UDRP/URS decisions should be vitiated in the event of immunity claim by IGOs in the courts

[George Kirikos <gkirikos@xxxxxxxxx>]

Comments by: George Kirikos
Company: Leap of Faith Financial Services Inc.
Website: http://www.leap.com/
Date: February 27, 2017

Thank you for the opportunity to comment on the GNSO Initial Report on the 
IGO-INGO Access to Curative Rights Protection Mechanisms Policy Development 
Process as posted at:

https://www.icann.org/public-comments/igo-ingo-crp-access-initial-2017-01-20-en

As a participant in the PDP working group, I generally agree with the findings 
in the report, although my own comments here are independent of those of the 
working group itself or other participants. It's a well-researched and detailed 
report, with numerous footnotes that support its conclusions with relevant 
facts and law. Indeed, an external independent legal expert (an experienced law 
professor) was commissioned to support the research effort with regards to 
international law and immunity.

The working group sought input on what to do in the situation where an IGO 
successfully asserts immunity in a national court of law after an appeal by a 
losing domain name registrant of a UDRP or URS (see page 15 of the report). The 
only reasonable option in this situation is to vitiate or set aside the 
UDRP/URS ruling, in order to preserve the status quo and the legal rights of 
all parties and to ensure that the UDRP/URS does not interfere with those legal 
rights. It would put all parties in the same situation as if the UDRP/URS did 
not exist, and only the national laws existed.

The UDRP/URS was not designed to replace the law, but was instead put forth as 
a fast low-cost alternative procedure for clear cut cases of cybersquatting 
that fully preserved the rights of all parties to pursue their dispute in the 
courts, before, during, or after a UDRP/URS decision. Depriving a domain name 
registrant recourse to the courts through compulsory arbitration represents a 
denial of due process to those domain name registrants.

These are not trivial concerns, given that arbitration panels are not 
constituted in the same independent manner as the national courts, are not more 
expert with regards to national laws than the judges of those nations, and are 
often subject to forum shopping by complainants. Professor Michael Geist has 
documented this forum shopping problem at:

http://aix1.uottawa.ca/~geist/geistudrp.pdf
http://aix1.uottawa.ca/~geist/fairupdate.pdf

and the ADR provider eResolution even went out of business because too many 
respondents were winning their disputes, relative to pro-complainant providers 
WIPO and NAF. Since complainants choose the dispute resolution provider, the 
providers and panelists are incentivized due to their economic and financial 
interests to cater to those complainants with favourable outcomes, unlike the 
national courts.

Given the choice of proceeding in the courts (which IGOs are free to do) or 
proceeding with a UDRP/URS, IGOs will naturally choose the venue where the 
playing field is tilted unfairly in their favour. Removing the ability to 
appeal to the courts means that arbitration panelists, many of whom are 
notorious for their poor judgement, would have their decisions left unchecked. 
Indeed, one panelist at WIPO, Charné Le Roux, even abused the policy on behalf 
of a client as documented at:

http://domainnamewire.com/2016/05/20/udrp-panelist-reverse-domain-name-hijacking/

which resulted in a reverse domain name hijacking decision.  

The merits of an action often depend on the law of the jurisdiction concerned, 
and results can vary depending on the jurisprudence developed in a given 
nation. For example, free speech is treated differently in Canada/USA compared 
to China or Russia. It is only natural that domain name registrants would 
expect that those important questions of national law be interpreted by 
experienced neutral judges from their nation (e.g. in my company's case, 
Canada), rather than have the national laws interpreted by non-judges from 
outside that nation. Replacing those courts with non-judicial facsimiles is 
thus highly prejudicial to a registrant who would rely on those national courts 
and their interpretations of national law. Indeed, some domain name complaints 
would be entirely statute barred in national courts due to delay (i.e. 
exceeding the statute of limitations), but UDRP/URS panels routinely ignore 
these issues and take on any complaint regardless of those national laws. Due 
to ever growing expansionist interpretations of the UDRP by panelists seeking 
to "grow the business of disputes" where they are paid by volume rather than on 
an annual salary like a national judge, there are few "bright lines" or "safe 
harbours" for domain name registrants as compared to national laws.

The inability of a registrant to appeal to those national courts would mean 
that extremist UDRP panelists would be in a position to persistently and 
permanently deviate in their rulings from the relevant national laws, instead 
of having their decisions circumscribed by those laws. It would also mean that 
the UDRP/URS "test" would become de facto law (as would the remedies, i.e. 
transfer or cancellation), whereas a court is free to award money damages, 
grant injunctive relief to stop a particular confusing usage (but allow one to 
retain the domain name for other uses), etc. or find a different legal test, 
according to its own national laws. This is a crucial point, since the UDRP/URS 
were not designed to replace the national laws.

The ability to appeal to the courts would have limited value if UDRP/URS panels 
gave the correct decision 100% of the time. However, that is not the situation 
in reality. UDRP panels repeatedly make wrong decisions, forcing the 
registrants of valuable domain names to go to their national courts to correct 
injustices delivered by pro-complainant panelists. WIPO itself maintains a 
webpage with court cases related to UDRP decisions at:

http://www.wipo.int/amc/en/domains/challenged/

However, that page is not complete! Despite repeated attempts to bring new 
cases to their attention, for whatever reason the maintainers of that page have 
not added cases like

1. Soundstop.com -- 
http://domainnamewire.com/2016/07/21/mike-mann-overturns-udrp-decision-court/

involving a UDRP decision, one that was "not even close" in the minds of the 
panelists (i.e. it was 3-0 in favour of the complainant). Yet, when it got to 
court, where much greater due process protections exist, there was a different 
result -- namely the registrant retained the domain name under the settlement. 
If the UDRP complainants really had a "winning case", they'd have been entitled 
to money damages under the ACPA of up to $100,000, in addition to the transfer 
of the domain name.

2. AustinPain.com -- 
http://ia601008.us.archive.org/18/items/gov.uscourts.cod.147273/gov.uscourts.cod.147273.23.0.pdf

where not only was the UDRP decision at NAF overturned (see 
http://www.adrforum.com/domaindecisions/1536356.htm -- another 3-0 "not even 
close" decision in the minds of the panelists) but the "winner" of the UDRP 
ended up paying the domain name registrant $25,000 (and did not gain access to 
the domain name via the order; it
looks as though they might have bought it afterwards, though; the WHOIS history 
at DomainTools shows it changed hands around Jul 2015, a year after the court 
order).

3. SDT.com -- 
http://domainnamewire.com/2015/07/22/50000-penalty-for-filing-a-frivolous-udrp/

This domain name dispute was settled with the domain name owner being paid 
$50,000 for legal fees, damages, etc., and of course Telepathy retained their 
valuable domain name.

Given that IGOs especially covet short and valuable acronym domain names, where 
their value ($100,000+ for 3-letter .coms, or even $1 million+ for 2-letter 
.com domain names) justifies  registrants seeking the due process protections 
of the courts, it is imperative that those protections not be eliminated.

Thus, to conclude my comments with regards to vitiating, it is the only 
appropriate policy choice, to ensure the supremacy of the courts. ICANN has to 
follow the law, and not make up its own laws that replace the courts. Allowing 
IGOs (or anyone else for that matter) to engage in forum shopping to compel 
binding arbitration, where the result would be more favourable to them (and 
less favourable to registrants) than what might take place in a national court, 
would obviously not be acceptable to most registrants of valuable domain names. 

I had another brief comment to make on a separate topic, namely reimbursement 
or subsidies by ICANN of IGO costs for the UDRP/URS. I believe this would be 
the wrong approach, given that nations do not subsidize IGO costs for their 
legal actions, etc. The UDRP/URS are already relatively low cost procedures. If 
ICANN was to subsidize IGOs (presumably for a 1-panelist decision), then an 
equal subsidy should be provided to a domain name registrant (to afford a 
3-panelist decision) in order to ensure that parties are on an equal financial 
footing with regards to the case. Some IGOs are enormously well-funded 
organizations (e.g. WIPO, the UN, etc.), and don't deserve subsidies.

At the time of this submission, several other comments have been made and I'd 
like to comment on each of them in turn:

A] WIPO comments by Brian Beckham: 
https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/msg00000.html

It should be noted Mr. Beckham (and other representatives of IGOs) chose not to 
be active participants in this PDP, and instead created their own separate and 
private "small group" that came up with their own unbalanced recommendations 
outside the multi-stakeholder and transparent ICANN process.

The weakness of their comments is evident given they repeat self-centered dogma 
and provide no new facts or issues of law. When the facts don't support your 
position, it's said that one should pound the other side with the law. When the 
law doesn't support a position, one should pound the other side with the facts. 
When both facts and law don't support a position, one pounds on the table!

Mr. Beckham's table-pounding comments ignores facts, law, and even common sense.

He claimed (on page 2 of his comments) that the "guidance" with regards to the 
use of an assignee, agent, or licensee to file a UDRP/URS (in place of an IGO) 
"misses the target." The working group spent a considerable amount of time 
documenting this, and even provided a UDRP precedent, namely the UNITAID case 
(e.g. see page 80, in the footnotes, and also page 101, footnote 97).

http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2012-1922

This was even a case decided at WIPO! Indeed, the WIPO Overview at:

http://www.wipo.int/amc/en/domains/search/overview2.0/#18

(point #1.8) specifically states "In most circumstances, a licensee of a 
trademark or a related company such as a subsidiary or parent to the registered 
holder of a trademark is considered to have rights in a trademark under the 
UDRP. For the purpose of filing under the UDRP, evidence of such license and/or 
authorization of the principal trademark holder to the bringing of the UDRP 
complaint would tend to support such a finding. Panels have in certain cases 
been prepared to infer the existence of a license and/or authorization from the 
particular facts, but in general, relevant evidence is desirable."

Thus, this working group's findings with regards to standing are consistent 
with those of WIPO and panelists through the developed jurisprudence.

That workaround represents a huge opportunity for IGOs that are worried about 
immunity to preserve it. The working group, rather than ignoring IGOs, bent 
over backwards to find these precedents that fairly balance the concerns of 
IGOs and the concerns of domain name registrants. Remember, the working group 
also extended protection to Article 6ter registered strings, through policy 
guidance. This too is a huge win for IGOs that might not have registered 
trademarks. We could have simply pointed to the position stated by the US State 
Department which clearly said that IGOs should go to the courts if they have a 
dispute (in this case, for the UNIFEM mark):

https://www.state.gov/s/l/38648.htm

"Responsibility for evaluating potentially infringing use of trademarks and 
other intellectual property, and for taking enforcement action when deemed 
appropriate, however, rests with the party whose interests are affected."
...
"But, as noted in the preceding paragraph, the latter obligation would be met 
under the laws of general application that the United States has enacted, and 
it is the responsibility of the party claiming than an infringement has 
occurred to take action under U.S. law to challenge perceived unlawful use in 
commerce."

and left it at that, but this working group went above and beyond the call of 
duty.

The roadmap is clear. 

(a) If an IGO isn't that concerned with immunity or doesn't expect a domain 
name registrant to appeal a verdict in the courts (e.g. a very low value domain 
name used for criminal activity), they could file the UDRP/URS in their own 
name and thereby waive immunity. This has been done before (e.g. by the World 
Bank). Remember, IGOs are permitted to waive immunity. The fact that 
international law contemplates this waiver is something IGOs haven't been quick 
to concede to this working group -- it demonstrates that the law is pragmatic, 
and that immunity is not an "absolute" concern to all IGOs.

(b) if an IGO is very concerned about immunity, they could draw up an 
assignment or licensing agreement with a law firm or other representative, just 
like in the UNITAID case, and have that assignee or licensee file a UDRP/URS. 
(i) In the event the UDRP/URS is successful and there's no further appeal (the 
likeliest scenario), the domain can be transferred to the IGO from the winning 
assignee/licensee. (ii) If the UDRP/URS is successful but there's an appeal to 
the courts (unlikely), the defendant would be the assignee/licensee and not the 
IGO itself. Immunity of the IGO is preserved. (iii)  In the event that the 
assignee/licensee loses the UDRP, the IGO can still pursue their options, 
either in the courts, or even through another UDRP in their own name (i.e. they 
can conceivably get another bite at the apple). e.g. this would be like Ford 
Motors filing a 2nd UDRP if a local Ford dealership (e.g. Ford of Buffalo) that 
is a licensee lost a 1st UDRP.

Note that the above roadmap is in addition to all the other legal and non-legal 
options that an IGO has, including:

- sending cease and desist letters
- filing WHOIS accuracy complaints (most criminals use false WHOIS)
- contacting registrars when there is abusive/illegal conduct
- contacting payment processors (Paypal, Visa, Mastercard, etc.) in the event 
of financial fraud
- contacting webhosting companies to take down illegal content
- pursuing court action as a first option
- asking law enforcement to pursue criminal behaviour

Mr. Beckham appears to ignore all these options, as if the UDRP/URS is an 
appropriate first step for things like spamming/phishing (i.e. his Ebola virus 
example). The example he provides is a case where not only are the UDRP/URS too 
slow and ineffective (i.e. for spamming/phishing, one need not even have a 
domain name that reflects an IGO's name!), one would actually WELCOME the 
opportunity to face these miscreants in court.

IGOs repeatedly bring up examples of highly criminal behaviour (donor fraud, 
phishing, spamming, etc.) as if these are the cases where their precious 
"immunity" is at stake. That is simply absurd, and representatives of IGOs do 
themselves a disservice for continually pretending that their immunity is a 
concern in those cases. Someone engaging in donor fraud is the LAST PERSON in 
the world that would even identity themselves, let alone go to a court seeking 
relief! Let me repeat that -- they'd be the last person in the world to 
threaten an IGO's immunity. If some insane person engaging in donor fraud 
actually brought forth a legal action, they would have to do so using a real 
identity. IGOs could then forward that identity to the police, and put that 
person in jail. Problem solved.

The representatives of IGOs completely ignore this common sense, and instead 
focus on extreme and illogical scenarios manufactured more for sympathy of 
uninformed observers (mostly in the GAC) rather than actually elucidating the 
legal risk to their so-called "immunity."

If waiver of immunity was such an issue, IGOs would point to numerous UDRP 
cases and statistics where a losing domain name registrant appealed to a court, 
and an IGO was forced to abandon its legal defense and allow the domain name 
owner to retain the dispute domain. Where are those examples? Of course, they 
don't exist!

In conclusion, the PDP working group should not "bend it like Beckham" :-) , 
and instead continue to rely upon the careful consideration of both fact and 
law that it has done throughout this open and transparent process.

B] Richard Hill: 
https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/msg00001.html

Mr. Hill (a WIPO panelist) asserts that positions have been ingrained for a 
long time. However, he ignores the fact that this PDP thoroughly reviewed the 
facts and the law, and has not found errors in either. Positions are moved 
through successfully introducing new facts or law. If there is no new facts or 
law, the status quo should be preserved.

Mr. Hill then wrongly states that arbitration is appropriate because IGOs are 
used to it. He completely ignores the fact that those arbitrations are 
voluntary commercial agreements between 2 parties that have a contractual 
relationship (e.g. a commercial vendor to an IGO, where a vendor wants to bring 
a dispute). In contrast, domain name registrants have no contractual 
relationship, or any relationship whatsoever generally, with IGOs. Immunity is 
an argument that can be raised by an IGO when they are defending a dispute 
initiated by others. It is NOT however in play when the IGO itself is 
initiating the dispute (which it does through the filing of a UDRP/URS, or 
through the initiation of a court procedure).

I gave a hypothetical example during the telephone calls/webinars of a person 
selling cookies using an unauthorized "UNESCO" brand. UNESCO wouldn't be able 
to compel the cookie seller to arbitration -- they'd have to file a lawsuit, 
thereby giving up their immunity (or ask law enforcement to stop the 
behaviour). Nothing in law compels a person who has no relationship with 
another to give up their legal rights of due process to an IGO when it is the 
IGO initiating the dispute. The same would apply for a copyright or other legal 
dispute involving an IGO with an unrelated party.

Mr. Hill also suggests that a loss in a UDRP case "is a prima facie finding of
cybersquatting against an IGO name." This is not correct, given that appeals to 
the courts are de novo, and completely ignore any determinations in the UDRP. 
Indeed, the court action can be brought at any time, even before a UDRP panel 
has made a decision. UDRP has been properly described as "adjudication lite":

https://h2o.law.harvard.edu/collages/17590/export

in the Barcelona.com case, and is owed no deference whatsoever in the courts. 
(para 46)

Mr. Hill even goes so far as to say "it does not bother me that the registrant 
has to go to an arbitration court if it wants to contest that prima facie 
finding." While it may not bother him, it certainly bothers those good actors 
who actually own valuable domain names. And he pretends further that 
arbitration is a "court", when it is certainly not. He actually misused the 
term "arbitration court" thrice in his comments, which is bizarre for someone 
adjudicating WIPO Domain Name Disputes. According to his profile at WIPO:

http://www.wipo.int/export/sites/www/amc/en/domains/panel/profiles/hill-richard.pdf

it appears that Mr. Hill is not a lawyer (his education is in math and 
statistics). Instead of giving us his thoughts on giving up legal rights, 
perhaps Mr. Hill should instead show us all the statistics to back up his 
assertions (hint: they don't exist).

C] OECD Comments by Jonathan Passaro: 
https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/msg00002.html

Mr. Passaro oddly opposes Recommendation #3, which refers to the limitation in 
Article 6ter itself that says:

http://www.wipo.int/article6ter/en/legal_texts/article_6ter.html

"The countries of the Union shall not be required to apply the said provisions 
when the use or registration referred to in subparagraph (a), above, is not of 
such a nature as to suggest to the public that a connection exists between the 
organization concerned and the armorial bearings, flags, emblems, 
abbreviations, and names, or if such use or registration is probably not of 
such a nature as to mislead the public as to the existence of a connection 
between the user and the organization."

His objection to this is simply untenable. If a domain name is not being used 
to mislead or has no connection to an IGO, Mr. Passaro doesn't want the panel 
to take this into account! He would appear to want to reduce the 3-prong test 
of the UDRP to a single prong -- does the IGO have a mark that's confusingly 
similar? In his vision of what the UDRP should be, the domain name owner 
wouldn't have any defenses at all, in particular the defense that "this domain 
name has no connection whatsoever with the IGO." He seems to view the UDRP as a 
means to have IGOs secure domains they feel entitled to, rather than a tool to 
curb abusive uses of trademark-infringing domain names.

For recommendation #4, Mr. Passaro appears to ignore the fact that the proposed 
workaround (using of agent, assignee or licensee) is entirely consistent with 
WIPO overview (discussed above) and precedent (Unitaid, discussed above) 
demonstrating their effectiveness. Furthermore, as a practical matter, these 
are complements to all other complaints mechanisms that IGOs can employ 
(including going to law enforcement). For example, WIPO has threatened legal 
proceedings when attempting to intimidate bloggers:

https://www.techdirt.com/articles/20140428/06585327048/shameful-wipo-threatens-blogger-with-criminal-charges-accurately-reporting-wipo-directors-alleged-misconduct.shtml

"Please be informed that if this request is not immediately acceded to, the 
Director General and WIPO will seek independent legal advise to bring 
defamation proceedings against you in any competent jurisdiction. "

Without going through each of Mr. Passaro's remaining points in this comment 
email at this time, each of his remaining arguments was thoroughly examined by 
the working group carefully already (and I expect will be reviewed again, for 
completeness). Recall, they had an opportunity to participate in the *balanced* 
review that this PDP undertook, but instead chose to present a one-sided set of 
recommendations in their "small group" that was unrepresentative of the entire 
community. Instead of fighting the PDP as an "outsider", they could have and 
should have been active participants from the very beginning (especially given 
their active participation in the working group that preceded this one and led 
to the creation of this PDP).

D] NATO comments by Antoaneta Boeva: 
https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/msg00003.html

These simply reiterate the OECD arguments (see the response above).

In conclusion, I look forward to the successful conclusion of this PDP that 
respect the legal rights of domain name registrants and provides balanced 
protections for IGOs. We've seen this to date, where IGOs are receiving 
enhanced protection through favourable interpretations of the existing policy, 
while maintaining the recourse to the courts on the occasions that are 
necessary. 

Sincerely,

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