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

[David W. Maher]

+1
David W. Maher
Senior Vice President – Law & Policy
Public Interest Registry
312 375 4849


From: Mike Rodenbaugh <mike at rodenbaugh.com<mailto:mike at rodenbaugh.com>>
Date: Thursday, December 11, 2014 5:14 PM
To: Paul Keating <Paul at law.es<mailto:Paul at law.es>>
Cc: "gnso-igo-ingo-crp at icann.org<mailto:gnso-igo-ingo-crp at icann.org>" <gnso-igo-ingo-crp at icann.org<mailto:gnso-igo-ingo-crp at icann.org>>
Subject: Re: [Gnso-igo-ingo-crp] - Final SG/C Letter and Questions to Consider

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<mailto: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<mailto:steve.chan at icann.org>>
Date: Thursday, December 11, 2014 1:26 AM
To: "gnso-igo-ingo-crp at icann.org<mailto:gnso-igo-ingo-crp at icann.org>" <gnso-igo-ingo-crp at icann.org<mailto: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
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