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

[Paul Keating]

A much more thorough reply than mine.  Thanks George.




On 12/12/14 12:06 PM, "George Kirikos" <icann at leap.com> wrote:

>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-2009-09-3
>0-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
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