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

Sun May 9 20:57:03 UTC 2021

Dear All,
Thank Chris
Carlos + 1
Kavouss

On Mon, Mar 15, 2021 at 4:24 PM Carlos Gutiérrez G. via gnso-igo-wt <
gnso-igo-wt at icann.org> wrote:

> Thanks Chris!
>
> This is very helpful. I welcome this “high-expectations” exchange before
> the call. Apparently we are making more progress in a linear email thread
> (that is hard for follow and keep and overview) than during the calls. It
> is quite interesting that ICANN, being at the hearth of the Internet has
> not been able to deploy some useful tools for this type of (un) structured
> discussion and keep a useful record instead of delegating to Staff this
> type of work.
>
> I’m familiar only with #Slack, but guess there are other ones. But I see
> quite a challenge ahead to our call today to summarize the “Tweak” against
> the apparently opposing positions between Bryan and Paul. I look forward to
> the call.
>
> Cheers
>
> Carlos Raúl Gutiérrez
> +506 8837 7176
> Skype: carlos.raulg
> Current UTC offset: -6.00 (Costa Rica)
>
> On 15 Mar 2021, at 4:46, Chris Disspain via gnso-igo-wt wrote:
>
> 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 Property**1 *
>
> *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
> +44 7880 642456
>
>
>
> On 14 Mar 2021, at 22:06, McGrady, Paul D. via gnso-igo-wt <
> 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>
> *Sent:* Sunday, March 14, 2021 3:05 PM
> *To:* McGrady, Paul D. <PMcGrady at taftlaw.com>; 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?  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>
> *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> *On Behalf Of *BECKHAM
> Brian via gnso-igo-wt
> *Sent:* Friday, March 12, 2021 2:01 AM
> *To:* 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> *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>; 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
>
>
>
>
>
>
>
> This message may contain information that is attorney-client privileged,
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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
>
>
>
> [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
>
>
>
>
>
> World Intellectual Property Organization Disclaimer: This electronic
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