[Gnso-igo-ingo-crp] Follow up questions for IGO small group on sovereign immunity

[Mary Wong]

Hello again everyone,

Attached is a revised version of the proposed note to the IGO small group,
in which most of the suggestions made by Paul and George (via email) and
Val (on the WG call yesterday) have been incorporated.As the Track-Changes
version now looks somewhat messy, I’ve attached also a clean version where
the changes and additions have been highlighted in yellow for your
convenient review. Please note generally that in the interests of brevity
we have removed the last question from the original draft on whether
removal of the Mutual Jurisdiction clause would amount to endorsing the
old model of absolute immunity as well as the original paragraph in the
first page that detailed the UDRP (since we thought this would not be
necessary given the extent of our interactions with the IGO already on the
topic).

There were a few suggestions made that we either did not incorporate, or
amended slightly, so I’d like to explain the reasons for our thinking on
those items. Please let us know if we got something wrong!

First, on prior expressions of the IGOs’ concern over agreement to Mutual
Jurisdiction - while not referring specifically to the UDRP or sovereign
immunity, the IGOs' communications with ICANN have generally included
references to IGOs as organizations created by treaties and subject to
international law (see, e.g., the December 2011 Open Letter from over two
dozen legal counsel from various IGOs:
https://www.icann.org/en/system/files/files/igo-counsels-to-beckstrom-et-al
-13dec11-en.pdf). More specifically, in the IGOs’ November 2013 response
to the ICANN Board’s New gTLD Program Committee (NGPC) regarding the
NGPC’s proposal for IGO protections, the IGO group explicitly stated that
the URS does not acknowledge the special status of IGOs, since submitting
to national jurisdiction runs counter to IGO immunities:
https://www.icann.org/en/system/files/correspondence/igo-coalition-to-gac-0
1nov13-en.pdf. As we have noted previously, sovereign immunity is a
generally recognized principle of public international law, and thus the
question of its application to IGOs is not so much whether it applies or
not, but rather the proper scope of its applicability where an IGO is
concerned.  

Secondly, on other aspects of immunity (e.g. enforcement immunity) - while
that is certainly a major issue in international law, our understanding is
that the conceptual difficulty here is the blanket agreement to submit to
jurisdiction when filing a complaint under the UDRP or URS. Because the
remedies in question for domain names are cancellation, transfer or (under
the URS) suspension, enforcement would be a question for the registrar or
the respondent and would not raise immunity issues for an IGO. We
therefore thought it would be clearer to limit the note and questions to
the jurisdictional issue under the UDRP and URS.

Thirdly, on the extent of litigation that IGOs have launched - we have
added to the note a specific question about whether IGOs have initiated
litigation against alleged trademark infringers and cybersquatters since
the adoption of the UDRP (noting that the two cases that George provided
predated the UDRP). We hope this is a more direct way of finding out the
extent of the problem, particularly as we are not certain that generating
a list of every court action that an IGO may have initiated (whether in
the US or elsewhere) would demonstrate the particular issue in respect of
domain names and the alleged problems with the UDRP and URS.

Fourthly, as to the danger of creating additional or new legal rights for
IGOs - that is an issue that this WG, the GNSO and the GAC has previously
recognized, including (as Paul noted) in the WIPO-2 Process over a decade
ago. Recently, the NGPC wrote to the GAC to seek GAC input on this
specific issue, citing our WG:
https://www.icann.org/en/system/files/correspondence/chalaby-to-schneider-2
2jan15-en.pdf. As such, we thought that the WG’s deliberations over this
overarching concern should take into account any new information we may
get from the GAC, especially since several governments had - during the
WIPO-2 Process - expressed reservations over the exact point.

Fifthly, on the suggestion for IGOs to provide examples of how different
nations have limited IGO immunities, the staff briefing note currently
contains a short list of a few such jurisdictions, which indicates a
certain similarity of treatment (in principle) across several countries.
As such, we thought it might be best for this particular note to focus on
those questions to which the WG currently does not have as much necessary
information.

Please accept my apologies if in this latest draft we have missed or
mischaracterized any suggestions, as we as staff wanted to get the revised
version out to everyone in good time before the weekend. We look forward
to continued discussion on the list regarding this topic. In the meantime,
staff will consolidate all the links and additional materials provided by
George and Paul, and upload them together with the results of our
continuing research to the WG wiki as soon as we can.

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, March 18, 2015 at 09:04
To: "gnso-igo-ingo-crp at icann.org" <gnso-igo-ingo-crp at icann.org>
Cc: Mary Wong <mary.wong at icann.org>
Subject: Re: [Gnso-igo-ingo-crp] Follow up questions for IGO small group
on sovereign immunity

>Paul made some excellent suggestions for additional questions.
>
>I would suggest, in the same vein as his section #2, asking the IGOs
>to elaborate on and quantify the extent of the alleged
>"cybersquatting" activity. Are we talking about 50 alleged infringing
>domain names? Are we talking about 50,000 alleged infringing domain
>names? How are they gathering those statistics, and monitoring the
>extent of the problem? To what extent is the cybersquatting taking
>place on gTLDs, as opposed to ccTLDs? Don't the IGOs face identical
>issues of 'standing' and exposure to 'legal jurisdiction' in ccTLD
>disputes?
>
>For instance, in the ADR rules of the EU:
>
>http://eu.adr.eu/html/en/adr/adr_rules/eu%20adr%20rules.pdf
>
>paragraph B.1.(b)(14) says (on page 9):
>
>"State that the Complainant will submit, with respect to any
>challenges to a decision in the ADR Proceeding revoking or
>transferring the domain name, to the jurisdiction of the courts in at
>least one specified Mutual Jurisdiction in accordance with Paragraph
>A1"
>
>For the DRS procedure of .uk domain names, it states in section
>3(c)(viii):
>
>http://www.nominet.org.uk/disputes/when-use-drs/policy-and-procedure/drs-p
>rocedure
>
>"state that the Complainant will submit to the exclusive jurisdiction
>of the English courts with respect to any legal proceedings seeking to
>reverse the effect of a Decision requiring the suspension,
>cancellation, transfer or other amendment to a Domain Name
>registration, and that the Complainant agrees that any such legal
>proceedings will be governed by English law;"
>
>
>If we go back to the Bank for International Settlements (BIS) UDRPs
>that I sent to the list yesterday, many of the domain names they won
>in the complaints were not renewed by BIS, and are currently available
>for registration. That might indicate that the problem has diminished
>over time (especially as mechanisms to monetize infringing domain
>names have decreased over the past 5 years, e.g. pay-per-click domain
>name parking, affiliate programs, etc.). Perhaps it would also be
>prudent to ask what other steps the IGOs take, in keeping with their
>duty to mitigate damages (e.g. do they make complaints to webhosting
>companies, do they file DMCA complaints for copyright infringement if
>alleged cybersquatters are also infringing on copyrighted material, do
>they make complaints to PPC providers like Google, do they make
>complaints to payment processors like PayPal, VISA, Mastercard, etc.)
>
>Sincerely,
>
>George
>
>On Wed, Mar 18, 2015 at 6:39 AM, Paul Keating <Paul at law.es> wrote:
>> Mary, please kindly include this in the file for the WG and circulate to
>> the extent this email does not reach all participants.
>>
>>
>>
>> I agree with George.
>>
>> The most striking thing about both the research report and the proposed
>> letter was that it used as foundational points, asserted "facts" that
>>were
>> not substantiated.  Examples:
>>
>> 1.      Those raised by George below.
>>
>> 2.      Statements that IGOs have complained about the current set up
>>with
>> Mutual Jurisdiction.  I have seen this phrase before but have never
>>seen a
>> listing of those NGOs and INGOs who have raised this issue.  Before
>> embarking on anything we should ask for those complaining parties to be
>> identified.  THEN we should compare that number and type with the
>>universe
>> of IGOs/NGOs to see if this is approaching a serious issue.
>>
>> 3.      Limitation of issues.  The issue is not merely jurisdictional
>>immunity
>> but also includes liability immunity.  In any action brought by a losing
>> respondent, the respondent (now the plaintiff) has the ability to claim
>> damages, including attorneys' fees and costs.
>>
>>         A.      Jurisdictional Immunity.  In those US courts having
>>dealt with this
>> issue (including parvi.org (see attached complaint, Default Motion and
>> Final Judgment).  The judgment resulted in a 100K for interference and
>>27K
>> for attorneys' fees and costs.  The City of Paris (though not an
>>NGO/INGO
>> has a long history of such behavior.
>>
>>         B.      Liability immunity.  RECOVERY of any judgment is
>>subject to specific
>> collection rules that vary by jurisdiction.  For example, in the US, the
>> FISA governs collection as well and requires an additional level of
>> service of the judgment so that the defendant (now judgment debtor) can
>> assert immunity claims as to itself or any specific assets.
>>
>>         C.      Tied to the above, we  have no real understanding of
>>how litigious the
>> NGOs/INGOs have been.  A search of the US litigation (via PACER) would
>>be
>> very time-consuming but doable by ICANN Staff.  This would obviously not
>> answer the issue as to non-US jurisdictions.  I thus believe that any
>> letter should request not only the identity of the complaining
>>NGOs/INGOs,
>> but also request that they provide a listing of any and all litigation
>>or
>> other quasi-judicial proceedings they have been involved in.  To the
>> extent ICANN staff, the ICANN legal dept. or the GAC is aware (or can
>>find
>> out) the answer should be given as to any other NGO/INGO
>> litigation/quasi-litigation activities as well.
>>
>> Without the above it is impossible to understand the real nature of the
>> asserted "problem".  Unless the problem is indeed prevalent, I would
>> suggest that any change is unwarranted given the potential of disruption
>> and cost of implementation (again remembering that the UDRP is based
>>upon
>> contract and ANY change requires modification of many contracts at many
>> levels (Registry?ICANN, Registry/Registrar and Registrar/Registrant).
>>
>>
>> 4.      The entire purpose of the UDRP was premised on the foundational
>>stone
>> that the UDRP was not intended to grant greater rights in the
>>cyber-world
>> than those which existed in the "real" world (Reference WIPO:  Final
>> Report of the WIPO Internet Domain Name Process - copy attached).  As a
>> result I see no reason to provide any particular participant in the UDRP
>> with any greater rights or privileges then they would have in the "real"
>> world.  In the real world, an NGO/INGO must pursue legal claims of
>> trademark infringement using the judicial process.  To do so they must
>> weigh the importance of asserting their "rights" against the risk that
>> such assertive behavior entails.
>>
>> Thus, the proposed letter IMHO requires substantial revision to include
>> these types of comments so that we are able to  obtain a clear picture
>>in
>> the form of any response and not merely a generalized statement of
>>desires
>> that are unsupported by any factual or legal basis.
>>
>>
>> Regards,
>>
>> Paul Keating
>>
>>
>> On 3/17/15 11:57 PM, "George Kirikos" <icann at leap.com> wrote:
>>
>>>There are more than simply 2 instances of IGOs bringing UDRPs. In
>>>particular, I managed to find that the Bank for International
>>>Settlements has five (5) other UDRPs that weren't referenced, namely:
>>>
>>>(1) bisettlement.com --
>>>http://www.wipo.int/amc/en/domains/decisions/html/2004/d2004-0571.html
>>>
>>>(2) bfisonline.net --
>>>http://www.wipo.int/amc/en/domains/decisions/html/2004/d2004-0575.html
>>>
>>>(3) bisonlinedept.com --
>>>http://www.wipo.int/amc/en/domains/decisions/html/2003/d2003-0987.html
>>>
>>>(4) bankforinternationalsettlement.com -
>>>http://www.wipo.int/amc/en/domains/decisions/html/2003/d2003-0986.html
>>>
>>>(5) bfis.net --
>>>http://www.wipo.int/amc/en/domains/decisions/html/2003/d2003-0984.html
>>>
>>>I also found another one that was brought, and then terminated, for
>>>"United States Fund for UNICEF", in relation to unicefonline.net/org:
>>>
>>>(6) http://www.udrpsearch.com/wipo/d2007-1920
>>>
>>>(both domains appear to have been transferred to the US Fund for UNICEF)
>>>
>>>Of course, there was also that UNITAID case we've discussed before,
>>>brought by the law firm as a proxy:
>>>
>>>(7) http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2012-1922
>>>
>>>involving unitaid.biz/com/info/net/org.
>>>
>>>Also, the United Nations World Food Programme brought a UDRP that was
>>>terminated:
>>>
>>>(8) http://www.udrpsearch.com/wipo/d2005-0099
>>>http://www.wipo.int/amc/en/domains/decisionsx/list.jsp?prefix=D&year=200
>>>5&
>>>seq_min=1&seq_max=199
>>>
>>>regarding wfpafrica.com, wfpasia.com, wfpenvironment.com, wfpnews.com
>>>worldfoodprogram.com, worldfoodprogrammes.com
>>>
>>>(seems some of those domains are now available!)
>>>
>>>Given the increase in the number of discovered cases, one might need
>>>to rethink the use of phrases like "limited instances" (first
>>>paragraph of page 2), or "rare decisions" (last paragraph of page 2).
>>>Given the small number of IGOs in relation to all potential
>>>complainants, it might turn out that they've filed a statistically
>>>proportionate number of cases, all things considered (which might
>>>inform the question as to whether they've actually been deterred from
>>>filing cases, as they suggest -- statistics might prove otherwise).
>>>
>>>As for the questions on the list, I think Question #5 isn't one where
>>>the IGOs can give an authoritative answer -- they're not the
>>>individuals being prejudiced. IGOs should should only be asked
>>>questions that are within their knowledge. Similarly #6 isn't
>>>something they would be able to answer -- it's really something for us
>>>to answer (like #5).
>>>
>>>One might expand on #4, in particular ask directly about IGOs
>>>initiating their own actions in national courts, whether they *ever*
>>>do that themselves -- we already know of at least 2 cases, as
>>>discussed previously:
>>>
>>>http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2015-March/000302.html
>>>
>>>They should give us more examples where they've brought cases (e.g. in
>>>other countries). I would be amazed if those were the only 2 cases
>>>ever brought (indeed, I'd be skeptical if they couldn't produce
>>>others). Why should IGOs be treated differently, if they've brought
>>>cases themselves before the courts?
>>>
>>>One might also ask in relation to Paul Keating's idea that if the
>>>nature of the mutual jurisdiction (waiver of immunity) was expressly
>>>made limited, i.e. circumscribed to apply *only* to the domain name
>>>under dispute for IGOs, and nothing else (i.e. not to attack the
>>>assets of the IGOs), whether that accommodates the concerns of the
>>>IGOs.
>>>
>>>For footnote #5, one might want to directly reference the UNITAID
>>>case, in case the IGOs aren't aware of that technique.
>>>
>>>Sincerely,
>>>
>>>George Kirikos
>>>416-588-0269
>>>http://www.leap.com/
>>>
>>>On Tue, Mar 17, 2015 at 2:04 PM, Mary Wong <mary.wong at icann.org> wrote:
>>>> Dear WG members,
>>>>
>>>> Please find attached a draft note addressed to the IGO small group
>>>>that
>>>>was
>>>> prepared by the WG co-chairs and staff, based on recent WG discussions
>>>>and
>>>> research done to date on the sovereign immunity issue. The co-chairs
>>>>propose
>>>> that following review and approval from the WG, they send these
>>>>questions
>>>> along with a cover note to the IGO small group, in the hope that the
>>>>IGO
>>>> representatives will continue to be responsive and helpful to ICANN¹s
>>>> efforts to work through the matter. The cover note will include the
>>>>WG¹s
>>>> thanks to the IGO small group for its January response, along with an
>>>>update
>>>> on the WG¹s current thinking on the ³standing² issue and Article 6ter
>>>>of the
>>>> Paris Convention.
>>>>
>>>> Please reply to the list via email with any comments you or your
>>>>groups
>>>>may
>>>> have on the document as soon as you can. For your information, you
>>>>will
>>>>see
>>>> from the draft that we have added another UDRP decision to the World
>>>>Bank
>>>> example that George provided earlier in our deliberations ­ this
>>>>second
>>>>case
>>>> concerns the Bank for International Settlements, which also is on the
>>>>GAC
>>>> list of IGOs dating from 2013. I attach also an updated version of the
>>>>staff
>>>> Briefing Note on sovereign immunity and IGOs that was circulated last
>>>>week ­
>>>> this update adds a reference to the Canadian statute that the Canadian
>>>> Supreme Court relies on in the NAFO case which George brought to the
>>>>WG¹s
>>>> attention last week.
>>>>
>>>> Finally, please note that the GNSO Council has been updated on the
>>>>WG¹s
>>>> progress during our recent face-to-face facilitated meeting in
>>>>Singapore,
>>>> and will take up at its meeting on Thursday the specific question of
>>>>whether
>>>> they agree with the WG¹s thinking that the list of IGOs in the WIPO
>>>>database
>>>> who requested Article 6ter protection should be the list upon which
>>>>the
>>>>WG¹s
>>>> recommendations (if any) will be based, especially for ³standing² and
>>>>in
>>>> principled preference to the original GAC list, which contains IGOs
>>>>selected
>>>> based on fulfillment of the .int eligibility criteria and which was
>>>>the
>>>>list
>>>> that our WG was chartered to discuss. We will provide the WG with a
>>>>further
>>>> update following the Council¹s deliberations on this point later this
>>>>week.
>>>>
>>>> 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
>>>_______________________________________________
>>>Gnso-igo-ingo-crp mailing list
>>>Gnso-igo-ingo-crp at icann.org
>>>https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp
>>

-------------- next part --------------
A non-text attachment was scrubbed...
Name: Follow Up to IGO Small Group - Revised Draft - CLEAN - 19 Mar 2015.docx
Type: application/vnd.openxmlformats-officedocument.wordprocessingml.document
Size: 31254 bytes
Desc: not available
URL: <http://mm.icann.org/pipermail/gnso-igo-ingo-crp/attachments/20150319/62e31fed/FollowUptoIGOSmallGroup-RevisedDraft-CLEAN-19Mar2015-0001.docx>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: Follow Up to IGO Small Group - Revised Draft - 19 Mar 2015.docx
Type: application/vnd.openxmlformats-officedocument.wordprocessingml.document
Size: 36145 bytes
Desc: not available
URL: <http://mm.icann.org/pipermail/gnso-igo-ingo-crp/attachments/20150319/62e31fed/FollowUptoIGOSmallGroup-RevisedDraft-19Mar2015-0001.docx>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: smime.p7s
Type: application/pkcs7-signature
Size: 5044 bytes
Desc: not available
URL: <http://mm.icann.org/pipermail/gnso-igo-ingo-crp/attachments/20150319/62e31fed/smime-0001.p7s>