First principles

["Richard Hill" <rhill@xxxxxxxxx>]

As I'm not a lawyer, and even though I have published papers in
peer-reviewed law journals, I tend to think of issues in terms of what is
equitable (in the common meaning of the word) before turning to a strict
legal analysis.

So I'd like to recall that one of the purposes of trademarks is to
discourage "those who hope to sell inferior products by capitalizing on a
consumer's inability quickly to evaluate the quality of an item offered for
sale" (the quote is from a well-known judgment of the US Supreme Court [1]).

That is, one of the reasons for protecting trademarks, and prohibiting their
use by non-authorized parties, is to protect consumers.

When domain names incorporating trademarks started to be registered, it was
felt that there should be a fast and simple method to correct flagrant cases
of abuse, that is, of cybersquatting, see paragraphs 148 ff. of the Final
Report of the WIPO Internet Domain Name Process, 20 April, 1999 [2].

For example, if a company called Ruritania Widgets had a corresponding
trademark, and somebody other than the company registered the domain name
<buy-ruritania-widgets.com>, then Ruritania Widgets might prevail if it
filed a UDRP complaint.

So it seems to me that it would be equitable to allow an intergovernmental
organization (IGO) to have access to a similar fast and simple method to
correct flagrant cases of abuse, for example <donate-to-red-cross.org>, if
that domain name was not registered by one of the Red Cross entities.

IGOs have stated repeatedly, and for many years, that they are unable to use
the present UDRP because it requires them to waive immunity of jurisdiction,
which they do not wish to do.

Some people disagree with this position and think that IGOs should agree to
waive immunity, or find some other means to use the existing UDRP.

But the fact remain that, as shown by the present round of comments, IGOs do
not agree with that position and maintain that they should be able to have
access to a UDRP-like process without having to waive immunity. So they
don't use the UDRP.

As a consequence, abusive registrations using IGO names and acronyms are not
challenged.

Is that a problem in practice? Perhaps not, because perhaps there aren't
many such abusive registrations. But if there aren't many such abusive
registrations, then what's the harm in creating a UDRP-like process that the
IGOs can use without waiving immunity?

Conversely, if there are a significant number of such abusive registrations,
then surely consumers should be protected and a UDRP-like process that the
IGOs can and will use should be created.

It seems to me that the United States has missed the key point regarding
consumer protection in its learned disquisition [3] on the intricacies of
implementing (or not) Article 6ter of the Paris Convention [4], particularly
because it seems to me that subparagraph (c) of that article implies (read a
contrario) that the purpose of Article 6ter includes protecting the public
from misleading use of IGO names and acronyms.

Best,
Richard

[1] Qualitex Co. v. Jacobson Products Co. (93-1577), 514 U.S. 159 (1995),
available at:

https://www.law.cornell.edu/supct/html/93-1577.ZO.html 

The full citation, minus references to doctrine, is:

" ... trademark law, by preventing others from copying a source identifying
mark, 'reduce[s] the customer's costs of shopping and making purchasing
decisions,' ... for it quickly and easily assures a potential customer that
this item--the item with this mark--is made by the same producer as other
similarly marked items that he or she liked (or disliked) in the past. At
the same time, the law helps assure a producer that it (and not an imitating
competitor) will reap the financial, reputation related rewards associated
with a desirable product. The law thereby 'encourage[s] the production of
quality products,' ... and simultaneously discourages those who hope to sell
inferior products by capitalizing on a consumer's inability quickly to
evaluate the quality of an item offered for sale. ..."

[2] http://www.wipo.int/amc/en/processes/process1/report/finalreport.html 

[3]
https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/m
sg00013.html  

[4]
http://www.wipo.int/wipolex/en/treaties/text.jsp?file_id=288514#P155_22332