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

Thu Dec 11 23:14:19 UTC 2014

Generally agree with Paul, and had the same basic feeling:  "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. "

I am curious to hear if anyone could pose any other remotely justifiable
basis for standing, other than trademark rights.

Best,
Mike

Mike Rodenbaugh
RODENBAUGH LAW
tel/fax:  +1.415.738.8087
http://rodenbaugh.com

On Thu, Dec 11, 2014 at 1:15 AM, Paul Keating <Paul at law.es> wrote:

> 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"…..:-)
>
>
> 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 today’s 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 group’s 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)”
>
> The WG may want to consider the following questions when thinking about
> this item:
>
>    - What might be a justifiable, principled basis for “standing” 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
>
> direct: +1.310.301.3886
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>
> tel: +1.310.301.5800
>
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