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

Thu May 4 15:24:35 UTC 2017

In regard to " we are not commercial parties, and trademark is a commercial regime".

While trademark protection is based in commercial law, it is the system that has been globally adopted for protection of names and acronyms, and can serve non-commercial entities very well.

Here is a link to an article about a just published WIPO UDRP decision in which the UK's taxing authority successfully recovered two domains that might have been used to facilitate financial fraud--
http://www.trademarksandbrandsonline.com/news/hmrc-recover-two-domain-names-using-their-trademark-4988?utm_source=World+IP+Review&utm_campaign=3247f97d3b-TBO_Digital_Newsletter_19_04_2017&utm_medium=email&utm_term=0_d76dcadc01-3247f97d3b-27370301

I also know of another recent situation in which the US Environmental Protection Administration failed to renew a domain used in an anti-asthma campaign and had it voluntarily returned by the new registrant after filing a UDRP, with no need for the case to go to decision.

There are many examples of non-commercial agencies of sovereign governments successfully using the UDRP to recover important domains.

Philip S. Corwin, Founding Principal
Virtualaw LLC
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-----Original Message-----
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: Thursday, May 04, 2017 3:10 AM
To: discussion-igo-rc at icann.org
Subject: Re: [Discussion-igo-rc] External legal advice on 6ter

Hi Bruce,

I see where you might draw the conclusion about registering trademarks. However, registering trademarks does not make sense in many instances, again for reasons we have discussed at length over the past 5 years. In short, we are not commercial parties, and trademark is a commercial regime. On a much more basic level, the protections States offer in order to satisfy their 6ter obligations have proved sufficient. The tendency to push IGOs towards commercially-oriented solutions gives IGOs the impression of fighting an uphill battle in ICANN, where the community regards these issues through a strictly commercial lens (one just has to look at the composition of any number of ICANN bodies to understand why a reasonable person might perceive this commercial bias exists).

The danger the New gTLD Programme presents to IGOs is that it provides rapidly increasing and potentially infinite number of opportunities for fraudsters to take advantage of our names and reputations, simultaneously defrauding individuals and harming our good names. And we are in a particularly precarious position because once the floodgates are opened, they cannot simply be closed again.

If ICANN is going to open up IGOs to a potential deluge of harmful appropriations of our acronyms, it would seem only logical that ICANN should provide some measure of recourse against these misuses, and one that is compatible with our immunities. And we agree with you that a UDRP-like mechanism is a key component of one potential solution, provided of course there is an alternative to the mutual jurisdiction provision. This is not about creating new rights. It is about creating reasonable accommodations for a narrow class of parties who risk serious harm from a programme that ICANN has developed, and which generates considerable revenues for both ICANN as a corporation and the domain name industry as a whole. IGOs, on the other hand, see only liabilities.

Thanks again for your engagement on this.

Kind regards,

Jon

-----Original Message-----
From: discussion-igo-rc-bounces at icann.org [mailto:discussion-igo-rc-bounces at icann.org] On Behalf Of Bruce Tonkin
Sent: jeudi 4 mai 2017 02:19
To: discussion-igo-rc at icann.org
Subject: Re: [Discussion-igo-rc] External legal advice on 6ter

Hello Jonathan,

>>  Trademarks and copyright can be of tremendous value, even without the intervention of national courts. We depend upon the rule of law to ensure that people respect intellectual property rights in the same way that you depend on laws against trespassing and burglary to secure your home without having to call the police every day (or at least for your sake, I hope so!). In instances where we do find that individuals have breached the rights in our intellectual property, typically a letter alerting them to this fact is enough to correct the behaviour. 

Thanks.   That makes a lot of sense, and you gave a good example.   It is an example where as long as the recipient of the letter respects the rule of law, a simple letter that points out the intellectual property law breach is usually enough.    It would seem on balance that it may be better for an IGO to actually register a trademark, rather than use the Article 6ter provision to stop others getting that trademark  - simply because the letter that you speak of above can be fairly clear in identifying the intellectual property rights, without the need to go to court in most cases.

In a way UDRP is the next step up from the "letter" - in that an independent person/panel with expertise in the matter reviews the case, and generally the parties accept the decision and don't go to court.

Regards,
Bruce Tonkin

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