[Discussion-igo-rc] Summary of discussion on the GAC-GNSO Facilitated Dialogue on IGO Protections

[Jonathan.PASSARO at oecd.org]

Dear Bruce,



Many thanks again for moderating the discussion on Sunday. It is obviously a difficult job and I was impressed that we were able, in the course of two-and-one-half hours, make progress on an issue that has stagnated for years. Let's hope we can maintain the momentum.



I would like to add some precision and information to the summary below, in the interest of accuracy and completeness.



First, and rather fundamentally, the public interest in protecting IGO names is two-pronged: both protecting the public from fraud and misinformation and protecting IGOs' reputations. Public perception is crucial to ensuring that we can effectively carry out our missions, and fraudulent use of our identifiers in the DNS could do serious damage to our reputations and the trust we have built up with the public.



Second, regarding the impact of 6ter: IGOs understand that existing ICANN mechanisms have been developed with trademark holders in mind. However, the fact that a category of rights-holders does not map neatly on to this schema should not lead to the conclusion that they do not deserve protections. The Paris Convention is evidence of a strong consensus in the international community that it is in the public interest to protect IGO marks. Few other rights-holders could point to such strong evidence of international consensus on this point.



As you stated, the States Parties to the Paris Convention can fulfil their obligations under 6 ter in different ways. But they are all means to the same end: protecting IGO acronyms from misuse. You mentioned Australia as an example; the website of IP Australia (https://www.ipaustralia.gov.au/trade-marks/applying-for-a-trade-mark/decide-if-you-have-trade-mark/common-and-prohibited-signs) states that their obligation under 6ter is to "provide effective means to stop unauthorised use of notified signs" (the IP Australia website defines "signs" to include abbreviations of IGOs). Note that IP Australia lists this obligation separately from the obligation to "refuse to register a trade mark that consists of or contains a notified sign". To take another example, Canada uses the same section of its Trademark law to protect both Red Cross and IGO acronyms (in other words, Canada appears to interpret its obligations under the Geneva Convention, which the GNSO appears to see as a clear legal hook for protection of Red Cross names in the DNS, similarly to its obligations towards IGOs under 6ter of the Paris Convention). As with Australia, Canada's legislation in this regard extends beyond simple refusal to register a conflicting trademark: §9(1) of the Trade-marks Act states that "No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark...".



I hope that this is helpful.



Kind regards,



Jon

From: discussion-igo-rc-bounces at icann.org [mailto:discussion-igo-rc-bounces at icann.org] On Behalf Of Beckham, Brian
Sent: lundi 13 mars 2017 20:37
To: Bruce Tonkin; discussion-igo-rc at icann.org
Subject: Re: [Discussion-igo-rc] Summary of discussion on the GAC-GNSO Facilitated Dialogue on IGO Protections

Thanks for this recap Bruce.
If there are any comments on the notes or substance, we can come back to that later, but - and I think I speak for us all - I want to take this occasion to say thank you very much for your time and effort last night in seeking to bring some clear solution-oriented direction on this important issue.
Brian



On 13 March 2017 at 19:03:15 GMT+1, Bruce Tonkin <Bruce.Tonkin at melbourneit.com.au<mailto:Bruce.Tonkin at melbourneit.com.au>> wrote:
Hello All,

Thanks again for the representatives  from the GNSO, IGOs, and GAC for participating in the facilitated discussion yesterday.  I know it was late in the day and we were all tired.

I updated slide 14 in the attached presentation with the correct PDP information.   Apologies for my cut and paste error there.

I thought I would summarize some of the high level points as I understood them from the discussion while my memory is still fresh.   A recording and transcript from the session will also be made available.


(0) Public Interest

- there was acceptance that it was in the global public interest to ensure there are mechanisms in place in the domain name registration system  to minimize risks to members of the public who are often targeted by individuals or organizations posing as IGOs or IGO officials or organizations.

(1)  Reservation

- there was acceptance of the Board's decision to permanently reserve the full names of IGOs from registration at the second level..   This is because these names are unique and there is no other legitimate purpose for those names beyond their use associated with the IGO.

- the GNSO policy recommendation also provide a mechanism by which the IGO associated with a reserved name can seek to get the name delegated in new gTLDs.

- while the representatives from the IGOs prefer that IGO acronyms are reserved from registration to make protection easier for them, there was recognition that short strings (e.g. 2 to 4 characters) have many uses and there are no people or organizations that have exclusive ownership or use of these strings, thus it is not in the public interest to reserve these useful strings from registration.

- the focus for protection against mis-use of IGO acronyms has therefore shifted to mechanisms to give notice and appropriate dispute resolution options.


(2)   Notice

- The GNSO Policy recommendations provide for a notice to be provided  in the first 90 days after a new gTLD launches.   This leverages the software and systems associated with the 90 day trademark claims process.   In this process a registration is notified of the rights associated with a domain name before they complete registration.   After registration the rights holder is notified.   There would need to be some modification of the text of such notices to avoid confusion between the legal rights of IGOs and the legal rights of trademark holders.

- The GAC representatives made clear that they saw the need for an ongoing notification process for whenever a string is placed in the DNS that matches an IGO acronym

- I proposed a possible solution whereby the IGOs can be provided with a watch service for both existing and new gTLDs, whereby they will be notified whenever a string matching their IGO acronym is published in the DNS.  Such a service can be built using the existing process whereby registries publish their DNS zone files on a daily basis.   This service can be provided on an ongoing basis.       Commercial services exist to perform this function, or alternatively ICANN could develop its own service.

- there was agreement that this solution sounded reasonable and did not require additional GNSO policy development, nor changes to the current GNSO proposal to the trademark claims software and systems during the first 90 days of a new gTLD.


(3) Dispute resolution

- there was general agreement that a dispute process should be modelled on the existing UDRP and URS processes

- the GNSO Working Group looking a Curative Rights Protection Mechanisms has taken the approach of wanting to use the existing UDRP process that was developed as a dispute process for complainants with trademark rights, with the ability for an IGO that has notified WIPO of its acronym under Article 6ter to have standing.   The rationale for this was that creating a new dispute resolution process would take some time, and was not justified for a limited set of rights holders.

- the representatives of the  GNSO Working Group looking a Curative Rights Protection Mechanisms also noted that in the near future there would be a full review of the existing UDRP.

- IGOs that have taken out trademark registrations on their acronyms could clearly use the existing UDRP and URS processes.

- it was recognized that IGO's that have taken advantage of the Article 6ter process to prevent parties from creating trademarks using their marks, do not actually have trademark rights and hence the UDRP may not be the best match for the legal rights that they have

- it was noted that under the Paris Convention,  national Governments are meant to create national  laws to help protect the names and abbreviations of IGO acronyms against mis-use.   However the implementation of this varies widely between countries.   E.g. in Australia the Competition and Consumer Act 2010  has provisions against misleading or deceptive conduct.    It was not clear what laws and legal rights have been applied to deal with mis-use of IGO acronyms in the past outside of the trademark and domain name system.

- while it is possible to create a separate dispute resolution mechanism it is still not clear what are the underlying legal rights associated with IGO acronyms,  and the relevant national laws that are used to protect and enforce those rights.    It appears further legal advice would be needed to get a clearer sense of the specific legal rights and applicable local laws, before being able to design a new dispute resolution process.

- the GNSO working group on curative rights will take into account the discussion as part of their review of all the comments received on their initial report.   All input will be carefully analysed and a rationale will be provided where suggestions are not accepted.


(4)   Appeals

- it is noted that the current appeals process for UDRP and URS is a court of competent jurisdiction, and a party defending against a complaint can take a dispute to the court before or after the dispute proceedings

- it was also noted that many IGOs have their acronyms registered under the .org gTLD and have agreed to the existing UDRP and URS processes with respect to the registration of their names.  If an IGO is subject to an UDRP or URS complaint they would likely be able to show that they have existing legal rights in their name.

- The GAC advice and IGO representatives suggested an arbitration process as an appeals process where both parties would be subject to binding arbitration,  instead of the court of competent jurisdiction.  The rationale for this was the IGOs have been granted certain immunities from prosecution, to help allow them to be independent  of influence by individual nations.   The representatives from the IGOs did not want to give up this immunity as part of the dispute resolution process.

- the representatives from the GNSO working group on curative rights  gave as a rationale that the arbitration process may take away some of the legal rights available to the domain name registrant that is subject to a UDRP or URS complaint by an IGO.   For example, a court may be able to determine whether the existing registrant had legal rights in a name, and hence the circumstances would not meet the test in the UDRP for the cancellation or transfer of the name to the IGO.

- the representatives from the GNSO working group on curative rights noted that under the existing UDRP and URS processes, if a UDRP or URS matter was taken to court, that the IGO could establish its immunity as part of the legal process.   It is unlikely that the court would be imposing any form of penalty on the IGO in situations where the IGO was the complainant, as the IGO is not the holder or user of the domain name.

- the representatives from the GNSO working group on curative rights also noted that the numbers of UDRP or URS cases that have been taken to court is very small

- the GNSO working group on curative rights will take into account the discussion as part of their review of all the comments received on their initial report.   All input will be carefully analysed and a rationale will be provided where suggestions are not accepted.


I welcome feedback on my summary and where I may have misinterpreted the discussion.

Thanks
Bruce Tonkin



World Intellectual Property Organization Disclaimer: This electronic message may contain privileged, confidential and copyright protected information. If you have received this e-mail by mistake, please immediately notify the sender and delete this e-mail and all its attachments. Please ensure all e-mail attachments are scanned for viruses prior to opening or using.
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/discussion-igo-rc/attachments/20170315/ef05c9a6/attachment-0001.html>