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

Fri Apr 28 06:00:41 UTC 2017

George

Well done. I am amazed at your dedication although I often honestly wonder where you get the time. 

Thank you for your comments tinier contributions. 

Sincerely,
Paul Keating, Esq.

> On Apr 28, 2017, at 3:10 AM, George Kirikos <icann at leap.com> wrote:
> 
> 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/
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