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

[George Kirikos]

The 2007 proposal by staff went nowhere for good reason -- it should
be left in the trashbin of history where it belongs, for the following
(brief) reasons (I could spend 20 page elaborating, but I'll save that
for later if needed):

1. that staff proposal changed the "registration AND use" (in bad
faith) to "registration OR use" -- a much different standard than the
UDRP (i.e. the issue of "AND" vs. "OR")

2. the use of "OR" elsewhere in the proposal

3. making arbitration *mandatory* would be a major departure from the
UDRP. Recall, the grand bargain of the UDRP meant that either party
could opt for the national courts, making the UDRP essentially
optional.  It would be unacceptable to most registrants (including
myself). Further to this point, the Universal Declaration of Human
Rights says, in Article 8 "Everyone has the right to an effective
remedy by the competent national tribunals for acts violating the
fundamental rights granted him by the constitution or by law." Note
the word "national tribunals". Even further to this point, a mandatory
arbitration violates consumer laws in various jurisdictions, including
my own (Ontario, Canada). See, for instance:

http://www.sse.gov.on.ca/mcs/en/pages/memberships_arbitration_clauses.aspx

"Ontario’s Consumer Protection Act voids any clause that attempts to
make you waive your legal rights or promise not to go to court. Unless
your contract pre-dates July 30, 2005, such contract clauses are
legally ineffective. Consumers are not bound by them, even if they
have accepted the agreement. The new law does not prevent you from
agreeing to use arbitration after a dispute has arisen. Sometimes
arbitration works quite well. But you cannot be forced to use
arbitration instead of the courts or instead of complaining to the
ministry. The choice is yours."

4. One should not be creating new law. In particular, one must
consider how IGOs would enforce their rights in the offline world if
the UDRP never existed. Clearly, their recourse for enforcement would
be through the national courts of the alleged malfeasor/infringer.
They'd have no power whatsoever to compel a party to attend an
international tribunal, nor would that international tribunal have any
jurisdictional over the matter. This was a topic we discussed
previously (perhaps it was in a subgroup), namely questions we had for
the IGOs --- i.e. how are they enforcing their Article 6ter rights
offline, e.g. if a restaurants with the name "UNESCO" is opened up in
Toronto, Canada, how do they enforce their rights? So far, we have no
answer from the IGOs.

5. Examples have been shown of IGOs waiving any such immunity
concerns, and actually utilizing the UDRP already (raising the
question of whether there's a serious issue at stake). See my prior
posts at:

http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-December/000199.html
http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-December/000200.html
http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-December/000201.html

The World Bank example is obvious. The UNITAID one is more subtle --
it actually demonstrates a simple means for the IGOs to avoid the
immunity issue entirely, because the complaint was actually brought by
a **licensee** of Unitaid. The critical language is:

http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2012-1922

"In 2009, a Fiduciary Agreement was made between the World Health
Organization/Unitaid and the Complainant to file and hold in its own
name, for the benefit of Unitaid, the necessary applications for the
protection of the “Unitaid” name, according to the instructions and
under the control of World Health Organization/Unitaid.

In 2009, the Complainant thus registered, in its own name but for the
benefit of World Health Organization/Unitaid, UNITAID as a trademark
in numerous jurisdictions."

In my opinion, those two paragraphs alone provide a perfect solution
for IGOs. Indeed, we could conceivably put an end to this workgroup,
by simply pointing to the above as a roadmap for IGOs to follow, to
work within an unamended UDRP.

6. There are much better alternatives than that suggested by staff,
that are more tightly focused and preserve the rights of registrants.
In particular, I believe the following two have already been discussed
(perhaps in the subgroups, and not to to full list),

(a) (my own idea, which I spent a lot of time thinking about before
this working group even started) Allow the national government in the
jurisdiction in the jurisdiction of the REGISTRANT to have standing as
the complainant on behalf of an IGO. Since the national government is
the signatory of the treaty, it makes sense that any enforcement
should fall upon them. Suppose a Canadian registered UNESCO.tld.
UNESCO could complain to the Federal government of Canada, and the
Federal government of Canada could file the UDRP. The Federal
government of Canada would have no problems with mutual jurisdiction
and immunity, because obviously a national of Canada can sue the
Federal government of Canada in their own national courts!

(b) (I think was Paul Keating's suggestion) Limit the scope of an
IGO's potential liability from agreeing to the mutual jurisdiction to
that of the domain name itself. i.e. the purpose of IGO immunity is to
protect the IGO assets from being seized by 3rd parties. It's a
shield. If the IGOs provide a *limited waiver*, so that the only
downside for them involves the domain name itself (and thus no
incursion on their assets), then that should be sufficient. The court
action only takes place to block a transfer, so the domain name was
never in the IGO's possession (even if a UDRP decision favoured the
IGO).

(c) the example in point #5 is a superior roadmap to follow than
either (a) or (b), because it wouldn't require any amendment to the
UDRP

7. We haven't even begun to look at the costs/benefits.The Affirmation
of Commitments:

https://www.icann.org/resources/pages/affirmation-of-commitments-2009-09-30-en

warns us about the "group of participants that engage in ICANN's
processes to a greater extent than Internet users generally." I would
suggest that the IGOs fall into this category. The AoC tells us that
we should be weighing the positive and negative effects. That requires
data. Where is the IGO data on the extent of cybersquatting, etc? What
are their "costs" from any waiver of immunity, beyond simply academic
and theoretical considerations? What are the costs of using
alternatives like in point #5, or 6(a) or 6(b)?

I guess this is not as brief as I had hoped (but not yet 20 pages), so
I'll just summarize that it's great to be brainstorming, but hopefully
we'll not go down the dead-end of the rejected 2007 staff idea (which
really was not carefully thought out, in my opinion). Looking back, I
actually blogged about that 2007 report:

http://www.circleid.com/posts/710118_short_domain_names_igo_udrp

and others shared my concerns back then (and the proposal properly
went nowhere). As Esther Dyson says "Always make new mistakes!" :-)
There no need to recycle that old 2007 mistake.

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/




On Thu, Dec 11, 2014 at 11:07 PM, Mary Wong <mary.wong at icann.org> wrote:
> 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