[Gnso-igo-ingo-crp] Issues raised by Small discussion group concerning IGO and Red Cross identifiers

Fri Apr 28 01:10:15 UTC 2017

Hi folks,

During today's call, reference was made to the Small discussion group
concerning IGO and Red Cross identifiers, whose mailing list archives
can be visited via:

https://mm.icann.org/mailman/listinfo/discussion-igo-rc
http://mm.icann.org/pipermail/discussion-igo-rc/

Our own Phil Corwin is on that mailing list, and doing an excellent
job in my opinion of representing our work to date.

I've been going through the archives, and have some comments/thoughts below:

1. in the post at:
http://mm.icann.org/pipermail/discussion-igo-rc/2017-March/000116.html
the OECD rep made bold and overbroad assertions about the nature of
IGO protections in national legislation, stating:

"Canada's legislation in this regard extends beyond simple refusal to
register a conflicting trademark: §9(1) of the Trade-marks Act states
that "No person shall adopt in connection with a business, as a
trade-mark or otherwise, any mark..."

That's a highly misleading statement/snippet, perhaps assuming that no
one would actually look up the full text of the Canadian legislation.
I did. It's at:

http://laws-lois.justice.gc.ca/eng/acts/t-13/
http://laws-lois.justice.gc.ca/eng/acts/t-13/page-2.html#h-3

and it makes clear via explicit language that there are excepted uses:

9(2) Excepted uses

(2) Nothing in this section prevents the adoption, use or registration
as a trade-mark or otherwise, in connection with a business, of any
mark
.....
(ii) an armorial bearing, flag, emblem or abbreviation mentioned in
paragraph (1)(i.3), *****unless the use of the mark is likely to
mislead the public as to a connection between the user and the
organization.*****

(emphasis added)

And section 9(1)(i.3) was (on the same page) referencing IGOs and Article 6ter:

"(i.3) any armorial bearing, flag or other emblem, or the name or any
abbreviation of the name, of an international intergovernmental
organization, if the armorial bearing, flag, emblem, name or
abbreviation is on a list communicated under article 6ter of the
Convention or pursuant to the obligations under the Agreement on
Trade-related Aspects of Intellectual Property Rights set out in Annex
1C to the WTO Agreement stemming from that article, and the Registrar
gives public notice of the communication;"

So, it's clear that that the "Excepted uses" in Canada law recognizes
coexistence explicitly, mirroring the language of Article 6ter section
1(c) which made the recognition of coexistence via exceptions for:

"when the use or registration referred to in subparagraph (a), above,
is not of such a nature as to suggest to the public that a connection
exists between the organization concerned and the armorial bearings,
flags, emblems, abbreviations, and names, or if such use or
registration is probably not of such a nature as to mislead the public
as to the existence of a connection between the user and the
organization."

and which is reflected in our own group's recommendations (which the
IGOs did not like, as they seem to ignore section 1(c) of Article 6ter
repeatedly).

So, I hope this is brought to the attention of the "Small discussion
group", to ensure that they're not making incorrect assessments of the
nature of the IGO protections based on misleading statements from the
IGOs.

2. In the post at:

http://mm.icann.org/pipermail/discussion-igo-rc/2017-April/000132.html

where, as we discussed today during the call, Bruce Tonkin proposed
asking for external legal advice regard relevant national laws in
relation to IGO protection, "before being able to design a new dispute
resolution process." I am confident that at least in Canada and the
USA, that no such national laws limit the due process rights of those
accused of misusing the IGO marks --- the accused would still "get to
have their day in court."

In the past, we discussed the possibility of allowing representatives
of national authorities to bring the UDRP/URS actions (instead of the
IGOs themselves), as a way forward. Perhaps this should be revisited,
to handle the immunity issue once and for all. National authorities
would obviously face no question of immunity before their own courts
(except perhaps those in totalitarian regimes where due process
doesn't exist). If a Canadian entity is accused of misuse of an IGO by
a Canadian national authority in a UDRP/URS, a decision could be
appealed by either side to the relevant Canadian courts, leaving the
IGO out of the process and shielded from the immunity issue.

Bruce Tonkin might be sympathetic to that possibility, when he
mentioned in a later post at:

http://mm.icann.org/pipermail/discussion-igo-rc/2017-April/000147.html

"a Government on their behalf"

can act to protect IGOs via the laws of their jurisdictions. He also wrote:

" I am assuming that it is in the "public interest" for an IGO or
Government to take some action to stop the mis-use - just trying to be
clear "how" that would be done."

If, in the public interest, we explicitly allow governments or
national authorities to bring the UDRP/URS, as "agents" of the IGO,
this would appear to solve many issues. We already issued policy
guidance about "assignees, licensees and agents", so perhaps we could
be more explicit in our report about permitting national authorities
to be the agents of the IGOs, as part of our "workaround"?? [Of
course, the national authorities don't have to use the UDRP/URS at
all, they could just go directly to their courts using existing
judicial mechanisms.]

Any ICANN-developed process *needs* to ensure that full due process
for domain name registrants (including via access to the courts) is
not eliminated, otherwise ICANN would be making up new law, beyond
what exists in national laws.

3. The rep from WIPO stated at:
http://mm.icann.org/pipermail/discussion-igo-rc/2017-April/000134.html

"Standing for IGOs which need not be expressly grounded in trademark
law as such, as IGOs are created by governments under international
law and are in an objectively different category of rights holders."

which is an odd statement, given that the OECD rep previously pointed
explicitly at Canada's Trademark Act! While other nation's laws
differ, we should not be creating new DRPs for every possible event of
fraud or misuse of the DNS --- that's what the national courts are
there for.

When Barclays plead guilty of manipulating FX rates:

http://www.circleid.com/posts/20150520_should_barclays_lose_the_barclays_top_level_domain/

the national authorities didn't seek "relief" for that disgusting and
illegal behaviour via the UDRP or some other DRP created by ICANN, or
argue that ICANN should create a new DRP for FX manipulation. There
has been talk about creating a "Copyright" version of the UDRP, for
example, or other DRPs. ICANN should not be wasting limited volunteer
resources and time via mission creep, trying to replace or supercede
the national laws of 200+ members. At least with the UDRP/URS, there
was a strong "lowest common denominator" amongst those national
trademark laws, which are reflected in the policies, and the policies
directly permit court action at any time, either before, during or
after a panel decision. It's clear that the IGOs want to eliminate
those due process protections of the courts, by compelling
arbitration, by revisiting issues that have been looked at for nearly
20 years (and repeatedly rejected by the community).

4. As I've noted in the past (and noted in my comments on our draft report)

https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/msg00004.html

IGOs seem to misunderstand their choices. As I wrote:

"Note that the above roadmap is in addition to all the other legal and non-legal
options that an IGO has, including:

- sending cease and desist letters
- filing WHOIS accuracy complaints (most criminals use false WHOIS)
- contacting registrars when there is abusive/illegal conduct
- contacting payment processors (Paypal, Visa, Mastercard, etc.) in the event
of financial fraud
- contacting webhosting companies to take down illegal content
- pursuing court action as a first option
- asking law enforcement to pursue criminal behaviour"

The entire work of that "small discussion group" seems to want to
reinvent the wheel, and replace all existing law in 200+ countries
with poorly thought out ICANN mechanisms that eliminate due process
for registrants.

5. One of the ICANN board members stated at
http://mm.icann.org/pipermail/discussion-igo-rc/2017-April/000139.html
that

"I agree, excellent idea, but selection of the expert will be key. The
GNSO had asked for a legal opinion before, but it was a US expert
whose conception of international law was not necessarily shared by
the Europeans!"

Not only is this an unfair assessment of Professor Swaine's work, it
seems to suggest that IGOs can "massage" the process and predetermine
the outcome through selection of an "expert" who will parrot their
incorrect views. This is alarming.

While he seemed to backtrack a bit in a followup post at:

http://mm.icann.org/pipermail/discussion-igo-rc/2017-April/000142.html

it still seems that there are issues of gaming the outcome via
selection of a "sympathetic expert". We saw that in the new gTLD
process itself, when ICANN commissioned dubious external "economic
reports" by the Compass Group in order to support a predetermined
outcome desired by the ICANN Board.

In conclusion, I think this demonstrates why having a "parallel" group
is a bad idea, because it's trying to redo our comprehensive work, and
has fewer eyes on it compared to this formal PDP. It makes little
sense to me that IGOs have ample time to participate in that mailing
list, yet had no time to participate in our PDP as members. I think
that highlights the "forum shopping" argument, that IGOs are looking
for sympathetic forums (of which binding arbitration is an example) to
gain advantages of an uneven playing field.

Other members of this PDP working group might want to take some time
to review those mailing list archives (took me a couple of hours,
although I didn't review any audio or transcripts or their Wiki), to
look for other factual errors and issues that might not have been
caught by that group.

Sincerely,

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