RE: [gnso-igo-ingo] food for thought - options to be considered

["Shatan, Gregory S." <GShatan@xxxxxxxxxxxxx>]

All:

As an individual, I agree with Ricardo’s statements below, and, as a 
representative of the IPC, I believe the IPC would agree as well.

I would differ slightly in one aspect – I do believe that there is a place for 
RPMs, but that should be in a larger context of a spectrum of protections that 
begins with preventive measures as discussed.  I strongly agree that it is 
premature to dismiss positions that are held by significant segments of the WG 
and by the ICANN community as a whole.  The organization of GNSO stakeholder 
groups is such that the concerns of rightsholders (whether trademark owners or 
IGOs/INGOs whose rights vary from or are in addition to trademark rights) can 
always be dismissed as a “minority view.”  However, I don’t think that taking 
that tack benefits the process, the result or the credibility of ICANN as a 
multistakeholder organization.

Best regards,

Greg


Gregory S. Shatan
Partner
Reed Smith LLP
599 Lexington Avenue
New York, NY 10022
212.549.0275 (Phone)
917.816.6428 (Mobile)
212.521.5450 (Fax)
gshatan@xxxxxxxxxxxxx
www.reedsmith.com




From: owner-gnso-igo-ingo@xxxxxxxxx [mailto:owner-gnso-igo-ingo@xxxxxxxxx] On 
Behalf Of GUILHERME ricardo
Sent: Wednesday, January 23, 2013 12:30 PM
To: gnso-igo-ingo@xxxxxxxxx
Subject: RE: [gnso-igo-ingo] food for thought - options to be considered

Dear Thomas and All,

Notwithstanding the fact that most lawyers (like me) indeed enjoy playing the 
role of "Devil's advocate" (notably for fostering discussion and identifying 
all possible solutions to a certain problem), it is in our view absolutely 
essential that any consideration of “options to move forward” objectively 
reflects AND respects the wide variety of opinions manifested so far.

In particular, we refer to the diverging views expressed by a substantial 
portion of this working group which, in due observance of international and 
national legal statutes, has been incessantly trying to instill strictly 
objective criteria to ICANN policy discussions that have, so far, unfortunately 
ignored or disregarded them (at least for the most part). We also take issue 
with the apparently harmless attempt at establishing or declaring a “consensus” 
when no such thing has ever existed within this working group, something that 
naturally cannot be regarded as surprising in the first place (given the 
extremely diverse interests at stake here).

In fact, and notwithstanding the obvious difficulties concerning participation 
of European-based IGOs in conference calls almost invariably organized to 
satisfy US-centric schedules (despite our requests for AT LEAST some degree of 
rotation in those schedules), a number of IGO (and if I may say, also some 
INGO) representatives have been extremely active in conveying their views and 
adding objective elements to an initiative that would otherwise be regarded as 
a purely private sector-driven exercise. This comprises numerous comments and 
suggested written edits to the Excel spreadsheets shared with the group, 
various attached written submissions (at least in our case) from the UPU and 
the IGO community at large, as well as oral statements made during those 
(admittedly few) conference calls that we have been able to attend at 8 or 9 
p.m. (Swiss local time).

Bearing in mind also the history of ICANN, the usual composition of its groups 
and the interests associated thereto, it would obviously be naïve to expect 
full agreement with some or most of the considerations put forward by 
not-for-profit, public good-driven intergovernmental organizations such as 
ours. Additionally, due to the specific levels of representation and 
participation within this WG, we also would not dare assume that such 
considerations would be easily accepted by other participants of the WG.

However, it is impossible to accept blanket WG statements that there is “no 
opposition to making the RPMs available to all users of the DNS” – at the very 
least, we (as part of the wider IGO community) have always expressed our 
complete opposition to curative mechanisms as a matter of principle for the 
legal, objective and practical reasons already expressed in various 
submissions, as well as in the light of the fact that IGOs, which are subjects 
of international law bound by a specific regime of privileges and immunities, 
are NOT subject to national jurisdictions and are NOT dependent on trademark 
registration for the protection of their names and acronyms.

While also appreciating the efforts undertaken by Alan Greenberg in trying to 
isolate current cases of undue registrations and/misuse of the names and 
acronyms of IGOs in the DNS (to which we could add 
www.universalpostalunion.com<http://www.universalpostalunion.com> owned by a 
certain “Fabulous.com Pty Ltd.”, countless cases of spam/scam messages, “UN 
lottery” schemes, abusive redirections, deep linking practices and attempts to 
register the name or acronym of the UPU and other IGOs in specific domain 
names), we have to reiterate, once more that this is not only a matter to be 
decided on the basis of “identified harm” (even though such harm or attempts 
associated thereto have been extensively documented and/or explained) or “how 
important” such a reservation is for IGOs.

Given our public good missions, any ICANN-authorized possibility for abuse of 
international/national law provisions is a harm in itself as it may lead to 
confusion on such mandates, associate IGOs with unauthorized private 
sector/monetizing activities and pose considerable reputational risks 
concerning the conduct of those public mandates. Moreover, it is clear that 
IGOs have already expressed that such reservations are not meant to impair 
their ability to register those names and acronyms themselves, or perhaps 
authorize third parties (in very specific cases and subject to the internal 
regulations of each IGO) to do so.

Despite the skepticism traditionally expressed by some in the ICANN community, 
we are, de jure and de facto, international entities established by Member 
States for the fulfillment of specific public good mandates which are, for the 
most part if not integrally, funded by public resources that are not only 
extremely limited in nature but also strictly aimed at certain public good 
projects and goals (which obviously do not include spending thousands if not 
millions of USD in protective or corrective against abusive registrations in 
the DNS). This is a matter of principle whose treatment is not subject to ad 
hoc market concerns normally applicable to private sector entities.

In conclusion: from an IGO perspective, (i) the problem to be solved is clear 
(preventive protection of the names and acronyms of IGOs under international 
and national law); (ii) the “qualification criteria” (at least in the case of 
IGOs) are clear as per those laws and should not be subject to arbitrary 
thresholds such as number of countries or value judgments such as “this IGO is 
more humanitarian than that”; and (iii) the mechanisms at our disposal have 
already been indicated (reserved names list), as acknowledged by the ICANN 
Board and in line with the public policy imperative for preventive protection 
already recognized by the GAC. In regard to other, non-governmental entities, 
we can surely continue to extend our support for the development of objective 
and non-discriminatory criteria as currently being debated by this working 
group.

Therefore, we would respectfully request, for reasons of transparency and 
fairness and in observance of Section IV of the Charter adopted by the GNSO for 
this group (even if we were to accept ICANN’s interesting definition of 
“consensus” as a position where “only a small minority disagrees” – is the IGO 
community plus perhaps a number of INGOs to be deemed as “small”?), that our 
full remarks and comments on the spreadsheet (and other similar documents) be 
not deleted (as was the case for our comments on the tab “Nature of the 
problem”), so as to avoid giving the inaccurate impression that “consensus” was 
reached on this topic. This request should also apply, of course, to any other 
“minority views” expressed by other members of the working group.

Last but not least and as hinted above, we would also like to express our full 
support for the remarks sent by WIPO earlier today.

With best regards,

Ricardo Guilherme



-----Message d'origine-----
De : owner-gnso-igo-ingo@xxxxxxxxx<mailto:owner-gnso-igo-ingo@xxxxxxxxx> 
[mailto:owner-gnso-igo-ingo@xxxxxxxxx] De la part de Thomas Rickert
Envoyé : mardi 22 janvier 2013 20:55
À : gnso-igo-ingo@xxxxxxxxx<mailto:gnso-igo-ingo@xxxxxxxxx>
Objet : [gnso-igo-ingo] food for thought - options to be considered


All,
considering the exchange of thoughts we had on the items of the spreadsheets 
and the comments received in response to the request for input, I would like to 
share a few observations with you in preparation of the next call.

The way I present these may be perceived drastic, but please understand my role 
as devil's advocate to stimulate a discussion. We need to reduce the number of 
arguments on the table and discuss options to move forward and I will make some 
suggestions we can discuss below.

It appears that many in the community ask for evidence that there is a problem 
that needs to be fixed. This was emphasized e.g. in the ALAC statement. We have 
discussed this topic on the basis of the NOTP spreadsheet.

However, let me try to define where the lack of protection is located that 
those requesting protections are now seeking:

There are new RPMs, but these are deemed insufficient because

I. they cannot be used by some affected parties; II. there are costs associated 
with RPMs; and III. they are reactive and do not prevent third party 
registrations from taking place.


ad I
I have seen no opposition to making the RPMs available to all users of the DNS 
(as the RySG put it in their comment).
Thus, I guess chances would be good to get at least near to consensus on this 
one.

ad II
My impression is that most participants of the working group agreed that 
granting special protection requires a problem specific to the group of 
potential beneficiaries of the protections. We would not treat all users 
equally if we used an argument that also affect other users or user groups to 
grant specific protections. It appears that the issue of costs hits all those 
affected by third parties illegitimately using their designations.

I may be wrong, but I have not seen broad support for the idea of granting 
special protections because of cost (may it be for the use of RPMs, defensive 
registrations or administrative costs).

ad III
In my view, this is the area our discussions will focus on in the coming weeks.

I will ask during tomorrow's call whether you agree with this view.


Talking about item III we need to discuss the following questions in more depth:

1. What is the problem is we are trying to solve? What harm shall be prevented?
2. What would be the qualification criteria?
3. What would a protection mechanism look like?

ad 1
Particularly in the ALAC statement there are some criteria mentioned. These 
seem to include quite subjective factors, particularly when it comes to 
quantitative elements.

Alan, you had offered to send some questions / factors to the list that can be 
used to answer the question of harm. Are you in a position to have those ready 
for the call tomorrow? That would be most helpful.

Apart from that, my impression is that almost the only criterion to be used is 
that global public interest and the mandate of an the organization affected is 
harmed. If I remember correctly, this was a point made by Stéphane.

I will ask you tomorrow whether you share the view that we should focus on 
these points.

Even if the group chose to accept this as a factor unique to the organizations 
concerned, we still have to answer the question that this fear of the global 
public interest and mandate is at danger is real.

Are there any projections for such harm taking place in new gTLDs (given the 
fact that we have numerous dotBrands where the risk of harm may be lower)? Any 
objective criteria, e.g. studies on infringements in new TLDs (e.g. xxx?)?

ad 2
As per our charter the minimum requirement is: Protection under treaties and 
statutes under multiple jurisdictions.
We can certainly add additional - positive or negative - criteria, but for the 
time being, let me focus on the above aspects.

What treaties shall be relevant? What needs to be protected by the treaty? How 
do we deal with the fact that even protection by treaty is limited and does - 
in many cases - not prevent certain cases of legitimate use?

Will the fact that protections are limited in scope stop the group from 
granting protections entirely or will that be dealt with in the context of 
exemption procedures?
Let us assume the group is willing to grant special protections on the basis of 
a narrowly defined group of qualifying organizations and designations whose 
eligibility can be checked in an objective manner maybe depending on additional 
admission requirements (as discussed on the respective spreadsheet). Then we 
can move to question 3.

ad 3
Looking at the Protections spreadsheet, (based on the assumption made above) 
all existing and new RPMs will be open to the qualifying organizations. Hence, 
the only option we need to discuss is the option in line 5, which is the 
modified reserved names list with an exemption procedure.

What could this look like? Here is a very rough sketch:

- Organizations can have their designations added to a database (such as the 
TMCH database). Identical match strings will be added after validation.
- Whenever a registration for an identical match is attempted, eligibility of 
the registrant will be checked before the domain name is registered. 
Eligibility is given either if an organization holding that designation is 
carrying out the registration or if the registrant is registering the domain 
name legitimately according to the exemption rules, i.e. where use is 
permitted).
- Registrations for eligible registrants will be carried out on a first come 
first served basis.

Such approach would prevent unauthorized registrations from taking place. At 
the same time (since registrations are fcfs) there is a level playing field and 
eligible parties would not necessarily prevail over other legitimate 
registrants.

One could even apply such method for the top level (taking into account the 
question of the applicability of the string similarity review) .

Perhaps this helps us getting some ideas of the options to move forward.

Thanks,
Thomas








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