[gnso-igo-wt] FOR DISCUSSION: Summary of Agreements & Options
McGrady, Paul D.
PMcGrady at taftlaw.com
Thu Mar 11 23:52:41 UTC 2021
Thanks Mary. Hi All,
I would like to propose something radical when it comes to “standing.” Let us consider whether or not “standing” is a red herring in the UDRP context. There is nothing in the UDRP or the UDRP rules that I could find that requires any right, trademark or otherwise, in order to have standing to file a complaint. In fact, the UDRP Rules state the opposite:
“(a) Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN.”
Of course, if the complaining party has no relevant trademark rights, it will not prevail in the case, but that goes to the issue of substantive merit rather than standing, which is a threshold issue regarding access to the mechanism. Notably, there is no dismissal motion practice for lack of standing. True, if a party files a UDRP complaint with no rights, the Respondent might get a Panel to issue a finding of Reverse Domain Name Hijacking, but that, again, is an issue of substantive merit not access to the process. True, while panelists make reference to the UDRP (especially this section: (i) that the domain name is registered by the respondent and is identical or confusingly similar to a trademark or service mark in which the complainant has rights) and claim that this is the provision that grants “standing” to complainants, that provision, again, goes directly to the merits and not to standing at all.
So, here is the radical suggestion: let’s consider whether or not there are trademark-based standing requirements to bring a UDRP complaint or only substantive trademark based requirements for the complainant to prevail and to not be declared a reverse domain name hijacker. If there are, in fact, no standing requirements, we can dispense with the first half of our work and move on the jurisdictional questions. I realize this won’t create vague trademarkish rights for IGOs through an arbitrary “standing” document/list/stretch-of-6ter, but we shouldn’t be in the business of creating trademark rights for complainants if they don’t otherwise have any. Instead, we can say, as the UDRP Rules already say “Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN” and move on. If an IGO files a complaint, but can’t show trademark rights, common law, registered, or otherwise, they won’t prevail. If they can show those rights, and meet the other elements of the UDRP, then they will prevail. Fair enough.
PS: happy to be wrong about where standing requirements are enshrined in the UDRP policy or rules. While it may be tempting to say they are here “(viii) Specify the trademark(s) or service mark(s) on which the complaint is based and, for each mark, describe the goods or services, if any, with which the mark is used” keep in mind that it goes, again, to substance not access. No one has ever been bounced out at the Staff review for having inadequate trademark rights. Only panelists do that.
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From: gnso-igo-wt <gnso-igo-wt-bounces at icann.org> On Behalf Of Mary Wong via gnso-igo-wt
Sent: Thursday, March 11, 2021 4:03 PM
To: gnso-igo-wt at icann.org
Subject: [gnso-igo-wt] FOR DISCUSSION: Summary of Agreements & Options
Dear IGO Work Track members,
The staff’s action item from our last meeting was to prepare a document summarizing the Work Track agreements to date on the issues under discussion and laying out the options suggested to date for further Work Track deliberation. Please find attached the Summary and Options document for your review.
TO MAKE COMMENTS ON THE EXISTING OPTIONS OR TO PROPOSE ADDITIONAL SUGGESTIONS:
* The preferred way – as it will allow everyone to see your comments and respond in the same document – is to add your comments and suggestions directly into the Google Doc version of the document: https://docs.google.com/document/d/1BxGr2f1d5670Zgcr42a7grU-moa254la-_NdqA0EsN4/edit?usp=sharing. We ask that you comment using your name (or otherwise making it clear what group or organization you are commenting on behalf of), to ensure transparency and so that we can be sure that only Work Track members are providing input.
* The alternative option – in case you do not have access to Google Docs, for instance – is to send your comments in Track Changes format to staff using the attached Word version. Please note that if you use this option: (i) it is very likely that your input may be delayed, as staff will need time to input your feedback into the Google Doc; and (ii) in the interests of time, we will likely only be able to add your input if it is sent in Track Changes format.
* We strongly recommend that you comment directly in the Google Doc if at all possible.
Thank you all. We look forward to supporting your continued discussions.
Steve, Berry & Mary
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