[Gnso-igo-ingo-crp] CLARIFICATIONS (Re: Proposed agenda for the WG call on 12 June 2018 at 16:00 UTC)

Tue Jun 12 04:43:23 UTC 2018

Mary:

On Mon, Jun 11, 2018 at 11:12 PM, Mary Wong <mary.wong at icann.org> wrote:
> The updated document that Steve circulated most recently with the proposed
> agenda reflected what, as of the close of the consensus call and when Petter

It's not the "close of the consensus call' -- you called it a
consensus call, but that didn't make it one. If it had been a
consensus call, then you'd have the final designations already! You're
still struggling to set the *initial* designations. We're *now* at the
start of a true "consensus call".

> the text – this iterative consensus process is intended to elicit that type
> of clarification and error correction.

Right, the iterative consensus process *is* intended to elicit that
type of clarification. That's why we're *now* in the real "Consensus
Call" as per the working group guidelines. If the consensus call was
"closed" as you said above, then we'd have reached the final
designations already.

> Secondly, the GNSO procedures do not require that the Final Report be
> circulated along with the opening of the consensus call. While typically
> this has been done in some other PDPs, the circumstances of this Working
> Group mean that the last version of the draft Final Report that was
> circulated could not include final proposed language on some of the options,
> as these needed clarifying through the consensus process that is now taking
> place. Staff notes that members were invited to voice concerns and raise
> suggestions about substantive text of the draft Final Report that had been
> circulated, and a deadline of 21 May suggested for this purpose. Staff has
> noted the few suggestions received and will be updating the report further
> with the final results of this consensus call.

Disagree. At some point we have to agree on final text of a final
report. How are we going to do that, when we're arguing over the
recommendations (a part of the final report), but haven't seen all the
rest? There's quite limited text on Recommendation 5 -- there needs to
be much more added.

> Finally, the updated consensus level designations document includes a few
> changes to the text of Recommendations #1 & #2. For Recommendation #1, we
> have added the word “substantive” to the phrase “No [substantive] changes to
> the UDRP and URS are to be made … “, reflecting a suggestion made by Zak to
> clarify that procedural changes may still be permitted if these become
> necessary. For Recommendation #2, we suggested a change (as noted by George)
> but did not go on to suggest that the sentence in addition be amended to say
> that where an IGO “believes it has unregistered trademark or service mark
> rights” as also suggested by George. We suggested an amendment to read only
> “believes it has unregistered rights” instead, as we believe that UDRP
> jurisprudence permits certain forms of unregistered rights that are not
> trademark-based (e.g. via passing off or unfair competition) to ground
> standing to file a complaint.

I think Recommendation #1 will need to be redrafted. I think we have
full consensus on the "idea", but somehow we lost it in the wording.
Take a look at the email I sent earlier to Phil:

https://mm.icann.org/pipermail/gnso-igo-ingo-crp/2018-June/001278.html

Not looking at the current text or past, here's what I believe we've agreed to.

(a) for INGOs, no specific new process created
(b) for IGOs, no specific new process created
(c) for INGOs (i.e. we finished the INGO stuff long ago), no changes
whatsover to the UDRP and URS to be made

I think the current sentence is trying to do too much, and not
capturing these 3 main ideas.

[optional (d) ??!!??  for IGOs, no [substantive] changes to the
UDRP/URS are to be made ***** [this might not even be necessary, or
could be taken out; depending on the outcome of Recommendation #5]

We've gone over the text so many times before, we need to review it
with fresh eyes, to make sure everything's being properly captured
(i.e. when we're reading it casually, we're perhaps glossing over it,
as we thought we understood it already)

> For Recommendation #2, we suggested a change (as noted by George)
> but did not go on to suggest that the sentence in addition be amended to say
> that where an IGO “believes it has unregistered trademark or service mark
> rights” as also suggested by George. We suggested an amendment to read only
> “believes it has unregistered rights” instead, as we believe that UDRP
> jurisprudence permits certain forms of unregistered rights that are not
> trademark-based (e.g. via passing off or unfair competition) to ground
> standing to file a complaint.

"passing off" is  still based on trademark rights.

https://en.wikipedia.org/wiki/Passing_off

"In common law countries such as England, Australia and New Zealand,
passing off is a common law tort which can be used to enforce
unregistered trade mark rights."

But "unfair competition" is broader:

http://legalteamusa.net/tacticalip/2012/11/29/unfair-competition-how-does-it-relate-to-trademark-infringement/

"So, where does trademark infringement fit in the picture? Trademark
infringement is a form of unfair competition. The law of trademarks is
a subcategory of the broader arena of unfair competition; therefore,
trademark infringement actions fall within the umbrella of unfair
competition. "

So, "trademark infringement" (what the UDRP is all about) is a SUBSET
of unfair competition. If you included "unfair competition" in this
PDP as a grounds for "standing", then you'd be granting brand new
disputes to enter the UDRP/URS arena that are unrelated to trademark
infringement.

So, in other words, all trademark infringement is unfair competition.
But not all unfair competition is trademark infringement.

[i.e. subset: alls cats animals, but not all animals are cats]

But, the UDRP and URS are just for trademark and service mark issues.
With the way (as of today) it's been worded, it's opening up a can of
worms, that some other kinds of brand new unregistered rights
(unrelated to trademark and service marks) will be referenced in the
future by IGOs, greatly expanding the kinds of disputes brought for
the UDRP/URS.

e.g. let's suppose the complainant is OECD, and they claim "unfair
competition" to someone using EXAMPLE.COM. The word "EXAMPLE" has no
connection whatsoever with the mark "OECD". But, suppose there's some
other kind of right that OECD tries to assert to get "standing", other
than trademark rights, to go after misuse of EXAMPLE.COM (which might
be spamming, or doing some other kind of abuse like spamming or
phishing that has 'passing off' or is 'unfair' based on content, not
the domain name) -- then Staff would be saying "UDRP can be used for
that" ---- I say "NO WAY".  I can't support it -- we need to be very
precise (and as Petter said, just match the language of the UDRP/URS,
and not refer ambiguously to "unregistered rights" -- they have to be
"unregistered TRADEMARK OR SERVICE MARK rights".

> Staff would also like to take this opportunity also to reiterate that where
> we have raised questions or provided information about specific issues, we
> have done so in our role as policy staff facilitating and supporting GNSO
> Working Groups, managing Working Group processes, and providing subject
> matter expertise where needed or appropriate. We hope that the Working Group
> has found this assistance helpful.

Disagree, for reasons already stated. Providing facts is one thing.
But, interjecting stuff like (and this is but one example)

https://community.icann.org/display/gnsoicrpmpdp/2018-05-25+IGO-INGO+Access+to+Curative+Rights+Protection+Mechanisms+Working+Group

https://community.icann.org/download/attachments/84222087/For%20Discussion%20on%2025%20May%202018%20WG%20call.pdf?version=1&modificationDate=1527255096000&api=v2

"Staff continues to have concerns with this option, as it will mean
that resolving a procedural question (immunity from jurisdiction) can
automatically reverse a substantive panel finding, where the court has
not had (and will not have) the opportunity to hear the case on its
merits. This will reverse the current situation where, if a court
refuses to hear the case, the original UDRP/URS decision stands."

that crosses the line into advocacy, in my view. How is that any
different from "concerns" of those who were advocating against it,
which wasn't new opinion?

[And to balance, Staff didn't show concern that a procedural tactic
(raising immunity) can prevent the hearing of a dispute on its merits
(the de novo appeal). And furthermore, it's not unusual for procedural
questions reverse substantive panel findings (of a lower court)! e.g.
a lower court hears a case, rules on the merits,  but then an appeals
court tosses out the lower court ruling based ona a "procedural" issue
(e.g. I gave was the R v Jordan Supreme Court of Canada case,
https://en.wikipedia.org/wiki/R_v_Jordan_(2016) , where it took too
long for the accused to get to trial; similarly, if a lower court
hears a case, but then an appeals court rules that the lower court
misapplied statute of limitations or some other procedural question,
it can toss a lower court).

We (supporters of Option #1 in Rec 5) actually *WANT* to reverse the
"current situation", as that's where the rights of the registrants to
due process is actually being negatively affected. Not just in this
case, but in the Yoyo.email cause of action situation --
http://www.circleid.com/posts/20180103_the_udrp_and_judicial_review/ ;
we knowingly want to fix these.]

Sincerely,

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