<div dir="ltr">Dear Council colleagues,<div><br></div><div>Following our meeting with the GAC yesterday, please find below information from Brian Beckham (WIPO) for our consideration in relation to the IGO/INGO Curative Rights PDP Final Report.</div><div><br></div><div>Best wishes,</div><div><br></div><div>Heather </div><div><br><br><div class="gmail_quote"><div dir="ltr">---------- Forwarded message ---------<br>From: <strong class="gmail_sendername" dir="auto">BECKHAM, Brian</strong> <span dir="ltr"><<a href="mailto:brian.beckham@wipo.int">brian.beckham@wipo.int</a>></span><br>Date: Mon, Oct 22, 2018 at 5:02 PM<br>Subject: Requested feedback on IGO curative WG report<br>To: Heather Forrest <<a href="mailto:haforrestesq@gmail.com">haforrestesq@gmail.com</a>><br>Cc: Jon PASSARO (<a href="mailto:Jonathan.PASSARO@oecd.org">Jonathan.PASSARO@oecd.org</a>) <<a href="mailto:Jonathan.PASSARO@oecd.org">Jonathan.PASSARO@oecd.org</a>>, <a href="mailto:manal@tra.gov.eg">manal@tra.gov.eg</a> <<a href="mailto:manal@tra.gov.eg">manal@tra.gov.eg</a>>, <a href="mailto:gac-leadership@icann.org">gac-leadership@icann.org</a> <<a href="mailto:gac-leadership@icann.org">gac-leadership@icann.org</a>>, Mary Wong <<a href="mailto:mary.wong@icann.org">mary.wong@icann.org</a>><br></div><br><br>
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<p>Dear Heather, dear Councilors,</p>
<p><br>
</p>
<p>We understand that the Council would like to review some specific concerns from IGOs/the GAC on the IGO Curative WG’s recommendations. Set out below is a high-level reaction to assist you. These high-level comments are an overview only (and drafted very
quickly as well), so please do not understand the below as a substitute for the more detailed inputs IGOs and the GAC have provided to the working group over the past several years (and which received only cursory mentions in the report). </p>
<p><br>
</p>
<p>The words of the resigned co-chair (<a href="https://community.icann.org/display/gnsoicrpmpdp/Final+Report?preview=/89981342/89981344/FINAL%20VERSION%20Final%20Report%20-%2017%20July%202018.pdf" target="_blank">beginning at page 70 of the Final Report</a>) capture many
of our concerns: “After four years of effort this WG has utterly failed to provide a policy recommendation that reasonably resolves the central challenge it confronted”. </p>
<p><br>
Worse, the final report even provides recommendations outside the scope of the group’s charter: the working group was tasked to determine “whether to amend the UDRP and URS to allow access to and use of these mechanisms by IGOs and INGOs and, if so, in what
respects; or whether a separate, narrowly-tailored dispute resolution procedure at the second level modeled on the UDRP and URS that takes into account the particular needs and specific circumstances of IGOs and INGOs should be developed.” Not only has the
working group failed to provide any recommendations that would facilitate IGO access to curative rights mechanisms, they have actually passed one recommendation that would
<em>penalise</em> an IGO that successfully asserts an immunity claim. In short, the working group has not only decided that IGOs’ treaty- and customary international law-based immunities should have no recognition in the ICANN system, but that IGOs should be
punished should they successfully assert these immunities before a national court. </p>
<p><br>
</p>
<p>The resigned co-chair’s minority statement also pointed out the imbalance of the working group members’ votes on the final recommendations: “Of the 11 WG members who supported the Recommendation, a majority (7) were either domain investors or attorneys
representing domain investors (domainers), indicating that the WG’s consensus call process had been captured by a narrow segment of the ICANN community with a significant commercial interest in the outcome. In addition, 3 of those 7 members participated in
an individual capacity and are unaffiliated with any ICANN stakeholder group or constituency.” This observation captures our concerns over the process that lead to the working group’s final report.</p>
<p><br>
</p>
<p>Please see below for some specific reaction on the recommendations, as well as a reference to materials IGOs submitted to the working group. Along with my colleague Jon Passaro from the OECD, I am at your disposal to discuss further.</p>
<p><br>
Kind regards, and thank you for forwarding this to the Council list,</p>
<p><br>
</p>
<p>Brian </p>
<p><br>
</p>
<p>--</p>
<p><span style="text-decoration:underline"><strong><br>
</strong></span></p>
<p><span style="text-decoration:underline"><strong>Recommendation 1</strong></span><strong>:</strong> For IGOs, no specific new dispute resolution procedures are to be created.</p>
<p><strong><br>
</strong></p>
<p><strong>Note:</strong> In the Los Angles, Helsinki, Hyderabad, and Johannesburg Communiques, the GAC asked for “a dispute resolution mechanism “modeled on but separate from the existing Uniform Dispute Resolution Policy (UDRP).”</p>
<p><strong><br>
</strong></p>
<p><strong>Reaction:</strong><strong> </strong>This is a threshold issue. The WG rejecting the GAC’s request for a dispute resolution system modeled on, but separate from, the UDRP, sets the scene for the remaining troubling recommendations that individually
and collectively ignore the concerns raised by IGOs and contradict specific GAC advice.</p>
<p><span style="text-decoration:underline"><strong><br>
</strong></span></p>
<p><span style="text-decoration:underline"><strong>Recommendation 2</strong></span><strong>:</strong><strong>
</strong>An IGO may seek to demonstrate that it has the requisite standing to file a complaint under the UDRP or URS by showing that [has recorded its identifier under the Paris Convention], and [ ] must adduce factual evidence to show that it nevertheless
has substantive legal [so‑called “unregistered trademark rights”] rights in the name and/or acronym in question.<br>
<strong> </strong><br>
<strong>Note:</strong> The WG’s Initial Report did not include this additional hurdle, but accepted a Paris Convention recordation to support IGO standing to bring a claim. The GAC’s Johannesburg Communique stated that the dispute resolution mechanism should
“provide standing based on IGOs’ status as public intergovernmental institutions”.</p>
<p><strong><br>
</strong></p>
<p><strong>Reaction:</strong><strong> </strong>IGOs note that the working group—tasked with improving IGO access to curative rights mechanisms—found it appropriate to modify its draft recommendations following the public comment period to increase procedural
hurdles for IGO access to curative rights mechanisms. Conversely, the working group did not modify any of its conclusions to take into account numerous comments on other recommendations submitted by multiple IGOs and the GAC. As a consequence, it unfairly
shifts the burden on to IGOs (who are not commercial actors, and as such do not fall under the same “use in commerce” rubric as is understood under trademark law). <br>
<strong> </strong><br>
<span style="text-decoration:underline"><strong>Recommendation 3</strong></span><strong>:</strong><strong>
</strong>ICANN shall create and issue Policy Guidance: (a) [“explaining” that IGOs] have the ability [file a] UDRP [through a] licensee; and (b) advising IGOs [ ] prior to filing a UDRP [to] contact the registrar [ ] to address the harms for which they are
seeking redress.</p>
<p><strong>Reaction:</strong><strong> </strong>As to (a) the working group’s own legal expert acknowledged that the “consequences [of such waivers] are uncertain” and “could themselves be regarded as waivers of immunity” in addition to the risk that the assignment
“might be ineffective” (Swaine memo, p 27). The strategy is risky and complicated. As to (b), IGOs are aware of this possibility already, and in fact have done so.<br>
<strong> </strong><br>
<span style="text-decoration:underline"><strong>Recommendation 4</strong></span><strong>:</strong><strong>
</strong>[Rejected the GAC’s request for ICANN assistance to offset IGO fees to use a rights protection mechanism.]
<br>
<strong> </strong><br>
<strong>Note:</strong> While rejecting IGOs’ request for assistance, the WG noted that: “many Working Group members believe that a respondent should also be eligible to receive financial support for its defense.”</p>
<p><strong><br>
</strong></p>
<p><strong>Reaction:</strong><strong> </strong>It is disappointing to see commercial registration interests not only reject IGOs’ request for assistance – especially noting that IGOs serve the global public interest using public funds but at the same time
seek financial assistance for their own commercial causes.<br>
<strong> </strong><br>
<span style="text-decoration:underline"><strong>Recommendation 5</strong></span><strong>:</strong><strong>
</strong>Where a losing registrant challenges the initial UDRP [ ] decision by filing suit in a national court of mutual jurisdiction and the IGO that succeeded in its initial UDRP [ ] complaint also succeeds in asserting jurisdictional immunity in that court,
the decision rendered against the registrant in the predecessor UDRP or URS shall be set aside (i.e. invalidated).<br>
<strong> </strong><br>
<strong>Note:</strong> IGOs tried repeatedly to propose arbitration as a means to resolve UDRP appeals involving an IGO. Arbitration is a common means of resolving commercial contractual disputes. Countless treatises have been written on the topic, and curricula
at law schools in common law and civil law jurisdictions around the world offer dedicated courses on arbitration. A recent course description for the arbitration class at a leading Australian university describes commercial arbitration as “possibly the most
widely used dispute resolution method in international business.” Numerous major law schools have entire programs dedicated to the study of arbitration. “Godaddy”, which styles itself as the world’s largest domain name registrar, requires domain name registrants
to abide by binding arbitration in Article 22 of its Universal Terms of Service (Last revised on 19 October 2018, available at <a href="https://www.godaddy.com/agreements/showdoc?pageid=5403" target="_blank">https://www.godaddy.com/agreements/showdoc?pageid=5403</a>).</p>
<p><strong><br>
</strong></p>
<p><strong>Reaction:</strong><strong> </strong>This recommendation extends beyond the scope of the working group’s mandate and is manifestly disadvantageous to IGOs, ensuring that it is impossible for IGOs to rely upon their immunities from the jurisdiction
of national courts as established under international law. We fail to understand how the working group could conclude it was unable to create an alternative curative rights mechanism for IGOs on the grounds that it would deny justice to rights holders while
at the same time recommending for the creation of a mechanism that would prevent IGOs from utilizing treaty-based protections granted to them under international law. The only conclusion we can draw is that some registration commercial interests are more worthy
of protection than others (governments and their causes) in the eyes of the working group, whose membership was dominated by domainers.
</p>
<p><br>
</p>
<p>--</p>
<p><br>
</p>
<p>Also relevant for the Council, note the following (attached):</p>
<p>· Letter from UN Secretary General Ban ki Moon<br>
· Two reactions by IGOs to the WG, following the WG’s specific request<br>
· Two letters from IGO Legal Counsels to ICANN<br>
· The <a href="https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/msg00023.html" target="_blank">
GAC’s Submission to the WG’s Initial Report</a><br>
</p>
<p> </p>
<p> </p>
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<p> </p>
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