[Gnso-igo-ingo-crp] Question about Professor Swaine's memo

Mary Wong mary.wong at icann.org
Tue Apr 24 22:51:03 UTC 2018 

Dear Paul and everyone,

Staff is taking the liberty here of addressing your specific question about Professor Swaine’s memo, including your concern that it may have analyzed a situation where it is not the IGO that commences proceedings but rather is the subject of proceedings against it by a trademark owner. We hope the following extracts from the memo will be useful in clarifying the basis on which Professor Swaine gave his opinion.


  *   In his memo, Professor Swaine notes that he “focuses on the most likely scenario: that in which an IGO, possessing rights in a name, abbreviation, emblem or the like arising under the Paris Convention … has complained and prevailed before an administrative panel in Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”)  proceedings against a domain-name registrant—resulting in an order of cancellation or transfer to which the losing registrant objects by commencing a judicial action … “ (see Page 77 of the Working Group’s Initial Report, at Annex G).


  *   He notes that “how matters unfold from that point [following the registrant’s filing suit] will depend on national law” (Page 81, Annex G) as to the question, “whether—in light of an IGO’s assent to Mutual Jurisdiction—its immunity remains.  Here, the more likely answer is that it would not … The grant of Mutual Jurisdiction would likely establish such a waiver, as it would for a state entity otherwise entitled to foreign sovereign immunity. This waiver would be construed narrowly, but it would likely permit proceeding against an IGO in at least some domestic courts. The overall answer, then, is contingent.  If there were no Mutual Jurisdiction clause, an IGO might be entitled to immunity from judicial process; in the status quo, however, it likely would not.  Equitable considerations might influence any judicial analysis” (Page 78, Annex G).


  *   Concluding that “In short, the Mutual Jurisdiction clause means that participating IGOs will have agreed to the possibility of a judicial process, notwithstanding any immunity to which they otherwise would be entitled.  This will loom largest in cases in which the IGO is the complainant and benefited from an initial panel decision in its favor, such that the decision to resort to judicial proceedings against the IGO—and the risks that creates for adverse results—is made by the private party” (Page 82, Annex G), Professor Swaine focuses the remainder of his memo on this scenario.


  *   As part of his analysis, Professor Swaine also proposed a number of alternative policy proposals for the Working Group’s consideration, including possibly amending the Mutual Jurisdiction clause or arbitration. These were noted and discussed on several Working Group calls in late 2016, prior to the issuance of the Initial Report in January 2017.

While the above summary cannot reflect the entirety or depth of Professor Swaine’s advice, staff thought it might be helpful to recall these points given the question raised by Paul. The full memo was attached to the Initial Report as Annex G: https://gnso.icann.org/sites/default/files/file/field-file-attach/igo-ingo-crp-access-initial-19jan17-en.pdf.

Thanks and cheers
Mary & Steve


From: Gnso-igo-ingo-crp <gnso-igo-ingo-crp-bounces at icann.org> on behalf of Paul Tattersfield <gpmgroup at gmail.com>
Date: Tuesday, April 24, 2018 at 10:49
To: "Corwin, Philip" <pcorwin at verisign.com>
Cc: "haforrestesq at gmail.com" <haforrestesq at gmail.com>, "Donna.Austin at team.neustar" <Donna.Austin at team.neustar>, "gnso-igo-ingo-crp at icann.org" <gnso-igo-ingo-crp at icann.org>, "rafik.dammak at gmail.com" <rafik.dammak at gmail.com>
Subject: Re: [Gnso-igo-ingo-crp] GNSO Council Liaison Summary Report (Re: IGO-INGO Curative Rights Policy Development Process Working Group)

Dear Philip,

In your reply to George Kirikos you stated:

“If it is judicial proceedings them [sic] of course an IGO's initiation of process indicates an implicit waiver of judicial immunity.”

Thank you that is helpful.

When I asked last year that the working group consider cases where an IGO could be entitled to immunity (i.e. when a TM holder seeks to secure a domain name owned by an IGO) I was told by those leading the working group that this scenario was not within the working group’s charter.

Swaine is an analysis of cases where an IGO is entitled to jurisdictional immunity in judicial forums. Given you have just stated:

“If it is judicial proceedings them [sic] of course an IGO's initiation of process indicates an implicit waiver of judicial immunity.”

I fail to see how you can ever reconcile Swaine with ever being relevant to the working group’s final report. I don’t doubt it was expensive and interesting but if you want it to remain in the final report please can you reply showing how it could be in any way considered relevant?

Yours sincerely,


Paul

On Fri, Apr 20, 2018 at 3:57 PM, Corwin, Philip <pcorwin at verisign.com<mailto:pcorwin at verisign.com>> wrote:
Paul:

Responding in an individual capacity -- Professor Swaine’s memo is an excellent explanation of the accepted scope of IGO judicial immunity and the varied analytical approaches that national courts take in determining the validity of IGO immunity defenses. I remain proud that we solicited this expert input on the central legal issue before the WG, and appreciative that ICANN funded the research.

I am sure it will be of substantial assistance to whatever decisional body determines how best to resolve the inherent conflict between statutory rights of domain registrants and the desire of IGOs to have a means of addressing cybersquatting that does not require full surrender of valid claims to judicial immunity as a condition of bringing an action.

Philip

Philip S. Corwin
Policy Counsel
VeriSign, Inc.
12061 Bluemont Way[maps.google.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__maps.google.com_-3Fq-3D12061-2BBluemont-2BWay-2B-250D-250AReston-2C-2BVA-2B20190-26entry-3Dgmail-26source-3Dg&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=fHE_Cr9toYeLCsl-trxHT_K7CdrHZ4uAVUnv57xOoj8&s=CoaOz-PewsfP8inMwD1N5msXqqp7rInZbzZOhQAWtCc&e=>
Reston, VA 20190
703-948-4648/Direct
571-342-7489/Cell

"Luck is the residue of design" -- Branch Rickey

From: Paul Tattersfield [mailto:gpmgroup at gmail.com<mailto:gpmgroup at gmail.com>]
Sent: Thursday, April 19, 2018 7:32 PM
To: Corwin, Philip <pcorwin at verisign.com<mailto:pcorwin at verisign.com>>
Cc: icann at leap.com<mailto:icann at leap.com>; Donna.Austin at team.neustar; haforrestesq at gmail.com<mailto:haforrestesq at gmail.com>; gnso-igo-ingo-crp at icann.org<mailto:gnso-igo-ingo-crp at icann.org>; rafik.dammak at gmail.com<mailto:rafik.dammak at gmail.com>

Subject: [EXTERNAL] Re: [Gnso-igo-ingo-crp] GNSO Council Liaison Summary Report (Re: IGO-INGO Curative Rights Policy Development Process Working Group)

Dear Philip,
OK lets settle this once and for all:
Show me examples of where an IGO is entitled to immunity after initiating proceedings. In either the initial proceedings or any follow-on proceedings?

Any jurisdiction will do, any matter will do......
If you can not then Swaine is irrelevant to what the working group is considering.

Yours sincerely,
Paul.


On Thu, Apr 19, 2018 at 1:18 PM, Corwin, Philip <pcorwin at verisign.com<mailto:pcorwin at verisign.com>> wrote:
Paul:

For the record, and in regard to this –
The co-chairs will not refute this reasoning but are not prepared to discuss it - this I find very troubling, not just on this single issue level but the fact that working group officers can block its discussion for months and months on end.

The discussion within the WG was not blocked by the co-chairs. It was blocked because George filed a section 3.7 Appeal at the point in time when the co-chairs wished to initiate the consensus call process. The co-chairs later offered to rescind holding an anonymous poll of the full WG but George rejected that approach and continued his appeal. So far as I am aware you supported George in these actions.

Other than speaking with Susan in their individual capacity as WG members the co-chairs had no control over the content of her report.

Speaking only for myself, I do not agree with your characterization of the Swaine memo and believe it was highly relevant to the central issue before the WG.

Philip

Philip S. Corwin
Policy Counsel
VeriSign, Inc.
12061 Bluemont Way[maps.google.com]<https://urldefense.proofpoint.com/v2/url?u=https-3A__maps.google.com_-3Fq-3D12061-2BBluemont-2BWay-2B-250D-250AReston-2C-2BVA-2B20190-26entry-3Dgmail-26source-3Dg&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=fHE_Cr9toYeLCsl-trxHT_K7CdrHZ4uAVUnv57xOoj8&s=CoaOz-PewsfP8inMwD1N5msXqqp7rInZbzZOhQAWtCc&e=>
Reston, VA 20190
703-948-4648/Direct
571-342-7489/Cell

"Luck is the residue of design" -- Branch Rickey

From: Gnso-igo-ingo-crp [mailto:gnso-igo-ingo-crp-bounces at icann.org<mailto:gnso-igo-ingo-crp-bounces at icann.org>] On Behalf Of Paul Tattersfield
Sent: Thursday, April 19, 2018 5:01 AM
To: George Kirikos <icann at leap.com<mailto:icann at leap.com>>
Cc: Donna.Austin at team.neustar<mailto:Donna.Austin at team.neustar>; Heather Forrest <haforrestesq at gmail.com<mailto:haforrestesq at gmail.com>>; gnso-igo-ingo-crp at icann.org<mailto:gnso-igo-ingo-crp at icann.org>; rafik.dammak at gmail.com<mailto:rafik.dammak at gmail.com>
Subject: [EXTERNAL] Re: [Gnso-igo-ingo-crp] GNSO Council Liaison Summary Report (Re: IGO-INGO Curative Rights Policy Development Process Working Group)

Dear ICANN,

I agree with George, unfortunately I will not be able to attend the call later today as I have another meeting half way across the country which clashes with your call. I will listen to the call afterwards and submit any comments to the email list, sorry for any inconvenience. Please accept my apologies
Briefly, I would also like to point out:
The IGO's have accepted the principle of coexistence and as they are initiating the proceedings they have no immunity rights whatsoever in either the initial action or any follow on proceedings. This is an incredibly simple legal principle and I can not find ANY jurisdiction in the world on ANY matter not just domain names where an IGO would be entitled to do so.
The matter is only confused because the Swaine reasoning looked at the case where others are initiating an action against the IGOs i.e. a trademark owner looking to seize an IGO's asset. Clearly the expert report is not relevant to the case the working group is considering where the IGO's are initiating proceedings.
The co-chairs will not refute this reasoning but are not prepared to discuss it - this I find very troubling, not just on this single issue level but the fact that working group officers can block its discussion for months and months on end. I also note with some dismay that only 2 people in the private office sessions said they were not prepared to accept any other option than option 3 -  the 2 co-chairs preferred option.
We have an opportunity in this working group to set an example to the RPM working group using any IGO cases to show how UDRP can be easily improved for all parties in a way that does not tilt the balance in either side's favour but just improves process and reduces costs for all parties and meets the GAC's advice.

It really is incredibly easy - Free private mediation and a separate (voluntary for registrants) arbitration track. If you want more registrants to CHOOSE arbitration simply make it cheaper, faster and less risky (name only) than the judicial route. This could be sorted in a handful of meetings and no interest group has lost anything!

Yours  sincerely,
Paul.




On Thu, Apr 19, 2018 at 1:38 AM, George Kirikos <icann at leap.com<mailto:icann at leap.com>> wrote:
Hi folks,

With regards to the Summary Report which is to be discussed tomorrow,
there are several parts of it that I disagree with, which I'll discuss
orally tomorrow during our call. However, some parts deserve a written
response, given that they contain supporting links (and the WebEx
interface really sucks, compared to Adobe Connect) so it's best to
post them in advance of the call.

1. On page 2, it's asserted that "the number of active participants is
extremely low" (it's also repeated on page 3, i.e. "small number of
participants' views"). However, that's not consistent with the facts.
For example, the IRTP-D PDP, the most recently completed GNSO PDP
according to:

https://gnso.icann.org/en/group-activities/inactive[gnso.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en_group-2Dactivities_inactive&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=fHE_Cr9toYeLCsl-trxHT_K7CdrHZ4uAVUnv57xOoj8&s=2Pum4Md0vfHMKn5AUBAH3Z-j6dHKCuF_ZhREl6ZbzXU&e=>

has its attendance logs at:

https://community.icann.org/display/ITPIPDWG/Attendance+Log[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_ITPIPDWG_Attendance-2BLog&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=fHE_Cr9toYeLCsl-trxHT_K7CdrHZ4uAVUnv57xOoj8&s=SM46RS2yu2NqlCCV6jC_TqeffNSm5NO7Hrg2Z_zxdzw&e=>

If one adds up the "total attended" column, and divide it by the total
number of meetings, one obtains the average attendance per meeting:

Sum of total attended column = 553
Total meetings = 56
Average = 9.88 per meeting

It is of note that both the GNSO Council and the ICANN Board adopted
their recommendations:

https://gnso.icann.org/en/group-activities/active/irtp-d[gnso.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__gnso.icann.org_en_group-2Dactivities_active_irtp-2Dd&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=fHE_Cr9toYeLCsl-trxHT_K7CdrHZ4uAVUnv57xOoj8&s=j2Zvmixa4aRhzYenT-dnA022yco2l1JnPBILd7c6P2A&e=>

Now, let's compare this to the IGO PDP and its attendance records:

https://community.icann.org/display/gnsoicrpmpdp/Attendance+Records[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_gnsoicrpmpdp_Attendance-2BRecords&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=fHE_Cr9toYeLCsl-trxHT_K7CdrHZ4uAVUnv57xOoj8&s=mwySLJqja9rtF5SFHTy4NbNmZuRg0TzTEP7xPbL3BMk&e=>

Sum of total attended column = 711
Total meetings = 71
Average = 10.01 per meeting

So, there has actually been HIGHER average attendance (10.01 vs 9.88
per meeting) in this IGO PDP, compared to the IRTP-D whose work was
successfully completed.

2. On page 3, it's claimed that adoption of Option 4 "will require a
Charter amendment" for that other PDP." I'm not convinced that that's
a requirement. The RPM PDP charter is at:

https://community.icann.org/display/RARPMRIAGPWG/WG+Charter?preview=3D/5872=
9944/58730036/Charter%20for%20RPM%20PDP_final.pdf[community.icann.org]<https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_display_RARPMRIAGPWG_WG-2BCharter-3Fpreview-3D3D_5872-3D9944_58730036_Charter-2520for-2520RPM-2520PDP-5Ffinal.pdf&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=fHE_Cr9toYeLCsl-trxHT_K7CdrHZ4uAVUnv57xOoj8&s=ps70jf_1KqUAI3uRTbpQJ4U149wbZN0CHdG6lKySm40&e=>

and states on page 3 of the charter that:

"(b) Coordination with Other Parallel Efforts
In the course of its work, the Working Group should monitor the
progress of and, where appropriate, coordinate with, other ICANN
groups that are working on topics that may overlap with or
***otherwise provide useful input to this PDP.***
....
In addition, the RPM PDP Working Group should also take into
consideration the work/outcome of the TMCH Independent Review, the CCT
Review, and ***any other relevant GNSO policy development***"

(emphasis added)

So, I think this situation was already covered by the RPM PDP's
current charter, and doesn't need an amendment.

As I mentioned earlier, there are other parts of the Summary Report I
have concerns about, but I'll save them for tomorrow's call, as they
don't require any links/quotes.

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/[leap.com]<https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwMFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=fHE_Cr9toYeLCsl-trxHT_K7CdrHZ4uAVUnv57xOoj8&s=V1eNh6UuyYEnssdELGy5BGrOMHYiXX7md_UYRrQBKek&e=>


On Fri, Apr 13, 2018 at 11:36 AM, Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>> wrote:
> Dear all,
>
>
>
> On behalf of Susan Kawaguchi, GNSO Council liaison to this PDP Working
> Group, please find attached the summary report that Susan mentions in her 10
> April email (below). You should already have received the calendar
> invitation and call details for the next Working Group call, currently
> scheduled for next Thursday 19 April at our usual time of 1600 UTC. Susan
> will be on the call to discuss the report and proposed next steps with
> everyone.
>
>
>
> Thanks and cheers
>
> Mary & Steve
>
>
>
> From: Susan Kawaguchi <susankpolicy at gmail.com<mailto:susankpolicy at gmail.com>>
> Date: Tuesday, April 10, 2018 at 12:26
> To: "gnso-igo-ingo-crp at icann.org<mailto:gnso-igo-ingo-crp at icann.org>" <gnso-igo-ingo-crp at icann.org<mailto:gnso-igo-ingo-crp at icann.org>>
> Cc: Heather Forrest <haforrestesq at gmail.com<mailto:haforrestesq at gmail.com>>, Mary Wong
> <mary.wong at icann.org<mailto:mary.wong at icann.org>>, Steve Chan <steve.chan at icann.org<mailto:steve.chan at icann.org>>
> Subject: [Ext] IGO-INGO Curative Rights Policy Development Process Working
> Group
>
>
>
> Dear IGO-INGO Curative Rights Policy Development Process Working Group
> members,
>
>
>
> I write to update you, in my role as GNSO Council Liaison to this Working
> Group, on the status of the WG member consultation process that was set out
> in my email of 9 March 2018 and then actioned during ICANN61 and following.
>
>
>
> As envisaged in my email of 9 March, staff and I are preparing a report for
> the Working Group on the input received at and since ICANN61, with
> recommendations on next steps from me and Heather Forrest, the GNSO Chair.
> We anticipate posting the report to the WG list at the end of this week, for
> discussion at a WG meeting to be held at the group's usual time next
> Thursday, 19 April. At that meeting, I will be happy to present a summary of
> the report and its recommendations, and answer questions from WG members.
>
>
>
> An email from staff with call details will be circulated shortly. Bear in
> mind that we do not have Adobe Connect, so alternate arrangements will be
> made to support our call.
>
>
>
> In the meantime, I sincerely thank you for taking the time to provide me
> with your feedback, which contributes to the substantial work of the group
> on this challenging policy area.
>
>
>
> Kind regards,
>
>
>
> Susan Kawaguchi
>
> Councilor for the Business Constituency
>
>
>
>
> _______________________________________________
> Gnso-igo-ingo-crp mailing list
> Gnso-igo-ingo-crp at icann.org<mailto:Gnso-igo-ingo-crp at icann.org>
> https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp
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