RE: [gnso-igo-ingo] Nature of the problem / Evidence of harm discussion - IGO Perspective

["Roache-Turner, David" <david.roacheturner@xxxxxxxx>]

Dear Avri, Osvaldo, all,

>From the perspective of the OECD, WIPO and the UPU in coalition with 40 other 
>IGOs, further to the below exchanges and some of the subsequent discussions 
>within the group -

We feel it is important to reiterate that, although the type of harm that can 
be done may be similar, IGOs are simply NOT the same as trademark owners.  Nor 
are they the same as or interchangeable with INGOs.

IGOs are a very limited category of public entity, with public missions, funded 
ultimately by public money, whose names and acronyms are protected under 
international and domestic law (in this latter case via specific statutes or 
through direct incorporation of international law into their legal framework).  
The protection afforded under these laws reflects an absolute legal presumption 
and does not require a demonstration of "harm" as a precondition for preventive 
protection of IGO names and acronyms - nor does the Board's resolution on 
interim protection based on the reserved list, or the GAC Toronto advice.

To the extent that "harm" would be a relevant consideration for ICANN to align 
its policy norms with international and national legal norms, there is abundant 
evidence already on the record before this group, merely the latest example of 
which is set out in the just-circulated domain names registration evaluation, 
the general findings of which speak for themselves.  Of the limited number of 
IGOs sampled in that report, the following are reviewed as already showing 
multiple instances of potential abuse of their names and/or acronyms in domain 
names registered by third parties (not to mention the RC/RC as an INGO and its 
associated names):

CERN, IAEA, ILO, ESA, ITU, IMF, NATO, OECD, UNESCO, UNICEF, UPU, WHO, WIPO and 
the WTO and the RC/RC

Please bear in mind once more that this is based on a relatively small sample 
group of IGOs and potential domains (excluding for instance other cases of 
parked and/or monetizing domains in ccTLDs), and takes no account of the 
evident multiplication of such risks to be caused by ICANN's decision to expand 
the DNS by a factor of 50.

It is also important to remind this working group that, in connection with our 
discussions on the establishment of a reserved list, the answer to the 
questions "What is the standard of harm which was required in order to protect 
other entities currently included on the reserve list, such as country and 
territory names, and United Nations member states?  Is it a standard which was 
or is required to go beyond anything that has ever been recognized for 
trademark owners?" is naturally in the negative, since country and territory 
names are not trademarks nor protected as such; moreover, United Nations 
members states are generally not trademark owners;  nor are IGO names and 
acronyms trademarks, nor IGOs themselves generally trademark owners (apart from 
very few exceptions associated with names and acronyms not falling under the 
scope of 6ter). In other words, the very purpose of the aforementioned 
international law provisions (i.e., article 6ter of the Paris Convention and 
other international treaties) is not to regulate the protection of names and 
acronyms of IGOs as subjects of industrial property, but rather to exclude them 
from becoming such subjects in the circumstances defined therein.

Whether from a legal or a public policy perspective, it is important that we 
keep this fundamental distinction in mind.  We cannot assume that any 
protection which ICANN recognizes as applicable to IGOs must somehow be 
regarded as problematic because trademark owners (which are in a wholly 
different category as a matter of law or public policy) will on that basis 
somehow feel they are entitled to another bite at the apple.  And even if they 
would, there is in any event a clear legal and public policy basis for ICANN 
distinguishing between the two. To emphasize this point once more: the names 
and acronyms of IGOs cannot, as a matter of principle, be equated with ordinary 
trademarks. This alone makes them subject to a different set of protective 
principles when compared to INGOs and other private sector entities.

In conclusion, we need to be focusing on the issue of IGO (and according to the 
mandate, also INGO) protection on its own legal and public policy terms.  While 
speculation concerning what a wholly different category of right holder may or 
may not do in response may be interesting, it hardly seems fair or legally 
appropriate to hold that against our objective assessment of the merits of the 
cases at hand.

Best regards,

David, Ricardo and Sam

-----Original Message-----
From: owner-gnso-igo-ingo@xxxxxxxxx [mailto:owner-gnso-igo-ingo@xxxxxxxxx] On 
Behalf Of Novoa, Osvaldo
Sent: mercredi, 13. février 2013 14:47
To: 'Avri Doria'; GNSO IGO INGO
Subject: RE: [gnso-igo-ingo] Nature of the problem / Evidence of harm discussion


Hi,
I think that was exactly the GAC's intention, to grant the Red Cross and the 
IOC initially and later to IGO and INGO special protections.  I don't think 
they are likely to suffer more harm than other trademarks and I think that in 
some cases some trademarks are more at risk than IGOs or INGOs.  This is why we 
think there is no need for a harm analysis.
The fact that a sufficient number of countries have granted some IGOs and INGOs 
special protections, through international treaties and/or international laws 
(I am not a lawyer so I don't know the differences between these), is what we 
consider a reason for ICANN to also grant them a special protection.
I cannot think of any situation in which an IGO or INGO can suffer harm that 
cannot be replicated for a private organization.
Best regards,
Osvaldo

-----Mensaje original-----
De: owner-gnso-igo-ingo@xxxxxxxxx [mailto:owner-gnso-igo-ingo@xxxxxxxxx] En 
nombre de Avri Doria
Enviado el: Miércoles, 13 de Febrero de 2013 11:32
Para: GNSO IGO INGO
Asunto: Re: [gnso-igo-ingo] Nature of the problem / Evidence of harm discussion


Hi,

Good points all.  And yet, we did not give reserved name status to all 
Trademarks.  In order to have any cause for more protection than the trademarks 
currently receive, there needs to be a standard of harm that goes beyond 
anything that has ever been recognized for trademarks.

It is that which must be shown, both for the creation of new policy and, in my 
view at least, for any admission criteria.  If we use GNSO Outcomes Report on 
Domain Tasting (2007) as the basis for policy or admission to special 
protections, we open yet another opportunity for trademark holders to gnaw at 
the apple.

avri



On 13 Feb 2013, at 08:14, Novoa, Osvaldo wrote:

> Hi Evan,
>
> First of all sorry if it sounded pedantic, I did not intend to ridicule or 
> disrespect those that asked for the harm, and sorry if it felt I did.
>
> What I meant is that there is series of known threats to the name owners 
> arising from the fact that some other third party might use their name for 
> other ends.
> From the GNSO Outcomes Report on Domain Tasting (2007) I extracted the 
> following.
> The possible harms might be:
> For the organization:
>       * Infringement of their trademark rights
>       * Erosion of brand name thru to user confusion
>       * Erosion of reputation thru users diverted to unexpected and 
> potentially harmful sites
>       * Loss of revenue thru diversion of traffic
>       * Increased monitoring costs and reduced possibilities to trace IPR 
> violators
>       * Increased brand enforcement costs from additional infringing 
> registrations
> For the Internet user:
>       * Confusion and lost of time when reaching an unexpected web site
>       * Dissatisfaction due to unintended or erroneous commercial transactions
>       * Harm from spamming, malware and fraud
>
> These are valid for any case when a domain appears with the name of any 
> company and it doesn't represent that company.  In the case of IGO and INGO 
> we considered that, due to the fact that an important number of governments 
> have decided to grant them a special protection, ICANN should also grant them 
> a special protection.
>
> Best regards,
>
> Osvaldo
>
>



El presente correo y cualquier posible archivo adjunto está dirigido únicamente 
al destinatario del mensaje y contiene información que puede ser confidencial. 
Si Ud. no es el destinatario correcto por favor notifique al remitente 
respondiendo anexando este mensaje y elimine inmediatamente el e-mail y los 
posibles archivos adjuntos al mismo de su sistema. Está prohibida cualquier 
utilización, difusión o copia de este e-mail por cualquier persona o entidad 
que no sean las específicas destinatarias del mensaje. ANTEL no acepta ninguna 
responsabilidad con respecto a cualquier comunicación que haya sido emitida 
incumpliendo nuestra Política de Seguridad de la Información


This e-mail and any attachment is confidential and is intended solely for the 
addressee(s). If you are not intended recipient please inform the sender 
immediately, answering this e-mail and delete it as well as the attached files. 
Any use, circulation or copy of this e-mail by any person or entity that is not 
the specific addressee(s) is prohibited. ANTEL is not responsible for any 
communication emitted without respecting our Information Security Policy.



World Intellectual Property Organization Disclaimer: This electronic message 
may contain privileged, confidential and copyright protected information. If 
you have received this e-mail by mistake, please immediately notify the sender 
and delete this e-mail and all its attachments. Please ensure all e-mail 
attachments are scanned for viruses prior to opening or using.