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

Wed Jan 21 20:54:44 UTC 2015

Hello George and all,

As noted during the WG call today, WG members are kindly invited to
continue to provide their feedback on the ³thought experiment² draft text
that was circulated on 14 January, and again earlier today. This will
enable the group to continue its substantive deliberations on this mailing
list, in lieu of an agenda item on this topic at our meeting next week,
and should hopefully provide some good points to circle back to when we
meet face to face (including with our remote participants) in Singapore on
13 February.

Thanks to George and Paul (in a separate email also sent to this list) for
kicking off the discussion on this issue. FWIW here are a few staff notes
and comments to George¹s feedback, numbered according to his comments.

1. George¹s very helpful and detailed analysis for Sub-Group B was posted
to the WG wiki space upon receipt, and is available here:
https://community.icann.org/x/mxbxAg. Also, as noted in the Adobe chat
during the meeting, the GAC¹s criteria for including an IGO on their list,
supplied to ICANN in 2013, was that it be "(a) an international
organization established by a treaty and which possesses
international legal personality; or (b) an intergovernmental organization
having received a standing invitation to participate as observer in the
sessions and the work of the United Nations General Assembly.² (taken from
the letter enclosing the list, sent by the GAC Chair:
https://www.icann.org/en/system/files/correspondence/dryden-to-crocker-chal
aby-annex1-22mar13-en.pdf.)

WG members may wish to note that in this letter the GAC also suggests that
the list be reviewed prior to the delegation of any new gTLD in subsequent
rounds, or every three years, whichever first occurs. As Phil noted on the
call today, the WG will at some point need to discuss the differences
between those IGOs that may be protected under whatever mechanism the WG
recommends (should that be the case) and those listed by the GAC.

3. On the addition of the ³For avoidance of doubt² paragraph, the
intention was to address the scope of a UDRP claim and the question of
legitimate third party rights, rather than bad faith. In other words, it
would not be enough for an IGO to simply show that the domain name
complained of is identical or substantially similar to its name or
acronym. Rather - and matching the scope of Article 6ter protections - the
third party would not be permitted to register or use the domain name only
if this implies a connection between it and the IGO. The language here is
taken basically word for word from Article 6ter, and as George noted, may
need some further tweaking and change, but that was the basic idea.

We hope the above is helpful in clarifying some of the ongoing discussions
within the WG. 

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

-----Original Message-----
From: George Kirikos <icann at leap.com>
Date: Wednesday, January 21, 2015 at 09:45
To: "gnso-igo-ingo-crp at icann.org" <gnso-igo-ingo-crp at icann.org>
Subject: Re: [Gnso-igo-ingo-crp] Draft for discussion/comparison (if UDRP
is to be amended)

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