[gnso-rpm-wg] Organizing ourselves.

Graham Schreiber grahamschreiber at gmail.com
Sun Apr 3 13:25:52 UTC 2016

Good morning Paul & Et Al:

Thank you for the observation; where in-part agree.

Recognizing this WG is deliberating ~ *Factual International IP Law Vs UDRP
/ RPM *~  I'll acknowledge many participants are *well fortified & informed
**no doubt.*

However, for the benefit of *inconsequential* * ~ .COM Domain Name
Registrants ~*  like myself, who are concerned with a select few, who've
done us a great disservice, it's important for them  { on both sides of the
problem }  to know ICANN *is not* in a position to undermine thoughtfully
composed *International Trade Laws' concerning Intellectual Property*; and
that somebody, well beneath the academic weight of others, is
slugging-it-out on their behalf.

As you know, ICANN Et Al, has made "Us .COM Registrants" genuine victims of
crime beyond the nuisance of Cybersquatting, but of a Racketeering
campaign.  The details of which I'll share with You; and them on another

*To the moderator:*   I anticipate you'll recognize this reply to be
germane to UDRP / RPM; and for ICANN's interest, maintain an accountable
forum, where all may opine.


On Sun, Apr 3, 2016 at 7:50 AM, Paul at law.es ZIMBRA <paul at law.es> wrote:

> Graham,
> Thanks for the post.  While everyone has a substantial amount of knowledge
> to contribute, I think that given the size of the project, things will
> quickly run amok if we all contribute that knowledge without a framework in
> which to organize both the discussion and data.
> I suggest we first try to tackle the issue of scope and outline the issue
> we would like to discuss and address within the WG.  Given the scope it may
> thereafter be efficient to create subgroups to investigate specific issues
> which the group as a whole can then address.
> Paul Keating
> On 02 Apr 2016, at 3:37 PM, Graham Schreiber via gnso-rpm-wg <
> gnso-rpm-wg at icann.org> wrote:
> Hello ICANN ~ UDRP / Rights Protection Mechanisms Participants:
> Cc Greg, Phil, Neda, Eric & Lawrence:
> Please read and be aware of the WTO Rules, the Global Rules that rein over
> Trade Marks as Common Law under USA Law ~ In Rem & In Personam plus those
> which are Registered at USPTO, getting inclusion in the Madrid System
> Countries, under American Trade Agreements.
> Fundamentally, any Brand or Business that has a Domain Name of .COM and is
> "In Use" ~ "In Commerce" equals "First in Use" therefore all the NTIA's
> contracted New gTLDs fall behind .COM TLD.
> That also applies to the SUB.COM -DOMAIN NAMES of CentralNic!
> Regards, Graham.
> Council for Trade-Related Aspects of Intellectual Property Rights
> https://www.wto.org/english/tratop_e/trips_e/ta_docs_e/8_1_ipcw128add1_e.pdf
> IP/C/W/128/Add.1
> 15 May 2003
> 18. Rights in trademarks and other distinctive signs are territorial, but
> when such signs are used on the Internet they become simultaneously
> accessible irrespective of territorial origin. Paragraphs 54-61 and 85-87
> of the original background note in document IP/C/W/128 discussed certain
> questions arising from this tension between territorial systems of
> protection and the global nature of the Internet. These questions include
> under what conditions the use of a trademark on the Internet would satisfy
> certain requirements where the registrability or maintenance of a
> registration requires use, as well as under what conditions and in which
> jurisdiction(s) the use of a sign on the Internet would constitute an
> infringement. The note also addressed the issue of use and promotion of
> well-known marks on the Internet, as well as the relationship between
> trademarks and domain names. The following describes how these issues have
> been addressed in WIPO's recent work.
> Use of trademarks on the Internet
> 19. Issues relating to the use of trademarks on the Internet were
> addressed in a "Joint Recommendation Concerning Provisions on the
> Protection of Marks, and Other Industrial Property Rights in Signs, on the
> Internet ("Joint Recommendation"),32 that was adopted by the Assembly of
> the Paris Union for the Protection of Industrial Property and the General
> Assembly of WIPO in September 2001.33 The WIPO Survey characterizes the
> Joint Recommendation as follows:
> "The Preamble to the Joint Recommendation makes clear that it does not
> purport to be a trademark law for the Internet, but is intended to guide
> the application of existing national or regional laws with respect to legal
> problems resulting from the use of a sign on the Internet. Emphasizing the
> 'global nature' of the Internet, the Joint Recommendation aims at providing
> the clearest possible legal framework for trademark owners who wish to use
> their marks on the Internet and to participate in the development of
> e-commerce upon it. Its purpose is, therefore, to help competent
> authorities to determine whether, under the applicable law, the use of a
> sign on the Internet has contributed to the acquisition, maintenance or
> infringement of a mark or other industrial property right in the sign, or
> whether such use constitutes an act of unfair competition, and thereafter
> to apply appropriate remedies.
> The determination of the applicable law itself is not addressed by the
> Joint Recommendation, but is left to the principles of private
> international law, as they are applied in each Member State. [...]"34
> 20. The Joint Recommendation is built on three principles. First, the use
> of a sign on the Internet contributes to the acquisition, maintenance or
> infringement of a trademark or other industrial property right in the sign
> in a particular country only if the use has a commercial effect in that
> country. Second, the Joint Recommendation aims to enable owners of
> conflicting rights in identical or similar signs to use these signs
> concurrently on the Internet. To this end, it introduces a "notice and
> avoidance of conflict" procedure: right holders or persons who are
> otherwise permitted to use a sign in one jurisdiction are exempt from
> liability in another jurisdiction up to the point when they receive a
> notification of infringement in the latter jurisdiction. After the receipt
> of such notification, they continue to be exempt from liability if they
> expeditiously take reasonable measures which are
> 32
> 33 These governing bodies decided to "[r]ecommend that each Member State
> may consider the use of any of the provisions [...] as guidelines
> concerning the protection of marks, and other industrial property rights in
> signs, on the Internet". Article 1(i) of the Joint Recommendation defines
> that a "'Member State' means a State member of the Paris Union for the
> Protection of Industrial Property, of the World Intellectual Property
> Organization, or of both".
> 34 Paragraphs 155-156 of the WIPO Survey (a footnote in the original
> document omitted).
> IP/C/W/128/Add.1 Page 7
> The Joint Recommendation is available at http://www.wipo.int/about-
> ip/en/index.html?wipo_content_frame=/about-ip/en/development_iplaw/index.htm
> <http://www.wipo.int/about-ip/en/index.html?wipo_content_frame=/about-ip/en/development_iplaw/index.htm>.
> IP/C/W/128/Add.1 Page 8
> effective to avoid a commercial effect in that jurisdiction. Third,
> remedies for an infringement in a particular country must be proportionate
> to the commercial effect of the use of the sign in that country. In
> general, competent authorities should, as far as possible, refrain from
> granting "global injunctions" that would affect the use of the sign outside
> the jurisdiction in question.
> Well-known trademarks
> 21. The protection of well-known marks was addressed in a "Joint
> Recommendation Concerning Provisions on the Protection of Well-Known Marks",35
> that was adopted by the Assembly of the Paris Union for the Protection of
> Industrial Property and the General Assembly of WIPO in September 1999.36 First,
> it provides guidelines to assist competent authorities to determine whether
> a mark is well-known. Among the recommended criteria to be considered are
> the duration, extent and geographical area of any use and promotion of the
> mark. The explanatory notes prepared by the International Bureau of WIPO
> and attached to the recommendation state that, although the term "use" is
> not defined in the recommendation, for the purposes of its provisions the
> term "use" should cover use of a mark on the Internet. Furthermore, they
> explain that "[a]dvertising, for example, in print or electronic media
> (including the Internet), is one form of promotion".37 Second, the
> recommendation provides that well-known marks must be protected against
> conflicting marks, business identifiers and domain names.38 As regards
> domain names, it is specified that "[a] domain name shall be deemed to be
> in conflict with a well-known mark at least where that domain name, or an
> essential part thereof, constitutes a reproduction, an imitation, a
> translation, or a transliteration of the well-known mark, and the domain
> name has been registered or used in bad faith".39
> Domain names
> 22. Following its First Internet Domain Name Process, an international
> process to develop recommendations concerning the intellectual property
> issues associated with Internet domain names, WIPO published, in April
> 1999, its report "The Management of Internet Names and Addresses:
> Intellectual Property Issues". The principal recommendations of this report
> were implemented through the adoption by the Internet Corporation for
> Assigned Names and Numbers ("ICANN") of the Uniform Domain Name Dispute
> Resolution Policy ("UDRP") in August 1999. This procedure, which entered
> into operation in December 1999, provides holders of trademark rights with
> an administrative mechanism for the efficient resolution of disputes
> arising out of the bad faith registration and use by third parties of
> Internet domain names corresponding to those trademark rights. The UDRP now
> applies to disputes in the generic top-level domains ("gTLDs") .com, .net,
> and .org, the new gTLDs .aero, .biz, .coop, .info, .museum, .name, and .pro,40
> and those country code top-level domains ("ccTLDs") that have adopted the
> Policy on a voluntary basis.41
> 35
> 36 These governing bodies decided to "[r]ecommend that each Member State
> may consider the use of any of the provisions [...] as guidelines for the
> protection for well-known marks". Article 1(i) of the recommendation
> defines that a "'Member State' means a State member of the Paris Union for
> the Protection of Industrial Property and/or the World Intellectual
> Property Organization ".
> 37 Sub-paragraphs 2 and 3 of Article 2(1) of the recommendation and the
> attached explanatory notes.
> 38 Article 3(1) of the recommendation.
> 39 Article 6(1) of the recommendation.
> 40 ICANN has accredited a number of institutions to administer complaints
> filed under the Policy,
> among which the WIPO Arbitration and Mediation Center is the leading
> provider. To date, approximately 8,200 cases have been filed under the
> procedure. Of these cases, more than 4,800 were filed with the WIPO
> Arbitration and Mediation Center.
> 41 WIPO launched in August 2000 the WIPO ccTLD Programme, which aims to
> enhance the protection of intellectual property in the ccTLDs through
> cooperation with their administrators. To date, 30 administrators of ccTLDs
> have retained the WIPO Arbitration and Mediation Center as dispute
> resolution service provider on the basis of the UDRP or a variation
> thereof.
> This recommendation is available at http://www.wipo.int/about-
> ip/en/index.html?wipo_content_frame=/about-ip/en/development_iplaw/index.htm
> <http://www.wipo.int/about-ip/en/index.html?wipo_content_frame=/about-ip/en/development_iplaw/index.htm>.
> IP/C/W/128/Add.1 Page 9
> 23. WIPO commenced the Second WIPO Internet Domain Name Process in July
> 2000 to address abusive domain name registrations of identifiers other than
> trademarks. In September 2001, WIPO published its report on this process
> entitled "The Recognition of Rights and the Use of Names in the Internet
> Domain Name System", and presented it to WIPO's member States and ICANN.
> This report was analyzed by the WIPO Standing Committee on the Law of
> Trademarks, Industrial Designs and Geographical Indications ("SCT"), which
> formulated a set of recommendations.42 These recommendations were
> considered by the WIPO General Assembly at its meeting in September 2002.43
> The recommendation concerning country names was remitted for further
> consideration at the SCT's meeting in November 2002.44 As a result, the
> member States of WIPO decided to recommend that the names and acronyms of
> intergovernmental organizations ("IGOs") and country names should be
> protected against abusive registration as domain names.45 These
> recommendations were transmitted to ICANN.46
> Liability of service provides
> 24. Paragraphs 73 and 74 of document IP/W/128 addressed the issue of the
> liability of service providers in respect of the transmission and storage
> of material initiated by others: to what extent service providers, who act
> as intermediaries transmitting or storing potentially infringing content,
> are or should be held liable for such content and, if so, what remedies
> should be available. Given that the Internet is a borderless medium, it
> would be important that national approaches to this issues would be
> mutually compatible so as to allow global networks and markets to develop
> smoothly.
> 25. This issue was discussed in the context of the work leading up to the
> WIPO 1996 Diplomatic Conference. Article 8 of the WCT on the "Right of
> Communication to the Public" compiles the various provisions of the Berne
> Convention on the right of communication into a single provision, extends
> the right to all categories of works, and clarifies the application of the
> right in respect of interactive on-demand communications.47 As regards
> the scope of this right in respect of intermediaries who provide physical
> facilities for communication without actively initiating it, the Conference
> adopted the following Agreed Statement:
> 42 The SCT's recommendations are reflected in WIPO document WO/GA/28/3.
> 43 The decisions of the General Assembly in respect of these
> recommendations are reflected in paragraphs 74-81 of WIPO document
> WO/GA/28/7.
> 44 The decisions by the SCT concerning country names are reflected in
> 6-11 of WIPO document SCT/9/8.
> 45 The delegation of the United States dissociated itself from the
> General Assembly's decision on the recommendation concerning the names and
> acronyms of IGOs, and the delegations of Australia, Canada and the United
> States dissociated themselves from the SCT's decision on the recommendation
> concerning country names.
> The General Assembly also adopted recommendations concerning certain other
> identifiers. It adopted the recommendation that no particular form of
> protection of international non-proprietary names for pharmaceutical
> substances would be recommended in the DNS at this time, but that WIPO,
> together with the World Health Organization, would continue to monitor the
> situation and, where necessary, bring any important developments in this
> area to the notice of member States; it adopted the recommendation that
> WIPO member States should keep the issue of trade names under review and
> raise it for further discussion if the situation so required; it adopted
> the recommendation that no action was needed in respect of personal names;
> and in respect of geographical indications, it adopted the recommendation
> that this issue be reverted to the regular session of the SCT to decide how
> to address the issue of the protection of geographical indications in the
> DNS.
> 46 For an in-depth examination of WIPO's work relating to domain names,
> see paragraphs 178-239 and 516-522 of the WIPO Survey. All the WIPO
> documentation referred to above can be accessed through the WIPO domain
> names gateway page at http://ecommerce.wipo.int/domains/.
> 47 See paragraphs 43-45 of document IP/C/W/128. Similar provisions are
> contained in Articles 10 and 14 of the WPPT that deal with the right of
> making available of fixed performances and of phonograms.
> IP/C/W/128/Add.1 Page 10
> "It is understood that the mere provision of physical facilities for
> enabling or making a communication does not in itself amount to
> communication within the meaning of this Treaty or the Berne Convention."
> While this statement clarifies the scope of the right of communication to
> the public, it leaves the issue of liability of service provides to be
> determined at the national level.48
> 26. Since the adoption of the WCT in December 1996, the issue of liability
> of service providers has been addressed in the legislation of a number of
> countries. Some countries have regulated the issue specifically in relation
> to copyright, while others have taken a horizontal approach applying the
> rules to liability arising under any relevant laws applying to the
> information transmitted or stored. Below are some examples of such laws.
> 27. The United States Digital Millennium Copyright Act of 199849 limits
> the liability of service providers, under specified conditions, to certain
> forms of injunctive relief in respect of certain common activities
> involving the transmission or storage of material initiated by a person
> other than the service provider. The conditions include that the service
> provider complies with a "notice and take down" procedure that allows the
> right holder to notify it of allegedly infringing material residing on its
> system and require it to take down or disable access to such material after
> receiving such notice. Similar laws determining liability of service
> providers in the copyright context have been enacted in a number of
> countries, including Hungary, Ireland and Singapore.
> 28. The European Communities Directive on Electronic Commerce,50 adopted
> in June 2000, approaches the same question in a horizontal manner. Its
> provisions on liability of intermediary service providers apply to
> liability the may arise from the application of copyright or any other
> relevant laws. Subject to certain conditions, service providers may not be
> held liable for the simple transmission of information provided by the
> recipient of the service ("mere conduit"), automatic intermediate and
> temporary storage of such information with the sole objective of making its
> onward transmission more efficient ("caching"), and storage of such
> information at the request of the recipient ("hosting"). In the case of
> hosting, the service provider, upon obtaining knowledge or awareness that
> the activity is illegal, must expeditiously remove or disable access to the
> information. The EC member States may not impose on service providers any
> general obligation to monitor the information transmitted or stored. Also
> Japan has approached the regulation of service provider liability in a
> horizontal manner in its "Provider Liability Law", enacted in November 2001.51
> 48 The agreed statement may be read together with the following
> explanatory notes on draft Article 10, which later became Article 8 of the
> WCT: "The relevant act is the making available of the work by providing
> access to it. What counts is the initial act of making the work available,
> not the mere provision of server space, communication connections, or
> facilities for the carriage and routing of signals. It is irrelevant
> whether copies are available for the user or whether the work is simply
> made perceptible to, and thus usable by, the user." "It is strongly
> emphasized that Article 10 does not attempt to define the nature or extent
> of liability on a national level. This proposed international agreement
> determines only the scope of the exclusive rights that shall be granted to
> authors in respect of their works. Who is liable for the violation of these
> rights and what the extent of liability shall be for such violations is a
> matter for national legislation and case law according to the legal
> traditions of each Contracting Party." Paragraphs 10.10 and 10.21 of WIPO
> document CRNR/DC/4 entitled "Basic Proposal for the Substantive Provisions
> of the Treaty on Certain Questions concerning the Protection of Literary
> and Artistic Works to be Considered by the Diplomatic Conference".
> 49 Pub. L. No. 105-304, 112 Stat. 2860, 2876.
> 50 Directive 2000/31/EC of the European Parliament and of the Council of
> 8 June 2000 on Certain Legal Aspects of Information Society Services, in
> particular Electronic Commerce, in the Internal Market.
> 51 Law No. 137 of 30 November 2001.
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