[Discussion-igo-rc] External legal advice on 6ter

Wed May 3 15:43:28 UTC 2017

Jon:

Thanks you for providing this summation of your consultation with several other IGOs.

Let me comment on some of your reply.

"As we have discussed at length, the mutual jurisdiction provision of the UDRP in fact prevents IGOs from using the UDRP." (Emphasis added)
This claim once again illustrates an unfortunate tendency of IGO representatives to overstate their case. In actual fact, the mutual jurisdiction clause of the UDRP may deter some IGOs from using that CRP, but in no way prevents such use.
To illustrate, the  WG identified numerous instances in which IGOs - including the World Bank in multiple filings -- had utilized the UDRP. As stated on page 79 of the Initial Report:
Indeed, several IGOs-including the International Mobile Satellite Organization (INMARSAT), the International Bank for Reconstruction and Development (IBRD), and the Bank for International Settlement (BFIS)-have prevailed in UDRP complaints.

The footnote related to that sentence reads:
Respectively, in International Mobile Satellite Organisation and Inmarsat Ventures Limited (formerly known as Inmarsat Holdings Limited) v. Domains, EntreDomains Inc. and Brian Evans, D2000-1339 (WIPO Nov. 30, 2000); International Bank For Reconstruction and Development d/b/a The World Bank v. Yoo Jin Sohn, D2002-0222 (WIPO May 7, 2002); and Bank for International Settlements v. BFIS, D2003-0984 (WIPO March 1, 2004), Bank for International Settlements v. BIS, D2003-0986 (WIPO March 2, 2004), Bank for International Settlements v. James Elliott, D2003-0987 (WIPO March 3, 2004), Bank for International Settlements v. G.I Joe, D2004-0570 (WIPO (Sept. 27, 2004), Bank for International Settlements v. BIS, D2004-0571 (WIPO Oct. 1, 2004), and Bank for International Settlements v. Fortune Nwaiwu, D2004-0575 (WIPO Oct. 1, 2004). A few other matters are catalogued in the Index of WIPO UDRP Panel Decisions, http://www.wipo.int/amc/en/domains/search/legalindex/, as involving IGOs. In one, involving the European Monitoring Centre for Drugs and Drug Addiction (EMCDDA), a decentralized agency of the European Union, the complaint was denied due to its failure to establish rights to marks or services. European Monitoring Centre for Drugs and Drug Addiction (EMCDDA) v. Virtual Clicks / Registrant ID:CR36884430, Registration Private Domains by Proxy, Inc., D2010-0475 (WIPO July 7, 2010). In another, involving UNITAID, an IGO hosted by the World Health Organization (WHO), trademark rights were assigned by a fiduciary agreement to a private enterprise, which registered them on behalf of the WHO and UNITAID. Lenz & Staehelin Ltd v. Christopher Mikkelsen, D2012-1922 (WIPO Jan. 8, 2013).

In addition, while not cited in the Initial report, the WG also found instances in which IGOs (again including the World Bank) waived immunity and initiated litigation in national courts; see http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2015-March/000302.html .

"In addition, our past experiences within ICANN make us deeply concerned that such an exercise risks being manipulated against IGOs' interests, from the formulation of the research question, the selection of the expert and the choice of jurisdictions to the potential cherry-picking of language from the expert's conclusions once her report is released."
I utterly reject the implication that our WG in any way "manipulated" the legal research undertaken by Prof. Swaine. He was selected from a list of potential experts prepared by ICANN Policy Staff and was selected because of his availability to do the work within the desired timeframe and willingness to undertake extensive research and writing for a relatively small sum. The four questions posed to him (reproduced below) were neutral and dictated no predetermined outcome, and were carefully formulated with the input and assistance of ICANN policy staff. The choice of jurisdictions surveyed was entirely of his choosing. And our Initial Report, while containing extensive discussion and analysis of his findings, in no way involved "cherry-picking" of his language. Indeed, the charge is unsupported given that the entire legal memo is included in our report and entities filing comments were free to engage in their own cherry-picking in citing passages favourable to their position while ignoring those that undermined it.

Finally, in regard to the four cited IGO expectations if a new legal analysis is undertaken, I agree that IGOs should have input into (but not control over) its design - just as IGOs would have had into the formulation  of the questions posed to Prof. Swaine had any IGOs chosen to join our WG as members, something they declined to do despite repeated outreach. I remain incredulous that any specific legal basis for the protections of IGO names and acronyms, other than trademark law and Article 6ter of the Paris Convention, will be uncovered by such an undertaking as no IGO or other party has cited such law throughout the time our WG has been operating. I again express extreme concern about the prospect of ICANN creating non-judicial alternatives for dispute resolution in regard to any type of law other than trademark law, as this opens the door to ICANN becoming a super-legislature for the broad sweep of laws that may be implicated by specific uses of the DNS. Finally, if such a new legal inquiry is undertaken I believe it should focus solely upon statutes creating an individual right to litigate, as it would be entirely unsuitable for ICANN to create a CRP in regard to a legal right for which there is no corresponding authroity to initiate litigation but only regulatory enforcement.

Based upon your desire for a broad survey of national jurisdictions, and our own experience working with with Prof. Swaine,  I would anticipate that receipt of a final version the relevant legal memo would occur at least six months to a year following the time expended on identification of a suitable expert and entering into a contract for the research.

If this discussion group chooses to authorize a new inquiry by another legal expert our WG will seriously consider whether our Final Report's release should be delayed to await its results. In the interim, we will continue to discuss the comments received on the Initial Report and move forward to drafting a Final version.

Regards,
Philip

The questions posed by the IGO CRP WG to Prof. Edward Swaine:
1. In relation to the requirement to select a "Mutual Jurisdiction" in the UDRP or URS context, is a complaining IGO entitled to immunity in connection with judicial action brought by a domain name registrant arising from an asserted conflict between the IGO's and the domain name registrant's rights - even when the IGO has initiated the dispute under a dispute resolution process that is in addition to, and not a replacement for, the registrant's legal rights under its applicable national law?
2. Are there procedural or other mechanisms which an IGO may use to escape or avoid becoming subject to judicial action brought by a domain name registrant arising from an asserted conflict between the IGO's and the registrant's rights?
3. To the best of your knowledge, how do IGOs generally handle standard commercial contractual clauses concerning submission to a particular jurisdiction or dispute resolution method?
4. Are there additional principles, nuances or other relevant information (including to your knowledge general principles of law which have been applied by States) that are relevant to our work to find a solution and conclusion on domain name disputes related to IGOs?

Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell

Twitter: @VlawDC

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

From: discussion-igo-rc-bounces at icann.org [mailto:discussion-igo-rc-bounces at icann.org] On Behalf Of Jonathan.PASSARO at oecd.org
Sent: Wednesday, May 03, 2017 4:49 AM
To: discussion-igo-rc at icann.org
Subject: [Discussion-igo-rc] External legal advice on 6ter

Dear Bruce,

My apologies for the delay since my last email, as it took me a few days to consult with the other members of the "core group" of IGOs (UN, UPU, WHO, WIPO).

First, allow me to take the opportunity to correct a point in your last email, sent on 30 April at 02:14 CEST. You stated that "Where IGOs have a trademark, they can take advantage of the existing UDRP." As we have discussed at length, the mutual jurisdiction provision of the UDRP in fact prevents IGOs from using the UDRP. For more in-depth explanations regarding why the mutual jurisdiction provision is incompatible with the immunities we enjoy as intergovernmental organisations, I invite you to consult the comments numerous IGOs provided on this point in the context of the ongoing PDP (including e.g. OECD<https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/pdfQMY4Efq7Aa.pdf>, UN<https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/pdf28tKc4pChA.pdf>, World Bank<https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/pdfzzHOSpXFGP.pdf>).

Second, regarding the consultation of a legal expert, my IGO colleagues share the OECD's concern that such an exercise will significantly prolong what has already been an extensive and resource-intensive process. In addition, our past experiences within ICANN make us deeply concerned that such an exercise risks being manipulated against IGOs' interests, from the formulation of the research question, the selection of the expert and the choice of jurisdictions to the potential cherry-picking of language from the expert's conclusions once her report is released. We are grateful that you are trying to start a new, less contentious chapter in this saga but hope that you understand why we are reticent to embark down this path.

In that regard, if you do decide to proceed, we would naturally expect that the IGOs would be involved in (1) the formulation of the research question(s); (2) the selection of the expert (3) the terms of reference guiding the expert's work; and (4) the choice of jurisdictions (please note already that a survey of five jurisdictions out of the 177 States Parties to the Paris Convention seems unlikely to give any kind of accurate idea about the scope of mechanisms States use to protect IGO acronyms).

Kind regards,

Jon
[logo_mail_uk]<http://www.oecd.org/>

Jonathan Passaro
Legal Adviser
Directorate for Legal Affairs

2, rue André Pascal - 75775 Paris Cedex 16
Tel: +33 1 45 24 14 73
________________________________
No virus found in this message.
Checked by AVG - www.avg.com<http://www.avg.com/email-signature>
Version: 2016.0.8012 / Virus Database: 4769/14347 - Release Date: 04/19/17
Internal Virus Database is out of date.
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/discussion-igo-rc/attachments/20170503/db19336a/attachment-0001.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 9750 bytes
Desc: image001.png
URL: <http://mm.icann.org/pipermail/discussion-igo-rc/attachments/20170503/db19336a/image001-0001.png>