[Gnso-igo-ingo-crp] Draft for discussion/comparison (if UDRP is to be amended)

Wed Jan 21 16:33:26 UTC 2015

Thank you, as always, for your thoughtful contributions, Paul.

Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
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Twitter: @VlawDC

"Luck is the residue of design" -- Branch Rickey

From: gnso-igo-ingo-crp-bounces at icann.org [mailto:gnso-igo-ingo-crp-bounces at icann.org] On Behalf Of Paul at law.es ZIMBRA
Sent: Wednesday, January 21, 2015 11:35 AM
To: George Kirikos
Cc: gnso-igo-ingo-crp at icann.org
Subject: Re: [Gnso-igo-ingo-crp] Draft for discussion/comparison (if UDRP is to be amended)

For the reasons set out in my prior emails, I am NOT in favor of any amendment.

Any IGO name or acronym is already protected as a right and any claimant has both the Convention (and national law such as the Lanham Act).  This limits rights specifically.  As to acronyms the claimant is left to common law unless "registered" per the convention.  This is entirely consistent with the position of the U.S. government per the opinion that has already been shares.

All other issues (legitimate interest or bad faith) necessarily flow from the above.

Immunity is not appropriately the subject of an amendment.  The U.S. government's position is quite clear on this.  Holding, using and seeking protection for "trademark rights" is an inherently commercial (and certainly non-governmental) activity.  Established case law dating back 50 years or more clearly distinguishes between governmental and non-governmental activities, stating only that the former is consistent with immunity.  A clear example is a national airline.

I may not be able to participate today due to family commitments but ask that this email and its contents be made known to the group.

Sincerely

Paul Keating

Paul Keating

On 21 Jan 2015, at 3:45 pm, George Kirikos <icann at leap.com<mailto:icann at leap.com>> wrote:
With respect, this "thought experiment" is akin to my "Straw Poll"
earlier (which was deemed 'too early'), in that's jumping ahead to a
'solution', without first considering all the data, identifying
whether there's a real problem, etc.

That being said, here are my thoughts:

1. On October 28, 2014, in subgroup B I sent a detailed analysis
comparing the ICANN Reserved Names of IGOs list to the Article 6ter
database. Less than half (271 of 549) of the currently 'protected' IGO
reserved identifiers are even in the Article 6ter database! I'm not
sure if the spreadsheets were ever posted on the Wiki, but attached is
the analysis in HTML format (in the Subgroup, I also sent them in
Excel and OpenOffice formats). Thus, if we limit things to Article
6ter marks, a lot of existing reserved names lose protection (perhaps
rightly so).

2. The amendment for 4(a)(i) is not necessary, since the proposed
change is already consistent with common law marks that IGOs can
currently assert. Furthermore, the proposed language is awkward. I
would rearrange it (if forced to -- I don't approve of any change) as:

4(a)(i): your domain name is identical or confusingly similar to a
trademark or service mark in which the complainant has rights; or,
where the complainant is an international intergovernmental
organization whose name or abbreviation has been communicated, as
prescribed by Article 6ter of the Paris Convention for the Protection
of Industrial Property, to the countries constituting the Union to
which the Convention applies (including Members of the World Trade
Organization to whom the Convention applies in accordance with
Articles 1.3 and 2.1 of the Agreement on Trade-Related Aspects of
Intellectual Property Rights), your domain name is  identical or
confusingly similar to complainant's Article 6ter registered name or
abbreviation; and

(the slight change placed a semi-colon directly after "rights" as per
the existing UDRP language, and then added a fresh "or" directly
after, but then specific at the beginning the entities that the "or"
applied to, i.e. IGOs.

3. In the language that begins with "For the avoidance of doubt"
(below 4(a)(iii)), it seems illogical. By definition, the domain name
is going to be "confusingly similar" if it's an identical match, so to
that that "the domain name shall NOT be regarded as confusingly
similar " (i.e. 4(a)(i))", the first prong of the UDRP 3-part test,
doesn't make sense. Instead, I believe what the text is trying to say
is that the domain name was not registered or being used "in bad
faith" (the 3rd part of the 3-part test). So, the text would need to
be rewritten to clarify that part (i.e. it's not the first test --
it's the 2nd and/or 3rd parts of the test).

Furthermore, the language is dangerously unclear with its use of "use
or registration" .... "is not of such a nature". That can be
interpreted several ways, e.g. it might be interpreted to mean that an
IGO can pass the test if it shows just bad faith "use" OR
"registration", instead of both. In other words, it's not "avoiding
the doubt" enough!

Furthermore, this is *not* sufficient language to protect registrants.
For example, the domain name might not yet be in use at all -- e.g. it
might be under construction, not resolving, etc. Rather than saying
"is probably not of such a nature as to mislead the public as to the
existence of a connection.......", the "test" must be much stronger.
TO avoid the doubt, the IGO must prove that the registration AND the
use can only be of such a nature to actively impersonate the IGO in
question. I'm not sure that the language is "bulletproof" yet.

4. For the amendments under 3(b)(viii) (the draft says 3(b)(vii), but
it is actually below 3(b)(viii)), there is no requirement that the IGO
discuss how their Article 6ter names/abbreviations are used. This is
something that would need to be communicated in a complaint, to allow
the respondent to know who the IGO is, what they do, etc. Recall that
these IGOs are generally obscure. Respondent needs to have enough
information in the complaint to mount a defence. Indeed, IGOs should
be compelled to include the full Article 6ter filing in their
complaint (which includes the date of the registration), since those
generally won't appear in national trademark databases.

5. WIPO overview, draft 1.5. First, I would renumber it 1.12
(otherwise all the other UDRP element overviews would need to get
renumbered). Also, I would instead suggest that WIPO overview 1.7
*already* applies to IGOs (What needs to be shown for the complainant
to successfully assert common law or unregistered trademark rights)

http://www.wipo.int/amc/en/domains/search/overview2.0/#17

"Consensus view: The complainant must show that the name has become a
distinctive identifier associated with the complainant or its goods or
services. "

If we wanted to be consistent, better language might be:

1.12: Can a complainant show UDRP-relevant rights in a name or
abbreviation that has been communicated under Article 6ter of the
Paris Convention for the Protection of Industrial Property?

(notice I've changed the several words slightly, including 'Does' to
"Can"). The "discussion section can be changed in a similar manner).

In conclusion, I don't think any changes are needed to the UDRP itself
(perhaps at best just the "WIPO Overview", i.e. improving education).
We need to step back and consider *why* we'd want to change the UDRP
-- is this just a 'political' thing, to be "seen to be doing
something", just for the sake of appeasing governments? If that's the
case, I don't think that's very proper for a technical policymaking
body. Instead, we should feel pressured to "do something" for "show",
but instead should be able to conclude that no changes whatsoever are
required, if that's where the *facts* lead us.

Sincerely,

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

On Wed, Jan 14, 2015 at 4:35 PM, Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>> wrote:

Dear WG members,

As a thought experiment, the WG co-chairs would like to offer the attached
draft document for review and discussion by the WG. Since we have been
looking at the 2007 draft text for a possible alternative dispute resolution
procedure as a potential starting point for such a process (should the WG
eventually decide on such a path), the co-chairs thought it would be helpful
also for the WG to consider what might be a possible starting point for
amending the UDRP (should that be the preferred option).

The WG may wish to discuss this draft along with its further comments on the
2007 draft text.

Thanks and 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<mailto:mary.wong at icann.org>

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