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Comments of the World Bank to Initial Report on IGO-INGO Access to Curative Rights Protection Mechanisms

  • To: "comments-igo-ingo-crp-access-initial-20jan17@xxxxxxxxx" <comments-igo-ingo-crp-access-initial-20jan17@xxxxxxxxx>
  • Subject: Comments of the World Bank to Initial Report on IGO-INGO Access to Curative Rights Protection Mechanisms
  • From: Ingo Burghardt <iburghardt@xxxxxxxxxxxxx>
  • Date: Wed, 29 Mar 2017 20:04:32 +0000

Dear GNSO Policy Development Process Working Group -

The World Bank submits the following comments.  A copy is also attached in .pdf 

The GNSO should reconsider its initial advice regarding IGOs.  The World Bank 
supports the comments filed by other IGOs, including the OECD, and adds the 
following comments on its own behalf.
The International Bank for Reconstruction and Development, known as the World 
Bank, is a public Intergovernmental Organization (IGO) dedicated to funding and 
encouraging development activity in its member states.   Its twin goals are 
eliminating severe poverty and boosting global prosperity by 2020.   The World 
Bank is owned and controlled by its 189 member nations, who contribute public 
funds to its development work.   Because the World Bank operates across 
international borders in its member nations, its member states have agreed to 
allow it certain privileges and immunities from the application of their 
national laws in its operations.   These immunities are often interpreted and 
applied by local courts, and may be waived expressly or impliedly by the World 
The World Bank's name is often misused in frauds and scams, as are the names of 
other IGOs.   These scams can be perpetrated, or assisted, by the misleading 
registration of domain names with similar or identical names and acronyms to an 
IGO.   Any resources that the World Bank has to expend to address such 
fraudulent domain name abuse must be diverted from the development assistance 
the Bank is able to offer to the world's poorest nations.  As a result, the 
World Bank, along with 196 other IGOs, has long been requesting that ICANN 
grant to IGOs some basic protections for their names and acronyms under the 
gTLD program.  A list of the advice provided to the ICANN Board by ICANN's 
Governmental Advisory Council can be found on ICANN's website 
The GNSO Initial Report refuses to make any accommodations for IGOs, and seeks 
to force the IGOs to choose between protecting their acronyms or protecting the 
immunities that allow them to operate internationally without the constant 
threat of lawsuits in every member country.  The GNSO obtained a legal opinion 
that explains the special nature of IGOs and the consequences of their status, 
which is attached to the GNSO Initial Report as Annex 14,  Annex 14 to Initial 
 but the GNSO largely rejects or contradicts the analysis and recommendations 
of its own legal expert.  Similarly, the GNSO appears to have rejected the 
input it received from the IGO Small Group on this topic.

Recommendation #1:
The World Bank is not an INGO, and has no comments on this recommendation 
concerning INGOs.

Recommendation #2:
The World Bank believes that the GNSO seeks to require too legalistic and 
technical a test before many IGOs would be able to even access the Uniform 
Dispute Resolution Procedure or Uniform Rapid Suspension Process.  The UDRP and 
URS generally require a claimant to prove that it has the right to assert 
protection for a name or acronym.  A convenient shorthand is to require 
evidence of a valid trademark or service mark in the name or acronym a claimant 
seeks to protect.  For corporations organized under national law, this test 
makes sense.  For IGOs, however, such a requirement is often disqualifying, 
since IGOs often choose not to register their names as trademarks in all of the 
nations in which they operate.  The World Bank, for example, has 189 member 
countries.  The cost of registering and monitoring trademark applications 
across 189 countries would consume resources better spent on development 
assistance.   The World Bank, like the OECD, urges the GNSO to allow 
arbitrators in the URDP and URS systems to apply international law, which may 
include Article 6ter of the Paris Convention, to evaluate whether an IGO has 
standing to file a claim.  No special restrictions are justified for IGO claims.

Recommendation #3:
The GNSO attempts to mandate a second technical, legalistic limitation on the 
ability of an IGO to file a UDRP or URS complaint.  The GNSO proposes that 
"UDRP and URS Panelists should take into account the limitation enshrined in 
Article 6ter(1)(c) of the Paris Convention in determining whether a registrant 
against whom an IGO has filed a complained registered and used the domain name 
in bad faith."  It is not clear that this recommendation even makes sense.  
Article 6ter(1)(c) states:
(c) No country of the Union shall be required to apply the provisions of 
subparagraph (b), above, to the prejudice of the owners of rights acquired in 
good faith before the entry into force, in that country, of this Convention. 
The countries of the Union shall not be required to apply the said provisions 
when the use or registration referred to in subparagraph (a), above, is not of 
such a nature as to suggest to the public that a connection exists between the 
organization concerned and the armorial bearings, flags, emblems, 
abbreviations, and names, or if such use or registration is probably not of 
such a nature as to mislead the public as to the existence of a connection 
between the user and the organization
The GNSO apparently desires to limit an IGO's ability to argue that a 
fraudulent website is fraudulent unless the IGO proves that the website is "of 
such a nature as to mislead the public as to the existence of a connection 
between the user and the organization."  Such a formalistic preliminary 
determination is not currently required for any commercial claimant before the 
UDRP or the URS, and none should be imposed on IGOs.   There is no reasonable 
or legal basis to attempt to use the Paris Convention for something that it was 
never designed to do - the provision above applies to the "countries of the 
Union," not to ICANN.   Article 6ter(1)(c) was not drafted with ICANN or the 
UDRP in mind, and the attempt to use it to limit an IGO's claim that its 
acronym is being used in bad faith is unwarranted.  An IGO should have the same 
ability to argue and prove bad faith as a commercial claimant.

Recommendation #4
The World Bank adopts the OECD's comments in their entirety on this point.  The 
World Bank admits that the privileges and immunities of IGOs are not a simple 
topic.  This is why some deference should be accorded to the IGOs on this 
issue, who are experts, or at least to the GAC, whose membership consists of 
government representatives.  The GAC's advice on the IGO issue was long in 
favor of allowing IGOs to have completely preventative protections for their 
acronyms, which would have avoided complex immunity issues altogether.  
Ultimately, in an effort to reach a resolution on this issue, the GAC has 
accepted and recommended a curative mechanism for IGOs to defend their 
acronyms, but the GAC's recommendation still avoids use of national courts 
The World Bank believes that the ICANN Board was correct when it agreed that 
this issue could be resolved according to the October 4, 2016 Policy 
Recommendations presented to the GNSO and the Board by the IGO "Small Group."  
Annex 12 to the GNSO report contains a copy of these recommendations, which 
include an arbitral appeal process from any UDRP determination of an allegation 
of domain name abuse.   That method would avoid concerns about immunity waivers 
completely.  Instead of following these recommendations, however, the GNSO's 
Interim Report departs from that advice in several key ways, apparently mostly 
based on a reluctance to make any changes to the existing UDRP and URS process.
The GNSO dismisses the conclusions and opinions of GNSO's own legal expert, and 
attempts to force IGOs to choose between compromising their right to prevent 
fraud using their acronyms, or to compromise the immunities granted to IGOs by 
their member states.  The World Bank believes the GNSO should acknowledge and 
apply the legal opinions expressed in Annex 14 to the GNSO's own Interim 
Report. (This opinion is necessarily broad stroke and generalized, since it 
attempts to deal with the different immunities granted to IGOs by their member 
governments under international and national law.  The judicial immunity 
granted to the World Bank by the World Bank by its member states is unique, and 
has been applied in different ways in different courts around the world.  
Overall, the World Bank is not agreeing that Professor Swain's opinion is in 
any way specifically binding on the World Bank, and is not agreeing that it 
would waive any immunity in any way by engaging in any action relating to its 
acronym, including in the UDRP or the URS).
Professor Swaine concludes that "granting Mutual Jurisdiction - via initiation 
of a complaint, or, for that matter, registration - would likely be understood 
as a waiver of any immunity the IGO might otherwise assert".  The GNSO has no 
reasonable basis to ignore this advice, so only by departing from Professor 
Swain's analysis and conclusions can the GNSO justify its preliminary 
recommendations on this issue.   The GNSO falsely envisions a world in which 
IGOs avail themselves of the current UDRP process, including the Mutual 
Jurisdiction clause, but then will somehow still be able to claim immunity in 
an appeal of that decision to a national court.  This is extremely unlikely, 
and this counterfactual assumption should not form the basis for any serious 
Alternatively, the GNSO suggests that an IGO could sidestep any immunity issue 
by simply filing "through an assignee, licensee or agent."  This suggestion is 
of course impossible to implement if a third party brings a case, well founded 
or not, directly against an IGO, which would be left to defend itself in the 
UDRP proceeding at the risk of having waived its immunity in any later appeal.  
In addition, even where an IGO is considering filing a claim itself, the GSNO 
completely fails to explain how this assignment trick would work in practice.  
The difficulty and complexity inherent in an attempt to assign name rights are 
explained in detail by Professor Swaine.  For one thing, the assignment may 
well be rejected by the UDRP or a court.  In addition, the assignment might 
also be ineffective in protecting the IGO's immunity.   The GNSO's 
recommendation that an IGO should routinely give control of its name to a third 
party in order to file a UDRP proceeding to protect its name makes very little 
sense, and continues to threaten the immunities of the IGO.
Overall, the World Bank does not accept the GNSO's statement that its present 
recommendations "will result in substantial improvement and clarity regarding 
IGOs' access to curative rights protections mechanisms."  Instead, the GNSO's 
preliminary recommendations simply defend the status quo and the existing URDP 
and URS process, and seek to avoid making any accommodations for IGOs.  The 
GNSO does not adequately consider the actual threat posed to IGOs by being 
forced to waive their immunities in order to participate in the UDRP, and 
provides no reasonable options.  In fact, the GNSO has not even fully completed 
its deliberation process on this difficult point, but instead offers two 
contradictory "options," between which it may yet decide, and even acknowledges 
that it may recommend some unnamed third option.  Perhaps acknowledging that 
this recommendation is not completely thought out, the GNSO strongly requests 
specific input on this item, "to aid it in developing its final 
recommendations."  Since the GNSO is unable to come up with any viable 
alternative recommendation on this issue, the October 4, 2016 Small Group 
recommendations should simply be adopted by the ICANN Board.

Recommendation #5
The World Bank agrees with Recommendation 5, which is in line with prior GAC 
advice on this issue.  IGOs rely on public funds from their member countries, 
and should be allowed to spend those funds on the public missions for which 
they are established.  IGOs should not have to divert those funds to protect 
their acronyms against fraud and abuse in ICANN's domain name system.

Best regards,
Ingo Burghardt

Ingo Burghardt, Senior Counsel

Legal Vice Presidency, Institutional Administration

The World Bank

1818 H Street, N.W. Washington, D.C. 20433

' +1(202) 473-5837

7  +1(202) 522-1596

* iburghardt@xxxxxxxxxxxxx<mailto:iburghardt@xxxxxxxxxxxxx>

Attachment: World Bank Comments to GNSO. 3.29.pdf
Description: World Bank Comments to GNSO. 3.29.pdf

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