EPDP for Specific Curative Rights Protections for IGOs

EPDP for Specific Curative Rights Protections for IGOs
Status:	Active
Issue Areas:	Intellectual Property
Date Established:	2021/08/30
Charter:	WG Charter
Workspace:	Community Wiki

The EPDP for Specific Curative Rights Protections for IGOs was created as part of the IGO work track of the PDP Review of All Rights Protection Mechanisms in All gTLDs (PDP-RPM). The review of rights protection mechanisms included a recommendation that raised an "admittedly rare" issue specific to international governmental organizations, where:

(i) an IGO has prevailed in a Uniform Domain Name Dispute Resolution Policy (UDRP) or Uniform Rapid Suspension (URS) proceeding; and

(ii) the losing registrant files suit in a court of competent jurisdiction; and
(iii) the IGO successfully claims immunity from the jurisdiction of that court; then

(iv) the original UDRP or URS panel decision is to be set aside.

Under the UDRP and URS, petitioners are required to submit to the jurisdiction of a court at "either (a) the principal office of the registrar...or (b) the domain name registrant's address as shown for the registration of the domain name." Because IGOs may typically claim immunity from the jurisdiction of any national court, there exists the possibility that an IGO would do so in the event a suit is filed to contest the outcome of a UDRP or URS proceeding. However, claiming immunity in this way effectively voids the underlying ruling, as the IGO is no longer agreeing to submit to the jurisdiction of the court in question. The EPDP charter addresses this issue, and builds on the original charter addendum for an IGO work track from PDP-RPM.

Public Comments

The EPDP Team on Specific Curative Rights Protections for IGO sought input on preliminary recommendations in the Initial Report that had not yet reached agreement about whether an appropriate policy solution could be developed that:

1. accounts for the possibility that an IGO may enjoy jurisdictional immunity in certain circumstances;
2. does not affect the right and ability of registrants to file judicial proceedings in a court of competent jurisdiction;
3. preserves registrants' rights to judicial review of an initial Uniform Domain Name Dispute Resolution Policy or Uniform Rapid Suspension decision; and
4. recognizes that the existence and scope of IGO jurisdictional immunity in any particular situation is a legal issue to be determined by a court of competent jurisdiction.

All 14 individual commentators opposed the development of policy recommendations that would apply specifically to IGOs and domain name disputes when the IGO files a complaint against a domain name registrant. Many worried that the recommendations would harm or reduce registrant rights if they restricted a registrant’s ability to file judicial proceedings against an IGO or compel a registrant to agree to arbitration.

IGOS welcomed the team's efforts to clarify IGOs' ability to file a dispute and IGO jurisdictional immunity. However, they were concerned that arbitration would not be recognized as a globally accepted means of resolving disputes. They supported the elimination of the need for IGOs to agree to submit to Mutual Jurisdiction when filing a complaint and arbitration as a default option following a UDRP or URS proceeding.

Domainers opposed the recommendations, especially the elimination of the Mutual Jurisdiction requirement as it will increase the likelihood that a national court will refuse to assume jurisdiction post-UDRP. They highlighted the need to protect registrant rights and the need for arbitration procedure design to be done during policy development, not implementation. Leap of Faith suggested incorporating a “Notice of Objection” process and explained that immunity is a defense to a dispute and thus does not apply when the dispute is initiated by the party seeking to claim immunity. The registrar Namecheap recommended that ICANN consider requiring IGOs to waive immunities when asserting rights against registrants.

The GAC said that if registrants file court proceedings, then they should not be able to commence arbitration if the court decides not to hear the case based on an IGO’s immunity from its jurisdiction. The ALAC supported the recommendations to reduce the possibility of fraud and end-user confusion if third parties use domain names identical to IGO identifiers.

Final Report & Recommendations

The team submitted its final report to the GNSO Council on April 4, 2022. The report made several recommendations to improve an IGO's ability to protect its name and related trademarks.

1. Clarify the UDRP and URS procedures to better define "IGO Complainants" and the eligibility requirements for such complainants to move forward with a complaint under those mechanisms.
2. Remove the requirement that an IGO complainant submit to the jurisdiction of relevant courts; institute a notice procedure for respondents, explaining that a court may decline to hear an appeal of a UDRP or URS decision on grounds of the IGO Complainant's immunity from prosecution; offer binding arbitration as a separate means of appeal.
3. Institute rules and procedures for arbitral review of UDRP decisions in cases involving IGO Complainants.
4. Institute rules and procedures for arbitral review of URS decisions in cases involving IGO Complainants.
5. Choice of law to be mutually agreed upon or, in the absence of agreement, may be either the registrar or registrant's principal address as listed in the relevant WHOIS database; as a last resort, an arbitration panel may determine what law to apply.

The recommendations were designed to address the "review gap" in UDRP and URS procedures that initiated the EPDP in the manner prescribed by the charter document. The team noted the concerns expressed during the public comment period:

The Public Comments demonstrated strong concerns, particularly amongst individual commentators, regarding the EPDP team’s proposal to exempt IGO Complainants from the requirement to agree to submit to a Mutual Jurisdiction, to the extent that it would result in limitations on the registrant’s ability to file court proceedings against an IGO or in compelling a registrant to go to arbitration. These commentators emphasized that the outcomes of the EPDP should not reduce or otherwise adversely affect the rights of registrants.

The arbitration procedure was intended to provide recourse for registrants without requiring IGOs to submit to the jurisdiction of specific courts.

At ICANN 74, the GNSO Council approved the final report and its recommendations.

Public Comment Outcomes

The EPDP produced the following recommendations to define “IGO Complainant,” exempt IGO Complainants from the Mutual Jurisdiction requirement, maintain a voluntary mutual arbitration option within the UDRP and URS, and clarify the law to be used in voluntary arbitration proceedings.

Perspectives

The EPDP recommendations received support from the GAC and several GNSO Stakeholder Groups. However, a few concerns were raised, such as the potential impact on registrant rights if IGOs are exempted from the requirement to agree to submit to Mutual Jurisdiction.

Supported EPDP Recommendations

• RrSG, GAC, and RySG

Conditionally Supported with Further Review

• BC supported Rec 1 and partially supported Recs 3 and 4; suggested further expert review and consideration during GNSO's Phase 2 PDP.

Conditionally Supported with Additional Requirements

• ICA recommended approval through the RPMs Phase 2 PDP or expert review; supported Rec 1 with minor changes and opposed exempting IGOs from the Mutual Jurisdiction requirement.

Opposed EPDP Recommendations

• George Kirikos recommended rejecting the EPDP final report entirely, because he believes it was influenced by a captured group and disregarded community input. He opposes providing IGOs with greater rights and argued for preserving registrant rights.

Policy Development Process

Uniform Domain Name Dispute Resolution Policy

Generic Names Supporting Organization. Develops and recommends to the Board substantive policies relating to generic top-level domains and other responsibilities set forth in the Bylaws (ICANN Bylaws).