RE: [gnso-igo-ingo] Protection of the RCRC designations and names (follow-up to the Conference Call of 31 July)

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

I would like to respond on a few points (in my individual capacity).

First, it is unfortunate that you and your colleagues were unaware of how 
reserved names work (i.e., that reserving “redcross” does not also block 
strings containing “redcross”)  until relatively recently.  Nevertheless, there 
was no rational basis to expect that reserving “redcross” would also block the 
other 189 names (to the extent they contained “redcross”).  Having been 
involved in both this WG and the RCRC/IOC WG, I was certainly under no 
impression that this would occur, nor was I ever under the impression that the 
RCRC thought that this would occur.  As such, the 189 names certainly appear to 
be (relatively speaking) a “new ask”.

Second, I would tend to disagree that having the reserved names cover only 
e.g., “red cross" “would fail the requirements of international law and of the 
laws in force in multiple jurisdictions which intend to protect the 
designations at all times.”  While infringement or misuse of “Red Cross” may 
violate international and national laws, I don’t believe the law dictates a 
particular enforcement path or self-regulatory outcome. Specifically, I don’t 
believe proscriptive protections (e.g., reserved names) are the only legally 
appropriate outcome.  A reactive/curative protection (e.g., UDRP, litigation) 
should also satisfy international/national law.  To take the analogous case -- 
infringement of trademarks also violates international and national laws.  
However, ICANN has not provided proscriptive protections for trademarks, as 
much as trademark owners would like ICANN to do so.  A proscriptive approach 
would provide better protections for trademark owners, and would be preferable 
to being limited to the current RPMs. I could even argue that it is the better 
policy approach.  I would also love to be able to argue that the current set-up 
“fails the requirements of law.”  Maybe it does, and maybe I haven’t done the 
research.  But right now I have no reason to believe that a proscriptive 
approach is required by law – not for trademarks and not for RCRC designations. 
 If I’m wrong, and ICANN is legally required to follow a proscriptive approach, 
that would be the mother of all class action litigations – so maybe I should do 
the research….

Similarly, while protecting the full names and not the short names “would not 
meet the aim of the protections that are sought” by the RCRC interests, it does 
not appear that proscriptive protection of both names (or either name) of each 
organization is mandated by law.

Finally, as the request for “the establishment of a mechanism or procedure to 
effectively address the issue of strings liable to confusion with the Red Cross 
and Crescent designations and names.”  I can sympathize with this.  Trademark 
owners have been looking for this since the dawn of ICANN.  “Confusing 
similarity,” not “exact match,” is the basic test of trademark infringement (at 
the risk of being incredibly simplistic).  Such a mechanism or procedure 
exists, to a very limited extent, in the UDRP, and I believe that RCRC 
organizations already have access to the UDRP (and if they don’t, I tend to 
believe they should).  TM+50 also provides a very limited version of this (but 
only for strings that have been proven elsewhere to be “confusingly similar”), 
and I assume RCRC interests would be able to avail themselves of this in the 
TMCH.  As someone who represents brandowners, I would certainly support more 
robust mechanisms and procedures to deal with “confusing similarity” in the 
domain name space – for RCRC designations and trademarks alike.  (I know there 
are those who strongly disagree, and the current state of affairs reflects how 
those “disagreements” have been settled to this point.)  However, I don’t see 
the argument to provide such protections to RCRC designations and not to 
trademarks.  While it might be charitable to do so, I don’t see any legal or 
policy requirement to do so.

Of course, nothing I’ve said above should be seen as a substitute for detailed 
legal research (by the ICANN GC’s office or others) or a formal legal opinion.  
I just think that claims that national or international law requires a panoply 
of proscriptive protections, or superior protections to those available to 
trademark owners, don’t hold water.

Greg Shatan

From: owner-gnso-igo-ingo@xxxxxxxxx [mailto:owner-gnso-igo-ingo@xxxxxxxxx] On 
Behalf Of Stephane Hankins
Sent: Tuesday, August 06, 2013 3:45 AM
To: gnso-igo-ingo@xxxxxxxxx
Cc: Thomas Rickert; Brian Peck; mail@xxxxxxxxxxxxx; "Christopher RASSI 
(christopher.rassi@xxxxxxxx)"@icrc.org; Catherine Gribbin
Subject: [gnso-igo-ingo] Protection of the RCRC designations and names 
(follow-up to the Conference Call of 31 July)

Dear Thomas, dear all,

Further to the Working Group's session of last Wednesday (31st July), and as 
suggested during the call, we would like to provide written comments restating 
our position on the list of Red Cross and Red Crescent designations and 
denominations to be protected and reserved from registration as top and second 
level domain names. We would also like to react and to provide once more 
clarification of our asks and an explanation of why we are asking for an 
expansion of the current list of designations currently reserved in the 
Applicant Guidebook and in Annex 5 to the Registry Agreement. As noted during 
last Wednesday's call:

(1)        Our request that the actual names of the respective Red Cross and 
Red Crescent organizations be protected in addition to the designations "Red 
Cross", "Red Crescent", "Red Lion and Sun" and "Red Crystal" is not new. As 
indicated, it was our understanding from the outset of the PDP process (and of 
its preceding RCRC/IOC Working Group) that in reserving the designations of the 
Red Cross and Red Crescent designations, such protections would duly prevent 
and block the registration, at both top and second levels, of any applied for 
strings which
-        constitutes an exact match of the designations "Red Cross", "Red 
Crescent", "Red Lion and Sun" or "Red Crystal"; or which
-       includes either of the said designations (thus, and consequently, 
preventing the registration of the actual names of the respective Red Cross and 
Red Crescent organizations - namely the 189 recognized National Red Cross and 
Red Crescent Societies, the International Committee of the Red Cross and the 
International Federation of Red Cross and Red Crescent Societies).

This interpretation is based on international law and the domestic law in force 
in multiple jurisdictions. It conforms to the universally approved requirements 
of the 1949 Geneva Conventions and their Additional Protocols, which 
specifically protect the Red Cross and Red Crescent designations in both their 
protective function (as the designations of the protective emblems in times of 
armed conflict) and indicative function (to indicate a link to the 
International Red Cross and Red Crescent Movement or any of its components).

Defining the protections to cover only the designations per se ("red cross", 
"red crescent" or "red crystal") and not the names of the organizations (e.g. 
"British Red Cross", "Croix-Rouge française", or "Afghan Red Crescent") would 
fail the requirements of international law and of the laws in force in multiple 
jurisdictions which intend to protect the designations at all times. It would 
also defeat the global public interest in preserving the names of the 
respective Red Cross and Red Crescent organizations from misuse, including 
fraud (a major risk, as witnessed in recent disasters during which websites 
were frequently and notoriously set up to divert donations to Red Cross and Red 
Crescent operations in favor of affected persons and communities).

The request to protect not only the designations per se, but also the names of 
the respective Red Cross and Red Crescent organizations is also consistent with 
the objective and scope of the WG and the latter's mandate to consider the 
names and identifiers of relevant organizations.

Finally, we would like, in response to comments presented during last week's 
call, to recall that the adjectives composing the names of National Red Cross 
or Red Crescent Societies and indicating the latter's national affiliation 
(e.g. the word American in the name American Red Cross) cannot be considered as 
a simple pre- or suffix. These form a full-fledged part of the names of the 
respective National Red Cross and Red Crescent Societies. It is noted in this 
regard that, under the regulations on the use of the emblem by National Red 
Cross or Red Crescent Societies which have been adopted by and approved by 
States, National Societies are required to use their full name for the purposes 
of identification.

(2)        It is improper to suggest that we have been "inconsistent" or that 
we have been modifying our asks along the way.

Members of the WG will recall in this regard that we have been consistently 
calling in the past 9 months for the protections to formally and expressly 
extend to the names (identifiers) of the respective Red Cross and Red Crescent 
organizations (including also the acronyms/initials of the two international 
components of the Movement, the International Committee of the Red Cross and 
the International Federation of Red Cross and Red Crescent Societies, their 
acronyms "ICRC" and "IFRC"). Prior to this period, as mentioned in point 1 
above, we were unaware that we specifically needed to provide a finite list for 
protection, as we were under the impression, apparently falsely, that any 
applied for strings containing the designations protected in the Applicant 
Guidebook would also be protected.

This has been systematically and expressly highlighted in all our recent 
written and oral submissions to ICANN and to the WG, including our successive 
written communications to the WG of

-        24 January 2013, point (3);
-        8 February 2013 point (2);
-        11 March 2013 point (3);
-        19 April 2013, point (2);
-        28 May 2013, point (2).

This has also been consistently reminded in our oral contributions to the WG 
Conference Calls.

(3)        Further to last Wednesday's exchange, we also wish to restate that 
our request is that the names be protected in both their official form (as 
stipulated in the national legislation of the concerned National Society), as 
well as their usual or short forms ("American National Red Cross" as well as 
"American Red Cross"; "British Red Cross Society" as well as "British Red 
Cross").

Alan has made the point that this was not clear from our intervention in 
Durban. You will note however that this was implicit in our written submission 
and Position Paper submitted to ICANN's Board and shared with the WG in advance 
of the Durban Meeting, and which included as an annex a draft table of National 
Society names composed of two separate columns highlighting both the official 
and the usual/short names of each National Society. As highlighted on the call 
last week, reserving only the official names without the usual names (often 
themselves displayed within a National Society's logo and/or indicated on a 
National Society's website) would not meet the aim of the protections that are 
sought. We apologize if this was not clear in the first discussion of the WG 
held in Durban.

(4)        While it is correct that the GAC's initial advice focussed on the 
designations themselves, our successive conversations with GAC members suggest 
that it is also their common understanding that the protections and 
reservations of the Red Cross and Red Crescent designations should apply to the 
names of the respective Red Cross and Red Crescent organizations (including the 
names of their respective National Red Cross or Red Crescent Society, as well 
as the names of the two international components of the Movement).

(5)        Please find below a restatement of our request. As indicated below, 
we have, further the discussions and conversations held in Durban, reduced our 
asks with the hope that this will facilitate approval and implementation of the 
protections that are called for. These is also set forth in our most recent 
Public Comment of 17 July and include:

•        A permanent protection in the current and for all future rounds of 
gTLD applications

        The confirmation that the protections accorded to the Red Cross and Red 
Crescent designations and names shall be made permanent and thus, for all 
future rounds of gTLD applications;

•        The express extension of the current protection of reserved Red Cross 
and Red Crescent designations (as foreseen in Annex 5 to the revised Registry 
Agreement mentioned above) to the full names of the respective Red Cross and 
Red Crescent organizations, including the official and usual/short names, of

- the 189 recognized National Red Cross and Red Crescent Societies (in English, 
as well as in their respective national languages);

- the International Committee of the Red Cross and the International Federation 
of Red Cross and Red Crescent Societies (and thus in the 6 United Nations 
languages - which are also the 6 working languages of the IFRC).

        Such protections could usefully be implemented through an extension of 
the current list of reserved Red Cross and Red Crescent designations to include 
a full list of the names of the Red Cross and Red Crescent organizations.

•        Request is also made that the initials or acronyms of the 
International Committee of the Red Cross (ICRC/CICR/CICV/MKKK) and of the 
International Federation of Red Cross and Red Crescent Societies (IFRC/FICR) 
should be also protected in their commonly used forms and translations. It is 
noted that the GAC’s final Communiqué to ICANN’s Durban Meeting advises ICANNs 
Board to protect the initials/acronyms of the International Committee of the 
Red Cross and the International Federation of Red Cross and Red Crescent 
Societies, and thus, through an extension of “the same complementary cost 
neutral mechanisms to be worked out […] for the protection of acronyms of IGOs”.

•        The inclusion of the Red Cross and Red Crescent designations and names 
on a “Modified Reserved Names List”. This would importantly preserve the 
entitlement of Movement components to register relevant domain names should 
they require to do so. This would also conform with the above-mentioned 
international treaties and norms, which provide for the entitlement of the 
respective Red Cross and Red Crescent organisations to use the designations in 
order to show their association with the International Red Cross and Red 
Crescent Movement.

•        The establishment of a mechanism or procedure to effectively address 
the issue of strings liable to confusion with the Red Cross and Crescent 
designations and names. This would reflect the requirements of international 
humanitarian law, which expressly prohibit at all times unauthorised use of the 
designations and names, including of “imitations” (Article 53 of the First 
Geneva Convention of 1949). Illustrations of such imitations could be, for 
example, ‘Red Kross’, ‘Reed Crescent’ or “Red Cristal”.

        Further to the conversations held in Durban, we wish the WG to note 
that we have retreated from our request for the establishment of a "string 
similarity review" mechanism, and thus with due consideration to the technical 
difficulties in implementing such a tool in particular at the second level. In 
as much, we wish to express our availability to support ICANN's current 
reflections on the establishment of a new mechanism intended to address the 
rights of legitimate rights holders (whether in the form of an early warning 
mechanism or central repository entrusted to inform legitimate rights’ holders 
in the event the registration of a “confusingly similar string” to their name 
is being sought).

We remain available to discuss the above points further as required.

With best regards,

Stéphane J. Hankins
Legal adviser
Cooperation and coordination within the Movement
International Committee of the Red Cross
Tel (direct line): ++0041 22 730 24 19
Email: shankins@xxxxxxxx<mailto:shankins@xxxxxxxx>

Christopher M. Rassi
Senior Legal Officer
International Federation of Red Cross and Red Crescent Societies
Chemin des Crêts, 17 | 1209 Petit Saconnex | Geneva | Switzerland
Tel. +41 (0)22 730 4536 | Fax +41 (0)22 733 0395
Email: christopher.rassi@xxxxxxxx<mailto:christophe.lanord@xxxxxxxx>

________________________________

The ICRC - working to protect and assist people affected by armed conflict and 
other situations of violence. Find out more: www.icrc.org<http://www.icrc.org>

This e-mail is intended for the named recipient(s) only.
Its contents are confidential and may only be retained by the named 
recipient(s) and may only be copied or disclosed with the consent of the 
International Committee of the Red Cross (ICRC). If you are not an intended 
recipient please delete this e-mail and notify the sender.

________________________________



* * *

This E-mail, along with any attachments, is considered confidential and may 
well be legally privileged. If you have received it in error, you are on notice 
of its status. Please notify us immediately by reply e-mail and then delete 
this message from your system. Please do not copy it or use it for any 
purposes, or disclose its contents to any other person. Thank you for your 
cooperation.

* * *

To ensure compliance with Treasury Department regulations, we inform you that, 
unless otherwise indicated in writing, any U.S. Federal tax advice contained in 
this communication  (including any attachments) is not intended or written to 
be used, and cannot be used, for the purpose of (1) avoiding penalties under 
the Internal Revenue Code or applicable state and local provisions or (2) 
promoting, marketing or recommending to another party any tax-related matters 
addressed herein.

Disclaimer Version RS.US.20.10.00