Them’s fightin’ words!
Well this is getting interesting.
Earlier this month a Texas court ordered ICANN to stay a UDRP case for FunnyGames.com. ICANN responded by saying that it had no authority to stay a UDRP proceeding and that the court had no jurisdiction to order it to do so.
The court disagreed.
ICANN subsequently said that it informed World Intellectual Property Organization — the UDRP provider where the case was filed — of the court decision. But it reiterated that it has no power to halt the proceedings.
In response, the receiver in the case writes about “ICANN thumbing its nose at the Court” and is asking the judge to find ICANN in in contempt:
“ICANN did not make even a good-faith attempt to comply with the Court Orders.
“ICANN has repeatedly argued (unpersuasively and incorrectly) that it lacks the authority to stop the ICANN UDRP. [Id.] Assuming, arguendo, that ICANN were correct and the Court simply misunderstood the law or forgot to review the ICANN declaration (as ICANN strangely suggests), were ICANN to instruct WIPO to stop the ICANN UDRP, WIPO would presumably disregard the instruction anyway. Thus, ICANN’s efforts in that hypothetical case would prove futile, but no harm to ICANN would occur.
“So, in an effort to show this Court a good-faith attempt to comply with the Court Orders, one would assume that ICANN would have simply sent a letter to WIPO instructing WIPO to stop the ICANN UDRP (and not care whether would WIPO would follow or disregard the instruction). But ICANN did not act in good faith. Instead, ICANN sent a letter to WIPO not instructing it to do anything, but merely “notifying WIPO of the Court’s order that ICANN ‘stay and abate’ the UDRP proceeding on www.funnygames.com.†[Docket No. 741, at Exhibit 1 (letter from ICANN to WIPO).]
“Furthermore, in the ICANN letter, ICANN also “requests†that WIPO keep ICANN informed of some items. [Id.] Can ICANN make a request [underlined] like that to WIPO without the authority to enforce [underlined] that request? Apparently, ICANN believes so! So, if that were the case, why couldn’t ICANN have likewise “requested†that WIPO stay and abate the ICANN UDRP? The answer is because ICANN wrongly believes it appropriate merely to respond to a Federal District Court, “I would prefer not to.†(See generally, Herman Melville, Bartleby, the Scrivener: A Story of Wall-street, Melville House Publishing, Brooklyn, New York, 2010 reprint). This demonstrates ICANN’s failure to act in good faith and further supports why the Court should hold ICANN in contempt.”
George Kirikos says
Another example of ICANN’s low regard for anyone but itself and its insiders.
Gnanes says
lol yeah this is getting interesting. ICANN is showing its true colors and there’s a company is trying to steal the domain.
Andrew Allemann says
Looks like the complainant in the WIPO case owns a bunch of ccTLDs for “funnygames”
http://www.tibaco-international.com/
John Berryhill says
This whole dispute is beyond stupid.
If WIPO proceeds with the UDRP, and issues a decision, then so what?
Independent of the UDRP, the receiver can notify the registrar of the Texas proceedings, and the registrar will lock the domain name, no matter what the outcome of the WIPO proceeding. Independent litigation is itself a reason for locking the domain name.
Secondly, and perhaps more importantly, someone is going to have to sit down and read the registration terms for the domain name at the relevant registrar. MANY registrars include in their service terms that the domain registration contract is voidable upon a declaration of bankruptcy by the domain registrant in the first place.
If the receiver is attempting to block transfer of the domain name, the receiver has a number of options available to it which do not involve either ICANN or WIPO. The only thing WIPO does is issue UDRP decisions. Whether and how those decisions are implemented by the registrar are entirely dependent on Paragraphs 3 and 8 of the UDRP itself, which references “other legal requirements”.
IMHO, the receiver is either ignorant of the relevant considerations, and thus an incompetent custodian of the assets in question, or has some other agenda unrelated to preserving assets in bankruptcy.
WIPO should just go ahead with the proceeding. The parties to a UDRP are required to notify the provider of “other legal proceedings” relating to the domain name. The panelist may take note of the other legal proceedings and make whatever commentary he/she would like to make in the decision. But at the end of the day, where there is other litigation, the registrar is perfectly well able not to implement the UDRP decision under the terms of the UDRP and other provisions of the RAA itself.
This receiver is showboating, and I can’t figure out why.
John Berryhill says
And another thing…
The entire Baron/Ondova/Texas Intellectual Property/Manila structure has historically been arranged with what has appeared to be an objective to find a “UDRP resistant” vehicle. The current fun and games appear to be consistent with that objective.
Fred says
Just a typical bankruptcy proceeding.
Receive is showboating to get into the news/blogs and because the court, for whatever odd reason, is allowing it.
ICANN is not a party to the arbitration. If the judge wants to stop the arbitration, issue an order saying so and send it to WIPO to see what happens.
John Berryhill says
I think the judge knows better than to seek to enjoin an international treaty organization with diplomatic immunity.
The only party in need of injunction is the registrar, in relation to the UDRP decision.
Words issued by a WIPO panelist do not magically transfer a domain name from one registrant to another.
Andrew Allemann says
@ John Berryhill – perhaps they’re concerned about the registrar being in Australia?
Andrew Allemann says
There’s an interesting filing in this court case from the receiver. He was told he must protect all the domains, but then he was told to drop all of the domains that are unprofitable. A small percentage of the 200k domains apparently don’t cover their costs in PPC each year, so he was asking the court what to do with his conflicting directive.
John Berryhill says
@andrew, they weren’t worried about WIPO being in a UN enclave in Swizerland.
As an additional fallback, Verisign was referenced in a prior order, and can lock the name at that level, regardless of what the registrar does.
Dave Zan says
Just wondering aloud…even if that Texas court decides to hold ICANN in contempt or whatever, so…what?
John Berryhill says
“even if that Texas court decides to hold ICANN in contempt or whatever, so…what?”
Unlike everyone else who holds ICANN in contempt, a court would have a number of options, and fairly broad discretion. Practically, I doubt it will get that far, but sanctions for contempt are generally intended to induce compliance with the order being violated. In a situation such as this, the court could impose a fine of $X per day until the contemnor complies, for example.
But this is unlikely to get to that. In the first place, the existence of the UDRP proceeding is not itself a harm to the assets in question. Whether the domain name would be ordered to be transferred is purely hypothetical at this point. The complaint could be denied, or the panelist could decline to decide in view of the court proceeding. There is only a threat of harm in the event the domain name is ordered to be transferred, and the registrar indicates an intent to do so. Again, at that point, the action to be restrained is that of the registrar, and not ICANN or WIPO.
John Berryhill says
This just in…
The entire issue is moot, as the panelist apparently decided to terminate the proceeding. The decision has not been posted, but is indicated as:
http://www.wipo.int/amc/en/domains/search/case.jsp?case_id=22285
WIPO Case Number D2011-2021
Domain name(s) funnygames.com
Complainant Tibaco Beheer B.V.
Panelist Barbero, Luca
Decision Date 22-12-2011
Decision Terminated by Panel
Hence, the entire exercise was a waste of time.
Dave Zan says
Thanks, John. I guess what I’m really getting at is that even if the court decides to, say, fine ICANN, how will they enforce it since they’re in another state anyway? Not unless someone from ICANN maybe steps into Texas.
Oh, and happy holidays to everyone.