[Gnso-igo-ingo-crp] sovereign immunity

[Dorrain, Kristine]

My only reply/follow up is to this remark made by Paul:
Note that to protect as against physhing, etc, trademarks are not
required.  Such actions are tantamount to fraud claims.

--->And the UDRP doesn't protect ANYONE against phishing if there is not trademark.  IGOs are not unique in that regard.

-----Original Message-----
From: gnso-igo-ingo-crp-bounces at icann.org [mailto:gnso-igo-ingo-crp-bounces at icann.org] On Behalf Of Paul Keating
Sent: Monday, December 15, 2014 6:56 AM
To: George Kirikos; Mary Wong
Cc: gnso-igo-ingo-crp at icann.org
Subject: [Gnso-igo-ingo-crp] sovereign immunity

I wanted to add some further resources to the discussion on Sovereign
Immunity.

IMHO, I see no escape for sovereigns in the context of domain name
disputes and even less when those disputes center around trademarks.

	Signing the RA would imply a waiver at least under the laws governing the
RA agreement (assuming the US).
	The UDRP is not mandatory for Complainants.  They need not pursue a UDRP
claim.  However, if they do:
		The incorporation of the UDRP requires that to participate, the
Complainant MUST select a Mutual  Jurisdiction for litigation purposes.
		The RA incorporates the UDRP which provides the losing Respondent with
the right to litigate in the selected Mutual Jurisdiction.

	As to trademark issues in general, they are by definition commercial -
most, if not all jurisdictions require commercial use to even obtain
trademark protection.

	Note that to protect as against physhing, etc, trademarks are not
required.  Such actions are tantamount to fraud claims.

My conclusion is that if IGOs have a concern about SI, they should have
registrations held by a commercial entity with limited liability (e.g. As
States do with national Airlines), or simply refrain from using the UDRP
as an enforcement mechanism.



Background: In the US, the relevant section of law is 28 U.S. Code § 1605
- (General exceptions to the jurisdictional immunity of a foreign state)
which in relevant part states:


(a) A foreign state shall not be immune from the jurisdiction of courts of
the United States or of the States in any case―(1) in which the foreign
state has waived its immunity either explicitly or by implication,
notwithstanding any withdrawal of the waiver which the foreign state may
purport to effect except in accordance with the terms of the waiver;
(2) in which the action is based upon a commercial activity carried on in
the United States by the foreign state; or upon an act performed in the
United States in connection with a commercial activity of the foreign
state elsewhere; or upon an act outside the territory of the United States
in connection with a commercial activity of the foreign state elsewhere
and that act causes a direct effect in the United States;
(3) in which rights in property taken in violation of international law
are in issue and that property or any property exchanged for such property
is present in the United States in connection with a commercial activity
carried on in the United States by the foreign state; or that property or
any property exchanged for such property is owned or operated by an agency
or instrumentality of the foreign state and that agency or instrumentality
is engaged in a commercial activity in the United States;
(4) in which rights in property in the United States acquired by
succession or gift or rights in immovable property situated in the United
States are in issue;
(5) not otherwise encompassed in paragraph (2) above, in which money
damages are sought against a foreign state for personal injury or death,
or damage to or loss of property, occurring in the United States and
caused by the tortious act or omission of that foreign state or of any
official or employee of that foreign state while acting within the scope
of his office or employment; except this paragraph shall not apply to―(A)
any claim based upon the exercise or performance or the failure to
exercise or perform a discretionary function regardless of whether the
discretion be abused, or
(B) any claim arising out of malicious prosecution, abuse of process,
libel, slander, misrepresentation, deceit, or interference with contract
rights; or

(6) in which the action is brought, either to enforce an agreement made by
the foreign state with or for the benefit of a private party to submit to
arbitration all or any differences which have arisen or which may arise
between the parties with respect to a defined legal relationship, whether
contractual or not, concerning a subject matter capable of settlement by
arbitration under the laws of the United States, or to confirm an award
made pursuant to such an agreement to arbitrate, if (A) the arbitration
takes place or is intended to take place in the United States,
(B) the agreement or award is or may be governed by a treaty or other
international agreement in force for the United States calling for the
recognition and enforcement of arbitral awards,
(C) the underlying claim, save for the agreement to arbitrate, could have
been brought in a United States court under this section or section 1607
<http://www.law.cornell.edu/uscode/text/28/1607>, or (D) paragraph (1) of
this subsection is otherwise applicable.  SOURCE:
http://www.law.cornell.edu/uscode/text/28/1605).


In terms of case law in the US, we have the following examples:



                    Phoenix Consulting, Inc., v. Republic of Angola, No.
99-7032 (DC Cir. 2000)
http://www.cadc.uscourts.gov/internet/opinions.nsf/80FD57CDDEC9054485256F18
0065AF40/$file/99-7032a.txt

  (executed a written sales contract
containing a choice of law provision subjecting the contract to
the jurisdiction and laws of the United States--which, accord-
ing to the legislative history of the FSIA, would by implica-
tion have waived Angola's immunity from suit.  See H.R. Rep.
No. 94-1487, at 18 (1976), reprinted in 1976 U.S.C.C.A.N.
6604, 6616-17.)


	

 

PERMANENT MISSION OF INDIA TO THE UNITED NATIONS et al. v. CITY OF NEW
YORK, No. 06-134 (C2nd Cir. 2007)
http://caselaw.lp.findlaw.com/scripts/getcase.pl?court=US&vol=000&invol=06-
134


FSIA's related purposes. First, Congress intended the FSIA to adopt the
restrictive theory of sovereign immunity, which recognizes immunity "with
regard to sovereign or public acts (jure imperii) of a state, but not ...
private acts (jure gestionis)." Alfred Dunhill of London, Inc. v. Republic
of Cuba, 425 U. S. 682, 711
<http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?navby=case&court=US&vol=4
25&invol=682&pageno=711>. Property ownership is not an inherently
sovereign function.




Alfred Dunhill of London, Inc. v. Republic of Cuba, 425 U. S. 682, 711
<http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?navby=case&court=US&vol=4
25&invol=682&pageno=711>.


Distinguishing between the public and governmental acts of sovereign
states on the one hand and their private and commercial acts on the other
is not a novel approach. As the Court stated through Mr. Chief Justice
Marshall long ago in Bank of the United States v. Planters' Bank of
Georgia, 9 Wheat. 904, 907 (1824):

"It is, we think, a sound principle, that when a government becomes a
partner in any trading company, it divests itself, so far as concerns the
transactions of that company, of its sovereign character, and takes that
of a private citizen. Instead of communicating to the company its
privileges and its prerogatives, it descends to a level with those with
 
[425 U.S. 682, 696]
whom it associates itself, and takes the character which belongs to its
associates, and to the business which is to be transacted."

Cf. Sloan Shipyards v. United States Fleet Corp., 258 U.S. 549, 567
<http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=us&vol=258&invol=54
9#567>-568 (1922). In this same tradition, South Carolina v. United
States, 199 U.S. 437
<http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=us&vol=199&invol=43
7>(1905), drew a line for purposes of tax immunity between the
historically recognized governmental functions of a State and businesses
engaged in by a State of the kind which theretofore had been pursued by
private enterprise. Similarly, in Ohio v. Helvering, 292 U.S. 360, 369
<http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=us&vol=292&invol=36
0#369>(1934), the Court said: "If a state chooses to go into the business
of buying and selling commodities, its right to do so may be conceded so
far as the Federal Constitution is concerned; but the exercise of the
right is not the performance of a governmental function . . . . When a
state enters the market place seeking customers it divests itself of its
quasi sovereignty pro tanto, and takes on the character of a trader . . .
." It is thus a familiar concept that "there is a constitutional line
between the State as government and the State as trader . . . ." New York
v. United States, 326 U.S. 572, 579
<http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?navby=case&court=us&vol=3
26&invol=572#579>(1946). See also Parden v. Terminal R. Co., 377 U.S. 184,
189  
<http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?navby=case&court=us&vol=3
77&invol=184#189>-190 (1964); California v. Taylor, 353 U.S. 553, 564
<http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?navby=case&court=us&vol=3
53&invol=553#564>(1957); United States v. California, 297 U.S. 175, 183
<http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=us&vol=297&invol=17
5#183>(1936).It is the position of the United States, stated in an amicus
brief filed by the Solicitor General, that such a line should be drawn in
defining the outer limits of the act of state concept and that
repudiations by a foreign sovereign of its commercial debts should not be
considered to be acts of state beyond legal question in our courts.
Attached to the brief of the United States and to this opinion as Appendix
1 is the letter of November 26, 1975, in which the Department of State,
speaking through its Legal Adviser agrees with the brief filed by the
Solicitor General and, more specifically, declares that [425 U.S. 682,
697]   "we do not believe that the Dunhill case raises an act of state
question because the case involves an act which is commercial, 11
<http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?navby=case&court=US&vol=4
25&invol=682&pageno=711#f11>and not public, in nature." 12
<http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?navby=case&court=US&vol=4
25&invol=682&pageno=711#f12>



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

>
>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
>_______________________________________________
>Gnso-igo-ingo-crp mailing list
>Gnso-igo-ingo-crp at icann.org
>https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp


_______________________________________________
Gnso-igo-ingo-crp mailing list
Gnso-igo-ingo-crp at icann.org
https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp