Food for thought on the "standing" requirement and sovereign immunity
Dear all, This is not intended to take any position on the issue of standing; rather, we as support staff thought the WG might find useful the draft text that was produced for the GNSO Council in 2007 for an alternative dispute resolution procedure (DRP) (attached). As you¹ll recall this was part of the scoping that had been done at the time for an Issue Report which, however, did not lead to any policy work for lack of requisite votes on the GNSO Council. Of particular note is the modification of the UDRP requirements for a complaint and thus a mandatory administrative proceeding under 4(a) of the UDRP to be as follows: "(i) the registration or use, as a domain name, of the name or abbreviation of the complainant that has been communicated under Article 6ter of the Paris Convention is of a nature: (a) to suggest to the public that a connection exists between the domain nameholder and the complainant; or (b) to mislead the public as to the existence of a connection between the domain name holder and the complainant; or (ii) on the ground that the registration or use, as a domain name, of a name or abbreviation of the complainant protected under an international treaty violates the terms of that treaty.² The draft text therefore suggests two alternative grounds for standing in lieu of trademark rights. FWIW the draft text also deals with the sovereign immunity issue by defining ³Mutual Jurisdiction² to be an arbitral tribunal constituted under the rules either of the AAA, ICDR, WIPO or the London Court of International Arbitration (see Definitions under the Rules of Procedure, 3.B.) I hope this is helpful. 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: <Dorrain>, Kristine <kdorrain@adrforum.com> Date: Friday, 12 December 2014 10:09 To: Jim Bikoff <jbikoff@sgbdc.com> Cc: "gnso-igo-ingo-crp@icann.org" <gnso-igo-ingo-crp@icann.org> Subject: Re: [Gnso-igo-ingo-crp] - Final SG/C Letter and Questions to Consider
Agree.
Sent from my iPhone
On Dec 11, 2014, at 5:45 PM, Jim Bikoff <jbikoff@sgbdc.com<mailto:jbikoff@sgbdc.com>> wrote:
Agree.
Jim
James L. Bikoff Silverberg, Goldman & Bikoff, LLP 1101 30th Street, NW Suite 120 Washington, DC 20007 Tel: 202-944-3303 Fax: 202-944-3306 jbikoff@sgbdc.com<mailto:jbikoff@sgbdc.com>
Sent from my iPad
On Dec 11, 2014, at 7:34 PM, David W. Maher <dmaher@pir.org<mailto:dmaher@pir.org>> wrote:
+1 David W. Maher Senior Vice President Law & Policy Public Interest Registry 312 375 4849
From: Mike Rodenbaugh <mike@rodenbaugh.com<mailto:mike@rodenbaugh.com>> Date: Thursday, December 11, 2014 5:14 PM To: Paul Keating <Paul@law.es<mailto:Paul@law.es>> Cc: "gnso-igo-ingo-crp@icann.org<mailto:gnso-igo-ingo-crp@icann.org>" <gnso-igo-ingo-crp@icann.org<mailto:gnso-igo-ingo-crp@icann.org>> Subject: Re: [Gnso-igo-ingo-crp] - Final SG/C Letter and Questions to Consider
Generally agree with Paul, and had the same basic feeling: "My reaction to the standing issue is that there is absolutely no reason to even consider it. The UDRP has always been founded on the pre-requisite of a trademark. "
I am curious to hear if anyone could pose any other remotely justifiable basis for standing, other than trademark rights.
Best, Mike
Mike Rodenbaugh RODENBAUGH LAW tel/fax: +1.415.738.8087 http://rodenbaugh.com
On Thu, Dec 11, 2014 at 1:15 AM, Paul Keating <Paul@law.es<mailto:Paul@law.es>> wrote: Thank you Steve,
Regarding the questions noted below, I wanted to respond to a comment I believe that Peder made during the call regarding the requirement that trademarks were no longer the standing requirement they once were in the UDRP. I believe he used the example of famous people's names. I have not listened to the MP3 recording so, if I am mistaken in attributing the comment to Peder, let me be the first to apologize for my error.
Peder, your comment was entirely incorrect. Those UDRPs involving famous names have turned on whether the complainant's use of the name amounted to a common law trademark right. In cases of mere fame without commercialization, panels have found no t trademarks. In those in which the names were clearly linked to commercial activities (music, books, etc), the panels have found a common law trademark to exist. I know of absolutely no UDRP decision in which the panel found a famous name sufficient without also finding the requisite common law trademark right. If you have one to mind, please share it and I will stand corrected.
My reaction to the standing issue is that there is absolutely no reason to even consider it. The UDRP has always been founded on the pre-requisite of a trademark. The WIPO White Paper was clear that the UDRP should not be a vehicle for the creation or expansion of intellectual proper rights in cyber-space beyond those existing in the "real world". Notwithstanding the clear "identical and confusingly similar" language, panels have watered down the 1st Element to one of mere standing which as I have previously said, is such a low barrier that a worm could easily cross. The panels did so by progressively ignoring the clear language ("identical or confusingly similar") which is a widely recognized and well-honed term of art in trademark infringement to one which is merely a text vs t ext comparison. However, this is not and can never, IMHO be, a reason to ignore the language entirely and permit some other substitution to a registered or common law mark.
Further, to do so would require a wholesale amendment to the UDRP (and URS). This would require an amendment to the ICANN/Registrar agreement AND a change to the Registrar/Registrant agreement.
Finally, although it was within our initial charter to consider amendments, I feel seriously doing so would be impractical. In addition to the above reasons, given that it would require an amendment to the UDRP, I believe that such a task is better left to a Working Group assigned for such purpose because once the suggestion is made to open an amendment process, it will quickly include other and competing views on a variety of subjects.
It is for this reason I suggested our next session focus on the issue of Sovereign Immunity and we leave the issue of rights expansion to January.
Finally, please allow me to apologize once again for not seeming to "get it" with the audio portion of my participation. Someday I will be able to arrange my black box to accurately interact with all of those interconnected tubes in the "web"..:-)
Warmest regards,
Paul
From: Steve Chan <steve.chan@icann.org<mailto:steve.chan@icann.org>> Date: Thursday, December 11, 2014 1:26 AM To: "gnso-igo-ingo-crp@icann.org<mailto:gnso-igo-ingo-crp@icann.org>" <gnso-igo-ingo-crp@icann.org<mailto:gnso-igo-ingo-crp@icann.org>> Subject: [Gnso-igo-ingo-crp] - Final SG/C Letter and Questions to Consider
Dear WG Members,
Attached, please find the final version of the letter drafted to solicit input from the stakeholder groups and constituencies; this letter was sent to the chairs of each of the SG/Cs yesterday.
In addition, it was agreed on today¹s call that at least for the moment, the group would not break up into sub groups and would instead work together over the list to debate the following item from the group¹s work plan: "Develop potential considerations (e.g. qualifying requirements, authentication criteria and appeal processes) for IGOs and INGOs that would be relevant to their use of dispute resolution proceedings (existing or new)²
The WG may want to consider the following questions when thinking about this item:
* What might be a justifiable, principled basis for ³standing² other than TM rights, whether under the UDRP, URS or a new dispute resolution procedure? * Assuming for the moment that sovereign immunity is a problem for IGOs (pending responses from the GAC and the IGOs), what type of appeal process other than what is now in the UDRP and URS might be a solution that would still offer adequate protection to registrants?
Best, Steve
Steven Chan Sr. Policy Manager
ICANN 12025 Waterfront Drive, Suite 300 Los Angeles, CA 90094-2536 steve.chan@icann.org <mailto:steve.chan@icann.org> direct: +1.310.301.3886<tel:%2B1.310.301.3886> mobile: +1.310.339.4410<tel:%2B1.310.339.4410> tel: +1.310.301.5800<tel:%2B1.310.301.5800> fax: +1.310.823.8649<tel:%2B1.310.823.8649> _______________________________________________ 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
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Thanks Mary, I note that your text includes footnotes. Can you kindly provide the full text including any notes. As for considering the point, even assuming there is substance to the possible amendment, it requires substantial background work (see belo) and I thus continue the suggestion that it be tabled until 2015. I think the discussion as to the Sov. Immunity issue will consume the time available during next call. as to the amendment: 1. As to the 6ter reference, my initial comments are: It is duplicative of any coverage under trademark laws. It also precludes any analysis as to whether it is capable of TM protection under applicable law (the lack of vetting is oft cited as a reason for not allowing US state tms). 2. As for the treaty coverage, my initial comments are: Any such treaty would be required to be either unanimous or agreed to by the states wherein the registrar, registrant and complainant reside. Otherwise there would be no basis in law to provide foundation. For example, would a reference in a treaty as between Mexico and Guatemala provide a sufficient basis? What type of treaties would be included? Tax treaties, trade agreements, etc?? It would seriously expand the complexity of UDRP/URS as panels would need to be aware of all of the various treaties between the various member states AND the legal status of such treaties (e.g. Whether ratified, whether or not exceptions have been noted, etc). Paul Keating
On 12 Dec 2014, at 5:07 am, Mary Wong <mary.wong@icann.org> wrote:
Dear all,
This is not intended to take any position on the issue of standing; rather, we as support staff thought the WG might find useful the draft text that was produced for the GNSO Council in 2007 for an alternative dispute resolution procedure (DRP) (attached). As you¹ll recall this was part of the scoping that had been done at the time for an Issue Report which, however, did not lead to any policy work for lack of requisite votes on the GNSO Council.
Of particular note is the modification of the UDRP requirements for a complaint and thus a mandatory administrative proceeding under 4(a) of the UDRP to be as follows:
"(i) the registration or use, as a domain name, of the name or abbreviation of the complainant that has been communicated under Article 6ter of the Paris Convention is of a nature:
(a) to suggest to the public that a connection exists between the domain nameholder and the complainant; or (b) to mislead the public as to the existence of a connection between the domain name holder and the complainant; or
(ii) on the ground that the registration or use, as a domain name, of a name or abbreviation of the complainant protected under an international treaty violates the terms of that treaty.²
The draft text therefore suggests two alternative grounds for standing in lieu of trademark rights.
FWIW the draft text also deals with the sovereign immunity issue by defining ³Mutual Jurisdiction² to be an arbitral tribunal constituted under the rules either of the AAA, ICDR, WIPO or the London Court of International Arbitration (see Definitions under the Rules of Procedure, 3.B.)
I hope this is helpful.
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: <Dorrain>, Kristine <kdorrain@adrforum.com> Date: Friday, 12 December 2014 10:09 To: Jim Bikoff <jbikoff@sgbdc.com> Cc: "gnso-igo-ingo-crp@icann.org" <gnso-igo-ingo-crp@icann.org> Subject: Re: [Gnso-igo-ingo-crp] - Final SG/C Letter and Questions to Consider
Agree.
Sent from my iPhone
On Dec 11, 2014, at 5:45 PM, Jim Bikoff <jbikoff@sgbdc.com<mailto:jbikoff@sgbdc.com>> wrote:
Agree.
Jim
James L. Bikoff Silverberg, Goldman & Bikoff, LLP 1101 30th Street, NW Suite 120 Washington, DC 20007 Tel: 202-944-3303 Fax: 202-944-3306 jbikoff@sgbdc.com<mailto:jbikoff@sgbdc.com>
Sent from my iPad
On Dec 11, 2014, at 7:34 PM, David W. Maher <dmaher@pir.org<mailto:dmaher@pir.org>> wrote:
+1 David W. Maher Senior Vice President Law & Policy Public Interest Registry 312 375 4849
From: Mike Rodenbaugh <mike@rodenbaugh.com<mailto:mike@rodenbaugh.com>> Date: Thursday, December 11, 2014 5:14 PM To: Paul Keating <Paul@law.es<mailto:Paul@law.es>> Cc: "gnso-igo-ingo-crp@icann.org<mailto:gnso-igo-ingo-crp@icann.org>" <gnso-igo-ingo-crp@icann.org<mailto:gnso-igo-ingo-crp@icann.org>> Subject: Re: [Gnso-igo-ingo-crp] - Final SG/C Letter and Questions to Consider
Generally agree with Paul, and had the same basic feeling: "My reaction to the standing issue is that there is absolutely no reason to even consider it. The UDRP has always been founded on the pre-requisite of a trademark. "
I am curious to hear if anyone could pose any other remotely justifiable basis for standing, other than trademark rights.
Best, Mike
Mike Rodenbaugh RODENBAUGH LAW tel/fax: +1.415.738.8087 http://rodenbaugh.com
On Thu, Dec 11, 2014 at 1:15 AM, Paul Keating <Paul@law.es<mailto:Paul@law.es>> wrote: Thank you Steve,
Regarding the questions noted below, I wanted to respond to a comment I believe that Peder made during the call regarding the requirement that trademarks were no longer the standing requirement they once were in the UDRP. I believe he used the example of famous people's names. I have not listened to the MP3 recording so, if I am mistaken in attributing the comment to Peder, let me be the first to apologize for my error.
Peder, your comment was entirely incorrect. Those UDRPs involving famous names have turned on whether the complainant's use of the name amounted to a common law trademark right. In cases of mere fame without commercialization, panels have found no t trademarks. In those in which the names were clearly linked to commercial activities (music, books, etc), the panels have found a common law trademark to exist. I know of absolutely no UDRP decision in which the panel found a famous name sufficient without also finding the requisite common law trademark right. If you have one to mind, please share it and I will stand corrected.
My reaction to the standing issue is that there is absolutely no reason to even consider it. The UDRP has always been founded on the pre-requisite of a trademark. The WIPO White Paper was clear that the UDRP should not be a vehicle for the creation or expansion of intellectual proper rights in cyber-space beyond those existing in the "real world". Notwithstanding the clear "identical and confusingly similar" language, panels have watered down the 1st Element to one of mere standing which as I have previously said, is such a low barrier that a worm could easily cross. The panels did so by progressively ignoring the clear language ("identical or confusingly similar") which is a widely recognized and well-honed term of art in trademark infringement to one which is merely a text vs t ext comparison. However, this is not and can never, IMHO be, a reason to ignore the language entirely and permit some other substitution to a registered or common law mark.
Further, to do so would require a wholesale amendment to the UDRP (and URS). This would require an amendment to the ICANN/Registrar agreement AND a change to the Registrar/Registrant agreement.
Finally, although it was within our initial charter to consider amendments, I feel seriously doing so would be impractical. In addition to the above reasons, given that it would require an amendment to the UDRP, I believe that such a task is better left to a Working Group assigned for such purpose because once the suggestion is made to open an amendment process, it will quickly include other and competing views on a variety of subjects.
It is for this reason I suggested our next session focus on the issue of Sovereign Immunity and we leave the issue of rights expansion to January.
Finally, please allow me to apologize once again for not seeming to "get it" with the audio portion of my participation. Someday I will be able to arrange my black box to accurately interact with all of those interconnected tubes in the "web"Š..:-)
Warmest regards,
Paul
From: Steve Chan <steve.chan@icann.org<mailto:steve.chan@icann.org>> Date: Thursday, December 11, 2014 1:26 AM To: "gnso-igo-ingo-crp@icann.org<mailto:gnso-igo-ingo-crp@icann.org>" <gnso-igo-ingo-crp@icann.org<mailto:gnso-igo-ingo-crp@icann.org>> Subject: [Gnso-igo-ingo-crp] - Final SG/C Letter and Questions to Consider
Dear WG Members,
Attached, please find the final version of the letter drafted to solicit input from the stakeholder groups and constituencies; this letter was sent to the chairs of each of the SG/Cs yesterday.
In addition, it was agreed on today¹s call that at least for the moment, the group would not break up into sub groups and would instead work together over the list to debate the following item from the group¹s work plan: "Develop potential considerations (e.g. qualifying requirements, authentication criteria and appeal processes) for IGOs and INGOs that would be relevant to their use of dispute resolution proceedings (existing or new)²
The WG may want to consider the following questions when thinking about this item:
* What might be a justifiable, principled basis for ³standing² other than TM rights, whether under the UDRP, URS or a new dispute resolution procedure? * Assuming for the moment that sovereign immunity is a problem for IGOs (pending responses from the GAC and the IGOs), what type of appeal process other than what is now in the UDRP and URS might be a solution that would still offer adequate protection to registrants?
Best, Steve
Steven Chan Sr. Policy Manager
ICANN 12025 Waterfront Drive, Suite 300 Los Angeles, CA 90094-2536 steve.chan@icann.org <mailto:steve.chan@icann.org> direct: +1.310.301.3886<tel:%2B1.310.301.3886> mobile: +1.310.339.4410<tel:%2B1.310.339.4410> tel: +1.310.301.5800<tel:%2B1.310.301.5800> fax: +1.310.823.8649<tel:%2B1.310.823.8649> _______________________________________________ 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
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<Staff Draft Text for IGO DRP & Rules - Sept 2007.pdf> _______________________________________________ Gnso-igo-ingo-crp mailing list Gnso-igo-ingo-crp@icann.org https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp
The 2007 proposal by staff went nowhere for good reason -- it should be left in the trashbin of history where it belongs, for the following (brief) reasons (I could spend 20 page elaborating, but I'll save that for later if needed): 1. that staff proposal changed the "registration AND use" (in bad faith) to "registration OR use" -- a much different standard than the UDRP (i.e. the issue of "AND" vs. "OR") 2. the use of "OR" elsewhere in the proposal 3. making arbitration *mandatory* would be a major departure from the UDRP. Recall, the grand bargain of the UDRP meant that either party could opt for the national courts, making the UDRP essentially optional. It would be unacceptable to most registrants (including myself). Further to this point, the Universal Declaration of Human Rights says, in Article 8 "Everyone has the right to an effective remedy by the competent national tribunals for acts violating the fundamental rights granted him by the constitution or by law." Note the word "national tribunals". Even further to this point, a mandatory arbitration violates consumer laws in various jurisdictions, including my own (Ontario, Canada). See, for instance: http://www.sse.gov.on.ca/mcs/en/pages/memberships_arbitration_clauses.aspx "Ontario’s Consumer Protection Act voids any clause that attempts to make you waive your legal rights or promise not to go to court. Unless your contract pre-dates July 30, 2005, such contract clauses are legally ineffective. Consumers are not bound by them, even if they have accepted the agreement. The new law does not prevent you from agreeing to use arbitration after a dispute has arisen. Sometimes arbitration works quite well. But you cannot be forced to use arbitration instead of the courts or instead of complaining to the ministry. The choice is yours." 4. One should not be creating new law. In particular, one must consider how IGOs would enforce their rights in the offline world if the UDRP never existed. Clearly, their recourse for enforcement would be through the national courts of the alleged malfeasor/infringer. They'd have no power whatsoever to compel a party to attend an international tribunal, nor would that international tribunal have any jurisdictional over the matter. This was a topic we discussed previously (perhaps it was in a subgroup), namely questions we had for the IGOs --- i.e. how are they enforcing their Article 6ter rights offline, e.g. if a restaurants with the name "UNESCO" is opened up in Toronto, Canada, how do they enforce their rights? So far, we have no answer from the IGOs. 5. Examples have been shown of IGOs waiving any such immunity concerns, and actually utilizing the UDRP already (raising the question of whether there's a serious issue at stake). See my prior posts at: http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-December/000199.html http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-December/000200.html http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-December/000201.html The World Bank example is obvious. The UNITAID one is more subtle -- it actually demonstrates a simple means for the IGOs to avoid the immunity issue entirely, because the complaint was actually brought by a **licensee** of Unitaid. The critical language is: http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2012-1922 "In 2009, a Fiduciary Agreement was made between the World Health Organization/Unitaid and the Complainant to file and hold in its own name, for the benefit of Unitaid, the necessary applications for the protection of the “Unitaid” name, according to the instructions and under the control of World Health Organization/Unitaid. In 2009, the Complainant thus registered, in its own name but for the benefit of World Health Organization/Unitaid, UNITAID as a trademark in numerous jurisdictions." In my opinion, those two paragraphs alone provide a perfect solution for IGOs. Indeed, we could conceivably put an end to this workgroup, by simply pointing to the above as a roadmap for IGOs to follow, to work within an unamended UDRP. 6. There are much better alternatives than that suggested by staff, that are more tightly focused and preserve the rights of registrants. In particular, I believe the following two have already been discussed (perhaps in the subgroups, and not to to full list), (a) (my own idea, which I spent a lot of time thinking about before this working group even started) Allow the national government in the jurisdiction in the jurisdiction of the REGISTRANT to have standing as the complainant on behalf of an IGO. Since the national government is the signatory of the treaty, it makes sense that any enforcement should fall upon them. Suppose a Canadian registered UNESCO.tld. UNESCO could complain to the Federal government of Canada, and the Federal government of Canada could file the UDRP. The Federal government of Canada would have no problems with mutual jurisdiction and immunity, because obviously a national of Canada can sue the Federal government of Canada in their own national courts! (b) (I think was Paul Keating's suggestion) Limit the scope of an IGO's potential liability from agreeing to the mutual jurisdiction to that of the domain name itself. i.e. the purpose of IGO immunity is to protect the IGO assets from being seized by 3rd parties. It's a shield. If the IGOs provide a *limited waiver*, so that the only downside for them involves the domain name itself (and thus no incursion on their assets), then that should be sufficient. The court action only takes place to block a transfer, so the domain name was never in the IGO's possession (even if a UDRP decision favoured the IGO). (c) the example in point #5 is a superior roadmap to follow than either (a) or (b), because it wouldn't require any amendment to the UDRP 7. We haven't even begun to look at the costs/benefits.The Affirmation of Commitments: https://www.icann.org/resources/pages/affirmation-of-commitments-2009-09-30-... warns us about the "group of participants that engage in ICANN's processes to a greater extent than Internet users generally." I would suggest that the IGOs fall into this category. The AoC tells us that we should be weighing the positive and negative effects. That requires data. Where is the IGO data on the extent of cybersquatting, etc? What are their "costs" from any waiver of immunity, beyond simply academic and theoretical considerations? What are the costs of using alternatives like in point #5, or 6(a) or 6(b)? I guess this is not as brief as I had hoped (but not yet 20 pages), so I'll just summarize that it's great to be brainstorming, but hopefully we'll not go down the dead-end of the rejected 2007 staff idea (which really was not carefully thought out, in my opinion). Looking back, I actually blogged about that 2007 report: http://www.circleid.com/posts/710118_short_domain_names_igo_udrp and others shared my concerns back then (and the proposal properly went nowhere). As Esther Dyson says "Always make new mistakes!" :-) There no need to recycle that old 2007 mistake. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Thu, Dec 11, 2014 at 11:07 PM, Mary Wong <mary.wong@icann.org> wrote:
Dear all,
This is not intended to take any position on the issue of standing; rather, we as support staff thought the WG might find useful the draft text that was produced for the GNSO Council in 2007 for an alternative dispute resolution procedure (DRP) (attached). As you¹ll recall this was part of the scoping that had been done at the time for an Issue Report which, however, did not lead to any policy work for lack of requisite votes on the GNSO Council.
Of particular note is the modification of the UDRP requirements for a complaint and thus a mandatory administrative proceeding under 4(a) of the UDRP to be as follows:
"(i) the registration or use, as a domain name, of the name or abbreviation of the complainant that has been communicated under Article 6ter of the Paris Convention is of a nature:
(a) to suggest to the public that a connection exists between the domain nameholder and the complainant; or (b) to mislead the public as to the existence of a connection between the domain name holder and the complainant; or
(ii) on the ground that the registration or use, as a domain name, of a name or abbreviation of the complainant protected under an international treaty violates the terms of that treaty.²
The draft text therefore suggests two alternative grounds for standing in lieu of trademark rights.
FWIW the draft text also deals with the sovereign immunity issue by defining ³Mutual Jurisdiction² to be an arbitral tribunal constituted under the rules either of the AAA, ICDR, WIPO or the London Court of International Arbitration (see Definitions under the Rules of Procedure, 3.B.)
I hope this is helpful.
Cheers Mary
Mary Wong Senior Policy Director Internet Corporation for Assigned Names & Numbers (ICANN) Telephone: +1 603 574 4892 Email: mary.wong@icann.org
A couple of additional points I wanted to make --- unlike international tribunals or arbitrations, national courts have *ongoing* jurisdiction over a registrant, and can thus make different types of orders rather than the binary "transfer vs. no transfer" of a UDRP or variant. So, if there was an infringement, a national court can, for instance, order money damages, rather than the transfer of a domain. They can also order that specific misuse be terminated (and with penalties for not following the court's order that are enforceable against the registrant within that nation). Thus, there are superior "curative" measures available in the courts that can act like a scalpel, rather than a sledgehammer. Given the expense and time spent by both sides in the .xxx arbitration, for example, it's clear that arbitration isn't a panacea that it's often made out to be. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
A much more thorough reply than mine. Thanks George. On 12/12/14 12:06 PM, "George Kirikos" <icann@leap.com> wrote:
The 2007 proposal by staff went nowhere for good reason -- it should be left in the trashbin of history where it belongs, for the following (brief) reasons (I could spend 20 page elaborating, but I'll save that for later if needed):
1. that staff proposal changed the "registration AND use" (in bad faith) to "registration OR use" -- a much different standard than the UDRP (i.e. the issue of "AND" vs. "OR")
2. the use of "OR" elsewhere in the proposal
3. making arbitration *mandatory* would be a major departure from the UDRP. Recall, the grand bargain of the UDRP meant that either party could opt for the national courts, making the UDRP essentially optional. It would be unacceptable to most registrants (including myself). Further to this point, the Universal Declaration of Human Rights says, in Article 8 "Everyone has the right to an effective remedy by the competent national tribunals for acts violating the fundamental rights granted him by the constitution or by law." Note the word "national tribunals". Even further to this point, a mandatory arbitration violates consumer laws in various jurisdictions, including my own (Ontario, Canada). See, for instance:
http://www.sse.gov.on.ca/mcs/en/pages/memberships_arbitration_clauses.aspx
"Ontario’s Consumer Protection Act voids any clause that attempts to make you waive your legal rights or promise not to go to court. Unless your contract pre-dates July 30, 2005, such contract clauses are legally ineffective. Consumers are not bound by them, even if they have accepted the agreement. The new law does not prevent you from agreeing to use arbitration after a dispute has arisen. Sometimes arbitration works quite well. But you cannot be forced to use arbitration instead of the courts or instead of complaining to the ministry. The choice is yours."
4. One should not be creating new law. In particular, one must consider how IGOs would enforce their rights in the offline world if the UDRP never existed. Clearly, their recourse for enforcement would be through the national courts of the alleged malfeasor/infringer. They'd have no power whatsoever to compel a party to attend an international tribunal, nor would that international tribunal have any jurisdictional over the matter. This was a topic we discussed previously (perhaps it was in a subgroup), namely questions we had for the IGOs --- i.e. how are they enforcing their Article 6ter rights offline, e.g. if a restaurants with the name "UNESCO" is opened up in Toronto, Canada, how do they enforce their rights? So far, we have no answer from the IGOs.
5. Examples have been shown of IGOs waiving any such immunity concerns, and actually utilizing the UDRP already (raising the question of whether there's a serious issue at stake). See my prior posts at:
http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-December/000199.html http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-December/000200.html http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-December/000201.html
The World Bank example is obvious. The UNITAID one is more subtle -- it actually demonstrates a simple means for the IGOs to avoid the immunity issue entirely, because the complaint was actually brought by a **licensee** of Unitaid. The critical language is:
http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2012-1922
"In 2009, a Fiduciary Agreement was made between the World Health Organization/Unitaid and the Complainant to file and hold in its own name, for the benefit of Unitaid, the necessary applications for the protection of the “Unitaid” name, according to the instructions and under the control of World Health Organization/Unitaid.
In 2009, the Complainant thus registered, in its own name but for the benefit of World Health Organization/Unitaid, UNITAID as a trademark in numerous jurisdictions."
In my opinion, those two paragraphs alone provide a perfect solution for IGOs. Indeed, we could conceivably put an end to this workgroup, by simply pointing to the above as a roadmap for IGOs to follow, to work within an unamended UDRP.
6. There are much better alternatives than that suggested by staff, that are more tightly focused and preserve the rights of registrants. In particular, I believe the following two have already been discussed (perhaps in the subgroups, and not to to full list),
(a) (my own idea, which I spent a lot of time thinking about before this working group even started) Allow the national government in the jurisdiction in the jurisdiction of the REGISTRANT to have standing as the complainant on behalf of an IGO. Since the national government is the signatory of the treaty, it makes sense that any enforcement should fall upon them. Suppose a Canadian registered UNESCO.tld. UNESCO could complain to the Federal government of Canada, and the Federal government of Canada could file the UDRP. The Federal government of Canada would have no problems with mutual jurisdiction and immunity, because obviously a national of Canada can sue the Federal government of Canada in their own national courts!
(b) (I think was Paul Keating's suggestion) Limit the scope of an IGO's potential liability from agreeing to the mutual jurisdiction to that of the domain name itself. i.e. the purpose of IGO immunity is to protect the IGO assets from being seized by 3rd parties. It's a shield. If the IGOs provide a *limited waiver*, so that the only downside for them involves the domain name itself (and thus no incursion on their assets), then that should be sufficient. The court action only takes place to block a transfer, so the domain name was never in the IGO's possession (even if a UDRP decision favoured the IGO).
(c) the example in point #5 is a superior roadmap to follow than either (a) or (b), because it wouldn't require any amendment to the UDRP
7. We haven't even begun to look at the costs/benefits.The Affirmation of Commitments:
https://www.icann.org/resources/pages/affirmation-of-commitments-2009-09-3 0-en
warns us about the "group of participants that engage in ICANN's processes to a greater extent than Internet users generally." I would suggest that the IGOs fall into this category. The AoC tells us that we should be weighing the positive and negative effects. That requires data. Where is the IGO data on the extent of cybersquatting, etc? What are their "costs" from any waiver of immunity, beyond simply academic and theoretical considerations? What are the costs of using alternatives like in point #5, or 6(a) or 6(b)?
I guess this is not as brief as I had hoped (but not yet 20 pages), so I'll just summarize that it's great to be brainstorming, but hopefully we'll not go down the dead-end of the rejected 2007 staff idea (which really was not carefully thought out, in my opinion). Looking back, I actually blogged about that 2007 report:
http://www.circleid.com/posts/710118_short_domain_names_igo_udrp
and others shared my concerns back then (and the proposal properly went nowhere). As Esther Dyson says "Always make new mistakes!" :-) There no need to recycle that old 2007 mistake.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/
On Thu, Dec 11, 2014 at 11:07 PM, Mary Wong <mary.wong@icann.org> wrote:
Dear all,
This is not intended to take any position on the issue of standing; rather, we as support staff thought the WG might find useful the draft text that was produced for the GNSO Council in 2007 for an alternative dispute resolution procedure (DRP) (attached). As you¹ll recall this was part of the scoping that had been done at the time for an Issue Report which, however, did not lead to any policy work for lack of requisite votes on the GNSO Council.
Of particular note is the modification of the UDRP requirements for a complaint and thus a mandatory administrative proceeding under 4(a) of the UDRP to be as follows:
"(i) the registration or use, as a domain name, of the name or abbreviation of the complainant that has been communicated under Article 6ter of the Paris Convention is of a nature:
(a) to suggest to the public that a connection exists between the domain nameholder and the complainant; or (b) to mislead the public as to the existence of a connection between the domain name holder and the complainant; or
(ii) on the ground that the registration or use, as a domain name, of a name or abbreviation of the complainant protected under an international treaty violates the terms of that treaty.²
The draft text therefore suggests two alternative grounds for standing in lieu of trademark rights.
FWIW the draft text also deals with the sovereign immunity issue by defining ³Mutual Jurisdiction² to be an arbitral tribunal constituted under the rules either of the AAA, ICDR, WIPO or the London Court of International Arbitration (see Definitions under the Rules of Procedure, 3.B.)
I hope this is helpful.
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
participants (4)
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George Kirikos -
Mary Wong -
Paul Keating -
Paul＠law.es ZIMBRA