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

BECKHAM Brian brian.beckham at wipo.int
Mon Mar 15 14:53:45 UTC 2021


Thanks Susan,

It was precisely a concern about postponing the inevitable that I was trying to get at in my email.  Alas it seems we are stuck in something of a loop here (for the "most won't" reason you state).

As per my earlier email, I do think that whether now or later, we will need to address this.  I am mindful this could mean going back to the Council who has, for reasons that escape me given the recognition of serious issues with the prior WG (including a co-chair stepping down on the eve of the final report and the most active participant having been subsequently banned from participation in ICANN WGs (unless he agreed to certain conditions)), tied our hands on the Charter.

For this, I posed the idea whether we could make a small adjustment to Paul's "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.

For the event we discuss this down the road, my question was when and how we might also focus in on the bad faith issue (i.e., misrepresentation as an IGO by a registrant that is intended to harm or defraud the public), including as to the "and" question and its applicability (i.e., not just for new registrations).

For now, I would be curious Paul's idea on the jurisdictional question.

Related to that, I have in the meantime gone back and looked at the Minority Statement of Phil Corwin from the prior WG which I understand some here in this WG may feel has merit.  See page 78 ref to Option 3 at:  https://gnso.icann.org/sites/default/files/file/field-file-attach/igo-ingo-crp-access-final-17jul18-en_0.pdf

Brian

From: gnso-igo-wt <gnso-igo-wt-bounces at icann.org> On Behalf Of Anthony, Susan via gnso-igo-wt
Sent: Monday, March 15, 2021 2:46 PM
To: McGrady, Paul D. <PMcGrady at taftlaw.com>; Chris Disspain <cd.dnscapital at gmail.com>; gnso-igo-wt at icann.org
Subject: Re: [gnso-igo-wt] FOR DISCUSSION: Summary of Agreements & Options

Paul's suggestion that "anyone can file" gets around the question of standing merely postpones the inevitable.  At some point, the panelist will have to decide "why are you here."  If the IGO has a trademark, fine.  Most won't.  So the GNSO Council Rec. #2 gives the panelist the ability to use 6ter as a basis to decide "why the IGO is here."  (6ter does not generate a trademark right.  See, e.g., https://www.wipo.int/article6ter/en/)  The recommendation in effect amends the UDRP, which we cannot do - at least at this time (and preferably not later, at least on this basis).

But I appreciate that we need to move on because, at least at this time, it appears we cannot get off this dime.  Perhaps we should turn our efforts to Rec. 5.



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: Monday, March 15, 2021 8:15 AM
To: Chris Disspain <cd.dnscapital at gmail.com<mailto:cd.dnscapital at gmail.com>>; 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 Chris,

If by standing we mean "access to the UDRP", as I have mentioned, I think it is a non-issue since there are no standing requirements to file, only substantive trademark rights to prevail.  If we want to change the definition of standing from a concept of access to mean, instead, that a Complainant has sufficient trademark rights to prevail, then (b) as it stands now is already a modification of the UDRP but at a Panelist's discretion.  Tweaking (b) further to indicate that 6ter creates substantive trademark rights sufficient to prevail is a modification of the UDRP and is creating non-existent trademark rights (what I have been referring to as "trademarkish rights."  In my mind, a dispute mechanism that no longer requires actual trademark rights to prevail is no longer the UDRP.

As for Rec. 5, I agree that is what I thought this WT would be about, not about tweaking Rec 2 to create new, special, trademarkish rights.  I think we should abandon that effort and focus on Rec 5's jurisdictional questions.

Best,
Paul



From: Chris Disspain <cd.dnscapital at gmail.com<mailto:cd.dnscapital at gmail.com>>
Sent: Monday, March 15, 2021 5:46 AM
To: gnso-igo-wt at icann.org<mailto:gnso-igo-wt at icann.org>
Cc: BECKHAM Brian <brian.beckham at wipo.int<mailto:brian.beckham at wipo.int>>; McGrady, Paul D. <PMcGrady at taftlaw.com<mailto:PMcGrady at taftlaw.com>>
Subject: Re: [gnso-igo-wt] FOR DISCUSSION: Summary of Agreements & Options

[EXTERNAL MESSAGE]
Greetings All,

I look forward to our discussion today during which we can, perhaps, hash out and clarify the below discussion.

I wonder if perhaps we are being 'side-tracked' by the concept of 'getting in to the funnel'? If we are then I apologise since, no-doubt, I have lead the way down that track.

I think we are discussing whether we can 'tweak' any of the PDP recommendations to help make any suggested changes to recommendation 5  meaningful. We have focused on Recommendation 2:

'The Working Group notes that an IGO may seek to demonstrate that it has the requisite standing to file a complaint under the UDRP or URS by showing that it has complied with the requisite communication and notification procedure in accordance with Article 6ter of the Paris Convention for the Protection of Industrial Property1
An IGO may consider this to be an option where it does not have a registered trademark or service mark in its name and/or acronym but believes it has certain unregistered trademark or service mark rights for which it must adduce factual evidence to show that it nevertheless has substantive legal rights in the name and/or acronym in question. In this regard, the Working Group recommends that specific Policy Guidance on this topic be issued by ICANN to clarify the following points:
(a) this alternative mechanism for standing is not needed in a situation where an IGO already holds trademark or service mark rights in its name and/or acronym, as the IGO would in such a case proceed in the same way as a non- IGO trademark owner;
(b) whether or not compliance with Article 6ter will be considered determinative of standing is a decision to be made by the UDRP or URS panelist(s) based on the facts of each case; and
(c) the possibility that an IGO may seek to rely on its compliance with Article 6ter to demonstrate standing should not modify or affect any of the existing grounds which UDRP and/or URS panelists have previously found sufficient for IGO standing (e.g. based on statutes and treaties).'

Where I thought we were heading was a discussion on whether we could tweak this recommendation so that, in essence, (b) was altered to say that compliance with 6ter was determinative of standing and whether that tweak was sufficient to bring IGOs to the table to meaningfully discuss what should happen about the jurisdictional immunity point and challenges to a decision, both of which make up the crux of the recommendation 5 conundrum.


Cheers,

Chris Disspain
Managing Director
DNS Capital Ltd
chris at dnscapital.uk<mailto:chris at dnscapital.uk>
+44 7880 642456


On 14 Mar 2021, at 22:06, McGrady, Paul D. via gnso-igo-wt <gnso-igo-wt at icann.org<mailto:gnso-igo-wt at icann.org>> wrote:

Thanks Brian,

My comments in line below.  I'm looking forward to discussing these and other ideas tomorrow.

Best,
Paul


From: BECKHAM Brian <brian.beckham at wipo.int<mailto:brian.beckham at wipo.int>>
Sent: Sunday, March 14, 2021 3:05 PM
To: McGrady, Paul D. <PMcGrady at taftlaw.com<mailto:PMcGrady at taftlaw.com>>; gnso-igo-wt at icann.org<mailto:gnso-igo-wt at icann.org>
Subject: RE: FOR DISCUSSION: Summary of Agreements & Options

[EXTERNAL MESSAGE]
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.

As the UDRP Rule makes clear, it already is open to anyone.  Whether or not they prevail is contingent on whether or not they have sufficient substantive trademark rights and can otherwise evidence the other elements of the UDRP.

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).

I do not understand how saying everyone has standing would leave "complainants and their counsel would be guessing if their claim would be entertained for lack of standing."  Would you anyone be guessing if their claim would be dismissed for lack of standing if everyone has standing?  Also, I think you have completely reverse what I was saying when you say that my reference to standing means "or, as you have described it, the ultimate success on the merits."  That is, in fact, the opposite of what I am saying.  Whether or not you have sufficient substantive trademarks rights is not the same issue, and should not be conflated with, standing.  Standing, as discussed in prior emails, simply isn't a UDRP concept.  I'm not sure I understand the rest of your paragraph after "...on the merits)".


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).

How so?  Doesn't the Panelist already have to decide whether or not the trademarks are sufficient to prevail?

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).

Again, how so?  What substantive change to the UDRP comes about by acknowledging that the UDRP Rules make it clear that anyone can file but that they can only prevail if they have sufficient trademark rights?  I'm just not following this point or the point above that you are marking.

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).

Again, how so?  The UDRP Rules already make it clear that filing a complaint is open to anyone.  Whether or not they prevail is contingent on whether or not they have sufficient substantive trademark rights and can otherwise evidence the other elements of the UDRP.  Do you think that if we inform the world that the "standing" question is a red herring there will be rogue filings (e.g. my GOLDEN LAMP OF MAGICALNESS v. < littleorphananniegoestothezoo.com<https://gcc02.safelinks.protection.outlook.com/?url=http%3A%2F%2Flittleorphananniegoestothezoo.com%2F&data=04%7C01%7Csusan.anthony%40uspto.gov%7C2bef27fcefc74b54cd7608d8e7abfe72%7Cff4abfe983b540268b8ffa69a1cad0b8%7C1%7C0%7C637514073186587509%7CUnknown%7CTWFpbGZsb3d8eyJWIjoiMC4wLjAwMDAiLCJQIjoiV2luMzIiLCJBTiI6Ik1haWwiLCJXVCI6Mn0%3D%7C1000&sdata=Rvd6OVbpPIj6kG%2FdqNWeeND7jQR%2Bvo6a0V0HTS1OCUc%3D&reserved=0>?  I don't.  Or is there something else at play here - perhaps a concern that lawyers may catch on that there are no standing barriers to filing and that they can use the UDRP filing process solely as a discovery tool post GDPR to determine underlying registrants by filing frivolous claims?  If so, that is an issue, but it sounds like a Phase 2 concern, not an IGO worktrack concern.


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.

Again, how so?  How does this transmogrify GIs that are not trademarks into trademarks sufficient to prevail in a UDRP complaint?  Or personal names that aren't trademarks (John Doe which is not vs. MADONNA which clearly is a trademark)?  I'm just not seeing it.  In fact, I see the opposite.  If we "deduce" trademarkish rights from the shadow on the cave wall that 6ter casts, what is standing in the way of non-trademark GIs, arbitrary "lists", you name it, from showing up and insisting that they also be awarded 6ter-like trademarkish rights?

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.

When you say "That standing questions is precisely one of the issues we are tasked with addressing" your answer presupposes that you have to have "trademark rights sufficient to prevail in a UDRP complaint" in order to have standing, but that is circular. It appears that standing to file remains conflated with sufficient trademark rights to prevail.  If ultimately this work track wants to conflate those two, whether because UDRP panelists may have done so for decades or because it is a fiction that helps us out of our IGO conundrum, I suppose that can be discussed.  But, we really out to call it something else besides "standing" because the UDRP Rules already address that.

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.

Happy to discuss this, but it seems like this is just another proposal to create trademarkish rights which essentially creates a new dispute policy.  The UDRP has always been based on trademark rights, not trademarkish rights.  We would really need to think about (1) whether or not that is in scope; and (2) even if it is, whether or not that is a great idea.

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.

I think you may have been directing this last comment to the entire group so I won't address it substantively, other than to say that I think we are very far away from any "agreements" on any of this, whether they appear in a Google doc or not.  I think we are still very much ideating to find a path forward.

Best, and speak to you all tomorrow.


Brian


From: McGrady, Paul D. <PMcGrady at taftlaw.com<mailto:PMcGrady at taftlaw.com>>
Sent: Friday, March 12, 2021 2:15 PM
To: BECKHAM Brian <brian.beckham at wipo.int<mailto:brian.beckham at wipo.int>>; gnso-igo-wt at icann.org<mailto: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?<x-msg://127/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<https://gcc02.safelinks.protection.outlook.com/?url=https%3A%2F%2Fdocs.google.com%2Fdocument%2Fd%2F1BxGr2f1d5670Zgcr42a7grU-moa254la-_NdqA0EsN4%2Fedit%3Fusp%3Dsharing&data=04%7C01%7Csusan.anthony%40uspto.gov%7C2bef27fcefc74b54cd7608d8e7abfe72%7Cff4abfe983b540268b8ffa69a1cad0b8%7C1%7C0%7C637514073186587509%7CUnknown%7CTWFpbGZsb3d8eyJWIjoiMC4wLjAwMDAiLCJQIjoiV2luMzIiLCJBTiI6Ik1haWwiLCJXVCI6Mn0%3D%7C1000&sdata=AK8R%2FZfGhTj%2FGX9oUi0WTVMnJ%2FgR54cNojFMzkjtkQs%3D&reserved=0>. 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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