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GNSO faces off with governments over IGO cybersquatting

Kevin Murphy, January 27, 2017, 10:53:48 (UTC), Domain Policy

A defiant ICANN working group looking at cybersquatting rules for intergovernmental organizations is sticking to its guns in an ongoing face-off with the Governmental Advisory Committee.

In a report published for public comment this week, the GNSO working group recommended that IGOs should be given the right to use the UDRP and URS rights protection mechanisms, despite not being trademark owners.

But the recommendations conflict with the advice of the GAC, which wants ICANN to create entirely new mechanisms to deal with IGO rights.

I explored a lot of the back story of this argument in two posts a few months ago, which I will not rehash here.

The latest development is the publication of the proposed initial report of the GNSO IGO-INGO Access to Curative Rights Protection Mechanisms Initial Report (pdf) for comment.

The WG was tasked with deciding whether changes should be made to UDRP and URS to help protect the names and acronyms of IGOs and INGOs (international non-governmental organizations).

For INGOs, including the special cases of the International Olympic Committee and the Red Cross/Red Crescent, it decided no changes and no new mechanisms are required, concluding:

Many INGOs already have, and do, enforce their trademark rights. There is no perceivable barrier to other INGOs obtaining trademark rights in their names and/or acronyms and subsequently utilizing those rights as the basis for standing in the existing dispute resolution procedures (DRPs) created and offered by ICANN as a faster and lower cost alternative to litigation. For UDRP and URS purposes they have the same standing as any other private party.

The case with IGOs is different, because using UDRP and URS requires complainants to agree that the panel’s decisions can be challenge in court, and IGOs by their nature have a special legal status that allows them to claim jurisdictional immunity.

The WG recommends that these groups should be allowed access to UDRP and URS if they have protection under Article 6ter of the Paris Convention, a longstanding international intellectual property treaty.

This rule would actually extend UDRP and URS to hundreds more IGO names and acronyms than the GAC has requested protection for, which is just a few hundred. WIPO’s 6ter database by contrast currently lists 925 names and 399 abbreviations.

To deal with the jurisdictional immunity problem, the WG report recommends that IGOs should be allowed to file cybersquatting complaints via a third-party “assignee, agent or licensee”.

It further recommends that if an IGO manages to persuade a court it has special jurisdictional immunity, having been sued by a UDRP-losing registrant, that the UDRP decision be either disregarded or sent back to the arbitration for another decision.

The recommendations with regard IGOs are in conflict with the recommendations (pdf) of the so-called “small group” — a collection of governments, IGOs, INGOs and ICANN directors that worked quietly and controversially in parallel with the WG to come up with alternative solutions.

The small group wants ICANN to create separate but “functionally equivalent” copies of the UDRP and URS to deal with cybersquatting on IGO name and acronyms.

These copied processes would be free for IGOs to use and, to account for the immunity issue, would not be founded in trademark law.

The WG recommendations are now open for public comment and are expected to be the subject of some debate at the March ICANN meeting in Copenhagen.

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Comments (1)

  1. Philip Corwin says:

    As co-chair of this working group, which has labored for two years to produce this draft report, I would like to make clear that neither its leaders or members have any desire to face off against or defy the GAC or IGOs. What we did share was a commitment to let existing law be the basis for policy recommendations that are firmly grounded in it, and that will provide significant relief to IGOs that are targeted by infringers.

    Our 107 page draft report is a very serious and well-honed effort. Those who review it will note that the main text is supported by 69 footnotes, that there are many additional footnotes in the supporting materials, and that Professor Swaine’s 31-page legal memo — which was the foundation for our decisions on whether to create a separate CRP for IGOs, as well as how to handle potential appeals to a national court — is supported by an additional 115 footnotes.

    We will of course give full consideration to all comments received on the draft. However, given the time and effort that have gone into this, I will personally be reluctant to make significant modifications unless it can be demonstrated that we have omitted or misinterpreted relevant facts and law.

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