Tag: UDRP

(if you’re having trouble using the media player, the MP3 is here)

In January 2023, I submitted extensive comments to ICANN, regarding IGO Issues and domain name disputes. There were 3 quite detailed PDFs in that submission (as there were other comment periods over the years), that many may not have read.

Using the NotebookLM AI tool I mentioned in an earlier post today, that generated an excellent podcast regarding domain name transfer policy, I figured I’d let the AI summarize my IGO-related submissions. The result is the embedded audio in this blog post. It did a fairly good job of explaining things at a high-level, although it missed an important detail, namely that IGOs are able to assert immunity when they’re the defendant, and thus the “role reversal” gives them a big advantage (especially if they’re no longer agreeing to the mutual jurisdiction clause). I hope this piques the interest of those who’ve not followed this important issue, and causes them to dive deeper into the PDFs (which have more detailed arguments).

 

 

ICANN has a public comment period for the Final Report from the EPDP on Specific Curative Rights Protections for IGOs, which proposes to harm registrants’ rights, by making IGOs (intergovernmental organizations like the UN) exempt from the mutual jurisdiction clause of the UDRP/URS. This would mean that a domain owner’s rights to judicial review of an adverse UDRP/URS decision would be prejudiced.

Our comments can be read on the ICANN site, along with all the other public comment submissions. [including those of the Internet Commerce Association]

Continue reading “Our January 30, 2023 Comments to ICANN Regarding IGO Issues and Preserving The Rights of Registrants”

Stanley Pace has won a reverse domain name hijacking victory in court, overturning a wrongly-decided UDRP decision at WIPO in the celluvation.com dispute.

You can read the entire court decision here.

In summary:

The Court herby DECLARES and ORDERS:

1. Pace’s use of the celluvation.com domain does not violate the ACPA.
2. Pace’s use of the celluvation.com domain does not violate the Lanham Act.
3. Pace has established a claim for reverse domain name hijacking.
4. Defendant’s counterclaims against Plaintiff are DISMISSED WITH PREJUDICE for willful and inexcusable failure to prosecute and failure to comply with court orders pursuant to Fed. R. Civ. P. 41(b).
5. Pace’s request for fees is DENIED.
6. The WIPO arbitration panel decision is OVERTURNED, and the domain name
registrar for celluvation.com is ORDERED to lift the hold on the domain name and return the domain to Pace.
7. Judgment shall be entered in favor of Plaintiff

Will WIPO add this decision to its list of UDRP-related court cases? You might recall that WIPO retaliated against my company and removed the PUPA.com court case decision from their list (after I voted against Brian Beckham as co-chair of the RPM PDP working group at ICANN).

ICANN staff recently prepared a “Revised Uniform Domain Name Dispute Resolution Policy (UDRP) Policy Status Report (PSR)” (see PDF here) for the consideration of GNSO Council, and to guide any future policy development at ICANN. They even prepared a red-line version (see PDF here) to show what changes were made since the public comment period which ended in April 2022. The main change is the last 4 pages of the document, which has a list of “suggested improvements” submitted by the community.

My own company’s submission can be read here. Starting at the bottom of page 8 of the main PDF, I submitted numerous topics that should be addressed in a review. For example:

• explicit opt-out provision
• limitation period for complaints
• optional “legal contact” within WHOIS
• time to respond to complaints should be expanded, based on the age of the domain
• “registered in bad faith” date to be explicitly set as the creation date of the domain
• explicity permit transfers of ownership within related entities without impacting UDRP date tests
• formal mediation step
• ensure court review (for which I submitted an entirely separate PDF!)
• merging URS and UDRP into a single procedure
• greater oversight for providers and panelists

Now here’s the fun part — go try to find these referenced in the ICANN staff prepared document! They’re not there! (I suggest others who submitted their own comments review the ICANN summary, to see whether their own input was ignored.)

This demonstrates the bad faith on the part of ICANN staff, that public input that does not fit their agenda is completely ignored.

In conclusion, as I’ve pointed out repeatedly, ICANN public comment periods are a sham.

As we’ve noted in our recent blog posts, here, here, here and here, the ICANN GNSO Council intends to vote (on Thursday May 19, 2022, tomorow!) on a controversial Final Report which would severely harm the rights of domain name registrants to judicial review of an adverse UDRP decision. This is in sharp contrast to the charter of that working group, which required that the rights to judicial review be preserved.

In my review of the call transcripts, it’s clear that the Chair of the Working Group, Chris Disspain, knew and understood that they had to preserve those rights to judicial review. In fact, on the January 10, 2022 working group call, here’s what he had to say:

And the bottom line is, irrespective of all of that, that our charter, our instructions from the GNSO Council very clearly states that our solutions should not affect the rights and ability of registrants to quality judicial proceedings, a court of competent jurisdiction, whether following a UDRP or URS case or otherwise. [pp.38-39]

Boom! Yet, as discussed in prior blog posts, that very standard that they were entrusted to meet was simply not met. Rights to judicial review are severely harmed, and not preserved. “Quality judicial proceedings” and a “court of competent jurisdiction” are sacred – yet this final report, if adopted, would effectively be taking those rights away from registrants.

Chris Disspain went on! On page 39, he continued:

So I would argue that we would be significantly challenged on scope, I suspect, if we were to make a recommendation that required an IGO to go to court and to not have a substantive hearing on the merits, which of course is what would happen if IGOs were successful in claiming their immunities.

That is why yesterday’s “friendly amendment” is a sham and an obscene document.

By exempting IGOs from the mutual jurisdiction clause, they enhanced the ability of IGOs to successfully assert immunity (as the mutual jurisdiction clause would usually be interpreted as a waiver of immunity). They are in violation of their charter. They would and should be “significantly challenged on scope.” There would be no “substantive hearing on the merits” at courts. As the Final Report itself concedes:

Conversely, the EPDP team acknowledged that removing this requirement for IGO Complainants could prejudice a registrant’s right and ability to have an initial UDRP or URS determination reviewed judicially, in that a successful assertion of immunity by an IGO means that the court in question will decline to proceed with the case. [pp. 23-24]

They “prejudiced” the rights to judicial review – the working group failed to preserve them.

As the Internet Commerce Association argued in their own comment submission:

Preliminary Recommendation #3 – exempting IGOs from the usual requirement of agreeing to a Mutual Jurisdiction for a challenge to a UDRP transfer without guaranteeing the right of a registrant to have its case heard on the merits – is unjustified and should not be
accepted by the GNSO. By exempting IGOs from agreeing to the Mutual Jurisdiction requirement, registrants are left with the very real possibility that a national court will refuse to assume jurisdiction in a post-UDRP action to overturn a UDRP transfer order; leaving the registrant without any meaningful redress or ability to have its case heard on the merits.

The proposal (Option 1 under Recommendation #4) to eliminate all substantive recourse for errant UDRP and URS decisions in the event that an IGO successfully avoids a court proceeding by asserting immunity after ICANN has stripped away the Mutual Jurisdiction requirement, is unconscionable and effectively repudiates the GNSO’s mandate to the EPDP which inter alia, requires that any policy option preserve registrants’ rights to judicial review. Such right to judicial review can only entail a substantive review, not merely an opportunity to receive a dismissal. [page 1] [NB: the recommendations were renumbered in the final report]

By ignoring this, not only did the working group fail to listen to the affected stakeholders. They also, by Chris Disspain’s own words, violated their charter.

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I had planned to write other blog posts in advance of tomorrow’s GNSO Council, about how the review of public comments was a sham, looking at how the Public Comment Review Tool paid mere lip service to serious comments. [e.g. look at how people would submit very lengthy comments, but instead of actually digesting and considering the very valid points, the working group would simply label them “CONCERNS” and  “DIVERGENCE”! They pretended to review the public comments thoroughly, but would actually simply skim over them, with no debate, analysis or discussion most of the time, even to novel arguments. No attempt to actually refute the valid points raised by people. If I had more time, I would give numerous examples, but here are some points I wish to note.

I gave 20 reasons against arbitration, and they were ignored. (see pages 43-48 of my comments) Contrast those with pages 35-38 of the final report’s recommendations, or anywhere else they mentioned arbitration.  Basics like open justice (the open court principle) are ignored, as they propose hiding the arbitration filings, and only making the decision public.

Furthermore, I addressed the “Policy Impact Analysis” on page 51 of my comments. On page 17 of their February 14, 2022 call transcript, they claimed that those were important comments, and that they’d go back to them!

“CHRIS DISSPAIN: ….One, can you make sure that you refer us back to this particular comment when we deal with that section?”

I went through all the transcripts (and Zoom calls) and did not find any evidence that they ever went back to it. None of their proposed metrics would ever find that this policy had failed! (this was also a major concern of mine with the New gTLD program) In other words, by failing to provide any metrics which could show that their proposals had a negative impact on registrants, there’d be no way to challenge this policy in the future.

They could have limited the initial impact of a proposed policy change by grandfathering existing domain name registrations, or limiting it to new gTLDs, as per pages 49-50 of my public comments. This was ignored. Opt-out was ignored. The “Notice of Objection” system was mistakenly rejected, because the group was captured. It was a fair solution that really should have had a serious look by fair-minded individuals (not allowing the IGOs to simply veto it, because they thought they could get away with exempting themselves from mutual jurisdiction).

Instead of seriously analyzing feedback, they made jokes. E.g. in response to a serious analysis of unbalanced participation (pages 27-30 of my comments), which showed that Chris Disspain spoke 49.8% of the words on calls (excluding staff), as well as an entire history of the UDRP (and explanation of why the mutual jurisdiction clause was added) the Chair’s only remark was:

CHRIS DISSPAIN: I’m very disappointed. I was going for 50%

(see page 16 of February 14, 2022 transcript) This illustrates the lack of maturity and lack of seriousness with which the working group conducted its review of the public comments. If you were not agreeing with the initial report, your concerns were laughed off.

In conclusion, I wish to emphasize again that the working group failed to deliver what it was supposed to deliver, namely a set of recommendations that preserved the rights of registrants to judicial review. As such, this report should be entirely rejected. I can give ample evidence of all the process flaws that made them lose their way. But, in the end, it’s the actual recommendations that are the deliverables, and those deliverables simply fail to deliver what was promised.

 

As we’ve noted in our recent blog posts, here, here, here and here, the ICANN GNSO Council intends to vote (on Thursday May 19, 2022, 2 days from now)  on a controversial Final Report which would severely harm the rights of domain name registrants to judicial review of an adverse UDRP decision. This is in sharp contrast to the charter of that working group, which required that the rights to judicial review be preserved.

In a shocking new development, today the ICANN Registrars Stakeholder Group proposed a “friendly amendment” saying:

We believe it is important to have it on record (in the motion) that there are scope and principles stipulated by the Council at the outset and against which Council has evaluated and determined that the recommendations in the Final Report are consistent with such scope and principles.

The email from Greg DiBiase of Amazon, didn’t appear to have an attachment with that kind of friendly amendment (the DOCX attachment at the bottom seems to be the original motion, not an amended version).

[Note on May 18: after additional review (in ChromeOS it was invisible text in the browser’s viewer), by downloading the attachment and loading it in Google Docs, the text is similar to the above, in item 10. i.e.

10. The GNSO Council has determined that the five (5) final EPDP recommendations in the EPDP team’s Final Report are consistent with the scope and principles set out in the Addendum to the RPMs PDP Charter and the subsequent EPDP Charter.

Regardless, it appears that people now realize that in fact the final report is deficient, as we’ve argued all along, as its recommendations do not actually preserve judicial review. As such, its recommendations are out of scope.

This obscene “friendly amendment” appears to be some form of damage control, or perhaps something that can be used to gaslight opponents of the final report, or just the worst form of historical revisionism one can imagine.

They’re trying to move the goalposts, after the game has already been played. It’s clear that the Final Report’s recommendations are outside the scope of the actual standard set by the GNSO Council before the working group began.  That means the report has to be rejected in its entirety.

This is particularly obscene given that the first IGO working group (the one that I participated on) was falsely accused of going beyond its scope (see my comments here, including pages 5-10) , and the GNSO Council took unprecedented action to undermine its consensus findings.

Elsa Saade made that point to the GNSO Council in 2019, when the first IGO working group’s final report was at GNSO Council for review, saying:

I was saying that I don’t think that we’re being completely honest with ourselves and the reasons why we are not taking on the full recommendations that the group had consensus on. And if we, I mean, I personally would vote to have all of them go through and then see how the Board would take it forward, but in terms of – because especially because if we do not do that we’re setting a precedence for the GNSO Council which had not been set before I’d say in terms of a back channel, I don’t – I’m going to dare say but a back channel sabotage in a way. I’m putting it out there on the record in my own personal capacity here. So that’s why I think we should take it on fully and take this – have this go through fully as a full recommendation set or list. [page 45 of transcript]

That truth still resonates. Back channel sabotage is what blocked the first working group’s thoughtful final report. Dishonest conduct, including this obscene “friendly amendment” which attempts to rewrite history, should not be rewarded.

The rules of the GNSO Council permit the vote on the IGO final report to be deferred by 1 meeting, as per page 8 of their operating procedures which state:

At the request of any Council member, for any reason, consideration of the Final Report may be postponed for no more than one (1) meeting, provided that such Council member details the rationale for such a postponement.

I suggest that Thursday’s vote be postponed until the June 2022 ICANN meeting, so that the full community can consider and thoroughly review the implications of this Final Report, one which would severely harm the rights of domain name registrants to judicial review (and which is thus out of scope of its charter).

Rather than attempt to win the hearts and minds of the community, through hard work and sound analysis, to form a true consensus, it’s clear that those who wish to take away domain name registrants’ rights are prepared to instead go down the path of dishonesty.

Any “friendly amendment” that tries to claim that this report is actually in scope would simply be a blatant lie, an attempt to say that “black is white” or “up is down”. It would further delegitimize ICANN and its leadership (including GNSO Council members) as fair-minded people can easily see the actual truth and history for themselves.