[council] Fwd: Requested feedback on IGO curative WG report

Heather Forrest haforrestesq at gmail.com
Mon Oct 22 15:22:48 UTC 2018

Dear Council colleagues,

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.

Best wishes,


---------- Forwarded message ---------
From: BECKHAM, Brian <brian.beckham at wipo.int>
Date: Mon, Oct 22, 2018 at 5:02 PM
Subject: Requested feedback on IGO curative WG report
To: Heather Forrest <haforrestesq at gmail.com>
Cc: Jon PASSARO (Jonathan.PASSARO at oecd.org) <Jonathan.PASSARO at oecd.org>,
manal at tra.gov.eg <manal at tra.gov.eg>, gac-leadership at icann.org <
gac-leadership at icann.org>, Mary Wong <mary.wong at icann.org>

Dear Heather, dear Councilors,

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).

The words of the resigned co-chair (beginning at page 70 of the Final Report
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”.

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 *penalise* 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.

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.

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.

Kind regards, and thank you for forwarding this to the Council list,



*Recommendation 1**:*  For IGOs, no specific new dispute resolution
procedures are to be created.

*Note:*  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).”

*Reaction:*  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.

*Recommendation 2**:*  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.

*Note:*  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”.

*Reaction:*  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).

*Recommendation 3**:*  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.

*Reaction:*  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.

*Recommendation 4**:*  [Rejected the GAC’s request for ICANN assistance to
offset IGO fees to use a rights protection mechanism.]

*Note:*  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.”

*Reaction:*  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.

*Recommendation 5**:*  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).

*Note:* 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 https://www.godaddy.com/agreements/showdoc?pageid=5403).

*Reaction:*  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.


Also relevant for the Council, note the following (attached):

·       Letter from UN Secretary General Ban ki Moon
·       Two reactions by IGOs to the WG, following the WG’s specific request
·       Two letters from IGO Legal Counsels to ICANN
·       The GAC’s Submission to the WG’s Initial Report

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