[gnso-igo-wt] A few thoughts on how close we really are

McGrady, Paul D. PMcGrady at taftlaw.com
Fri Apr 30 10:36:33 UTC 2021

PS: I should add that these thoughts are my own at this point and not an IPC position.  Given the short timeframes between calls, I have not had an opportunity to socialize these ideas with IPC Leadership our Membership.

From: gnso-igo-wt <gnso-igo-wt-bounces at icann.org> On Behalf Of McGrady, Paul D. via gnso-igo-wt
Sent: Friday, April 30, 2021 5:31 AM
To: gnso-igo-wt at icann.org
Subject: [gnso-igo-wt] A few thoughts on how close we really are

Hi All,

As promised, below are a few thoughts on how close I think we really are to a solution.  I propose that solution below and I look forward to discussing it with all of you.

What I think IGO’s Are Asking For

What I think the Council has told us not to do

Where I think I and others at this point

How I think all the ingredients are in place to meet in the middle and all it would require is a new footnote in the UDRP

Amend the UDRP to no longer require a trademark right to prevail (this goes beyond the initial concept of “standing” to file)

No major amendments to the UDRP

This is major surgery to the UDRP and opens the door to all kinds of other “rights” that could be used to take away domain names from registrants.  The UDRP has always been about trademarks.  This is too far.

Resolve misunderstandings about trademark rights.  Specifically:

A misunderstanding that in order to have “use in commerce” to unregistered trademark rights, the entity itself must be commercial in nature (many non-commercial entities have registered and unregistered trademarks, e.g. churches, the U.S. Army)

Conflating “owning a trademark” with “owning a trademark registration.” The UDRP does not require owning a trademark registration to prevail, only an evident trademark (registered or unregistered)

Make being on 6ter or GAC list sufficient not only to access the UDRP (standing) but to prevail substantively.

Concerns over the evidentiary standard to prevail on unregistered trademark rights.

No major amendments to the UDRP

This is major surgery to the UDRP and opens the door to all kinds of other “rights” that could be used to take away domain names from registrants.  The UDRP has always been about trademarks.  This is too far.

GAC list especially unappealing because it is subject to change with no meaningful checks and balances (unlike getting on 6ter which is a rigorous process)

Instead of using 6ter to circumvent the UDRP’s trademark requirements (major surgery), consider dropping a footnote in the Section 4.a.(i) of the UDRP informing panelists that:

Being on 6ter could be used to lower (but not eliminate) the evidentiary standard of showing unregistered trademark rights.  For example, under a lower standard, 6ter and this link (https://www.wipo.int/amc/en/events/workshops/2019/20yrs-udrp/index.html) could be sufficient to evidence WIPO has unregistered trademark rights in conducting conferences since at least 2019.

Complainant need not be a commercial entity nor use the name or acronym on 6ter in for-profit ventures in order to have sufficient trademark rights to prevail (panelist already know this, of course, but for comfort of those raising concerns, it might help).

Would prefer a new mechanism separate from the UDRP (an IgoDRP)

No separate mechanisms from the UDRP

Not opposed to this, in principal, but subject to Council extending scope and keeping in mind concerns about unmoored “rights” being used to take away domain names from registrants who have good faith reasons to register them (i.e. criticism, unrelated commercial uses, e.g. WHO v. WHO (the band)

This controversial idea becomes unnecessary if the concepts above in this column are adopted.

Might be willing to make the above changes limited to situations in which the registrant is clearly pretending to be the IGO in order to perpetrate some sort of financial fraud

Spirit of Council direction seems to be narrow changes, so this particular element seems within that spirit

Very interested in using this narrowing rule as a means to provide greater flexibility on all of the other issues in this Work Track (e.g. immunity, appeals, etc.)

Not necessary if the ideas in this column above are adopted.

If for some reason the good news found in this column is not acceptable to IGOs, keep this concept alive as a means to try to find a resolution with different elements.


Taft /

Paul D. McGrady / Partner
Taft Stettinius & Hollister LLP
111 E. Wacker Drive, Suite 2800
Chicago, Illinois 60601-3713
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