[Gnso-igo-ingo-crp] Food for thought on the "standing" requirement and sovereign immunity

Fri Dec 12 04:07:48 UTC 2014

Dear all,

This is not intended to take any position on the issue of standing;
rather, we as support staff thought the WG might find useful the draft
text that was produced for the GNSO Council in 2007 for an alternative
dispute resolution procedure (DRP) (attached). As you¹ll recall this was
part of the scoping that had been done at the time for an Issue Report
which, however, did not lead to any policy work for lack of requisite
votes on the GNSO Council.

Of particular note is the modification of the UDRP requirements for a
complaint and thus a mandatory administrative proceeding under 4(a) of the
UDRP to be as follows:

"(i) the registration or use, as a domain name, of the name or
abbreviation of the complainant that has been communicated under Article
6ter of the Paris
Convention is of a nature:

(a) to suggest to the public that a connection exists between the domain
nameholder and the complainant; or
					(b) to mislead the public as to the existence of a connection between
the domain
name holder and the complainant; or

(ii) on the ground that the registration or use, as a domain name, of a
name or
abbreviation of the complainant protected under an international treaty
violates
the terms of that treaty.²

The draft text therefore suggests two alternative grounds for standing in
lieu of trademark rights.

FWIW the draft text also deals with the sovereign immunity issue by
defining ³Mutual Jurisdiction² to be an arbitral tribunal constituted
under the rules either of the AAA, ICDR, WIPO or the London Court of
International Arbitration (see Definitions under the Rules of Procedure,
3.B.) 

I hope this is helpful.

Cheers
Mary

Mary Wong
Senior Policy Director
Internet Corporation for Assigned Names & Numbers (ICANN)
Telephone: +1 603 574 4892
Email: mary.wong at icann.org

-----Original Message-----
From: <Dorrain>, Kristine <kdorrain at adrforum.com>
Date: Friday, 12 December 2014 10:09
To: Jim Bikoff <jbikoff at sgbdc.com>
Cc: "gnso-igo-ingo-crp at icann.org" <gnso-igo-ingo-crp at icann.org>
Subject: Re: [Gnso-igo-ingo-crp] - Final SG/C Letter and Questions to
Consider

>Agree.
>
>Sent from my iPhone
>
>On Dec 11, 2014, at 5:45 PM, Jim Bikoff
><jbikoff at sgbdc.com<mailto:jbikoff at sgbdc.com>> wrote:
>
>Agree.
>
>Jim
>
>James L. Bikoff
>Silverberg, Goldman & Bikoff, LLP
>1101 30th Street, NW
>Suite 120
>Washington, DC 20007
>Tel: 202-944-3303
>Fax: 202-944-3306
>jbikoff at sgbdc.com<mailto:jbikoff at sgbdc.com>
>
>Sent from my iPad
>
>On Dec 11, 2014, at 7:34 PM, David W. Maher
><dmaher at pir.org<mailto:dmaher at pir.org>> wrote:
>
>+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"Š..:-)
>
>
>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 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<tel:%2B1.310.301.3886>
>mobile: +1.310.339.4410<tel:%2B1.310.339.4410>
>tel: +1.310.301.5800<tel:%2B1.310.301.5800>
>fax: +1.310.823.8649<tel:%2B1.310.823.8649>
>_______________________________________________ Gnso-igo-ingo-crp mailing
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