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

[George Kirikos]

To really look at Recommendation #1, I went "back to basics" and
looked at the initial public report (as published for public comment),
as the starting point. Guess what? It was messed up even back then.

https://community.icann.org/display/gnsoicrpmpdp/Draft+Initial+Report+-+including+work+on+specific+sections+and+recommendations

Bottom of page 7 of initial public report (as published for public comment).

"The Charter that was approved by the GNSO Council tasked the WG with
examining the following questions: “whether to amend the UDRP and URS
to allow access to and use of these mechanisms by IGOs and INGOs and,
if so in what respects or whether a separate, narrowlytailored dispute
resolution procedure at the second level modeled on the UDRP and URS
that takes into account the particular needs and specific circumstances of
IGOs and INGOs should be developed.” The WG’s preliminary answers to
these questions are no4 , although the WG also identifies and suggests
ways in which IGOs can have standing to access the protections of the
UDRP and URS without registering trademarks in their names and
acronyms, and can substantially insulate themselves from
jurisdictional immunity concerns. Reasons for these conclusions, and
specific recommendations pertaining to specific questions arising
within the scope of its Charter, are described below. Essentially, the
WG concluded that, for IGOs, the most prudent and advisable approach
would be to not recommend any changes to the UDRP or URS at this time,
given:


So, we had (in our explanation) intended to address the topic of
"whether a separate,
narrowly tailored dispute resolution procedure at the second level
modeled on the UDRP and URS that
takes into account the particular needs and specific circumstances"
should be developed for IGOs, and the answer to that is NO.

But, somehow we skipped actually putting that into Recommendation #1 back then!
(somehow it only mentioned INGOs, because we were trying to conflate
multiple ideas.)

This is why we need more time, because we even messed up way back
then. There should have been a "Recommendation 1A" back then,
something like:

"Recommendation #1A: For IGOs, the WG recommends that no changes to
the UDRP and URS be made, and no specific new process be created."

(notice I've moved "For IGOs" to the beginning, for absolute clarity").

Recommendation #1 should have been more like:

Recommendation #1 (rewritten): For INGOs (including the Red Cross
movement and the International Olympic Committee, the WG recommends
that no changes to the UDRP and URS be made, and no specific new
process be created. To the extent that the Policy
Guidance document referred to elsewhere in this set of recommendations
is compiled, the WG recommends that this clarification as regards
INGOs be included in that document.

That would have been the right way to do things.

Even now, in the most recent (May 2018) draft we looked at:

https://community.icann.org/display/gnsoicrpmpdp/2018-05-10+IGO-INGO+Access+to+Curative+Rights+Protection+Mechanisms+Working+Group

The same issues exist on Recommendation #1 (see the bottom of page 9
where we say the answers to these questions are "no", so we do have
the conclusion, but didn't put it into the recommendation.

The older document (from January 2017) even had important language
that appears to have disappeared in the May 2018 version. See
Recommendation 3 which included the text back then of:

"The WG does not recommend any specific changes to the substantive
grounds under the UDRP or URS upon which a complainant may file and
succeed on a claim against a respondent (e.g. as listed in Section
4(a)(i) – (iii) of the UDRP)."

That old language now has disappeared, thinking (perhaps) that it was
captured in our current Recommendation #1? But, it's not actually
quite captured.

PDP members supposedly "reviewed all this", but I'm even finding these
now (when staff didn't produce a redline version, because of extensive
changes supposedly, some of these changes got completely missed, as I
bet nobody went back and did a word-by-word comparison to see what
might have gotten lost).

Have I convinced folks we need to go through things carefully, and
need more time?

Sincerely,

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




On Tue, Jun 12, 2018 at 12:43 AM, George Kirikos <icann at leap.com> wrote:
> 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/