[Gnso-igo-ingo-crp] - Final SG/C Letter and Questions to Consider

[Paul Keating]

Thank you Steve,

Regarding the questions noted below, I wanted to respond to a comment I
believe that Peder made during the call regarding the requirement that
trademarks were no longer the standing requirement they once were in the
UDRP.  I believe he used the example of famous people's names.  I have not
listened to the MP3 recording so, if I am mistaken in attributing the
comment to Peder, let me be the first to apologize for my error.

Peder, your comment was entirely incorrect.  Those UDRPs involving famous
names have turned on whether the complainant's use of the name amounted to a
common law trademark right.  In cases of mere fame without
commercialization, panels have found no  t trademarks.  In those in which
the names were clearly linked to commercial activities (music, books, etc),
the panels have found a common law trademark to exist.  I know of absolutely
no UDRP decision in which the panel found a famous name sufficient without
also finding the requisite common law trademark right.  If you have one to
mind, please share it and I will stand corrected.

My reaction to the standing issue is that there is absolutely no reason to
even consider it.    The UDRP has always  been founded on the pre-requisite
of a trademark.  The WIPO White Paper was clear that the UDRP should not be
a vehicle for the creation or expansion of intellectual proper rights in
cyber-space beyond those existing in the "real world".  Notwithstanding the
clear "identical and confusingly similar" language, panels have watered down
the 1st Element to one of mere standing ­ which as I have previously said,
is such a low barrier that a worm could easily cross.  The panels did so by
progressively ignoring the clear language ("identical or confusingly
similar") which is a widely recognized and well-honed term of art in
trademark infringement to one which is merely a text vs t ext comparison.
However, this is not and can never, IMHO be, a reason to ignore the language
entirely and permit some other substitution to a registered or common law
mark.

Further, to do so would require a wholesale amendment to the  UDRP (and
URS).  This would require an amendment to the ICANN/Registrar agreement AND
a change to the Registrar/Registrant agreement.

Finally, although it was within our initial charter to consider amendments,
I feel seriously doing so would be impractical.  In addition to the above
reasons, given that it would require an amendment to the UDRP, I believe
that such a task is better left to a Working Group assigned for such purpose
because once the suggestion is made to open an amendment process, it will
quickly include other and competing views on a variety of subjects.

It is for this reason I suggested our next session focus on the issue of
Sovereign Immunity and we leave the issue of rights expansion to January.


Finally, please allow me to apologize once again for not seeming to "get it"
with the audio portion of my participation.  Someday I will be able to
arrange my black box to accurately interact with all of those interconnected
tubes in the "web"Š..:-)


Warmest regards,

Paul

From:  Steve Chan <steve.chan at icann.org>
Date:  Thursday, December 11, 2014 1:26 AM
To:  "gnso-igo-ingo-crp at icann.org" <gnso-igo-ingo-crp at icann.org>
Subject:  [Gnso-igo-ingo-crp] - Final SG/C Letter and Questions to Consider

> Dear WG Members,
> 
> Attached, please find the final version of the letter drafted to solicit input
> from the stakeholder groups and constituencies; this letter was sent to the
> chairs of each of the SG/Cs yesterday.
> 
> In addition, it was agreed on today¹s call that at least for the moment, the
> group would not break up into sub groups and would instead work together over
> the list to debate the following item from the group¹s work plan: "Develop
> potential considerations (e.g. qualifying requirements, authentication
> criteria and appeal processes) for IGOs and INGOs that would be relevant to
> their use of dispute resolution proceedings (existing or new)²
> 
> The WG may want to consider the following questions when thinking about this
> item:
> * What might be a justifiable, principled basis for ³standing² other than TM
> rights, whether under the UDRP, URS or a new dispute resolution procedure?
> * 
> * Assuming for the moment that sovereign immunity is a problem for IGOs
> (pending responses from the GAC and the IGOs), what type of appeal process
> other than what is now in the UDRP and URS might be a solution that would
> still offer adequate protection to registrants?
> Best,
> Steve
> 
> 
> Steven Chan
> Sr. Policy Manager
> 
> ICANN
> 12025 Waterfront Drive, Suite 300
> Los Angeles, CA 90094-2536
> steve.chan at icann.org
>  <mailto:steve.chan at icann.org>
> direct: +1.310.301.3886
> mobile: +1.310.339.4410
> tel: +1.310.301.5800
> fax: +1.310.823.8649
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