Dear Bruce, My apologies for the delay since my last email, as it took me a few days to consult with the other members of the "core group" of IGOs (UN, UPU, WHO, WIPO). First, allow me to take the opportunity to correct a point in your last email, sent on 30 April at 02:14 CEST. You stated that "Where IGOs have a trademark, they can take advantage of the existing UDRP." As we have discussed at length, the mutual jurisdiction provision of the UDRP in fact prevents IGOs from using the UDRP. For more in-depth explanations regarding why the mutual jurisdiction provision is incompatible with the immunities we enjoy as intergovernmental organisations, I invite you to consult the comments numerous IGOs provided on this point in the context of the ongoing PDP (including e.g. OECD<https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/p...>, UN<https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/p...>, World Bank<https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/p...>). Second, regarding the consultation of a legal expert, my IGO colleagues share the OECD's concern that such an exercise will significantly prolong what has already been an extensive and resource-intensive process. In addition, our past experiences within ICANN make us deeply concerned that such an exercise risks being manipulated against IGOs' interests, from the formulation of the research question, the selection of the expert and the choice of jurisdictions to the potential cherry-picking of language from the expert's conclusions once her report is released. We are grateful that you are trying to start a new, less contentious chapter in this saga but hope that you understand why we are reticent to embark down this path. In that regard, if you do decide to proceed, we would naturally expect that the IGOs would be involved in (1) the formulation of the research question(s); (2) the selection of the expert (3) the terms of reference guiding the expert's work; and (4) the choice of jurisdictions (please note already that a survey of five jurisdictions out of the 177 States Parties to the Paris Convention seems unlikely to give any kind of accurate idea about the scope of mechanisms States use to protect IGO acronyms). Kind regards, Jon [logo_mail_uk]<http://www.oecd.org/> Jonathan Passaro Legal Adviser Directorate for Legal Affairs 2, rue André Pascal - 75775 Paris Cedex 16 Tel: +33 1 45 24 14 73
Hello Jonathan,
My apologies for the delay since my last email, as it took me a few days to consult with the other members of the "core group" of IGOs (UN, UPU, WHO, WIPO).
Thanks for taking the time to consult with other IGOs.
First, allow me to take the opportunity to correct a point in your last email, sent on 30 April at 02:14 CEST. You stated that "Where IGOs have a trademark, they can take advantage of the existing UDRP." As we have discussed at length, the mutual jurisdiction provision of the UDRP in fact prevents IGOs from using the UDRP. For more in-depth explanations regarding why the mutual jurisdiction provision is incompatible with the immunities we enjoy as intergovernmental organisations, I invite you to consult the comments numerous IGOs provided on this point in the context of the ongoing PDP (including e.g. OECD, UN, World Bank).
Does that also mean that IGOs don't use trademark law through the courts to defend their trademarks, where they have them? ie I assume that is the same issue with being subject to a court of national jurisdiction, hence why there would be no value in having a trademark if there is never any intention to use trademark law to protect the rights in the name.
Second, regarding the consultation of a legal expert, my IGO colleagues share the OECD's concern that such an exercise will significantly prolong what has already been an extensive and resource-intensive process. In addition, our past experiences within ICANN make us deeply concerned that such an exercise risks being manipulated against IGOs' interests, from the formulation of the research question, the selection of the expert and the choice of jurisdictions to the potential cherry-picking of language from the expert's conclusions once her report is released. We are grateful that you are trying to start a new, less contentious chapter in this saga but hope that you understand why we are reticent to embark down this path.
Sorry to hear that the past experiences haven't been good.
In that regard, if you do decide to proceed, we would naturally expect that the IGOs would be involved in (1) the formulation of the research question(s); (2) the selection of the expert (3) the terms of reference guiding the expert's work; and (4) the choice of jurisdictions
Naturally. I think that is consistent with what I suggested in that this group including IGOs would need to be consulted in the decisions above.
(please note already that a survey of five jurisdictions out of the 177 States Parties to the Paris Convention seems unlikely to give any kind of accurate idea about the scope of mechanisms States use to protect IGO acronyms).
At this point just some examples that may have some common elements could be helpful. Ie there may be many mechanisms available but I would hope that there are a few that are more commonly used. Basically it would be great to have some actual public cases where the mechanisms have been used to protect IGOs rather than just theoretical mechanisms that have never been used. For example if we wanted to look at how 200 ccTLDs handle trademark issues, there are many possible solutions - but a sample of 5 different ccTLDs would likely turn up some common elements as many of them have been developed based on trademark law and UDRP (e.g. see https://www.auda.org.au/policies/audrp/, which is different to UDRP but based on UDRP). It would also be possible to find cases where the ccTLDs have actually used their processes. Note though that this is only a suggestion. So far the IGOs and the GNSO PDP working group member on this list have not been supportive. Regards, Bruce Tonkin
Dear Jon, Thank you for your input and comments, and good to know that they can be read as comments from the "core group" (OECD, UN, UPU, WHO and WIPO). As to your trademark point: As I see it, that is one of several possibilities. A traditional trademark, especially if it is registered by the local or regional PTO, is in fact from the start handled by national or regional trademark legislation. A traditional trademark application will not be treated in any different way if the applicant is an IGO, INGO or commercial company. The question is how it is dealt with if a local/national trademark registration hold by an IGO is taken to a court action. So, in this respect, I agree with you that a UDRP case that is submitted to a court will raise the immunity issue (UDRP §4(k)). As we know, that will be dealt with in different ways, depending on the nationality of the court. As to the consultation of a legal expert: I definitely agree with you that this work has already "been an extensive and resource-intensive process". However, I also positively note that IGO's now are open for a direct communication and co-operation with our WG, something we have asked for since we started, meaning more practical and specific inputs rather than general comments. I hope that we all together can find a practical solution that can be generally accepted, without adding too much additional time before we solve this topic. In this respect, consulting another external legal expert will likely mean that we have to add at least another 6 months... Best regards, Petter -- Petter Rindforth, LL M Fenix Legal KB Stureplan 4c, 4tr 114 35 Stockholm Sweden Fax: +46(0)8-4631010 Direct phone: +46(0)702-369360 E-mail: petter.rindforth@fenixlegal.eu www.fenixlegal.eu NOTICE This e-mail message is intended solely for the individual or individuals to whom it is addressed. It may contain confidential attorney-client privileged information and attorney work product. If the reader of this message is not the intended recipient, you are requested not to read, copy or distribute it or any of the information it contains. Please delete it immediately and notify us by return e-mail. Fenix Legal KB, Sweden, www.fenixlegal.eu Thank you 3 maj 2017 10:49:17 +02:00, skrev Jonathan.PASSARO@oecd.org:
Dear Bruce,
My apologies for the delay since my last email, as it took me a few days to consult with the other members of the “core group” of IGOs (UN, UPU, WHO, WIPO).
First, allow me to take the opportunity to correct a point in your last email, sent on 30 April at 02:14 CEST. You stated that “Where IGOs have a trademark, they can take advantage of the existing UDRP.” As we have discussed at length, the mutual jurisdiction provision of the UDRP in fact prevents IGOs from using the UDRP. For more in-depth explanations regarding why the mutual jurisdiction provision is incompatible with the immunities we enjoy as intergovernmental organisations, I invite you to consult the comments numerous IGOs provided on this point in the context of the ongoing PDP (including e.g. OECD <https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/p...>, UN <https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/p...>, World Bank <https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/p...>).
Second, regarding the consultation of a legal expert, my IGO colleagues share the OECD’s concern that such an exercise will significantly prolong what has already been an extensive and resource-intensive process. In addition, our past experiences within ICANN make us deeply concerned that such an exercise risks being manipulated against IGOs’ interests, from the formulation of the research question, the selection of the expert and the choice of jurisdictions to the potential cherry-picking of language from the expert’s conclusions once her report is released. We are grateful that you are trying to start a new, less contentious chapter in this saga but hope that you understand why we are reticent to embark down this path.
In that regard, if you do decide to proceed, we would naturally expect that the IGOs would be involved in (1) the formulation of the research question(s); (2) the selection of the expert (3) the terms of reference guiding the expert’s work; and (4) the choice of jurisdictions (please note already that a survey of five jurisdictions out of the 177 States Parties to the Paris Convention seems unlikely to give any kind of accurate idea about the scope of mechanisms States use to protect IGO acronyms).
Kind regards,
Jon
logo_mail_uk <http://www.oecd.org/> Jonathan PassaroLegal AdviserDirectorate for Legal Affairs
2, rue AndréPascal- 75775 Paris Cedex 16 Tel: +33 1 45 24 14 73 _______________________________________________ Discussion-igo-rc mailing list Discussion-igo-rc@icann.org <https://mm.icann.org/mailman/listinfo/discussion-igo-rc>
Jon: Thanks you for providing this summation of your consultation with several other IGOs. Let me comment on some of your reply. "As we have discussed at length, the mutual jurisdiction provision of the UDRP in fact prevents IGOs from using the UDRP." (Emphasis added) This claim once again illustrates an unfortunate tendency of IGO representatives to overstate their case. In actual fact, the mutual jurisdiction clause of the UDRP may deter some IGOs from using that CRP, but in no way prevents such use. To illustrate, the WG identified numerous instances in which IGOs - including the World Bank in multiple filings -- had utilized the UDRP. As stated on page 79 of the Initial Report: Indeed, several IGOs-including the International Mobile Satellite Organization (INMARSAT), the International Bank for Reconstruction and Development (IBRD), and the Bank for International Settlement (BFIS)-have prevailed in UDRP complaints. The footnote related to that sentence reads: Respectively, in International Mobile Satellite Organisation and Inmarsat Ventures Limited (formerly known as Inmarsat Holdings Limited) v. Domains, EntreDomains Inc. and Brian Evans, D2000-1339 (WIPO Nov. 30, 2000); International Bank For Reconstruction and Development d/b/a The World Bank v. Yoo Jin Sohn, D2002-0222 (WIPO May 7, 2002); and Bank for International Settlements v. BFIS, D2003-0984 (WIPO March 1, 2004), Bank for International Settlements v. BIS, D2003-0986 (WIPO March 2, 2004), Bank for International Settlements v. James Elliott, D2003-0987 (WIPO March 3, 2004), Bank for International Settlements v. G.I Joe, D2004-0570 (WIPO (Sept. 27, 2004), Bank for International Settlements v. BIS, D2004-0571 (WIPO Oct. 1, 2004), and Bank for International Settlements v. Fortune Nwaiwu, D2004-0575 (WIPO Oct. 1, 2004). A few other matters are catalogued in the Index of WIPO UDRP Panel Decisions, http://www.wipo.int/amc/en/domains/search/legalindex/, as involving IGOs. In one, involving the European Monitoring Centre for Drugs and Drug Addiction (EMCDDA), a decentralized agency of the European Union, the complaint was denied due to its failure to establish rights to marks or services. European Monitoring Centre for Drugs and Drug Addiction (EMCDDA) v. Virtual Clicks / Registrant ID:CR36884430, Registration Private Domains by Proxy, Inc., D2010-0475 (WIPO July 7, 2010). In another, involving UNITAID, an IGO hosted by the World Health Organization (WHO), trademark rights were assigned by a fiduciary agreement to a private enterprise, which registered them on behalf of the WHO and UNITAID. Lenz & Staehelin Ltd v. Christopher Mikkelsen, D2012-1922 (WIPO Jan. 8, 2013). In addition, while not cited in the Initial report, the WG also found instances in which IGOs (again including the World Bank) waived immunity and initiated litigation in national courts; see http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2015-March/000302.html . "In addition, our past experiences within ICANN make us deeply concerned that such an exercise risks being manipulated against IGOs' interests, from the formulation of the research question, the selection of the expert and the choice of jurisdictions to the potential cherry-picking of language from the expert's conclusions once her report is released." I utterly reject the implication that our WG in any way "manipulated" the legal research undertaken by Prof. Swaine. He was selected from a list of potential experts prepared by ICANN Policy Staff and was selected because of his availability to do the work within the desired timeframe and willingness to undertake extensive research and writing for a relatively small sum. The four questions posed to him (reproduced below) were neutral and dictated no predetermined outcome, and were carefully formulated with the input and assistance of ICANN policy staff. The choice of jurisdictions surveyed was entirely of his choosing. And our Initial Report, while containing extensive discussion and analysis of his findings, in no way involved "cherry-picking" of his language. Indeed, the charge is unsupported given that the entire legal memo is included in our report and entities filing comments were free to engage in their own cherry-picking in citing passages favourable to their position while ignoring those that undermined it. Finally, in regard to the four cited IGO expectations if a new legal analysis is undertaken, I agree that IGOs should have input into (but not control over) its design - just as IGOs would have had into the formulation of the questions posed to Prof. Swaine had any IGOs chosen to join our WG as members, something they declined to do despite repeated outreach. I remain incredulous that any specific legal basis for the protections of IGO names and acronyms, other than trademark law and Article 6ter of the Paris Convention, will be uncovered by such an undertaking as no IGO or other party has cited such law throughout the time our WG has been operating. I again express extreme concern about the prospect of ICANN creating non-judicial alternatives for dispute resolution in regard to any type of law other than trademark law, as this opens the door to ICANN becoming a super-legislature for the broad sweep of laws that may be implicated by specific uses of the DNS. Finally, if such a new legal inquiry is undertaken I believe it should focus solely upon statutes creating an individual right to litigate, as it would be entirely unsuitable for ICANN to create a CRP in regard to a legal right for which there is no corresponding authroity to initiate litigation but only regulatory enforcement. Based upon your desire for a broad survey of national jurisdictions, and our own experience working with with Prof. Swaine, I would anticipate that receipt of a final version the relevant legal memo would occur at least six months to a year following the time expended on identification of a suitable expert and entering into a contract for the research. If this discussion group chooses to authorize a new inquiry by another legal expert our WG will seriously consider whether our Final Report's release should be delayed to await its results. In the interim, we will continue to discuss the comments received on the Initial Report and move forward to drafting a Final version. Regards, Philip The questions posed by the IGO CRP WG to Prof. Edward Swaine: 1. In relation to the requirement to select a "Mutual Jurisdiction" in the UDRP or URS context, is a complaining IGO entitled to immunity in connection with judicial action brought by a domain name registrant arising from an asserted conflict between the IGO's and the domain name registrant's rights - even when the IGO has initiated the dispute under a dispute resolution process that is in addition to, and not a replacement for, the registrant's legal rights under its applicable national law? 2. Are there procedural or other mechanisms which an IGO may use to escape or avoid becoming subject to judicial action brought by a domain name registrant arising from an asserted conflict between the IGO's and the registrant's rights? 3. To the best of your knowledge, how do IGOs generally handle standard commercial contractual clauses concerning submission to a particular jurisdiction or dispute resolution method? 4. Are there additional principles, nuances or other relevant information (including to your knowledge general principles of law which have been applied by States) that are relevant to our work to find a solution and conclusion on domain name disputes related to IGOs? Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: discussion-igo-rc-bounces@icann.org [mailto:discussion-igo-rc-bounces@icann.org] On Behalf Of Jonathan.PASSARO@oecd.org Sent: Wednesday, May 03, 2017 4:49 AM To: discussion-igo-rc@icann.org Subject: [Discussion-igo-rc] External legal advice on 6ter Dear Bruce, My apologies for the delay since my last email, as it took me a few days to consult with the other members of the "core group" of IGOs (UN, UPU, WHO, WIPO). First, allow me to take the opportunity to correct a point in your last email, sent on 30 April at 02:14 CEST. You stated that "Where IGOs have a trademark, they can take advantage of the existing UDRP." As we have discussed at length, the mutual jurisdiction provision of the UDRP in fact prevents IGOs from using the UDRP. For more in-depth explanations regarding why the mutual jurisdiction provision is incompatible with the immunities we enjoy as intergovernmental organisations, I invite you to consult the comments numerous IGOs provided on this point in the context of the ongoing PDP (including e.g. OECD<https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/p...>, UN<https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/p...>, World Bank<https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/p...>). Second, regarding the consultation of a legal expert, my IGO colleagues share the OECD's concern that such an exercise will significantly prolong what has already been an extensive and resource-intensive process. In addition, our past experiences within ICANN make us deeply concerned that such an exercise risks being manipulated against IGOs' interests, from the formulation of the research question, the selection of the expert and the choice of jurisdictions to the potential cherry-picking of language from the expert's conclusions once her report is released. We are grateful that you are trying to start a new, less contentious chapter in this saga but hope that you understand why we are reticent to embark down this path. In that regard, if you do decide to proceed, we would naturally expect that the IGOs would be involved in (1) the formulation of the research question(s); (2) the selection of the expert (3) the terms of reference guiding the expert's work; and (4) the choice of jurisdictions (please note already that a survey of five jurisdictions out of the 177 States Parties to the Paris Convention seems unlikely to give any kind of accurate idea about the scope of mechanisms States use to protect IGO acronyms). Kind regards, Jon [logo_mail_uk]<http://www.oecd.org/> Jonathan Passaro Legal Adviser Directorate for Legal Affairs 2, rue André Pascal - 75775 Paris Cedex 16 Tel: +33 1 45 24 14 73 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.8012 / Virus Database: 4769/14347 - Release Date: 04/19/17 Internal Virus Database is out of date.
Dear Bruce, Dear Phil, Thank you for your swift replies. Bruce asked: "Does that also mean that IGOs don't use trademark law through the courts to defend their trademarks, where they have them? ie I assume that is the same issue with being subject to a court of national jurisdiction, hence why there would be no value in having a trademark if there is never any intention to use trademark law to protect the rights in the name." Trademarks and copyright can be of tremendous value, even without the intervention of national courts. We depend upon the rule of law to ensure that people respect intellectual property rights in the same way that you depend on laws against trespassing and burglary to secure your home without having to call the police every day (or at least for your sake, I hope so!). In instances where we do find that individuals have breached the rights in our intellectual property, typically a letter alerting them to this fact is enough to correct the behaviour. As Phil has pointed out in his lengthy email, in exceptional circumstances-- exceptions which indeed prove the rule--IGOs may decide to waive their immunities in order to pursue a claim in national courts. Such a decision would need to be taken at the highest level in an IGO's governance structure. The fact that IGOs have taken cases to their nations' highest courts in order to contest alleged waivers of liability (for a recent example see e.g. World Bank v Wallace, which went before the Supreme Court of Canada). Again I refer everyone to lengthy discussions we have had on this past and repeated commentary IGOs have provided to ICANN on this point (including the commentaries we provided to Prof. Swaine's memo on immunities). Kind regards, Jon From: Phil Corwin [mailto:psc@vlaw-dc.com] Sent: mercredi 3 mai 2017 17:43 To: PASSARO Jonathan, SGE/LEG; discussion-igo-rc@icann.org Subject: RE: External legal advice on 6ter Jon: Thanks you for providing this summation of your consultation with several other IGOs. Let me comment on some of your reply. "As we have discussed at length, the mutual jurisdiction provision of the UDRP in fact prevents IGOs from using the UDRP." (Emphasis added) This claim once again illustrates an unfortunate tendency of IGO representatives to overstate their case. In actual fact, the mutual jurisdiction clause of the UDRP may deter some IGOs from using that CRP, but in no way prevents such use. To illustrate, the WG identified numerous instances in which IGOs - including the World Bank in multiple filings -- had utilized the UDRP. As stated on page 79 of the Initial Report: Indeed, several IGOs-including the International Mobile Satellite Organization (INMARSAT), the International Bank for Reconstruction and Development (IBRD), and the Bank for International Settlement (BFIS)-have prevailed in UDRP complaints. The footnote related to that sentence reads: Respectively, in International Mobile Satellite Organisation and Inmarsat Ventures Limited (formerly known as Inmarsat Holdings Limited) v. Domains, EntreDomains Inc. and Brian Evans, D2000-1339 (WIPO Nov. 30, 2000); International Bank For Reconstruction and Development d/b/a The World Bank v. Yoo Jin Sohn, D2002-0222 (WIPO May 7, 2002); and Bank for International Settlements v. BFIS, D2003-0984 (WIPO March 1, 2004), Bank for International Settlements v. BIS, D2003-0986 (WIPO March 2, 2004), Bank for International Settlements v. James Elliott, D2003-0987 (WIPO March 3, 2004), Bank for International Settlements v. G.I Joe, D2004-0570 (WIPO (Sept. 27, 2004), Bank for International Settlements v. BIS, D2004-0571 (WIPO Oct. 1, 2004), and Bank for International Settlements v. Fortune Nwaiwu, D2004-0575 (WIPO Oct. 1, 2004). A few other matters are catalogued in the Index of WIPO UDRP Panel Decisions, http://www.wipo.int/amc/en/domains/search/legalindex/, as involving IGOs. In one, involving the European Monitoring Centre for Drugs and Drug Addiction (EMCDDA), a decentralized agency of the European Union, the complaint was denied due to its failure to establish rights to marks or services. European Monitoring Centre for Drugs and Drug Addiction (EMCDDA) v. Virtual Clicks / Registrant ID:CR36884430, Registration Private Domains by Proxy, Inc., D2010-0475 (WIPO July 7, 2010). In another, involving UNITAID, an IGO hosted by the World Health Organization (WHO), trademark rights were assigned by a fiduciary agreement to a private enterprise, which registered them on behalf of the WHO and UNITAID. Lenz & Staehelin Ltd v. Christopher Mikkelsen, D2012-1922 (WIPO Jan. 8, 2013). In addition, while not cited in the Initial report, the WG also found instances in which IGOs (again including the World Bank) waived immunity and initiated litigation in national courts; see http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2015-March/000302.html . "In addition, our past experiences within ICANN make us deeply concerned that such an exercise risks being manipulated against IGOs' interests, from the formulation of the research question, the selection of the expert and the choice of jurisdictions to the potential cherry-picking of language from the expert's conclusions once her report is released." I utterly reject the implication that our WG in any way "manipulated" the legal research undertaken by Prof. Swaine. He was selected from a list of potential experts prepared by ICANN Policy Staff and was selected because of his availability to do the work within the desired timeframe and willingness to undertake extensive research and writing for a relatively small sum. The four questions posed to him (reproduced below) were neutral and dictated no predetermined outcome, and were carefully formulated with the input and assistance of ICANN policy staff. The choice of jurisdictions surveyed was entirely of his choosing. And our Initial Report, while containing extensive discussion and analysis of his findings, in no way involved "cherry-picking" of his language. Indeed, the charge is unsupported given that the entire legal memo is included in our report and entities filing comments were free to engage in their own cherry-picking in citing passages favourable to their position while ignoring those that undermined it. Finally, in regard to the four cited IGO expectations if a new legal analysis is undertaken, I agree that IGOs should have input into (but not control over) its design - just as IGOs would have had into the formulation of the questions posed to Prof. Swaine had any IGOs chosen to join our WG as members, something they declined to do despite repeated outreach. I remain incredulous that any specific legal basis for the protections of IGO names and acronyms, other than trademark law and Article 6ter of the Paris Convention, will be uncovered by such an undertaking as no IGO or other party has cited such law throughout the time our WG has been operating. I again express extreme concern about the prospect of ICANN creating non-judicial alternatives for dispute resolution in regard to any type of law other than trademark law, as this opens the door to ICANN becoming a super-legislature for the broad sweep of laws that may be implicated by specific uses of the DNS. Finally, if such a new legal inquiry is undertaken I believe it should focus solely upon statutes creating an individual right to litigate, as it would be entirely unsuitable for ICANN to create a CRP in regard to a legal right for which there is no corresponding authroity to initiate litigation but only regulatory enforcement. Based upon your desire for a broad survey of national jurisdictions, and our own experience working with with Prof. Swaine, I would anticipate that receipt of a final version the relevant legal memo would occur at least six months to a year following the time expended on identification of a suitable expert and entering into a contract for the research. If this discussion group chooses to authorize a new inquiry by another legal expert our WG will seriously consider whether our Final Report's release should be delayed to await its results. In the interim, we will continue to discuss the comments received on the Initial Report and move forward to drafting a Final version. Regards, Philip The questions posed by the IGO CRP WG to Prof. Edward Swaine: 1. In relation to the requirement to select a "Mutual Jurisdiction" in the UDRP or URS context, is a complaining IGO entitled to immunity in connection with judicial action brought by a domain name registrant arising from an asserted conflict between the IGO's and the domain name registrant's rights - even when the IGO has initiated the dispute under a dispute resolution process that is in addition to, and not a replacement for, the registrant's legal rights under its applicable national law? 2. Are there procedural or other mechanisms which an IGO may use to escape or avoid becoming subject to judicial action brought by a domain name registrant arising from an asserted conflict between the IGO's and the registrant's rights? 3. To the best of your knowledge, how do IGOs generally handle standard commercial contractual clauses concerning submission to a particular jurisdiction or dispute resolution method? 4. Are there additional principles, nuances or other relevant information (including to your knowledge general principles of law which have been applied by States) that are relevant to our work to find a solution and conclusion on domain name disputes related to IGOs? Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: discussion-igo-rc-bounces@icann.org<mailto:discussion-igo-rc-bounces@icann.org> [mailto:discussion-igo-rc-bounces@icann.org] On Behalf Of Jonathan.PASSARO@oecd.org<mailto:Jonathan.PASSARO@oecd.org> Sent: Wednesday, May 03, 2017 4:49 AM To: discussion-igo-rc@icann.org<mailto:discussion-igo-rc@icann.org> Subject: [Discussion-igo-rc] External legal advice on 6ter Dear Bruce, My apologies for the delay since my last email, as it took me a few days to consult with the other members of the "core group" of IGOs (UN, UPU, WHO, WIPO). First, allow me to take the opportunity to correct a point in your last email, sent on 30 April at 02:14 CEST. You stated that "Where IGOs have a trademark, they can take advantage of the existing UDRP." As we have discussed at length, the mutual jurisdiction provision of the UDRP in fact prevents IGOs from using the UDRP. For more in-depth explanations regarding why the mutual jurisdiction provision is incompatible with the immunities we enjoy as intergovernmental organisations, I invite you to consult the comments numerous IGOs provided on this point in the context of the ongoing PDP (including e.g. OECD<https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/p...>, UN<https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/p...>, World Bank<https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/p...>). Second, regarding the consultation of a legal expert, my IGO colleagues share the OECD's concern that such an exercise will significantly prolong what has already been an extensive and resource-intensive process. In addition, our past experiences within ICANN make us deeply concerned that such an exercise risks being manipulated against IGOs' interests, from the formulation of the research question, the selection of the expert and the choice of jurisdictions to the potential cherry-picking of language from the expert's conclusions once her report is released. We are grateful that you are trying to start a new, less contentious chapter in this saga but hope that you understand why we are reticent to embark down this path. In that regard, if you do decide to proceed, we would naturally expect that the IGOs would be involved in (1) the formulation of the research question(s); (2) the selection of the expert (3) the terms of reference guiding the expert's work; and (4) the choice of jurisdictions (please note already that a survey of five jurisdictions out of the 177 States Parties to the Paris Convention seems unlikely to give any kind of accurate idea about the scope of mechanisms States use to protect IGO acronyms). Kind regards, Jon [logo_mail_uk]<http://www.oecd.org/> Jonathan Passaro Legal Adviser Directorate for Legal Affairs 2, rue André Pascal - 75775 Paris Cedex 16 Tel: +33 1 45 24 14 73 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/email-signature> Version: 2016.0.8012 / Virus Database: 4769/14347 - Release Date: 04/19/17 Internal Virus Database is out of date.
Hello Jonathan,
Trademarks and copyright can be of tremendous value, even without the intervention of national courts. We depend upon the rule of law to ensure that people respect intellectual property rights in the same way that you depend on laws against trespassing and burglary to secure your home without having to call the police every day (or at least for your sake, I hope so!). In instances where we do find that individuals have breached the rights in our intellectual property, typically a letter alerting them to this fact is enough to correct the behaviour.
Thanks. That makes a lot of sense, and you gave a good example. It is an example where as long as the recipient of the letter respects the rule of law, a simple letter that points out the intellectual property law breach is usually enough. It would seem on balance that it may be better for an IGO to actually register a trademark, rather than use the Article 6ter provision to stop others getting that trademark - simply because the letter that you speak of above can be fairly clear in identifying the intellectual property rights, without the need to go to court in most cases. In a way UDRP is the next step up from the "letter" - in that an independent person/panel with expertise in the matter reviews the case, and generally the parties accept the decision and don't go to court. Regards, Bruce Tonkin
Hi Bruce, I see where you might draw the conclusion about registering trademarks. However, registering trademarks does not make sense in many instances, again for reasons we have discussed at length over the past 5 years. In short, we are not commercial parties, and trademark is a commercial regime. On a much more basic level, the protections States offer in order to satisfy their 6ter obligations have proved sufficient. The tendency to push IGOs towards commercially-oriented solutions gives IGOs the impression of fighting an uphill battle in ICANN, where the community regards these issues through a strictly commercial lens (one just has to look at the composition of any number of ICANN bodies to understand why a reasonable person might perceive this commercial bias exists). The danger the New gTLD Programme presents to IGOs is that it provides rapidly increasing and potentially infinite number of opportunities for fraudsters to take advantage of our names and reputations, simultaneously defrauding individuals and harming our good names. And we are in a particularly precarious position because once the floodgates are opened, they cannot simply be closed again. If ICANN is going to open up IGOs to a potential deluge of harmful appropriations of our acronyms, it would seem only logical that ICANN should provide some measure of recourse against these misuses, and one that is compatible with our immunities. And we agree with you that a UDRP-like mechanism is a key component of one potential solution, provided of course there is an alternative to the mutual jurisdiction provision. This is not about creating new rights. It is about creating reasonable accommodations for a narrow class of parties who risk serious harm from a programme that ICANN has developed, and which generates considerable revenues for both ICANN as a corporation and the domain name industry as a whole. IGOs, on the other hand, see only liabilities. Thanks again for your engagement on this. Kind regards, Jon -----Original Message----- From: discussion-igo-rc-bounces@icann.org [mailto:discussion-igo-rc-bounces@icann.org] On Behalf Of Bruce Tonkin Sent: jeudi 4 mai 2017 02:19 To: discussion-igo-rc@icann.org Subject: Re: [Discussion-igo-rc] External legal advice on 6ter Hello Jonathan,
Trademarks and copyright can be of tremendous value, even without the intervention of national courts. We depend upon the rule of law to ensure that people respect intellectual property rights in the same way that you depend on laws against trespassing and burglary to secure your home without having to call the police every day (or at least for your sake, I hope so!). In instances where we do find that individuals have breached the rights in our intellectual property, typically a letter alerting them to this fact is enough to correct the behaviour.
Thanks. That makes a lot of sense, and you gave a good example. It is an example where as long as the recipient of the letter respects the rule of law, a simple letter that points out the intellectual property law breach is usually enough. It would seem on balance that it may be better for an IGO to actually register a trademark, rather than use the Article 6ter provision to stop others getting that trademark - simply because the letter that you speak of above can be fairly clear in identifying the intellectual property rights, without the need to go to court in most cases. In a way UDRP is the next step up from the "letter" - in that an independent person/panel with expertise in the matter reviews the case, and generally the parties accept the decision and don't go to court. Regards, Bruce Tonkin _______________________________________________ Discussion-igo-rc mailing list Discussion-igo-rc@icann.org https://mm.icann.org/mailman/listinfo/discussion-igo-rc
In regard to " we are not commercial parties, and trademark is a commercial regime". While trademark protection is based in commercial law, it is the system that has been globally adopted for protection of names and acronyms, and can serve non-commercial entities very well. Here is a link to an article about a just published WIPO UDRP decision in which the UK's taxing authority successfully recovered two domains that might have been used to facilitate financial fraud-- http://www.trademarksandbrandsonline.com/news/hmrc-recover-two-domain-names-... I also know of another recent situation in which the US Environmental Protection Administration failed to renew a domain used in an anti-asthma campaign and had it voluntarily returned by the new registrant after filing a UDRP, with no need for the case to go to decision. There are many examples of non-commercial agencies of sovereign governments successfully using the UDRP to recover important domains. Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey -----Original Message----- From: discussion-igo-rc-bounces@icann.org [mailto:discussion-igo-rc-bounces@icann.org] On Behalf Of Jonathan.PASSARO@oecd.org Sent: Thursday, May 04, 2017 3:10 AM To: discussion-igo-rc@icann.org Subject: Re: [Discussion-igo-rc] External legal advice on 6ter Hi Bruce, I see where you might draw the conclusion about registering trademarks. However, registering trademarks does not make sense in many instances, again for reasons we have discussed at length over the past 5 years. In short, we are not commercial parties, and trademark is a commercial regime. On a much more basic level, the protections States offer in order to satisfy their 6ter obligations have proved sufficient. The tendency to push IGOs towards commercially-oriented solutions gives IGOs the impression of fighting an uphill battle in ICANN, where the community regards these issues through a strictly commercial lens (one just has to look at the composition of any number of ICANN bodies to understand why a reasonable person might perceive this commercial bias exists). The danger the New gTLD Programme presents to IGOs is that it provides rapidly increasing and potentially infinite number of opportunities for fraudsters to take advantage of our names and reputations, simultaneously defrauding individuals and harming our good names. And we are in a particularly precarious position because once the floodgates are opened, they cannot simply be closed again. If ICANN is going to open up IGOs to a potential deluge of harmful appropriations of our acronyms, it would seem only logical that ICANN should provide some measure of recourse against these misuses, and one that is compatible with our immunities. And we agree with you that a UDRP-like mechanism is a key component of one potential solution, provided of course there is an alternative to the mutual jurisdiction provision. This is not about creating new rights. It is about creating reasonable accommodations for a narrow class of parties who risk serious harm from a programme that ICANN has developed, and which generates considerable revenues for both ICANN as a corporation and the domain name industry as a whole. IGOs, on the other hand, see only liabilities. Thanks again for your engagement on this. Kind regards, Jon -----Original Message----- From: discussion-igo-rc-bounces@icann.org [mailto:discussion-igo-rc-bounces@icann.org] On Behalf Of Bruce Tonkin Sent: jeudi 4 mai 2017 02:19 To: discussion-igo-rc@icann.org Subject: Re: [Discussion-igo-rc] External legal advice on 6ter Hello Jonathan,
Trademarks and copyright can be of tremendous value, even without the intervention of national courts. We depend upon the rule of law to ensure that people respect intellectual property rights in the same way that you depend on laws against trespassing and burglary to secure your home without having to call the police every day (or at least for your sake, I hope so!). In instances where we do find that individuals have breached the rights in our intellectual property, typically a letter alerting them to this fact is enough to correct the behaviour.
Thanks. That makes a lot of sense, and you gave a good example. It is an example where as long as the recipient of the letter respects the rule of law, a simple letter that points out the intellectual property law breach is usually enough. It would seem on balance that it may be better for an IGO to actually register a trademark, rather than use the Article 6ter provision to stop others getting that trademark - simply because the letter that you speak of above can be fairly clear in identifying the intellectual property rights, without the need to go to court in most cases. In a way UDRP is the next step up from the "letter" - in that an independent person/panel with expertise in the matter reviews the case, and generally the parties accept the decision and don't go to court. Regards, Bruce Tonkin _______________________________________________ Discussion-igo-rc mailing list Discussion-igo-rc@icann.org https://mm.icann.org/mailman/listinfo/discussion-igo-rc _______________________________________________ Discussion-igo-rc mailing list Discussion-igo-rc@icann.org https://mm.icann.org/mailman/listinfo/discussion-igo-rc ----- No virus found in this message. Checked by AVG - www.avg.com Version: 2016.0.8012 / Virus Database: 4776/14426 - Release Date: 05/03/17
Hello Jonathan,
On a much more basic level, the protections States offer in order to satisfy their 6ter obligations have proved sufficient.
That is great to hear. I am still trying to get a feel though for some examples of these protections that would help design the dispute process. That was the purpose of my proposal to get some information on these. Of course any examples that you know of would be great to share. Regards, Bruce Tonkin
participants (4)
-
Bruce Tonkin -
Jonathan.PASSARO＠oecd.org -
Petter Rindforth -
Phil Corwin