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IGO Comments on the “Preliminary GNSO Issue Report on the Protection of International Organization Names in New gTLDs”

  • To: <prelim-protection-io-names@xxxxxxxxx>
  • Subject: IGO Comments on the “Preliminary GNSO Issue Report on the Protection of International Organization Names in New gTLDs”
  • From: <Alexandra.EXCOFFIER-NOSOV@xxxxxxxx>
  • Date: Mon, 25 Jun 2012 16:36:46 +0000

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
Description: IGO common position paper 04 May 2012.pdf

Attachment: Annex to the IGO common position paper 04 may 2012.pdf
Description: Annex to the IGO common position paper 04 may 2012.pdf



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