[ncdnhc-discuss] Eric Grimm responds to Louis Touton on CNNews.com case

[James Love]

Eric Grimm worked on an EFF amicus brief in the CNNews.com case.
Jamie

----- Original Message -----
From: "Eric C. Grimm" <cyberbrief at digitalrealm.net>
To: <touton at icann.org>
Cc: <discuss at icann-ncc.org>; <james.love at cptech.org>; <jstyre at jstyre.com>
Sent: Wednesday, April 17, 2002 10:14 PM
Subject: RE: Touton on CNN v CNNews.com

Mr. Touton:

I have read your analysis concerning the CNnews.com case, which you sent to
Jamie Love (reprinted below).

You are wrong in several important respects, but I will focus on only two of
them.

First of all, registrar certificates DO NOT transfer "complete dominion and
control" over anything.  This is so for both functional (technical) and
legal reasons.

Functionally, these declarations are nothing more than two pieces of paper
and a staple.  They have to functional or technical effect on the DNS in any
way whatsoever.  It is, of course, possible (as I have tried to do in at
least one case in the Central District of California) to transfer "complete
dominion and control" over an address to a particular court by causing the
court itself to become the named Registrant and Administrative Contact of
the Domain name, with the court's own Nameservers assigned as the
Nameservers of the address.  Such a court does, in fact, actually exercise
"complete dominion and control" over a domain name.  In no other way is it
really possible, as a technical matter, actually to confer such a parcel of
powers (or should we call it, more accurately, a "bundle of rights"?) on any
court.

I note this was NOT done in the CNnews.com case.  And the court itself was
and remains technically powerless to exercise actual "complete dominion or
control" over this address or any other address.

Legally, your interpretation of the effect of "registrar certificates" is
directly contrary to the UNIFORM holdings of ALL of the U.S. District Courts
(of which I am aware) to address the issue of whether such a document
actually confers "complete dominion and control."  They all hold such a
document does not.  Each of the United States courts addressing the question
of whether Mr. Sbarbaro's fictitious invention of a "registrar certificate"
actually HAS the effect that you say it purports to have -- without any
exceptions -- has clearly decided that the "registrar certificate" does not
confer complete dominion and control upon them no matter what it may purport
to do.  These decisions are: (1) the FleetBoston decision out of the
District of Massachusetts, (2) the Barbie-Club decision out of the Southern
District of New York, (3) the Ford v. Great Domains decision out of the
Eastern District of Michigan, and (4) the recent Indian Country Today
decision out of the Northern District of New York.

Just because "Louis Touton says so" does not necessarily mean that your
position is consistent with that of the courts.  And in fact, your personal
opinion is not shared by Judges Woodlock, Cote and Cleland (among others).
I would be interested to know whether you actually researched this specific
issue before issuing orders to a Registrar based outside the United States
in the Peoples' Republic of China.

Second, your interpretation of Judge Ellis's Order is obviously wrong.
Judge Ellis himself says so.  Pease see the attached Order.

Thank you for your careful attention to the CNnews.com matter as a whole, as
well as for your continued careful attention to the above points.

Very truly yours,

Eric C. Grimm
CyberBrief, PLC
320 South Main Street
Second Floor
Ann Arbor, Michigan
734.332.4900
fax 734.332.4901


----- Original Message -----
From: "Louis Touton" <touton at icann.org>
To: <james.love at cptech.org>
Sent: Wednesday, April 17, 2002 8:09 PM
Subject: CNN v. cnnews.com Case

Jamie,

Here is the summary you requested regarding the CNN v. cnnews.com case:

A central feature of the Uniform Dispute Resolution Policy is that
registrars will remain neutral concerning trademark-based disputes over
domain names.  (This was a major change from the prior Network Solutions
dispute policy.)  Instead, these disputes are to be resolved by courts
or, in cases of abusive registrations, administrative panels (see
paragraph 4, UDRP).

To promote registrar neutrality, the policy contemplates that registrars
need not be brought in as parties to the disputes.  (In fact, paragraph
6 of the policy specifically states that domain-name holders will not
name their registrars as parties.)  In this vein, paragraph 3 of the
UDRP requires that registrars implement court orders and administrative-
panel decisions in trademark/domain name disputes even though the
registrars are not parties to the proceedings:

   3.  Cancellations, Transfers, and Changes. We will cancel, transfer
   or otherwise make changes to domain name registrations under the
   following circumstances:

      * * *

      b. our receipt of an order from a court or arbitral tribunal, in
      each case of competent jurisdiction, requiring such action; and/or

      c. our receipt of a decision of an Administrative Panel requiring
      such action in any administrative proceeding to which you were a
      party and which was conducted under this Policy or a later version
      of this Policy adopted by ICANN.

In the CNN v. cnnews.com case, the registrar for the domain name,
Eastern Communications (also known as Eastcom), filed a "Registrar
Certificate" with the United States District Court for the Eastern
District of Virginia on 14 March 2001 stating:

   Through the deposit of this Registrar Certificate with the Registry
   of the Court, EASTCOM hereby tenders to the Court complete control
   and authority over the registration for the CNNEWS.COM domain name
   registration record.

This type of registrar certificate provides the court with "in rem"
jurisdiction over the domain name, but is not intended to consent to
the court's exercising "in personam" jurisdiction over the registrar.

After various hearings (attorneys for both disputing parties were
present) the court issued an order on 11 January 2002 transferring
the domain name:

   It is now hereby ORDERED that the domain name CNNEWS.COM is
   transferred to Plaintiff Cable News Network LP, LLLP.

This form (particularly the phrase "is transferred") of order indicates
that the court is exercising its in rem jurisdiction to transfer an
item (here, the domain name) that has been placed within the court's
control.

Because the registrar had expressly placed the domain name cnnews.com
under the "complete control and authority" of the court, and that court
had entered an order of transfer, paragraph 3(b) of the UDRP (see above)
provides that the regisrar will comply with that order.

The domain-name holder has appealed the Virginia district court order to
the United States Court of Appeals for the Fourth Circuit.  Under
federal court procedures in the United States, the filing of an appeal
does not stop the effectiveness of a district court order.

Registrars are obligated by their registrar accreditation agreements
with ICANN to abide by the UDRP (and other consensus policies as well).
Section 3.8 of the current version of the registrar accreditation
agreement states:

   3.8 Domain-Name Dispute Resolution. During the Term of this
   Agreement, Registrar shall have in place a policy and procedures
   for resolution of disputes concerning Registered Names. Until
   different policies and procedures are established by ICANN under
   Section 4, Registrar shall comply with the Uniform Domain Name
   Dispute Resolution Policy identified on ICANN's website
   (www.icann.org/general/consensus-policies.htm).

ICANN received a letter from an attorney for CNN enclosing the registrar
certificate and the court order, reporting difficulties in communicating
with the registrar.  On 2 April, we forwarded the letter and its
enclosures to Eastern Communications (the registrar) requesting, "Please
look into this right away and ensure that Eastern Communications
promptly fulfills its responsibilities."

In response to an inquiry from a US lawyer representing the
domain-name holder, on 4 April we advised that attorney that "Absent a
stay of the effect of this [11 January] order, EastCom is obliged to
comply with that order under its accreditation agreement with ICANN."
On 12 April, the domain-name holder obtained a stay from the Virginia
district court.  On 13 April 2002 we advised the parties (through their
attorneys) that, because the Virginia court had ordered a stay of its
11 January order, the domain name should not be transferred under
paragraph 3(b) of the UDRP at this time.

Best regards,

Louis Touton