[Gnso-igo-ingo-crp] FOR REVIEW: Updated Draft Final Report

George Kirikos icann at leap.com
Sat May 19 21:09:46 UTC 2018


Hi folks,

Here are my notes/thoughts on the draft document that was sent on May 11th:

1. Page 5, Recommendation 2 & Page 14, Recommendation 2:

"An IGO May consider this to be an option where it does not have
**REGISTERED** trademark rights in its name or acronym (as applicable)
but believes it has certain unregistered **TRADEMARK** rights for
which is might adduce….."

(a) add the word "registered" before "trademark rights"

i.e. I thought the whole point of our change in stance was to allow
for Article 6ter to be used as evidence of (but not necessarily proof
of) unregistered (or common law) *trademark* rights? i.e. we changed
the 'proof' standard (i.e. sufficiency) to "evidence for", but also
emphasized that it's not just 'legal rights' but *trademark rights* to
be consistent with the UDRP/URS standard that it they're procedures
for trademark infringement.

I believe this was that Paul Keating raised on the May 10, 2018 call.

[Personally, I was fine with the original recommendation (given that
ultimately there are 2 other prongs in the 3-prong UDRP test, and that
the first prong is usually easily met, and rarely determinative of the
outcome!), but I thought that was what we had agreed to change it to,
reflecting public comments, e.g. from the IPC and others.]

2. Page 18 (immunity) (and perhaps also around page 31).

Needs to be a paragraph or two to talk about how immunity is a defense
to an action brought against an IGO, and doesn't exist when an IGO
initiates a dispute (i.e. is the complainant). There should be no
expectation of an IGO to have immunity for the overall dispute
(looking at the dispute before any UDRP/URS or court action takes
place), since it's the one initiating the dispute. If the UDRP/URS
were properly designed, then the IGO should gain no "new legal rights"
from the filing of a UDRP/URS, compared to the situation where they
simply filed a court action instead.

Had the UDRP/URS not existed or not been used, the IGO would be the
complainant in a court action, and thus would have no ability to
assert immunity since it is not the defendant. However, a court
actions seeking de novo review, brought by a losing domain name
registrant after a UDRP/URS causes the IGO to be the defendant (rather
than the complainant). This role reversal between complainants and
defendants causes a quirk of process to exist, whereby the IGO (now
the defendant) might attempt to assert immunity as a defense (despite
the existence of the mutual jurisdiction clause), an argument that
could not have been made had the role reversal not taken place.

In other words, the Swaine report isn't looking at the overall context
of the IGO being the initiator of the dispute. He's taken things as
they are, i.e. accepting the role reversal as it exists (without
questioning these unintended side effects) in terms of allowing
immunity to be asserted, when that's not really what was ever intended
holistically when the UDRP/URS were created -- they weren't intended
to give such advantages to any party, create new legal rights, or
interfere with existing rights. Although, we know now that these
procedural quirks do exist, both in this context with immunity, and
the UK "no cause of action" scenario e.g. in Yoyo.email.

Several other sections might need to change, for example if Option #1
is the consensus. i.e. it would no longer be correct on page 20 to
say:

" Nevertheless, the Working Group has strived to find a balanced
outcome that respects and preserves an IGO’s ability to assert of
jurisdictional immunity as well as a registrant’s right to appropriate
and available legal recourse after initially losing a UDRP or URS
determination."

since we'd be recommending that the UDRP/URS determination be set
aside to put both parties back in the same positions they were in
before the UDRP/URS disputes were initiated, to ensure that the rights
to court access were not interfered with.

3. Page 37: "The Working Group also noted that the IGO Small Group
Proposal continued to be based on the assumption that IGOs are able to
claim broad jurisdictional immunity in multiple national courts, which
the Working Group concluded is at substantial odds with the expert
opinion provided by Professor Swaine."

It's deeper than this. It's not just based on Swaine's report, which
is only looking at it from the point of view of an appeal to the
courts after a UDRP/URS, but rather whether an IGO is entitled to
*any* immunity when it is the initiator of a dispute. Clearly it's
never entitled to immunity when it initiates the dispute. [same
analysis in the table on the 3rd column, e.g. on page 38]

4. Page 45/46: Option #3 description is inconsistent. It says early on
that "…with such action limited to deciding the ownership of the
domain name." But, then later on it says "The parties shall have the
option to mutually agree to limit the original judicial proceedings to
solely determining the ownership of the domain name." So, in the first
text, it's saying that there's no option -- the action is necessarily
limited to only deciding the  ownership of the domain name. In the
second text, it's saying that's an option.

5. Page 46: Description of Option #4 only mentions the UDRP. It should
have obviously mentioned both UDRP and URS.

6. Page 46/47: Description of Option #6: presumably it to was intended
to refer to both UDRP & URS, not just the UDRP.

7. Footnote 65 (page 47); recordings of the Section 3.7 appeal are
referenced, but the recordings between the co-chairs and Heather/Susan
have yet to be posted -- they should be posted too, for completeness
(these were requested before).

8. Generally, I would suggest "explanatory text" to understand the
basis for each of the 6 options on pages 45-46. The previous analysis
(i.e. used in the October 2017 anonymous poll, as well as in advance
of the March 2018 office hours) was perhaps non-neutral.

Given I may myself not be considered "neutral", I would suggest
possible text be agreed upon by the group. e.g. [not final text, just
possible starting point!]

a) Option #1 -- attempts to put the parties back in the same legal
positions they were before the UDRP/URS was initiated, thus IGO as
complainant can proceed to the courts without the UDRP/URS having
caused any interference with anyone's legal rights

b) Option #2 -- attempts to be a compromise between Option #1 and
Option #3 based on the creation date of the domain, allowing for an
empirical analysis/review of Option #3 by design

c) Option #3 -- [minefield here!!] -- attempts to use arbitration
mechanism if de novo review on the merits via the courts is not
available to the parties (because the IGO successfully asserted
immunity)

d) Option #4 -- recognizes that the underlying root cause of the
"quirk of process" involving sucessful assertion of immunity by IGOs
in a court action is identical to that of the UK "no cause of action"
issue in Yoyo.email, i.e. due to the role reversal of complainants and
defendants; an overall solution to that root cause of lack of access
to the courts for registrants in both situations is best handled in
the RPM PDP

e) Option #5 -- attempts to make a small technical fix to treat "in
rem" and "in personam" actions in the same manner by registrars
(regarding locking of domain names). Since "in rem" actions would
avoid the immunity question entirely, for those jurisdictions where in
rem actions can be brought, this technical fix would reduce the number
of scenarios in which the "quirk of process" is encountered. The
technical fix doesn't create anything "new" -- it merely instructs
registrars to lock the domain name for an "in rem" case in the same
manner as they would an "in personam" case --- something the creators
of the UDRP/URS inadvertently fumbled.

f) Option #6 -- attempts to add mandatory mediation step prior to
UDRP/URS dispute determination, given that 30% of disputes are
resolved in mediation empirically (via Nominet's DRS experience). This
has the effect of uniformly reducing the risk of encountering the
"quirk of process" by 30%. Otherwise, if the IGO successfully asserts
immunity in a court action brought by the registrant, revert to Option
#1. Also, permits registrants the option of mandatory arbitration
against the IGOs, which IGOs cannot refuse (if IGOs refuse, set aside
the UDRP/URS determination).

Sincerely,

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


On Fri, May 11, 2018 at 4:01 PM, Mary Wong <mary.wong at icann.org> wrote:
> Dear all,
>
>
>
> Please find attached a slightly-updated version of the Draft Final Report,
> in both Word and PDF formats. As mentioned on the Working Group call
> yesterday, staff has not redlined it against the Initial Report that was
> published in January 2017 for public comment, since the result made for a
> visually complicated document due to our having moved text around on top of
> new edits. What you will see, however, is a redline of the original Draft
> Final Report that we had circulated on Wednesday, with the redlined text
> being updates and new suggestions that we added following the call
> yesterday.
>
>
>
> In particular, please take note that:
>
> To facilitate your review of the substantive changes and new text added to
> the Initial Report, we have highlighted these in yellow as best we could;
> We have attempted to suggest modified text for Recommendation #2, to try to
> address the group comments from yesterday about accurately reflecting the
> group’s agreement (amending its previous initial recommendation) on Article
> 6ter of the Paris Convention; and
> We will need to update certain portions (e.g. the results of the formal
> consensus call, any final agreed text on IGO immunity, membership and
> attendance, Annexes etc.) before the final version is submitted to the GNSO
> Council at the end of our consensus process.
>
>
>
> As mentioned on the call, staff will greatly appreciate it if you can focus
> your review on the substance of the report, especially as regards the
> recommendations, rather than on revising text because you prefer a different
> wording (and not because the text is inaccurate). In particular, we hope
> that you will not feel it necessary to edit the text that was retained from
> the Initial Report (save where you believe the actual substance needs to be
> deleted or revised). Similarly, while we will of course be glad to have
> typos and grammatical errors pointed out, please do not feel that you need
> to do so as we will scrub the text prior to Council submission. We will also
> be grateful if, as far as possible, you can suggest edits and revisions via
> comment balloons (or via point-by-point email response) rather than a direct
> redline – to allow us to keep better track of multiple suggestions and
> versions.
>
>
>
> At present, we do not have information as to when the next Working Group
> call will take place. Given the need for Petter and Susan to consult with
> the GNSO Council leadership, however, and to allow time for you to review
> the report, staff would like to suggest that you send back your comments no
> later than Monday 21 May.
>
>
>
> Thanks and cheers
>
> Mary & Steve
>
>
>
> On 5/11/18, 15:18, "George Kirikos" <icann at leap.com> wrote:
>
>     P.S. If it turns out you do end up editing Wednesday's draft report
>
>     before sending out the Word format, please also send out the PDF
>
>     version (i.e. the PDF version can be referenced by page number, for
>
>     those submitting suggested text/edits, and is more easily printed out
>
>     in a standard format for everyone).
>
>
>
>     e.g. page XXX, para N, change "blah" to "blah blah blah"
>
>
>
>     With Word, the page numbers might vary from person to person when
> printing.
>
>
>
>     Sincerely,
>
>
>
>     George
>
>
>
>     On Fri, May 11, 2018 at 3:00 PM, George Kirikos <icann at leap.com> wrote:
>
>     > Hi Mary,
>
>     >
>
>     > I don't think anyone was really looking for an updated version of the
>
>     > document from Wednesday, to reflect things said on Thursday. I think
>
>     > folks just wanted the Word version of Wednesdays document, which
>
>     > should be easy to provide (i.e. the master document is presumably in
>
>     > Word format, so it's just a matter of sending that which was used to
>
>     > generate Wednesday's PDF).
>
>     >
>
>     > So, it's just as easy as: "Reply All", "attach", "click the document
>
>     > that already exists from Wednesday", and "Send" (depending on your
>
>     > email client).
>
>     >
>
>     > Have a nice weekend and Mother's Day, folks!
>
>     >
>
>     > Sincerely,
>
>     >
>
>     > George Kirikos
>
>     > 416-588-0269
>
>     >
> https://urldefense.proofpoint.com/v2/url?u=http-3A__www.leap.com_&d=DwIFaQ&c=FmY1u3PJp6wrcrwll3mSVzgfkbPSS6sJms7xcl4I5cM&r=DJ69mAe-idEhpAMF1nu2x6c2w3xl7xb5cjS_7sB4h6Y&m=CdNmKXARLo7QtADxTLdhcz2ibX6WUsM-EErRuOOqpjw&s=K7fp2edkDFO2c9Y11st2Y72BZ0SmQP-ZEQD2D5jMCHE&e=
>
>     >
>
>     >
>
>     >
>
>     >
>
>     >
>
>     >
>
>     >
>
>     >
>
>     > On Fri, May 11, 2018 at 2:42 PM, Mary Wong <mary.wong at icann.org>
> wrote:
>
>     >> Thank you Paul – yes, staff intends to send out the Word version of
> the
>
>     >> draft Final Report today. We are doing our best to get that out to
> everyone
>
>     >> within the next hour or so, as we have had to support other meetings
> and
>
>     >> deadlines so we have not been able to fully incorporate feedback from
> the
>
>     >> call yesterday (especially in relation to the 6ter recommendation).
>
>     >>
>
>     >>
>
>     >>
>
>     >> Best regards,
>
>     >>
>
>     >> Mary & Steve
>
>     >>
>
>     >>
>
>     >>
>
>     >> From: Paul Keating <Paul at law.es>
>
>     >> Date: Friday, May 11, 2018 at 14:12
>
>     >> To: Mary Wong <mary.wong at icann.org>, "gnso-igo-ingo-crp at icann.org"
>
>     >> <gnso-igo-ingo-crp at icann.org>
>
>     >> Subject: [Ext] IGO WG - Draft Report in Word Format
>
>     >>
>
>     >>
>
>     >>
>
>     >> Mary,
>
>     >>
>
>     >>
>
>     >>
>
>     >> I had thought you agreed to forward the current Draft in WORD format.
> I
>
>     >> have not yet received it.  Please send it asap given the need to
> quietly
>
>     >> provide feedback.
>
>     >>
>
>     >>
>
>     >>
>
>     >> Thanks,
>
>     >>
>
>     >>
>
>     >>
>
>     >>
>
>     >>
>
>     >> Paul Keating
>
>     >>
>
>     >>
>
>     >> _______________________________________________
>
>     >> Gnso-igo-ingo-crp mailing list
>
>     >> Gnso-igo-ingo-crp at icann.org
>
>     >> https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp
>
>


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