IGO Comments on the “Preliminary GNSO Issue Report on the Protection of International Organization Names in New gTLDs”
June 25, 2012 Comments on the “Preliminary GNSO Issue Report on the Protection of International Organization Names in New gTLDs” Introduction Building upon wide consultation within the IGO community, the United Nations (UN), the Organisation for Economic Co-operation and Development (OECD), the World Intellectual Property Organization (WIPO), the World Bank Group (WB), the World Health Organization (WHO), the European Space Agency (ESA), the North Atlantic Treaty Organization (NATO), the Bank of International Settlements (BIS), the International Labour Organization (ILO), the European Organization for Nuclear Research (CERN) and the International Institute for the Unification of Private Law (UNIDROIT) appreciate this opportunity to provide comments on the Preliminary GNSO Issue Report on the Protection of International Organization Names in New gTLDs (the Preliminary Issue Report). We would generally support the initiation of a Policy Development Process on the creation of additional protections to international organisations in new gTLDs (the PDP), provided that such PDP would be concluded in sufficient time for the protection to be in place for the first round of gTLDs and that the process be carried out on the basis of fair, objective and justified criteria and a proper evaluation of fact and law. However, the report, albeit preliminary, contains certain legal and factual inaccuracies, and is at times selective and inconsistent, as further described below. Legal protections enjoyed by the names and acronyms of IGOs Firstly, we are surprised that the Preliminary Issue Report completely disregards the Common Position Paper regarding Protection of IGO Names and Acronyms in the DNS in the Context of ICANN’s gTLD Expansion Plan (attached), which was sent to the Chair of the Governmental Advisory Committee (GAC) and copied to the President of the GNSO on the 4th of May, 2012 (i.e. exactly one month before publication of the Preliminary Issue Report). The common position paper should dispel any misunderstanding regarding the legal protections enjoyed by the names and acronyms of IGOs. Indeed, whereas it has been generally understood by the community and the ICANN advisory bodies, including the GAC, that IGO names and acronyms enjoy treaty protection The Paris Convention for the Protection of Industrial Property, the Agreement on Trade-Related Aspects of Intellectual Property Rights and the Trademark Law Treaty. , questions had been raised as to whether IGOs also enjoy protection under national laws. Such questioning appears to be due to an insufficient familiarity with concepts of international law. Ratified international treaties become national law directly in a number of States; in other States specific national legislation has to be enacted before the treaty obligations are given effect within the State, but in either case it is safe to assume that States respect their treaty obligations, so as 181 States have undertaken by treaty to protect the names, acronyms and emblems of IGOs, then these are protected in 181 States. Notwithstanding that, in order to allay such doubts, IGOs compiled a non-exhaustive list of specific national laws which provide for the protection of their names and acronyms (see Annex to the common position paper), which shows that there are at least 130 national laws which expressly protect IGO names and acronyms. It is therefore indisputable that IGO names and acronyms (and emblems) are protected both by international treaties and through national laws in multiple jurisdictions, in line with the two-tiered protection test established by the GAC. Distinguishing RC/IOC from IGOs IGOs have not taken position regarding the protections which ICANN and its advisory bodies may grant to the names belonging to the Red Cross/Red Crescent (RC), the International Olympic Committee (IOC) or any other organisation, nor do we wish to do so at present. However, we cannot help but note that, in its effort to distinguish the RC and IOC from IGOs on several levels, the Preliminary Issue Report neither provides a complete factual picture nor a fair assessment of the status and legal protection enjoyed by the names of the IGOs, RC and IOC. Indeed, the Preliminary Issue Report appears to accept a rather liberal application of the GAC two-tiered criteria where the RC and the IOC are concerned. Immediately after recognizing that the Nairobi Treaty only provides protection to the Olympic Symbol, the Preliminary Issue Report attempts to provide a legal rationale for extending the scope of the Nairobi Treaty to cover not only the Olympic symbol but also the Olympic names, by affirming that “the practice among some Treaty Member States in protecting the Olympic symbol and names as inclusive of each other may demonstrate state recognition of the indicative value of the Olympic names and that state’s belief in the necessity of protecting the Olympic names” Page 26 . Similarly, the Preliminary Issue Report seems to suggest, that even though Red Crescent, Red Crystal and Red Lion and Sun are not universally protected under the Geneva Convention, the mere fact that they are offered protections in countries that recognise those terms is sufficient to justify their protection in new gTLDs. Page 27 However, national recognition We do not comment on the question of what number would be sufficient to constitute protection in “multiple jurisdictions” in order to meet the second tier of the GAC test. We simply note that, according to the Preliminary Issue Report, 31 national laws protect certain (which?) IOC names and no information is provided in the Preliminary Issue Report regarding the terms Red Crescent, Red Crystal and Red Lion and Sun. does not equate to treaty recognition and should not be considered as a substitute thereof. While we do not question the right of the PDP-WG to evaluate whether IOC and RC names should be protected in the DNS, it is not accurate to suggest that these names (other than the “Red Cross” and “Geneva Cross”) enjoy treaty protection. Further, the Preliminary Issue Report states that “to date, there has been no information submitted to demonstrate that IGOs suffer the level of unauthorized or fraudulent use of their names as the RC or IOC do, or to demonstrate the need for a time-sensitive remedy for the misuse or abuse of their names.” Again, this is not factually correct, as extensive examples of abuse of names and acronyms of IGOs were provided in the Final Report of the Second WIPO Internet Domain Name Process, 3 September 2001 (WIPO-2 report), paragraphs 145 to 150 and in documents submitted by various IGOs to the Second Special Session of the Standing Committee on the Law of Trademarks In particular: the first paper (document SCT/S2/INF/4 submitted by Mr. Hans Corell, Under-Secretary-General for Legal Affairs and Legal Counsel of the United Nations, on behalf of the Legal Advisers of the following Organizations and Programmes of the United Nations System: the United Nations Organization, the Food and Agricultural Organization of the United Nations, the International Bank for Reconstruction and Development/International Development Association, the International Civil Aviation Organization, the International Finance Corporation, the International Fund for Agricultural Development, the International Labour Organisation, the International Maritime Organization, the International Monetary Fund, the International Telecommunications Union, the United Nations Educational, Scientific and Cultural Organization, the United Nations Industrial Development Organization, the Universal Postal Union, the World Health Organization, the World Intellectual Property Organization, the World Meteorological Organization, the International Atomic Energy Agency, the World Trade Organization, the Organization for the Prohibition of Chemical Weapons, the Preparatory Commission for the Comprehensive Nuclear-Test-Ban Treaty Organization, the Bank for International Settlements, the International Organization for Migration, and the Secretariat of the Convention for Climate Change) and the third paper (document SCT/S2/INF/2 submitted by the OECD). . This was expressly recognized in the Draft Final Report of ICANN’s Joint Working Group on the Wipo-2 Process – V3 (posted April 19, 2004), in which item 63 provides that “the Second WIPO Internet Domain Name Process has shown that there is ample evidence of the extensive abuse of these identifiers [names and acronyms of IGOs and country names] in the DNS”. The GNSO Issue Report on Dispute Handling for IGO Names and Abbreviations of 15 June, 2007 recognized, based on information provided by IGOs and independent research, the significant problems faced by IGOs from cybersquatting and other domain name abuses of their names and acronyms. The problems have not diminished, and are likely to be exacerbated once the many new gTLDs become operational. Suggested Criteria under which an organisation may qualify for special protection The Preliminary Issue Report states that “potential for case-by-case reviews by the GNSO to extend special protections would be overwhelming” Page 32, yet it goes on to propose six criteria -- most of questionable relevance -- which may be used to determine whether a particular organisation should qualify for special protection. As if to complicate matters, much of the proposed criteria do not set a fair and objective standard and would be complicated (if not altogether impossible) and highly inefficient to implement. This can be said for the duration of the existence of the Organisation (where to put the cut-off?), the number of its member states (how many would be sufficient?), the number of countries in which the organisation has offices and operations (organisations with headquarters or offices in only one or a few countries may have a global reach, without establishing offices or on-site operations outside headquarters), and the highly subjective “frequency at which its symbols and names are utilised in the public media.” Caution should also be used with accepting the criteria of “non-profit, humanitarian organizations whose names are currently protected by existing international treaties and national laws in multiple jurisdictions.” We have described above why the legal protection criteria is flawed. One may also consider what would constitute a “humanitarian organization”. What is even more troubling about the selection of the criteria, are the criteria which are noticeably missing. For instance, status of the organisations under international law, privileges and immunities enjoyed by the organisations, the principal source of financing of the organisations, as well as the protection of common goods and values, including several which are essential for the development of the internet, such as market principles, the rule of law and freedom of expression, which are arguably more important than those proposed in the list established in the Preliminary Issue Report. In fact, since one of the main reasons cited to support receiving special protection is the prohibitive costs of defence, questions as to the principal source of financing of the organisations seems quite pertinent. IGOs are funded essentially with public (taxpayer) funds, through contributions to their budgets from their member States. It is particularly important that IGO funds be used efficiently and with transparency, primarily on achieving the important public interest missions of the Organisations. As also pointed out on many occasions, in addition to generating significant costs, the curative processes proposed by ICANN are inconsistent with Privileges and Immunities, in particular immunity from legal process, enjoyed by IGOs, which further highlights the need to provide IGO names and acronyms with protection in new gTLDs Conclusions We hope that the information and views provided in these comments and in the attached Common Position Paper regarding Protection of IGO Names and Acronyms in the DNS in the Context of ICANN’s gTLD Expansion Plan will be helpful in refining the issues, statements and recommendations included in the Preliminary GNSO Issue Report. As stated in the introduction, we would only support the initiation of a PDP provided that it would be concluded in time to be meaningful for the first round of gTLDs and that the process would be carried out on the basis of fair, objective and justified criteria and a proper evaluation of fact and law. The issue of IGO protections will be considered on 26 June 2012 at the GAC meeting in Prague. Further comments may follow subsequent to that meeting. Attachment:
IGO common position paper 04 May 2012.pdf Attachment:
Annex to the IGO common position paper 04 may 2012.pdf |