the issue may not be 'settled law' until that potential appeal is raised by the moving party and considered by a 'higher' court within the jurisdiction.

I'm not aware of any domain name case has proceeded to a supreme court or highest court in any jurisdiction worldwide. So, to talk about "settled law" --- by what standard? These are real cases, where ICANN's policy is causing the problem. And read the commentary on out-law.com, lexology.com, etc. that I included (and there are other articles too). TM lawyers are exploiting that vulnerability.

2) whether a court has jurisdiction over a particular case is a legal issue that can be changed potentially by passing a new statutory law (or sometimes even by amending the constitution). For example, this happened in the United States with the anti-cybersquatting legislation you mentioned. If this jurisprudence is limited to the UK and Australia, then it's possible the laws in these countries can be updated to bring them more in line with international norms.

Expecting that legislatures around the world are going to prioritize creating new legislation to fix a problem that ICANN has created is not realistic. That's reversing the way things should be. Countries create their own legislation based on their own value systems, etc. ICANN has to be careful to not create policies that interfere with those laws (I don't want to open up the WHOIS debate, or GDPR, but see that the identical issues are engaged there; they're not going to change their laws to help fix ICANN's problems).

One other thought: if the solution you mention in #2 below were to be adopted, then cybersquatters could simply register their domains with false Whois information corresponding to that country, and the ADR procedures would no longer be applicable. This would be an exception that swallows the rule.

I recall this type of gaming has happened on a similar topic: a company based in India was offering 'services' to registrants because the appeals process takes a long time in India, so a trademark owner would have to wait years before they could get the domain transferred, see:

https://www.inta.org/INTABulletin/Pages/UDRPHijackingAvoidinganInvoluntaryPa...

The example you cite (perhaps I'm misreading it) doesn't appear to involve fake WHOIS. It appears to be real WHOIS (i.e. they incorporated a real entity in India; just like Amazon, Apple, etc. incorporate entities around the world to take advantage of favourable jurisdictions for taxes or IP in Ireland, Cayman Islands, etc.). If it actually did involve fake WHOIS (i.e. a totally fabricated entity that didn't exist), that fake entity wouldn't be able to have standing to bring any case anywhere (i.e. I would think that the very first thing a good law firm representing a TM owner would do is have the case against them dismissed because the entity bringing the action doesn't really exist!). Fake WHOIS could also be handled via WHOIS accuracy complaints.

I am qualifying my statements because I have not read the case you identified, but hope you find this feedback helpful.

I do find it helpful, yes. We should definitely consider any "edge cases" to the "fixes" we deploy. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

Hi Claudio, On Sun, Nov 19, 2017 at 8:05 PM, claudio di gangi <ipcdigangi@gmail.com> wrote:

My concern is that this would allow cybersquatters the means to register their domains (based either on false WHOIS or an actual P.O. box) in those countries and circumvent these ADR procedures.

First, let's try to keep the language neutral, as I did in my initial post. We're talking about domain name registrants and trademark holders, who have a domain dispute.

From the perspective of a TM holder, the domain name registrant is an alleged cybersquatter. From the perspective of a domain name registrant, the TM holder is an alleged reverse domain name hijacker.

From the perspective of ICANN and the law, the matter is in dispute and undecided. De novo review of the UDRP decision is being sought, to have the case decided ***on the merits*** in the national courts. All past determinations don't matter....that's the essence of "de novo".

If ICANN has caused an interference in the underlying legal rights of the domain name registrant, because it has "flipped the roles" of the two parties (which party is the complainant, and which party is the defendant), as I discussed in the first post of this thread, then it needs to account for this, and eliminate the issue. This is not about "circumventing these ADR procedures" as you suggest. It's about having the case heard in national courts, de novo, on the merits. If ICANN has created a problem whereby the domain name registrant can't access that de novo review if it's the one *initiating* the case in a court of law (i.e. because its claim gets struck for lack of cause of action), then the roles need to be "flipped back" to what they would have been in the first place (i.e. TM holder must initiate the court action, and domain name registrant acts as defendant). Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

George, To clarify this one particular point: my reference to "cybersquatters" was not a description of the losing party in this UDRP case. I was referring to cybersquatters more generally, and their incentive to abusively register domains in any jurisdictions that were not bound by the URS/UDRP procedures. Best regards, Claudio On Mon, Nov 20, 2017 at 8:49 AM, George Kirikos <icann@leap.com> wrote:

Hi Claudio,

On Sun, Nov 19, 2017 at 8:05 PM, claudio di gangi <ipcdigangi@gmail.com> wrote:

...

My concern is that this would allow cybersquatters the means to register their domains (based either on false WHOIS or an actual P.O. box) in those countries and circumvent these ADR procedures.

First, let's try to keep the language neutral, as I did in my initial post. We're talking about domain name registrants and trademark holders, who have a domain dispute.

From the perspective of a TM holder, the domain name registrant is an alleged cybersquatter. From the perspective of a domain name registrant, the TM holder is an alleged reverse domain name hijacker.

From the perspective of ICANN and the law, the matter is in dispute and undecided. De novo review of the UDRP decision is being sought, to have the case decided ***on the merits*** in the national courts. All past determinations don't matter....that's the essence of "de novo".

If ICANN has caused an interference in the underlying legal rights of the domain name registrant, because it has "flipped the roles" of the two parties (which party is the complainant, and which party is the defendant), as I discussed in the first post of this thread, then it needs to account for this, and eliminate the issue.

This is not about "circumventing these ADR procedures" as you suggest. It's about having the case heard in national courts, de novo, on the merits. If ICANN has created a problem whereby the domain name registrant can't access that de novo review if it's the one *initiating* the case in a court of law (i.e. because its claim gets struck for lack of cause of action), then the roles need to be "flipped back" to what they would have been in the first place (i.e. TM holder must initiate the court action, and domain name registrant acts as defendant).

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

Hi Jonathan, I believe your reading of the case is inconsistent with how others have analyzed it. In my initial post I linked to 3 separate articles analyzing the decision. I didn't bother to quote from them, but let me do so now: [1] https://www.out-law.com/en/articles/2015/december/ruling-means-uk-courts-wil... "Ruling means UK courts will not overturn decisions by domain name dispute resolution panels, says expert ... A UK court ruling that it did not have the jurisdiction to hear and determine an appeal against a decision taken by domain name dispute resolution panel will be welcomed by brand owners, an expert has said. Intellectual property law specialist Rebecca Mitton of Pinsent Masons, the law firm behind Out-Law.com, said the High Court's judgment is important as it means decisions taken in accordance with the Uniform Dispute Resolution Policy (UDRP) can be considered binding with no right of appeal to UK courts. ... However, in a ruling seen by Out-Law.com, His Honour Judge Dight said that there was no "cause of action" that Yoyo.email could cite under the UDRP to justify its arguments being considered and that the policy also did not "afford any jurisdiction" to the High Court to "act as an appeal or review body" from the domain name dispute resolution panel's decision in August 2014." .... "It is also significant in setting a clear precedent that decisions made by UDRP panels through the WIPO procedure are not capable of being challenged through the courts. This provides certainty for brand owners who have achieved a positive result in such proceedings, safe in the knowledge that the decision is not open to review or appeal through the courts," she said. [2] https://www.lexology.com/library/detail.aspx?g=b19a14df-9dc5-494e-bb6e-6351f... "The High Court confirms that One in a Million is still good law, despite alleged developments in internet knowledge, and the High Court should not be used for appeals from domain name dispute panels (Yoyo.email Limited v Royal Bank of Scotland Group Plc and others [2015] EWHC 3509 (Ch)) ... Issues ... 2. whether decisions under the ICANN UDRP are open to review by the High Court. ... The decision on the second question surrounded the interpretation of a clause in the UDRP, which stated as follows: “Availability of Court Proceedings. The mandatory administrative proceedings requirements set forth in Paragraph 4 shall not prevent you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded…” Dight HHJ held that, on the proper construction of the clause, it did not give rise to a separate cause of action in favour of Yoyo, nor did it afford any jurisdiction to the High Court to act as an appeal or review body from the decision of the Panel. He also confirmed that there would be no material difference in seeking an appeal as from the Dispute Resolution Service Policy (the “DRS”) operated by Nominet in the UK than under the UDRP. The judge therefore proceeded to strike the claim out." ... The decision provides a useful lesson that the UK courts should not be used as an appeals court for domain dispute resolution already decision under the DRS or the UDRP. The judgment reinforces that the people appointed to the relevant panel are often experts in determining these kinds of cases and it generally would not be appropriate for the courts to make comment. It is also important for parties to remember that seeking declaratory relief from the court would also not change the rights in respect of the Domain Names, therefore meaning that there is no practical utility in granting the declarations." [3] https://www.lexology.com/library/detail.aspx?g=4f1b77cc-8474-4e9f-b02d-f6547... "The High Court also clarified that it did not have jurisdiction to hear appeals of uniform dispute resolution policy (UDRP) or Dispute Resolution Service (DRS) decisions. ... In relation to the claimant's request for declaratory relief, the court held that the UDRP did not "afford any jurisdiction" to the High Court to "act as an appeal or review body" from the domain name dispute resolution panel's decision in August 2014. The judge held that clause 4k of the UDRP (which states that the parties are not barred from taking the matter to court after its conclusion) did not give rise to a separate cause of action in favour of the claimant, nor give the court any jurisdiction to act as an appeal or review body in relation to the UDRP decision. This is in line with the previous case of 'Toth' which similarly held that the court did not have jurisdiction to hear appeals of DRS policy decisions. (By way of reminder, Nominet's DRS policy is applicable in relation to '.co.uk' domain names whilst WIPO's UDRP is relevant to various other gTLDs, such as '.email' in this case.)" Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Mon, Nov 20, 2017 at 2:44 AM, Jonathan_agmon icann <jonathan.agmon.icann@ip-law.legal> wrote:

George,

My reading of the case is different. I don't think anything in the RBS decision (attached) interfere with existing legal rights of a TM holder or a domain name registrant. On the contrary, the court simply says that the UDRP does not of itself creates a cause of action to either party under English law. The court does not say that the parties cannot bring an action under available causes of action they have under English law. The Claimant simply didn't do so (with the URS/UDRP in existence or without it). Nothing in the decision prevented the Claimant or future claimants from filing proceedings in the UK to challenge a UDRP decision under existing causes of action. The court actually says that UDRP does not replace or interfere with English law or the available causes of action.

If you read the decision you should come at the conclusion that the court heard the parties de novo and stated that in view of its finding the application for declaratory judgment was rendered otiose {Par 31(5) which you didn't cite} and the application for summary judgment on behalf of the TM holder was accepted. Courts in the UK do not provide remedy when its application serves no practical utility. I have not read the Australian decision but I have not seen to date a decision which disturbs the assumptions that ADR mechanisms, which parties agree to interfere with existing legal rights (unless the parties agreed to such changes and local law allows such changes to be made). I am of course happy to review such, if they exist.

I believe there was nothing for the claimant [Yoyo Mail] to appeal because it lost on the evidence. It is also important to note that the remedy the disputed domain name holder sought was one for declaratory judgment. It did not argue any other cause of action. In contrast, the TM holder RBS counterclaimed with trademark infringement and passing off. The court discuss at length the causes of action brought by the RBS, the trademark holder in the counterclaim and finds them well established and that "actionable passing off occurred at the point of registration of the Domain Names..." [at par. 17]. The court goes on to state that misrepresentation cannot be corrected: "there is nothing in that first stage of the claimant's system which would neutralise or correct the misrepresentation and confusion which, in my judgment, would be created by registration of the Domain Names in the first place." [Par. 18]. The court reviewed evidence and even watched videos during the hearing. The court states that "[e]ven taking its evidence at its highest the claimant does not satisfy me that it has a realistic, as opposed, to fanciful prospect of successfully defending the counterclaim." [At par. 22] The Judge then accepts the counterclaim through the application for summary judgment. In other words the Claimant's case was heard and rejected.

But even more importantly, the parties agreed that if the application for summary judgment is successful, the judge does not have to rule on the application for declaratory judgment. The court statement that the Claimant has no cause of action relates to the fact that he moved for a declaratory judgment that the court will state that the Claimant registered and used the disputed domain name in bad faith, but the Court refuses to do so because in view of the acceptance of the application for summary judgment, there is no practical utility in deciding that request. The result is a direct flow of the fact that the court accepted the application for summary judgment. The Claimant simply didn't state any other claim and the UDRP was not intended to nor does it provide new causes of action under UK law (or any other law for that matter). To have new causes of action you require the legislator to legislate.

If you are suggesting a change to this situation (applying ACPA to other countries outside the US) you may be looking at enhancing the URDP/URS to the level of international treaties, which when accepted by countries would generate new causes of action (and this can be done according to the internal treaty implementation provisions of each member country).

I do agree with you that Paul's suggestion that applicants should all file action in the US is impractical for many reasons and may at most times be impossible from a US law perspective.

Jonathan

-----Original Message----- From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Monday, November 20, 2017 6:50 AM To: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Availability of Court for Domain Name owners challenging a URS decision -- false assumption?

Hi folks,

I brought up this topic on Wednesday's RPM PDP call, and Kathy suggested that I put the issue in writing for the benefit of the broader working group that hadn't attended the call.

There's been an implicit and fundamental assumption that the URS (and similarly, the UDRP) doesn't interfere with the existing legal rights of a TM holder or a domain name registrant, and that either party can bring an action in court, heard on a de novo basis, to challenge the outcome of a URS (or a UDRP), either before, during or after the ADR procedure devised by ICANN. The ADR was intended to complement existing law, and wasn't intended to interfere with or replace existing law.

Is that assumption correct in all jurisdictions worldwide? If not, what must be done to correct the situation? (since this violates the fundamental "bargain" that led to the establishment of those policies in the first place)

This is not some theoretical concern. Consider the Yoyo.email case, described at:

https://www.out-law.com/en/articles/2015/december/ruling-means-uk-courts-wil... https://www.lexology.com/library/detail.aspx?g=b19a14df-9dc5-494e-bb6e-6351f... https://www.lexology.com/library/detail.aspx?g=4f1b77cc-8474-4e9f-b02d-f6547... http://www.bailii.org/ew/cases/EWHC/Ch/2015/3509.html

"31. My conclusions on the application to strike out the Claim are:

1) adopting the reasoning of Ms Proudman in Patel drives me to hold that on a proper construction of the UDRP clause 4k does not give rise to a separate cause of action in favour of the claimant;

2) nor does it afford any jurisdiction to this Court to act as an appeal or review body from the Decision;"

While the Yoyo.email court complainant is not a sympathetic party to some, the above decision attacks the very foundation of the URS (and UDRP). This should be a high priority for remedial policymaking, as it was an unintended consequence that is now having real-world effects.

While the above is in the context of a court challenge to a UDRP decision against a domain name registrant, the exact same analysis applies to the URS. Thus, now is the appropriate time to tackle the issue (and kill two birds with one stone).

This jurisprudence appears limited to the UK, and perhaps Australia where apparently a few other cases may have encountered the same problem (as has been discussed in the IGOs PDP where I and a few other members of this RPM PDP first discussed the issue).

The cause of the problem is easy to identify.

If there was no URS (or UDRP) policy in place what would be the "law" and the procedural path to justice? Clearly, a trademark holder would have a "cause of action" under trademark law against a domain name registrant. The TM holder would file a lawsuit (as plaintiff) against the domain name registrant (as defendant).

With the URS (or UDRP), the procedural path to justice is altered in the event a TM holder uses it and is successful under the ADR. To challenge the outcome of the ADR, the domain name registrant now has the role of the plaintiff in court, and the TM holder is the defendant. The parties have switched their prior positions as plaintiffs and defendants, and it turns out that might cause a significant problem in some jurisdictions. i.e. it might make a difference which party to the dispute files in court as plaintiff in some jurisdictions.

That UK court is saying that ICANN can't simply conjure a "cause of action" out of thin air. If the domain name registrant brings a case in that UK court, that court is saying "you have no cause of action, ICANN can't create one for you, bye bye, case dismissed."

Now, under the ACPA in the USA, there is a clear cause of action for domain name registrants that they can follow, so it's not a problem. And other courts in other jurisdictions have heard cases similarly brought by a domain name registrant challenging ADR procedures devised by ICANN.

If we look at the language of URS itself:

http://newgtlds.icann.org/en/applicants/urs/procedure-01mar13-en.pdf

"13. Other Available Remedies The URS Determination shall 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 URS Determination for or against a party shall not prejudice the party in UDRP or any other proceedings."

It's clear that in some jurisdictions, there appears to be that exact "prejudice" to the domain name registrant, who now becomes a "plaintiff with no cause of action". Without the procedure, they would have been a "defendant with available defenses to the cause of action brought by the trademark holder." The ADR procedure itself, by switching who becomes plaintiff and who becomes defendant in a lawsuit, is interfering with the rights those parties had before the policies were adopted by ICANN.

What could be done to restore the proper balance?

(1) the URS (and/or UDRP) could be eliminated entirely (or made optional for the domain name owner),

or

(2) in the event a court refuses to hear a case brought by the domain name owner challenging a URS (or UDRP) ruling, then the URS (or UDRP) decision needs to be set aside, and the TM owner can instead file a TM dispute themselves directly in real court if they want to take the dispute further.

Paul McGrady suggested a third option on Wednesday, namely:

(3) allowing all domain registrants to file actions in US courts

which, I think would be problematic for obvious reasons (but I do applaud him for participating in the active discussions, thinking on his feet and helping to brainstorm during a live call). [Why should a Chinese registrant in a dispute with a Pakistani TM holder for a domain at an Irish TLD / registry operator and a German registrar be compelled to have the dispute heard in the USA?] We have to make policies that are robust to global law and international jurisdictions.

I look forward to a productive discussion on this important topic.

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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Jonathan, My understanding is that these UK cases which appear to deny the de novo review, which is at odds with the "bargain" that was made when the policies were adopted (i.e. that they were not final, not binding arbitration at all), might have started 5 years ago with a case between Toth and Emirates Airlines, as mentioned in this article: https://www.theregister.co.uk/2012/03/22/nominet_rules_mean_abusive_domain_n... (that was a DRS case under .uk, but then it impacted some ICANN-regulated gTLD cases) While you suggest that "the domain name holder agrees with the registrar on binding arbitration", I respectfully disagree. At some point we can go back to the history of the development of these ADR procedures (and it helps that folks like Kathy, J. Scott, etc. were all around for the UDRP, and others for the URS, and others for PDDRP, etc.), and they can refer to the primary documents and discussions, as to whether any of those policies were intended to be the "final word" via binding arbitration, or instead were lightweight procedures that were subject to de novo review. Have a nice Thanksgiving holiday week. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Mon, Nov 20, 2017 at 7:23 PM, Jonathan_agmon icann < jonathan.agmon.icann@ip-law.legal> wrote:

George,

I think it is best to stick to the facts and read the decision. It speaks for itself.

As to the statements you refer to below I am unclear what you propose. Clearly the UDRP/URS were not designed to create an appealate jurisdiction on a national level. I believe that fhe fact that ACPA exists in the US is an exception not the international norm.

As I wrote below, I believe amending the UDRP/URS to provide a national appealate jurisdiction would require an international convention to be ratified by the member states. I'm not sure this exercise is within the WG charter scope.

Rebecca below says the ADR decision is binding and she is correct because the domain name holder agrees with the registrar on binding arbitration. Again, I am unclear whats wrong with that. This does not take away any rights the parties already have. The domain name holder can still use whatever cause of action he has under national law to bring suit against the TM owner.

Again, nothing in the decision prevents the domain holder from filing oroceedings in UK courts. I believe nothing cited below syas otherwise. As with any national court a plaintiff has to identify what is his cause of action. In the yoyo.mail case the Claimant failed to do so. This is not an usual case in that respect. I think the few articles that tried to make big news out of a rather simple outcome cannot really change this.

*From:* icann@leap.com *Sent:* 20 November 2017 9:37 pm *To:* gnso-rpm-wg@icann.org *Subject:* Re: [gnso-rpm-wg] Availability of Court for Domain Name owners challenging a URS decision -- false assumption?

Hi Jonathan,

I believe your reading of the case is inconsistent with how others have analyzed it. In my initial post I linked to 3 separate articles analyzing the decision. I didn't bother to quote from them, but let me do so now:

[1] https://www.out-law.com/en/articles/2015/december/ruling- means-uk-courts-will-not-overturn-decisions-by-domain- name-dispute-resolution-panels-says-expert/

"Ruling means UK courts will not overturn decisions by domain name dispute resolution panels, says expert ... A UK court ruling that it did not have the jurisdiction to hear and determine an appeal against a decision taken by domain name dispute resolution panel will be welcomed by brand owners, an expert has said.

Intellectual property law specialist Rebecca Mitton of Pinsent Masons, the law firm behind Out-Law.com, said the High Court's judgment is important as it means decisions taken in accordance with the Uniform Dispute Resolution Policy (UDRP) can be considered binding with no right of appeal to UK courts. ... However, in a ruling seen by Out-Law.com, His Honour Judge Dight said that there was no "cause of action" that Yoyo.email could cite under the UDRP to justify its arguments being considered and that the policy also did not "afford any jurisdiction" to the High Court to "act as an appeal or review body" from the domain name dispute resolution panel's decision in August 2014." .... "It is also significant in setting a clear precedent that decisions made by UDRP panels through the WIPO procedure are not capable of being challenged through the courts. This provides certainty for brand owners who have achieved a positive result in such proceedings, safe in the knowledge that the decision is not open to review or appeal through the courts," she said.

[2] https://www.lexology.com/library/detail.aspx?g= b19a14df-9dc5-494e-bb6e-6351f7e0e35b

"The High Court confirms that One in a Million is still good law, despite alleged developments in internet knowledge, and the High Court should not be used for appeals from domain name dispute panels (Yoyo.email Limited v Royal Bank of Scotland Group Plc and others [2015] EWHC 3509 (Ch)) ... Issues ... 2. whether decisions under the ICANN UDRP are open to review by the High Court. ... The decision on the second question surrounded the interpretation of a clause in the UDRP, which stated as follows:

“Availability of Court Proceedings. The mandatory administrative proceedings requirements set forth in Paragraph 4 shall not prevent you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded…”

Dight HHJ held that, on the proper construction of the clause, it did not give rise to a separate cause of action in favour of Yoyo, nor did it afford any jurisdiction to the High Court to act as an appeal or review body from the decision of the Panel. He also confirmed that there would be no material difference in seeking an appeal as from the Dispute Resolution Service Policy (the “DRS”) operated by Nominet in the UK than under the UDRP.

The judge therefore proceeded to strike the claim out." ... The decision provides a useful lesson that the UK courts should not be used as an appeals court for domain dispute resolution already decision under the DRS or the UDRP. The judgment reinforces that the people appointed to the relevant panel are often experts in determining these kinds of cases and it generally would not be appropriate for the courts to make comment. It is also important for parties to remember that seeking declaratory relief from the court would also not change the rights in respect of the Domain Names, therefore meaning that there is no practical utility in granting the declarations."

[3] https://www.lexology.com/library/detail.aspx?g= 4f1b77cc-8474-4e9f-b02d-f6547ef7490f

"The High Court also clarified that it did not have jurisdiction to hear appeals of uniform dispute resolution policy (UDRP) or Dispute Resolution Service (DRS) decisions. ... In relation to the claimant's request for declaratory relief, the court held that the UDRP did not "afford any jurisdiction" to the High Court to "act as an appeal or review body" from the domain name dispute resolution panel's decision in August 2014. The judge held that clause 4k of the UDRP (which states that the parties are not barred from taking the matter to court after its conclusion) did not give rise to a separate cause of action in favour of the claimant, nor give the court any jurisdiction to act as an appeal or review body in relation to the UDRP decision. This is in line with the previous case of 'Toth' which similarly held that the court did not have jurisdiction to hear appeals of DRS policy decisions. (By way of reminder, Nominet's DRS policy is applicable in relation to '.co.uk' domain names whilst WIPO's UDRP is relevant to various other gTLDs, such as '.email' in this case.)"

Sincerely,

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

On Mon, Nov 20, 2017 at 2:44 AM, Jonathan_agmon icann <jonathan.agmon.icann@ip-law.legal> wrote:

...

George,

My reading of the case is different. I don't think anything in the RBS decision (attached) interfere with existing legal rights of a TM holder or a domain name registrant. On the contrary, the court simply says that the UDRP does not of itself creates a cause of action to either party under English law. The court does not say that the parties cannot bring an action under available causes of action they have under English law. The Claimant simply didn't do so (with the URS/UDRP in existence or without it). Nothing in the decision prevented the Claimant or future claimants from filing proceedings in the UK to challenge a UDRP decision under existing causes of action. The court actually says that UDRP does not replace or interfere with English law or the available causes of action.

If you read the decision you should come at the conclusion that the court heard the parties de novo and stated that in view of its finding the application for declaratory judgment was rendered otiose {Par 31(5) which you didn't cite} and the application for summary judgment on behalf of the TM holder was accepted. Courts in the UK do not provide remedy when its application serves no practical utility. I have not read the Australian decision but I have not seen to date a decision which disturbs the assumptions that ADR mechanisms, which parties agree to interfere with existing legal rights (unless the parties agreed to such changes and local law allows such changes to be made). I am of course happy to review such, if they exist.

I believe there was nothing for the claimant [Yoyo Mail] to appeal because it lost on the evidence. It is also important to note that the remedy the disputed domain name holder sought was one for declaratory judgment. It did not argue any other cause of action. In contrast, the TM holder RBS counterclaimed with trademark infringement and passing off. The court discuss at length the causes of action brought by the RBS, the trademark holder in the counterclaim and finds them well established and that "actionable passing off occurred at the point of registration of the Domain Names..." [at par. 17]. The court goes on to state that misrepresentation cannot be corrected: "there is nothing in that first stage of the claimant's system which would neutralise or correct the misrepresentation and confusion which, in my judgment, would be created by registration of the Domain Names in the first place." [Par. 18]. The court reviewed evidence and even watched videos during the hearing. The court states that "[e]ven taking its evidence at its highest the claimant does not satisfy me that it has a realistic, as opposed, to fanciful prospect of successfully defending the counterclaim." [At par. 22] The Judge then accepts the counterclaim through the application for summary judgment. In other words the Claimant's case was heard and rejected.

But even more importantly, the parties agreed that if the application for summary judgment is successful, the judge does not have to rule on the application for declaratory judgment. The court statement that the Claimant has no cause of action relates to the fact that he moved for a declaratory judgment that the court will state that the Claimant registered and used the disputed domain name in bad faith, but the Court refuses to do so because in view of the acceptance of the application for summary judgment, there is no practical utility in deciding that request. The result is a direct flow of the fact that the court accepted the application for summary judgment. The Claimant simply didn't state any other claim and the UDRP was not intended to nor does it provide new causes of action under UK law (or any other law for that matter). To have new causes of action you require the legislator to legislate.

If you are suggesting a change to this situation (applying ACPA to other countries outside the US) you may be looking at enhancing the URDP/URS to the level of international treaties, which when accepted by countries would generate new causes of action (and this can be done according to the internal treaty implementation provisions of each member country).

I do agree with you that Paul's suggestion that applicants should all file action in the US is impractical for many reasons and may at most times be impossible from a US law perspective.

Jonathan

-----Original Message----- From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces@icann.org <gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos Sent: Monday, November 20, 2017 6:50 AM To: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: [gnso-rpm-wg] Availability of Court for Domain Name owners challenging a URS decision -- false assumption?

Hi folks,

I brought up this topic on Wednesday's RPM PDP call, and Kathy suggested that I put the issue in writing for the benefit of the broader working group that hadn't attended the call.

There's been an implicit and fundamental assumption that the URS (and similarly, the UDRP) doesn't interfere with the existing legal rights of a TM holder or a domain name registrant, and that either party can bring an action in court, heard on a de novo basis, to challenge the outcome of a URS (or a UDRP), either before, during or after the ADR procedure devised by ICANN. The ADR was intended to complement existing law, and wasn't intended to interfere with or replace existing law.

Is that assumption correct in all jurisdictions worldwide? If not, what must be done to correct the situation? (since this violates the fundamental "bargain" that led to the establishment of those policies in the first place)

This is not some theoretical concern. Consider the Yoyo.email case, described at:

https://www.out-law.com/en/articles/2015/december/ruling- means-uk-courts-will-not-overturn-decisions-by-domain- name-dispute-resolution-panels-says-expert/ https://www.lexology.com/library/detail.aspx?g=b19a14df-9dc5-494e-bb6e- 6351f7e0e35b https://www.lexology.com/library/detail.aspx?g=4f1b77cc-8474-4e9f-b02d- f6547ef7490f http://www.bailii.org/ew/cases/EWHC/Ch/2015/3509.html

"31. My conclusions on the application to strike out the Claim are:

1) adopting the reasoning of Ms Proudman in Patel drives me to hold that on a proper construction of the UDRP clause 4k does not give rise to a separate cause of action in favour of the claimant;

2) nor does it afford any jurisdiction to this Court to act as an appeal or review body from the Decision;"

While the Yoyo.email court complainant is not a sympathetic party to some, the above decision attacks the very foundation of the URS (and UDRP). This should be a high priority for remedial policymaking, as it was an unintended consequence that is now having real-world effects.

While the above is in the context of a court challenge to a UDRP decision against a domain name registrant, the exact same analysis applies to the URS. Thus, now is the appropriate time to tackle the issue (and kill two birds with one stone).

This jurisprudence appears limited to the UK, and perhaps Australia where apparently a few other cases may have encountered the same problem (as has been discussed in the IGOs PDP where I and a few other members of this RPM PDP first discussed the issue).

The cause of the problem is easy to identify.

If there was no URS (or UDRP) policy in place what would be the "law" and the procedural path to justice? Clearly, a trademark holder would have a "cause of action" under trademark law against a domain name registrant. The TM holder would file a lawsuit (as plaintiff) against the domain name registrant (as defendant).

With the URS (or UDRP), the procedural path to justice is altered in the event a TM holder uses it and is successful under the ADR. To challenge the outcome of the ADR, the domain name registrant now has the role of the plaintiff in court, and the TM holder is the defendant. The parties have switched their prior positions as plaintiffs and defendants, and it turns out that might cause a significant problem in some jurisdictions. i.e. it might make a difference which party to the dispute files in court as plaintiff in some jurisdictions.

That UK court is saying that ICANN can't simply conjure a "cause of action" out of thin air. If the domain name registrant brings a case in that UK court, that court is saying "you have no cause of action, ICANN can't create one for you, bye bye, case dismissed."

Now, under the ACPA in the USA, there is a clear cause of action for domain name registrants that they can follow, so it's not a problem. And other courts in other jurisdictions have heard cases similarly brought by a domain name registrant challenging ADR procedures devised by ICANN.

If we look at the language of URS itself:

http://newgtlds.icann.org/en/applicants/urs/procedure-01mar13-en.pdf

"13. Other Available Remedies The URS Determination shall 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 URS Determination for or against a party shall not prejudice the party in UDRP or any other proceedings."

It's clear that in some jurisdictions, there appears to be that exact "prejudice" to the domain name registrant, who now becomes a "plaintiff with no cause of action". Without the procedure, they would have been a "defendant with available defenses to the cause of action brought by the trademark holder." The ADR procedure itself, by switching who becomes plaintiff and who becomes defendant in a lawsuit, is interfering with the rights those parties had before the policies were adopted by ICANN.

What could be done to restore the proper balance?

(1) the URS (and/or UDRP) could be eliminated entirely (or made optional for the domain name owner),

or

(2) in the event a court refuses to hear a case brought by the domain name owner challenging a URS (or UDRP) ruling, then the URS (or UDRP) decision needs to be set aside, and the TM owner can instead file a TM dispute themselves directly in real court if they want to take the dispute further.

Paul McGrady suggested a third option on Wednesday, namely:

(3) allowing all domain registrants to file actions in US courts

which, I think would be problematic for obvious reasons (but I do applaud him for participating in the active discussions, thinking on his feet and helping to brainstorm during a live call). [Why should a Chinese registrant in a dispute with a Pakistani TM holder for a domain at an Irish TLD / registry operator and a German registrar be compelled to have the dispute heard in the USA?] We have to make policies that are robust to global law and international jurisdictions.

I look forward to a productive discussion on this important topic.

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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All true, but UK courts have set different precedents. As they say: "In court and on the high seas..." Volker Am 21.11.2017 um 13:59 schrieb Paul Tattersfield:

UDRP is an administrative proceeding not arbitration it makes provisions for parties to resolve their differences by arbitration or court proceedings

On Tue, Nov 21, 2017 at 12:16 PM, George Kirikos <icann@leap.com <mailto:icann@leap.com>> wrote:

Jonathan,

My understanding is that these UK cases which appear to deny the de novo review, which is at odds with the "bargain" that was made when the policies were adopted (i.e. that they were not final, not binding arbitration at all), might have started 5 years ago with a case between Toth and Emirates Airlines, as mentioned in this article:

https://www.theregister.co.uk/2012/03/22/nominet_rules_mean_abusive_domain_n... <https://www.theregister.co.uk/2012/03/22/nominet_rules_mean_abusive_domain_n...>

(that was a DRS case under .uk, but then it impacted some ICANN-regulated gTLD cases)

While you suggest that "the domain name holder agrees with the registrar on binding arbitration", I respectfully disagree. At some point we can go back to the history of the development of these ADR procedures (and it helps that folks like Kathy, J. Scott, etc. were all around for the UDRP, and others for the URS, and others for PDDRP, etc.), and they can refer to the primary documents and discussions, as to whether any of those policies were intended to be the "final word" via binding arbitration, or instead were lightweight procedures that were subject to de novo review.

Have a nice Thanksgiving holiday week.

Sincerely,

George Kirikos 416-588-0269 <tel:%28416%29%20588-0269> http://www.leap.com/

On Mon, Nov 20, 2017 at 7:23 PM, Jonathan_agmon icann <jonathan.agmon.icann@ip-law.legal <mailto:jonathan.agmon.icann@ip-law.legal>> wrote:

George,

I think it is best to stick to the facts and read the decision. It speaks for itself.

As to the statements you refer to below I am unclear what you propose. Clearly the UDRP/URS were not designed to create an appealate jurisdiction on a national level. I believe that fhe fact that ACPA exists in the US is an exception not the international norm.

As I wrote below, I believe amending the UDRP/URS to provide a national appealate jurisdiction would require an international convention to be ratified by the member states. I'm not sure this exercise is within the WG charter scope.

Rebecca below says the ADR decision is binding and she is correct because the domain name holder agrees with the registrar on binding arbitration. Again, I am unclear whats wrong with that. This does not take away any rights the parties already have. The domain name holder can still use whatever cause of action he has under national law to bring suit against the TM owner.

Again, nothing in the decision prevents the domain holder from filing oroceedings in UK courts. I believe nothing cited below syas otherwise. As with any national court a plaintiff has to identify what is his cause of action. In the yoyo.mail case the Claimant failed to do so. This is not an usual case in that respect. I think the few articles that tried to make big news out of a rather simple outcome cannot really change this.

*From:* icann@leap.com <mailto:icann@leap.com> *Sent:* 20 November 2017 9:37 pm *To:* gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org> *Subject:* Re: [gnso-rpm-wg] Availability of Court for Domain Name owners challenging a URS decision -- false assumption?

Hi Jonathan,

I believe your reading of the case is inconsistent with how others have analyzed it. In my initial post I linked to 3 separate articles analyzing the decision. I didn't bother to quote from them, but let me do so now:

[1] https://www.out-law.com/en/articles/2015/december/ruling-means-uk-courts-wil... <https://www.out-law.com/en/articles/2015/december/ruling-means-uk-courts-wil...>

"Ruling means UK courts will not overturn decisions by domain name dispute resolution panels, says expert ... A UK court ruling that it did not have the jurisdiction to hear and determine an appeal against a decision taken by domain name dispute resolution panel will be welcomed by brand owners, an expert has said.

Intellectual property law specialist Rebecca Mitton of Pinsent Masons, the law firm behind Out-Law.com, said the High Court's judgment is important as it means decisions taken in accordance with the Uniform Dispute Resolution Policy (UDRP) can be considered binding with no right of appeal to UK courts. ... However, in a ruling seen by Out-Law.com, His Honour Judge Dight said that there was no "cause of action" that Yoyo.email could cite under the UDRP to justify its arguments being considered and that the policy also did not "afford any jurisdiction" to the High Court to "act as an appeal or review body" from the domain name dispute resolution panel's decision in August 2014." .... "It is also significant in setting a clear precedent that decisions made by UDRP panels through the WIPO procedure are not capable of being challenged through the courts. This provides certainty for brand owners who have achieved a positive result in such proceedings, safe in the knowledge that the decision is not open to review or appeal through the courts," she said.

[2] https://www.lexology.com/library/detail.aspx?g=b19a14df-9dc5-494e-bb6e-6351f... <https://www.lexology.com/library/detail.aspx?g=b19a14df-9dc5-494e-bb6e-6351f...>

"The High Court confirms that One in a Million is still good law, despite alleged developments in internet knowledge, and the High Court should not be used for appeals from domain name dispute panels (Yoyo.email Limited v Royal Bank of Scotland Group Plc and others [2015] EWHC 3509 (Ch)) ... Issues ... 2. whether decisions under the ICANN UDRP are open to review by the High Court. ... The decision on the second question surrounded the interpretation of a clause in the UDRP, which stated as follows:

 “Availability of Court Proceedings. The mandatory administrative proceedings requirements set forth in Paragraph 4 shall not prevent you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded…”

Dight HHJ held that, on the proper construction of the clause, it did not give rise to a separate cause of action in favour of Yoyo, nor did it afford any jurisdiction to the High Court to act as an appeal or review body from the decision of the Panel. He also confirmed that there would be no material difference in seeking an appeal as from the Dispute Resolution Service Policy (the “DRS”) operated by Nominet in the UK than under the UDRP.

The judge therefore proceeded to strike the claim out." ... The decision provides a useful lesson that the UK courts should not be used as an appeals court for domain dispute resolution already decision under the DRS or the UDRP. The judgment reinforces that the people appointed to the relevant panel are often experts in determining these kinds of cases and it generally would not be appropriate for the courts to make comment. It is also important for parties to remember that seeking declaratory relief from the court would also not change the rights in respect of the Domain Names, therefore meaning that there is no practical utility in granting the declarations."

[3] https://www.lexology.com/library/detail.aspx?g=4f1b77cc-8474-4e9f-b02d-f6547... <https://www.lexology.com/library/detail.aspx?g=4f1b77cc-8474-4e9f-b02d-f6547...>

"The High Court also clarified that it did not have jurisdiction to hear appeals of uniform dispute resolution policy (UDRP) or Dispute Resolution Service (DRS) decisions. ... In relation to the claimant's request for declaratory relief, the court held that the UDRP did not "afford any jurisdiction" to the High Court to "act as an appeal or review body" from the domain name dispute resolution panel's decision in August 2014. The judge held that clause 4k of the UDRP (which states that the parties are not barred from taking the matter to court after its conclusion) did not give rise to a separate cause of action in favour of the claimant, nor give the court any jurisdiction to act as an appeal or review body in relation to the UDRP decision. This is in line with the previous case of 'Toth' which similarly held that the court did not have jurisdiction to hear appeals of DRS policy decisions. (By way of reminder, Nominet's DRS policy is applicable in relation to '.co.uk <http://co.uk>' domain names whilst WIPO's UDRP is relevant to various other gTLDs, such as '.email' in this case.)"

Sincerely,

George Kirikos 416-588-0269 <tel:%28416%29%20588-0269> http://www.leap.com/

On Mon, Nov 20, 2017 at 2:44 AM, Jonathan_agmon icann <jonathan.agmon.icann@ip-law.legal> wrote: > George, > > My reading of the case is different. I don't think anything in the RBS decision (attached) interfere with existing legal rights of a TM holder or a domain name registrant. On the contrary, the court simply says that the UDRP does not of itself creates a cause of action to either party under English law. The court does not say that the parties cannot bring an action under available causes of action they have under English law. The Claimant simply didn't do so (with the URS/UDRP in existence or without it). Nothing in the decision prevented the Claimant or future claimants from filing proceedings in the UK to challenge a UDRP decision under existing causes of action.  The court actually says that UDRP does not replace or interfere with English law or the available causes of action. > > If you read the decision you should come at the conclusion that the court heard the parties de novo and stated that in view of its finding the application for declaratory judgment was rendered otiose {Par 31(5) which you didn't cite} and the application for summary judgment on behalf of the TM holder was accepted. Courts in the UK do not provide remedy when its application serves no practical utility. I have not read the Australian decision but I have not seen to date a decision which disturbs the assumptions that ADR mechanisms, which parties agree to interfere with existing legal rights (unless the parties agreed to such changes and local law allows such changes to be made). I am of course happy to review such, if they exist. > > I believe there was nothing for the claimant [Yoyo Mail] to appeal because it lost on the evidence. It is also important to note that the remedy the disputed domain name holder sought was one for declaratory judgment. It did not argue any other cause of action. In contrast, the TM holder RBS counterclaimed with trademark infringement and passing off. The court discuss at length the causes of action brought by the RBS, the trademark holder in the counterclaim and finds them well established and that "actionable passing off occurred at the point of registration of the Domain Names..." [at par. 17]. The court goes on to state that misrepresentation cannot be corrected: "there is nothing in that first stage of the claimant's system which would neutralise or correct the misrepresentation and confusion which, in my judgment, would be created by registration of the Domain Names in the first place." [Par. 18]. The court reviewed evidence and even watched videos during the hearing. The court states that "[e]ven taking its evidence at its highest the claimant does not satisfy me that it has a realistic, as opposed, to fanciful prospect of successfully defending the counterclaim." [At par. 22] The Judge then accepts the counterclaim through the application for summary judgment. In other words the Claimant's case was heard and rejected. > > But even more importantly, the parties agreed that if the application for summary judgment is successful, the judge does not have to rule on the application for declaratory judgment. The court statement that the Claimant has no cause of action relates to the fact that he moved for a declaratory judgment that the court will state that the Claimant registered and used the disputed domain name in bad faith, but the Court refuses to do so because in view of the acceptance of the application for summary judgment, there is no practical utility in deciding that request. The result is a direct flow of the fact that the court accepted the application for summary judgment. The Claimant simply didn't state any other claim and the UDRP was not intended to nor does it provide new causes of action under UK law (or any other law for that matter). To have new causes of action you require the legislator to legislate. > > If you are suggesting a change to this situation (applying ACPA to other countries outside the US) you may be looking at enhancing the URDP/URS to the level of international treaties, which when accepted by countries would generate new causes of action (and this can be done according to the internal treaty implementation provisions of each member country). > > I do agree with you that Paul's suggestion that applicants should all file action in the US is impractical for many reasons and may at most times be impossible from a US law perspective. > > Jonathan > > > -----Original Message----- > From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces@icann.org <mailto:gnso-rpm-wg-bounces@icann.org>] On Behalf Of George Kirikos > Sent: Monday, November 20, 2017 6:50 AM > To: gnso-rpm-wg <gnso-rpm-wg@icann.org <mailto:gnso-rpm-wg@icann.org>> > Subject: [gnso-rpm-wg] Availability of Court for Domain Name owners challenging a URS decision -- false assumption? > > Hi folks, > > I brought up this topic on Wednesday's RPM PDP call, and Kathy suggested that I put the issue in writing for the benefit of the broader working group that hadn't attended the call. > > There's been an implicit and fundamental assumption that the URS (and similarly, the UDRP) doesn't interfere with the existing legal rights of a TM holder or a domain name registrant, and that either party can bring an action in court, heard on a de novo basis, to challenge the outcome of a URS (or a UDRP), either before, during or after the ADR procedure devised by ICANN. The ADR was intended to complement existing law, and wasn't intended to interfere with or replace existing law. > > Is that assumption correct in all jurisdictions worldwide? If not, what must be done to correct the situation? (since this violates the fundamental "bargain" that led to the establishment of those policies in the first place) > > This is not some theoretical concern. Consider the Yoyo.email case, described at: > > https://www.out-law.com/en/articles/2015/december/ruling-means-uk-courts-wil... <https://www.out-law.com/en/articles/2015/december/ruling-means-uk-courts-wil...> > https://www.lexology.com/library/detail.aspx?g=b19a14df-9dc5-494e-bb6e-6351f... <https://www.lexology.com/library/detail.aspx?g=b19a14df-9dc5-494e-bb6e-6351f...> > https://www.lexology.com/library/detail.aspx?g=4f1b77cc-8474-4e9f-b02d-f6547... <https://www.lexology.com/library/detail.aspx?g=4f1b77cc-8474-4e9f-b02d-f6547...> > http://www.bailii.org/ew/cases/EWHC/Ch/2015/3509.html <http://www.bailii.org/ew/cases/EWHC/Ch/2015/3509.html> > > "31. My conclusions on the application to strike out the Claim are: > > 1) adopting the reasoning of Ms Proudman in Patel drives me to hold that on a proper construction of the UDRP clause 4k does not give rise to a separate cause of action in favour of the claimant; > > 2) nor does it afford any jurisdiction to this Court to act as an appeal or review body from the Decision;" > > While the Yoyo.email court complainant is not a sympathetic party to some, the above decision attacks the very foundation of the URS (and UDRP). This should be a high priority for remedial policymaking, as it was an unintended consequence that is now having real-world effects. > > While the above is in the context of a court challenge to a UDRP decision against a domain name registrant, the exact same analysis applies to the URS. Thus, now is the appropriate time to tackle the issue (and kill two birds with one stone). > > This jurisprudence appears limited to the UK, and perhaps Australia where apparently a few other cases may have encountered the same problem (as has been discussed in the IGOs PDP where I and a few other members of this RPM PDP first discussed the issue). > > The cause of the problem is easy to identify. > > If there was no URS (or UDRP) policy in place what would be the "law" > and the procedural path to justice? Clearly, a trademark holder would have a "cause of action" under trademark law against a domain name registrant. The TM holder would file a lawsuit (as plaintiff) against the domain name registrant (as defendant). > > With the URS (or UDRP), the procedural path to justice is altered in the event a TM holder uses it and is successful under the ADR. To challenge the outcome of the ADR, the domain name registrant now has the role of the plaintiff in court, and the TM holder is the defendant. The parties have switched their prior positions as plaintiffs and defendants, and it turns out that might cause a significant problem in some jurisdictions. i.e. it might make a difference which party to the dispute files in court as plaintiff in some jurisdictions. > > That UK court is saying that ICANN can't simply conjure a "cause of action" out of thin air. If the domain name registrant brings a case in that UK court, that court is saying "you have no cause of action, ICANN can't create one for you, bye bye, case dismissed." > > Now, under the ACPA in the USA, there is a clear cause of action for domain name registrants that they can follow, so it's not a problem. > And other courts in other jurisdictions have heard cases similarly brought by a domain name registrant challenging ADR procedures devised by ICANN. > > If we look at the language of URS itself: > > http://newgtlds.icann.org/en/applicants/urs/procedure-01mar13-en.pdf <http://newgtlds.icann.org/en/applicants/urs/procedure-01mar13-en.pdf> > > "13. Other Available Remedies > The URS Determination shall 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 URS Determination for or against a party shall not prejudice the party in UDRP or any other proceedings." > > It's clear that in some jurisdictions, there appears to be that exact "prejudice" to the domain name registrant, who now becomes a "plaintiff with no cause of action". Without the procedure, they would have been a "defendant with available defenses to the cause of action brought by the trademark holder." The ADR procedure itself, by switching who becomes plaintiff and who becomes defendant in a lawsuit, is interfering with the rights those parties had before the policies were adopted by ICANN. > > What could be done to restore the proper balance? > > (1) the URS (and/or UDRP) could be eliminated entirely (or made optional for the domain name owner), > > or > > (2) in the event a court refuses to hear a case brought by the domain name owner challenging a URS (or UDRP) ruling, then the URS (or UDRP) decision needs to be set aside, and the TM owner can instead file a TM dispute themselves directly in real court if they want to take the dispute further. > > Paul McGrady suggested a third option on Wednesday, namely: > > (3) allowing all domain registrants to file actions in US courts > > which, I think would be problematic for obvious reasons (but I do applaud him for participating in the active discussions, thinking on his feet and helping to brainstorm during a live call). [Why should a Chinese registrant in a dispute with a Pakistani TM holder for a domain at an Irish TLD / registry operator and a German registrar be compelled to have the dispute heard in the USA?] We have to make policies that are robust to global law and international jurisdictions. > > I look forward to a productive discussion on this important topic. > > Sincerely, > > George Kirikos > 416-588-0269 <tel:%28416%29%20588-0269> > http://www.leap.com/ > _______________________________________________ > 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://mm.icann.org/mailman/listinfo/gnso-rpm-wg> > > ************************************************************************************ > This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. > ************************************************************************************ > > _______________________________________________ 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://mm.icann.org/mailman/listinfo/gnso-rpm-wg> ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************

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-- Bei weiteren Fragen stehen wir Ihnen gerne zur Verfügung. Mit freundlichen Grüßen, Volker A. Greimann - Rechtsabteilung - Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net Web: www.key-systems.net / www.RRPproxy.net www.domaindiscount24.com / www.BrandShelter.com Folgen Sie uns bei Twitter oder werden Sie unser Fan bei Facebook: www.facebook.com/KeySystems www.twitter.com/key_systems Geschäftsführer: Alexander Siffrin Handelsregister Nr.: HR B 18835 - Saarbruecken Umsatzsteuer ID.: DE211006534 Member of the KEYDRIVE GROUP www.keydrive.lu Der Inhalt dieser Nachricht ist vertraulich und nur für den angegebenen Empfänger bestimmt. Jede Form der Kenntnisgabe, Veröffentlichung oder Weitergabe an Dritte durch den Empfänger ist unzulässig. Sollte diese Nachricht nicht für Sie bestimmt sein, so bitten wir Sie, sich mit uns per E-Mail oder telefonisch in Verbindung zu setzen. -------------------------------------------- Should you have any further questions, please do not hesitate to contact us. Best regards, Volker A. Greimann - legal department - Key-Systems GmbH Im Oberen Werk 1 66386 St. Ingbert Tel.: +49 (0) 6894 - 9396 901 Fax.: +49 (0) 6894 - 9396 851 Email: vgreimann@key-systems.net Web: www.key-systems.net / www.RRPproxy.net www.domaindiscount24.com / www.BrandShelter.com Follow us on Twitter or join our fan community on Facebook and stay updated: www.facebook.com/KeySystems www.twitter.com/key_systems CEO: Alexander Siffrin Registration No.: HR B 18835 - Saarbruecken V.A.T. ID.: DE211006534 Member of the KEYDRIVE GROUP www.keydrive.lu This e-mail and its attachments is intended only for the person to whom it is addressed. Furthermore it is not permitted to publish any content of this email. You must not use, disclose, copy, print or rely on this e-mail. If an addressing or transmission error has misdirected this e-mail, kindly notify the author by replying to this e-mail or contacting us by telephone.

George, Are you saying that the PDDRP is supposed to create a new cause of action under any national law? Why would you think that? I am unclear why you think that par. 22.1 below means that parties have "no 'cause of action' to actually have de novo court review in certain jurisdictions."? Can you explain your reasoning? The fact of the matter is that these DRMs are just dispute resolutions mechanisms. Legally speaking they are agreements between parties who agree to adjudicate certain disputes in accordance with certain rules. I'll be happy to understand what you are trying to say. Thanks, -----Original Message----- From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of George Kirikos Sent: Tuesday, November 21, 2017 3:53 AM To: gnso-rpm-wg <gnso-rpm-wg@icann.org> Subject: Re: [gnso-rpm-wg] Availability of Court for Domain Name owners challenging a URS decision -- false assumption? By the way, this issue is likely not limited to just the URS/UDRP. It would appear to impact the PDDRP too, see the language of: https://newgtlds.icann.org/en/applicants/agb/pddrp-04jun12-en.pdf "22.1 The Trademark PDDRP is not intended as an exclusive procedure and does not preclude individuals from seeking remedies in courts of law, including, as applicable, review of an Expert Determination as to liability." (the word 'individuals' is strange in that sentence; I think they meant 'parties') If there's no 'cause of action' to actually have de novo court review in certain jurisdictions, then a registry operator might find themselves deprived of due process, should the PDDRP panel deliver an adverse decision to them. Given the number of registry operators based in the UK, and the enormous value of some of those TLDs, the need to ensure that they have access to courts too should be determined. [One can view which registries are based in the UK, or Australia, etc. and potentially vulnerable at: http://registrarstats.com/gTlds.aspx and sort by country] Sincerely _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ************************************************************************************ This footnote confirms that this email message has been scanned by PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses. ************************************************************************************