Draft for discussion/comparison (if UDRP is to be amended)
Dear WG members, As a thought experiment, the WG co-chairs would like to offer the attached draft document for review and discussion by the WG. Since we have been looking at the 2007 draft text for a possible alternative dispute resolution procedure as a potential starting point for such a process (should the WG eventually decide on such a path), the co-chairs thought it would be helpful also for the WG to consider what might be a possible starting point for amending the UDRP (should that be the preferred option). The WG may wish to discuss this draft along with its further comments on the 2007 draft text. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names & Numbers (ICANN) Telephone: +1 603 574 4892 Email: mary.wong@icann.org
With respect, this "thought experiment" is akin to my "Straw Poll" earlier (which was deemed 'too early'), in that's jumping ahead to a 'solution', without first considering all the data, identifying whether there's a real problem, etc. That being said, here are my thoughts: 1. On October 28, 2014, in subgroup B I sent a detailed analysis comparing the ICANN Reserved Names of IGOs list to the Article 6ter database. Less than half (271 of 549) of the currently 'protected' IGO reserved identifiers are even in the Article 6ter database! I'm not sure if the spreadsheets were ever posted on the Wiki, but attached is the analysis in HTML format (in the Subgroup, I also sent them in Excel and OpenOffice formats). Thus, if we limit things to Article 6ter marks, a lot of existing reserved names lose protection (perhaps rightly so). 2. The amendment for 4(a)(i) is not necessary, since the proposed change is already consistent with common law marks that IGOs can currently assert. Furthermore, the proposed language is awkward. I would rearrange it (if forced to -- I don't approve of any change) as: 4(a)(i): your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; or, where the complainant is an international intergovernmental organization whose name or abbreviation has been communicated, as prescribed by Article 6ter of the Paris Convention for the Protection of Industrial Property, to the countries constituting the Union to which the Convention applies (including Members of the World Trade Organization to whom the Convention applies in accordance with Articles 1.3 and 2.1 of the Agreement on Trade-Related Aspects of Intellectual Property Rights), your domain name is identical or confusingly similar to complainant's Article 6ter registered name or abbreviation; and (the slight change placed a semi-colon directly after "rights" as per the existing UDRP language, and then added a fresh "or" directly after, but then specific at the beginning the entities that the "or" applied to, i.e. IGOs. 3. In the language that begins with "For the avoidance of doubt" (below 4(a)(iii)), it seems illogical. By definition, the domain name is going to be "confusingly similar" if it's an identical match, so to that that "the domain name shall NOT be regarded as confusingly similar " (i.e. 4(a)(i))", the first prong of the UDRP 3-part test, doesn't make sense. Instead, I believe what the text is trying to say is that the domain name was not registered or being used "in bad faith" (the 3rd part of the 3-part test). So, the text would need to be rewritten to clarify that part (i.e. it's not the first test -- it's the 2nd and/or 3rd parts of the test). Furthermore, the language is dangerously unclear with its use of "use or registration" .... "is not of such a nature". That can be interpreted several ways, e.g. it might be interpreted to mean that an IGO can pass the test if it shows just bad faith "use" OR "registration", instead of both. In other words, it's not "avoiding the doubt" enough! Furthermore, this is *not* sufficient language to protect registrants. For example, the domain name might not yet be in use at all -- e.g. it might be under construction, not resolving, etc. Rather than saying "is probably not of such a nature as to mislead the public as to the existence of a connection.......", the "test" must be much stronger. TO avoid the doubt, the IGO must prove that the registration AND the use can only be of such a nature to actively impersonate the IGO in question. I'm not sure that the language is "bulletproof" yet. 4. For the amendments under 3(b)(viii) (the draft says 3(b)(vii), but it is actually below 3(b)(viii)), there is no requirement that the IGO discuss how their Article 6ter names/abbreviations are used. This is something that would need to be communicated in a complaint, to allow the respondent to know who the IGO is, what they do, etc. Recall that these IGOs are generally obscure. Respondent needs to have enough information in the complaint to mount a defence. Indeed, IGOs should be compelled to include the full Article 6ter filing in their complaint (which includes the date of the registration), since those generally won't appear in national trademark databases. 5. WIPO overview, draft 1.5. First, I would renumber it 1.12 (otherwise all the other UDRP element overviews would need to get renumbered). Also, I would instead suggest that WIPO overview 1.7 *already* applies to IGOs (What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights) http://www.wipo.int/amc/en/domains/search/overview2.0/#17 "Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. " If we wanted to be consistent, better language might be: 1.12: Can a complainant show UDRP-relevant rights in a name or abbreviation that has been communicated under Article 6ter of the Paris Convention for the Protection of Industrial Property? (notice I've changed the several words slightly, including 'Does' to "Can"). The "discussion section can be changed in a similar manner). In conclusion, I don't think any changes are needed to the UDRP itself (perhaps at best just the "WIPO Overview", i.e. improving education). We need to step back and consider *why* we'd want to change the UDRP -- is this just a 'political' thing, to be "seen to be doing something", just for the sake of appeasing governments? If that's the case, I don't think that's very proper for a technical policymaking body. Instead, we should feel pressured to "do something" for "show", but instead should be able to conclude that no changes whatsoever are required, if that's where the *facts* lead us. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Wed, Jan 14, 2015 at 4:35 PM, Mary Wong <mary.wong@icann.org> wrote:
Dear WG members,
As a thought experiment, the WG co-chairs would like to offer the attached draft document for review and discussion by the WG. Since we have been looking at the 2007 draft text for a possible alternative dispute resolution procedure as a potential starting point for such a process (should the WG eventually decide on such a path), the co-chairs thought it would be helpful also for the WG to consider what might be a possible starting point for amending the UDRP (should that be the preferred option).
The WG may wish to discuss this draft along with its further comments on the 2007 draft text.
Thanks and cheers Mary
Mary Wong Senior Policy Director Internet Corporation for Assigned Names & Numbers (ICANN) Telephone: +1 603 574 4892 Email: mary.wong@icann.org
_______________________________________________ Gnso-igo-ingo-crp mailing list Gnso-igo-ingo-crp@icann.org https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp
For the reasons set out in my prior emails, I am NOT in favor of any amendment. Any IGO name or acronym is already protected as a right and any claimant has both the Convention (and national law such as the Lanham Act). This limits rights specifically. As to acronyms the claimant is left to common law unless "registered" per the convention. This is entirely consistent with the position of the U.S. government per the opinion that has already been shares. All other issues (legitimate interest or bad faith) necessarily flow from the above. Immunity is not appropriately the subject of an amendment. The U.S. government's position is quite clear on this. Holding, using and seeking protection for "trademark rights" is an inherently commercial (and certainly non-governmental) activity. Established case law dating back 50 years or more clearly distinguishes between governmental and non-governmental activities, stating only that the former is consistent with immunity. A clear example is a national airline. I may not be able to participate today due to family commitments but ask that this email and its contents be made known to the group. Sincerely Paul Keating Paul Keating
On 21 Jan 2015, at 3:45 pm, George Kirikos <icann@leap.com> wrote:
With respect, this "thought experiment" is akin to my "Straw Poll" earlier (which was deemed 'too early'), in that's jumping ahead to a 'solution', without first considering all the data, identifying whether there's a real problem, etc.
That being said, here are my thoughts:
1. On October 28, 2014, in subgroup B I sent a detailed analysis comparing the ICANN Reserved Names of IGOs list to the Article 6ter database. Less than half (271 of 549) of the currently 'protected' IGO reserved identifiers are even in the Article 6ter database! I'm not sure if the spreadsheets were ever posted on the Wiki, but attached is the analysis in HTML format (in the Subgroup, I also sent them in Excel and OpenOffice formats). Thus, if we limit things to Article 6ter marks, a lot of existing reserved names lose protection (perhaps rightly so).
2. The amendment for 4(a)(i) is not necessary, since the proposed change is already consistent with common law marks that IGOs can currently assert. Furthermore, the proposed language is awkward. I would rearrange it (if forced to -- I don't approve of any change) as:
4(a)(i): your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; or, where the complainant is an international intergovernmental organization whose name or abbreviation has been communicated, as prescribed by Article 6ter of the Paris Convention for the Protection of Industrial Property, to the countries constituting the Union to which the Convention applies (including Members of the World Trade Organization to whom the Convention applies in accordance with Articles 1.3 and 2.1 of the Agreement on Trade-Related Aspects of Intellectual Property Rights), your domain name is identical or confusingly similar to complainant's Article 6ter registered name or abbreviation; and
(the slight change placed a semi-colon directly after "rights" as per the existing UDRP language, and then added a fresh "or" directly after, but then specific at the beginning the entities that the "or" applied to, i.e. IGOs.
3. In the language that begins with "For the avoidance of doubt" (below 4(a)(iii)), it seems illogical. By definition, the domain name is going to be "confusingly similar" if it's an identical match, so to that that "the domain name shall NOT be regarded as confusingly similar " (i.e. 4(a)(i))", the first prong of the UDRP 3-part test, doesn't make sense. Instead, I believe what the text is trying to say is that the domain name was not registered or being used "in bad faith" (the 3rd part of the 3-part test). So, the text would need to be rewritten to clarify that part (i.e. it's not the first test -- it's the 2nd and/or 3rd parts of the test).
Furthermore, the language is dangerously unclear with its use of "use or registration" .... "is not of such a nature". That can be interpreted several ways, e.g. it might be interpreted to mean that an IGO can pass the test if it shows just bad faith "use" OR "registration", instead of both. In other words, it's not "avoiding the doubt" enough!
Furthermore, this is *not* sufficient language to protect registrants. For example, the domain name might not yet be in use at all -- e.g. it might be under construction, not resolving, etc. Rather than saying "is probably not of such a nature as to mislead the public as to the existence of a connection.......", the "test" must be much stronger. TO avoid the doubt, the IGO must prove that the registration AND the use can only be of such a nature to actively impersonate the IGO in question. I'm not sure that the language is "bulletproof" yet.
4. For the amendments under 3(b)(viii) (the draft says 3(b)(vii), but it is actually below 3(b)(viii)), there is no requirement that the IGO discuss how their Article 6ter names/abbreviations are used. This is something that would need to be communicated in a complaint, to allow the respondent to know who the IGO is, what they do, etc. Recall that these IGOs are generally obscure. Respondent needs to have enough information in the complaint to mount a defence. Indeed, IGOs should be compelled to include the full Article 6ter filing in their complaint (which includes the date of the registration), since those generally won't appear in national trademark databases.
5. WIPO overview, draft 1.5. First, I would renumber it 1.12 (otherwise all the other UDRP element overviews would need to get renumbered). Also, I would instead suggest that WIPO overview 1.7 *already* applies to IGOs (What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights)
http://www.wipo.int/amc/en/domains/search/overview2.0/#17
"Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. "
If we wanted to be consistent, better language might be:
1.12: Can a complainant show UDRP-relevant rights in a name or abbreviation that has been communicated under Article 6ter of the Paris Convention for the Protection of Industrial Property?
(notice I've changed the several words slightly, including 'Does' to "Can"). The "discussion section can be changed in a similar manner).
In conclusion, I don't think any changes are needed to the UDRP itself (perhaps at best just the "WIPO Overview", i.e. improving education). We need to step back and consider *why* we'd want to change the UDRP -- is this just a 'political' thing, to be "seen to be doing something", just for the sake of appeasing governments? If that's the case, I don't think that's very proper for a technical policymaking body. Instead, we should feel pressured to "do something" for "show", but instead should be able to conclude that no changes whatsoever are required, if that's where the *facts* lead us.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Wed, Jan 14, 2015 at 4:35 PM, Mary Wong <mary.wong@icann.org> wrote: Dear WG members,
As a thought experiment, the WG co-chairs would like to offer the attached draft document for review and discussion by the WG. Since we have been looking at the 2007 draft text for a possible alternative dispute resolution procedure as a potential starting point for such a process (should the WG eventually decide on such a path), the co-chairs thought it would be helpful also for the WG to consider what might be a possible starting point for amending the UDRP (should that be the preferred option).
The WG may wish to discuss this draft along with its further comments on the 2007 draft text.
Thanks and cheers Mary
Mary Wong Senior Policy Director Internet Corporation for Assigned Names & Numbers (ICANN) Telephone: +1 603 574 4892 Email: mary.wong@icann.org
_______________________________________________ Gnso-igo-ingo-crp mailing list Gnso-igo-ingo-crp@icann.org https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp <6ter-analysis.html>
Gnso-igo-ingo-crp mailing list Gnso-igo-ingo-crp@icann.org https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp
Thank you, as always, for your thoughtful contributions, Paul. 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: gnso-igo-ingo-crp-bounces@icann.org [mailto:gnso-igo-ingo-crp-bounces@icann.org] On Behalf Of Paul@law.es ZIMBRA Sent: Wednesday, January 21, 2015 11:35 AM To: George Kirikos Cc: gnso-igo-ingo-crp@icann.org Subject: Re: [Gnso-igo-ingo-crp] Draft for discussion/comparison (if UDRP is to be amended) For the reasons set out in my prior emails, I am NOT in favor of any amendment. Any IGO name or acronym is already protected as a right and any claimant has both the Convention (and national law such as the Lanham Act). This limits rights specifically. As to acronyms the claimant is left to common law unless "registered" per the convention. This is entirely consistent with the position of the U.S. government per the opinion that has already been shares. All other issues (legitimate interest or bad faith) necessarily flow from the above. Immunity is not appropriately the subject of an amendment. The U.S. government's position is quite clear on this. Holding, using and seeking protection for "trademark rights" is an inherently commercial (and certainly non-governmental) activity. Established case law dating back 50 years or more clearly distinguishes between governmental and non-governmental activities, stating only that the former is consistent with immunity. A clear example is a national airline. I may not be able to participate today due to family commitments but ask that this email and its contents be made known to the group. Sincerely Paul Keating Paul Keating On 21 Jan 2015, at 3:45 pm, George Kirikos <icann@leap.com<mailto:icann@leap.com>> wrote: With respect, this "thought experiment" is akin to my "Straw Poll" earlier (which was deemed 'too early'), in that's jumping ahead to a 'solution', without first considering all the data, identifying whether there's a real problem, etc. That being said, here are my thoughts: 1. On October 28, 2014, in subgroup B I sent a detailed analysis comparing the ICANN Reserved Names of IGOs list to the Article 6ter database. Less than half (271 of 549) of the currently 'protected' IGO reserved identifiers are even in the Article 6ter database! I'm not sure if the spreadsheets were ever posted on the Wiki, but attached is the analysis in HTML format (in the Subgroup, I also sent them in Excel and OpenOffice formats). Thus, if we limit things to Article 6ter marks, a lot of existing reserved names lose protection (perhaps rightly so). 2. The amendment for 4(a)(i) is not necessary, since the proposed change is already consistent with common law marks that IGOs can currently assert. Furthermore, the proposed language is awkward. I would rearrange it (if forced to -- I don't approve of any change) as: 4(a)(i): your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; or, where the complainant is an international intergovernmental organization whose name or abbreviation has been communicated, as prescribed by Article 6ter of the Paris Convention for the Protection of Industrial Property, to the countries constituting the Union to which the Convention applies (including Members of the World Trade Organization to whom the Convention applies in accordance with Articles 1.3 and 2.1 of the Agreement on Trade-Related Aspects of Intellectual Property Rights), your domain name is identical or confusingly similar to complainant's Article 6ter registered name or abbreviation; and (the slight change placed a semi-colon directly after "rights" as per the existing UDRP language, and then added a fresh "or" directly after, but then specific at the beginning the entities that the "or" applied to, i.e. IGOs. 3. In the language that begins with "For the avoidance of doubt" (below 4(a)(iii)), it seems illogical. By definition, the domain name is going to be "confusingly similar" if it's an identical match, so to that that "the domain name shall NOT be regarded as confusingly similar " (i.e. 4(a)(i))", the first prong of the UDRP 3-part test, doesn't make sense. Instead, I believe what the text is trying to say is that the domain name was not registered or being used "in bad faith" (the 3rd part of the 3-part test). So, the text would need to be rewritten to clarify that part (i.e. it's not the first test -- it's the 2nd and/or 3rd parts of the test). Furthermore, the language is dangerously unclear with its use of "use or registration" .... "is not of such a nature". That can be interpreted several ways, e.g. it might be interpreted to mean that an IGO can pass the test if it shows just bad faith "use" OR "registration", instead of both. In other words, it's not "avoiding the doubt" enough! Furthermore, this is *not* sufficient language to protect registrants. For example, the domain name might not yet be in use at all -- e.g. it might be under construction, not resolving, etc. Rather than saying "is probably not of such a nature as to mislead the public as to the existence of a connection.......", the "test" must be much stronger. TO avoid the doubt, the IGO must prove that the registration AND the use can only be of such a nature to actively impersonate the IGO in question. I'm not sure that the language is "bulletproof" yet. 4. For the amendments under 3(b)(viii) (the draft says 3(b)(vii), but it is actually below 3(b)(viii)), there is no requirement that the IGO discuss how their Article 6ter names/abbreviations are used. This is something that would need to be communicated in a complaint, to allow the respondent to know who the IGO is, what they do, etc. Recall that these IGOs are generally obscure. Respondent needs to have enough information in the complaint to mount a defence. Indeed, IGOs should be compelled to include the full Article 6ter filing in their complaint (which includes the date of the registration), since those generally won't appear in national trademark databases. 5. WIPO overview, draft 1.5. First, I would renumber it 1.12 (otherwise all the other UDRP element overviews would need to get renumbered). Also, I would instead suggest that WIPO overview 1.7 *already* applies to IGOs (What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights) http://www.wipo.int/amc/en/domains/search/overview2.0/#17 "Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. " If we wanted to be consistent, better language might be: 1.12: Can a complainant show UDRP-relevant rights in a name or abbreviation that has been communicated under Article 6ter of the Paris Convention for the Protection of Industrial Property? (notice I've changed the several words slightly, including 'Does' to "Can"). The "discussion section can be changed in a similar manner). In conclusion, I don't think any changes are needed to the UDRP itself (perhaps at best just the "WIPO Overview", i.e. improving education). We need to step back and consider *why* we'd want to change the UDRP -- is this just a 'political' thing, to be "seen to be doing something", just for the sake of appeasing governments? If that's the case, I don't think that's very proper for a technical policymaking body. Instead, we should feel pressured to "do something" for "show", but instead should be able to conclude that no changes whatsoever are required, if that's where the *facts* lead us. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Wed, Jan 14, 2015 at 4:35 PM, Mary Wong <mary.wong@icann.org<mailto:mary.wong@icann.org>> wrote: Dear WG members, As a thought experiment, the WG co-chairs would like to offer the attached draft document for review and discussion by the WG. Since we have been looking at the 2007 draft text for a possible alternative dispute resolution procedure as a potential starting point for such a process (should the WG eventually decide on such a path), the co-chairs thought it would be helpful also for the WG to consider what might be a possible starting point for amending the UDRP (should that be the preferred option). The WG may wish to discuss this draft along with its further comments on the 2007 draft text. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names & Numbers (ICANN) Telephone: +1 603 574 4892 Email: mary.wong@icann.org<mailto:mary.wong@icann.org> _______________________________________________ Gnso-igo-ingo-crp mailing list Gnso-igo-ingo-crp@icann.org<mailto:Gnso-igo-ingo-crp@icann.org> https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp <6ter-analysis.html> _______________________________________________ Gnso-igo-ingo-crp mailing list Gnso-igo-ingo-crp@icann.org<mailto:Gnso-igo-ingo-crp@icann.org> https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com> Version: 2015.0.5645 / Virus Database: 4260/8932 - Release Date: 01/14/15
Hello George and all, As noted during the WG call today, WG members are kindly invited to continue to provide their feedback on the ³thought experiment² draft text that was circulated on 14 January, and again earlier today. This will enable the group to continue its substantive deliberations on this mailing list, in lieu of an agenda item on this topic at our meeting next week, and should hopefully provide some good points to circle back to when we meet face to face (including with our remote participants) in Singapore on 13 February. Thanks to George and Paul (in a separate email also sent to this list) for kicking off the discussion on this issue. FWIW here are a few staff notes and comments to George¹s feedback, numbered according to his comments. 1. George¹s very helpful and detailed analysis for Sub-Group B was posted to the WG wiki space upon receipt, and is available here: https://community.icann.org/x/mxbxAg. Also, as noted in the Adobe chat during the meeting, the GAC¹s criteria for including an IGO on their list, supplied to ICANN in 2013, was that it be "(a) an international organization established by a treaty and which possesses international legal personality; or (b) an intergovernmental organization having received a standing invitation to participate as observer in the sessions and the work of the United Nations General Assembly.² (taken from the letter enclosing the list, sent by the GAC Chair: https://www.icann.org/en/system/files/correspondence/dryden-to-crocker-chal aby-annex1-22mar13-en.pdf.) WG members may wish to note that in this letter the GAC also suggests that the list be reviewed prior to the delegation of any new gTLD in subsequent rounds, or every three years, whichever first occurs. As Phil noted on the call today, the WG will at some point need to discuss the differences between those IGOs that may be protected under whatever mechanism the WG recommends (should that be the case) and those listed by the GAC. 3. On the addition of the ³For avoidance of doubt² paragraph, the intention was to address the scope of a UDRP claim and the question of legitimate third party rights, rather than bad faith. In other words, it would not be enough for an IGO to simply show that the domain name complained of is identical or substantially similar to its name or acronym. Rather - and matching the scope of Article 6ter protections - the third party would not be permitted to register or use the domain name only if this implies a connection between it and the IGO. The language here is taken basically word for word from Article 6ter, and as George noted, may need some further tweaking and change, but that was the basic idea. We hope the above is helpful in clarifying some of the ongoing discussions within the WG. Thanks and cheers, Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names & Numbers (ICANN) Telephone: +1 603 574 4892 Email: mary.wong@icann.org -----Original Message----- From: George Kirikos <icann@leap.com> Date: Wednesday, January 21, 2015 at 09:45 To: "gnso-igo-ingo-crp@icann.org" <gnso-igo-ingo-crp@icann.org> Subject: Re: [Gnso-igo-ingo-crp] Draft for discussion/comparison (if UDRP is to be amended)
With respect, this "thought experiment" is akin to my "Straw Poll" earlier (which was deemed 'too early'), in that's jumping ahead to a 'solution', without first considering all the data, identifying whether there's a real problem, etc.
That being said, here are my thoughts:
1. On October 28, 2014, in subgroup B I sent a detailed analysis comparing the ICANN Reserved Names of IGOs list to the Article 6ter database. Less than half (271 of 549) of the currently 'protected' IGO reserved identifiers are even in the Article 6ter database! I'm not sure if the spreadsheets were ever posted on the Wiki, but attached is the analysis in HTML format (in the Subgroup, I also sent them in Excel and OpenOffice formats). Thus, if we limit things to Article 6ter marks, a lot of existing reserved names lose protection (perhaps rightly so) 2. The amendment for 4(a)(i) is not necessary, since the proposed change is already consistent with common law marks that IGOs can currently assert. Furthermore, the proposed language is awkward. I would rearrange it (if forced to -- I don't approve of any change) as:
4(a)(i): your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; or, where the complainant is an international intergovernmental organization whose name or abbreviation has been communicated, as prescribed by Article 6ter of the Paris Convention for the Protection of Industrial Property, to the countries constituting the Union to which the Convention applies (including Members of the World Trade Organization to whom the Convention applies in accordance with Articles 1.3 and 2.1 of the Agreement on Trade-Related Aspects of Intellectual Property Rights), your domain name is identical or confusingly similar to complainant's Article 6ter registered name or abbreviation; and
(the slight change placed a semi-colon directly after "rights" as per the existing UDRP language, and then added a fresh "or" directly after, but then specific at the beginning the entities that the "or" applied to, i.e. IGOs.
3. In the language that begins with "For the avoidance of doubt" (below 4(a)(iii)), it seems illogical. By definition, the domain name is going to be "confusingly similar" if it's an identical match, so to that that "the domain name shall NOT be regarded as confusingly similar " (i.e. 4(a)(i))", the first prong of the UDRP 3-part test, doesn't make sense. Instead, I believe what the text is trying to say is that the domain name was not registered or being used "in bad faith" (the 3rd part of the 3-part test). So, the text would need to be rewritten to clarify that part (i.e. it's not the first test -- it's the 2nd and/or 3rd parts of the test).
Furthermore, the language is dangerously unclear with its use of "use or registration" .... "is not of such a nature". That can be interpreted several ways, e.g. it might be interpreted to mean that an IGO can pass the test if it shows just bad faith "use" OR "registration", instead of both. In other words, it's not "avoiding the doubt" enough!
Furthermore, this is *not* sufficient language to protect registrants. For example, the domain name might not yet be in use at all -- e.g. it might be under construction, not resolving, etc. Rather than saying "is probably not of such a nature as to mislead the public as to the existence of a connection.......", the "test" must be much stronger. TO avoid the doubt, the IGO must prove that the registration AND the use can only be of such a nature to actively impersonate the IGO in question. I'm not sure that the language is "bulletproof" yet.
4. For the amendments under 3(b)(viii) (the draft says 3(b)(vii), but it is actually below 3(b)(viii)), there is no requirement that the IGO discuss how their Article 6ter names/abbreviations are used. This is something that would need to be communicated in a complaint, to allow the respondent to know who the IGO is, what they do, etc. Recall that these IGOs are generally obscure. Respondent needs to have enough information in the complaint to mount a defence. Indeed, IGOs should be compelled to include the full Article 6ter filing in their complaint (which includes the date of the registration), since those generally won't appear in national trademark databases.
5. WIPO overview, draft 1.5. First, I would renumber it 1.12 (otherwise all the other UDRP element overviews would need to get renumbered). Also, I would instead suggest that WIPO overview 1.7 *already* applies to IGOs (What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights)
http://www.wipo.int/amc/en/domains/search/overview2.0/#17
"Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. "
If we wanted to be consistent, better language might be:
1.12: Can a complainant show UDRP-relevant rights in a name or abbreviation that has been communicated under Article 6ter of the Paris Convention for the Protection of Industrial Property?
(notice I've changed the several words slightly, including 'Does' to "Can"). The "discussion section can be changed in a similar manner).
In conclusion, I don't think any changes are needed to the UDRP itself (perhaps at best just the "WIPO Overview", i.e. improving education). We need to step back and consider *why* we'd want to change the UDRP -- is this just a 'political' thing, to be "seen to be doing something", just for the sake of appeasing governments? If that's the case, I don't think that's very proper for a technical policymaking body. Instead, we should feel pressured to "do something" for "show", but instead should be able to conclude that no changes whatsoever are required, if that's where the *facts* lead us.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Wed, Jan 14, 2015 at 4:35 PM, Mary Wong <mary.wong@icann.org> wrote:
Dear WG members,
As a thought experiment, the WG co-chairs would like to offer the attached draft document for review and discussion by the WG. Since we have been looking at the 2007 draft text for a possible alternative dispute resolution procedure as a potential starting point for such a process (should the WG eventually decide on such a path), the co-chairs thought it would be helpful also for the WG to consider what might be a possible starting point for amending the UDRP (should that be the preferred option).
The WG may wish to discuss this draft along with its further comments on the 2007 draft text.
Thanks and cheers Mary
Mary Wong Senior Policy Director Internet Corporation for Assigned Names & Numbers (ICANN) Telephone: +1 603 574 4892 Email: mary.wong@icann.org
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participants (4)
-
George Kirikos -
Mary Wong -
Paul＠law.es ZIMBRA -
Phil Corwin