[gnso-igo-wt] FOR DISCUSSION: Summary of Agreements & Options

[BECKHAM Brian]

Hi Paul,

I suppose we can discuss this in tomorrow’s meeting, but having given this some more thought over the weekend, a few more detailed reactions:

Mainly this seems destined to create more uncertainty than clarity:  one of the bedrock (legal) principles underpinning the success of the UDRP system (now with over 20 years and many tens of thousands of cases behind us) is predictability.  Casting this open to “anyone” who wishes to file a complaint goes against the expectations of not only the UDRP system, but of all of the participants in a case.


-        It means complainants and their counsel would be guessing if their claim would be entertained for lack of standing (or, as you have described it, the ultimate success on the merits) which is moreover complicated by the fact that the reason we are in this policy work track is that the IGOs the discussions are intended to account for have been so far able to rely on the Paris Convention in lieu of obtaining trademark registrations (a separate question would be what class(es) of services they would seek registration for if they were even required / minded to do so).


-        Panelists will have to untangle assertions of rights that are nowadays straightforward (while there are cases claiming unregistered or common law trademark rights, the overwhelming majority of cases are grounded in registered marks).


-        Respondents and their counsel would be put to the time and expense of defending a claim that under today’s standing jurisprudence would not be accommodated (the domain name being locked by the registrar while this plays out).


-        And finally providers would be expending resources managing cases that may have otherwise not been filed for lack of standing (to be clear, on your question, a provider would not reject a complaint “because, in their opinion, the trademark asserted is not confusingly similar to the domain name” but a trademark right must nonetheless be asserted as a compliance matter).

Not to mention that this approach would open the doors to a number of other rights holders that ultimately did not form part of the original UDRP (i.e., those discussed in the Second WIPO Process such as GIs or personal names).  While there are certainly advocates for expanding the scope of the UDRP along these very lines, doing so would introduce new classes of complainants for which criteria would have to be specified at a policy or at least at a jurisprudential level.

Ultimately, this brings us full circle to, as you say “IGOs either have trademark rights sufficient to prevail in a UDRP complaint, or they don’t.”  That standing questions is precisely one of the issues we are tasked with addressing.  As it stands, we have been working on the assumption that per your question, “they don’t” at least – as a general rule – in the sense of a registration certificate.

If on the other hand we made a small adjustment to your “anyone” proposition and say something like:  standing shall be accepted by virtue of the fact that an IGO or its Programs has been created by States through the instrument of a Treaty, and focus in on the bad faith issue (i.e., misrepresentation as an IGO that is intended to harm or defraud the public), that might be a different discussion, but I am not sure that is what you are suggesting.  So far attempts have been made to look at this specifically through the lens of 6ter recordations or the “GAC list” but these have yet to be fully discussed in our group, and I note there are currently no markups on the Google Doc on those points.

Just as a PS as far as the Google Doc itself goes, IGOs have been discussing this internally and have a few comments but have not yet been able to get these posted, so for the sake of clarity, that fact should not be taken as “agreement” to the full text of the Google Doc.

Best, and speak to you all tomorrow.

Brian


From: McGrady, Paul D. <PMcGrady at taftlaw.com>
Sent: Friday, March 12, 2021 2:15 PM
To: BECKHAM Brian <brian.beckham at wipo.int>; gnso-igo-wt at icann.org
Subject: RE: FOR DISCUSSION: Summary of Agreements & Options

Thanks Brian. Same answer:

That portion of the UDRP Policy is written to the domain name registrant, not the trademark holder and it states:

“a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and”

This portion of the Policy has to do with the mandatory effect of the UDRP procedure upon a domain name registrant.  It does not say that there is a standing requirement for a Complainant.  If the Complainant files a UDRP complaint and doesn’t have the requisite rights, the Complaint will fail, but there is no mechanism to deny access “standing” to the failure of the Complainant to have such rights.  Let’s game this out by way of example:

Respondent has registered the domain name < littleorphananniegoestothezoo.com> and is using it for payperclick ads promoting children’s books.  Complainant files a complaint asserting that it has trademark rights to the mark GOLDEN LAMP OF MAGICALNESS in International Class 1 for “putties and other paste fillers” and claims the domain name is identical or confusingly similar to their trademark and that the registrant has registered and is using the domain name in bad faith.  What happens?


·        Can the Respondent file a motion asking for the case to be dismissed because the Complainant lacks standing?  No.

·        Does the provider Case Manager bounce the complaint because, in their opinion, the trademark asserted is not confusingly similar to the domain name?  Also No.  That would make the Case Manager the Panelist, not the Case Manager.  Now, a very nice case manager may reach out to the Complainant (or their counsel) and ask if there is a typo – fair enough – but a unilateral decision to bounce the complaint?  No.

So, there is no barrier to access (standing) within the UDRP context.  Respectfully, the prior work on granting “Standing” appears to have created standing out of thin air and then attempted to grant it.  But it just isn’t a UDRP concept.  What is a UDRP concept is if the Complainant doesn’t have adequate trademark rights it can’t prevail (and other bad things might happen, e.g. a RDH finding, but again, that is a substantive decision on the merits of the case, not an issue of who can file).  The UDRP Rule is quite unambiguous: ““(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.”

IGOs either have trademark rights sufficient to prevail in a UDRP complaint, or they don’t.  That is up the Panelist to whom the case file is assigned.  But standing?  That is not a problem – anyone can file.  As suggested below, we should avoid conjuring up “standing” and then creating trademarkish rights to grant the conjured up “standing” - not only because standing isn’t a UDRP thing (everyone has it) but because ICANN is not a supranational trademark legislature that can create trademarkish rights as it sees fit.

Seems to me we should save a bunch of time by merely noting that (1) everyone has standing to file a complaint; and (2) Panelist decide whether or not trademark rights asserted by a complainant (IGO or otherwise), and bad faith registration and use by the Respondent, are sufficient for a complaint to succeed on the merits.  We can then move on to the primary issue here which is how do we balance the right for a losing Respondent to seek whatever rights to have their local court overturn a decision they don’t like vs. an IGO’s distaste for getting sued in places they don’t want to get sued.  I have some very straightforward thoughts on how to fix that as well, but one problem at a time.

Best,
Paul




From: gnso-igo-wt <gnso-igo-wt-bounces at icann.org<mailto:gnso-igo-wt-bounces at icann.org>> On Behalf Of BECKHAM Brian via gnso-igo-wt
Sent: Friday, March 12, 2021 2:01 AM
To: gnso-igo-wt at icann.org<mailto:gnso-igo-wt at icann.org>
Subject: Re: [gnso-igo-wt] FOR DISCUSSION: Summary of Agreements & Options

[EXTERNAL MESSAGE]
Hi Paul,

Thanks for the idea to keep us moving;  it makes for an interesting thought experiment.

But how would you square it with UDRP (not Rules) para 4(a)(i)?

Brian


From: gnso-igo-wt <gnso-igo-wt-bounces at icann.org<mailto:gnso-igo-wt-bounces at icann.org>> On Behalf Of McGrady, Paul D. via gnso-igo-wt
Sent: Friday, March 12, 2021 12:53 AM
To: Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>>; gnso-igo-wt at icann.org<mailto:gnso-igo-wt at icann.org>
Subject: Re: [gnso-igo-wt] FOR DISCUSSION: Summary of Agreements & Options

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.

Best,
Paul




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From: gnso-igo-wt <gnso-igo-wt-bounces at icann.org<mailto: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<mailto:gnso-igo-wt at icann.org>
Subject: [gnso-igo-wt] FOR DISCUSSION: Summary of Agreements & Options

[EXTERNAL MESSAGE]
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.

Best regards,
Steve, Berry & Mary



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