Comments on the “Preliminary GNSO Issue Report on the Protection of International Organization Names in New gTLDs” - Separate submission by the Universal Postal Union (UPU)

[GUILHERME ricardo <ricardo.GUILHERME@xxxxxxx>]

25 June 2012
 
Comments on the “Preliminary GNSO Issue Report on the Protection of 
International Organization Names in New gTLDs” - Separate submission by the 
Universal Postal Union (UPU)
 
Introduction
 
The Universal Postal Union (UPU), a specialized agency of the United Nations 
and an intergovernmental organization with 192 member States, takes this 
opportunity to provide the following comments to the Preliminary GNSO Issue 
Report on the Protection of International Organization Names in New gTLDs (the 
"Preliminary Issue Report").
 
These comments, which are based on a submission originally prepared by the 
Organization for Economic Co-operation and Development (OECD) as supported by 
other intergovernmental organizations ("IGOs"), and further complemented by a 
number of additional remarks by the UPU, are intended to reinforce the 
statements previously contained in the Open Letter from Intergovernmental 
Organizations on the Expansion of Generic Top Level Domains (the "Open Letter") 
sent to the President and CEO of ICANN in December 2011, as well as the Common 
Position Paper regarding Protection of IGO Names and Acronyms in the DNS in the 
Context of ICANN’s gTLD Expansion Plan (the "Common Position Paper"), which was 
sent by OECD (on behalf of the IGOs named therein) to the Chair of the 
Governmental Advisory Committee (GAC) with a copy to the President of the GNSO 
on 4 May 2012.
 
In this regard, the UPU expresses its general support, in principle, for the 
establishment of a Policy Development Process (PDP) on the creation of 
additional protections to international and intergovernmental organizations in 
the new gTLD program (the PDP), provided that this is carried out on the basis 
of fair, objective and justified criteria corroborated by a proper evaluation 
of factual and legal considerations, and that such PDP would be concluded in 
sufficient time for the protection to be in place for the first round of gTLDs. 
Nevertheless, and as previously stated by other intergovernmental 
organizations, the UPU regrets that the Preliminary Issue Report and its 
recommendations, which seemingly reflect (at least in part) advice given by the 
GAC, are not only legally and factually inaccurate but also selective and 
inconsistent in their appreciation of the specific character of 
intergovernmental organizations such as the UPU.      
 
On the legal protections enjoyed by the names and acronyms of IGOs
 
 From the outset, the UPU shares the concern already manifested by other IGOs, 
in the sense that the Preliminary Issue Report referred only to the 
aforementioned Open Letter but completely disregarded or ignored the clarifying 
considerations contained in the aforementioned Common Position Paper, 
particularly in terms of explaining the framework of legal protections enjoyed 
by the names and acronyms of IGOs.
 
While it has been generally acknowledged and understood by ICANN and its 
advisory bodies (notably 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, and whether the existence of such specific 
domestic legal provisions would constitute an additional mandatory criteria for 
affording protection to IGO names and acronyms under the new gTLD program and 
other existing ICANN processes (in what may be unofficially termed as the "GAC 
two-tier test". Alas, such questioning seems to be associated with an 
insufficient familiarity with concepts of international law.
 
Indeed, and as provided in the Common Position Paper, the fact that 
intergovernmental organizations enjoy BOTH treaty-level and specific domestic 
law protections should not imply or be interpreted as constituting acceptance 
of the ICANN two-tier test. This artificial parameter disregards the fact that 
several jurisdictions around the world (the so-called “monist” countries, in 
which duly ratified international treaties become an intrinsic part of the 
domestic legal framework) do NOT require the adoption of a separate/specific 
domestic legislation or translation into national law before they can have 
domestic legal effects. In other States, specific national legislation has to 
be enacted before treaty obligations are given effect within those States (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).
 
Without prejudice to the above, the concerned IGOs produced a non-exhaustive 
list of specific national jurisdictions which, in addition to international 
treaty provisions on the matter (which, once more, should suffice for the 
purposes discussed herein), provide for even more specific domestic protection 
of IGO names and acronyms (such a list confirmed that there are at least 130 
national laws which expressly protect IGO names and acronyms).
 
It is therefore clear that IGO names and acronyms (as well as their emblems) 
are protected both by international treaties and national laws in multiple 
jurisdictions, even if, as explained above, the GAC two-tier test (or any de 
facto conformity therewith) should neither be regarded as valid legal doctrine 
nor interpreted as an acceptable parameter under the international law 
principles applicable to IGOs.
 
In the light of the above, it is equally necessary to recall and emphasize the 
absolute need for an objective treatment of these questions on an accurate 
legal basis – notably, in that any such approach proposed or adopted by ICANN 
(including without limitation the GAC) be consistent with its Articles of 
Incorporation and Bylaws, which determine that the organization shall carry out 
its activities in conformity with the relevant principles of international law 
and applicable international conventions and local law.
 
Moreover, the GAC’s approach must be fully in line with its mandate to 
“consider and provide advice on the activities of ICANN as they relate to 
concerns of governments, multinational governmental organizations and treaty 
organizations, and distinct economies as recognized in international fora, 
including matters where there may be an interaction between ICANN's policies 
and various laws and international agreements and public policy objectives.” 
(excerpt quoted from the GAC Operating Principles).
 
Finally, it may be useful to highlight that even the relevant U.S. White Paper 
on Principles for the new DNS System (i.e., the creation of ICANN) expressed 
that “the U.S. Government policy applies only to management of Internet names 
and addresses and does not set out a system of Internet “governance” […] this 
policy is not intended to displace other legal regimes (international law, 
competition law, tax law and principles of international taxation, intellectual 
property law, etc.) that may already apply” (U.S. White Paper, available at 
http://www.icann.org/en/about/agreements/white-paper).
 
Distinguishing the RC/IOC from IGOs
 
It must be emphasized once more that the UPU (and other IGOs for that matter) 
have not taken any 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) and any other organization, nor 
do they wish to discuss the legitimate reasons that any of those organizations 
may have in requesting such additional protection under the new gTLD program. 
Nevertheless, it is essential to provide, in this submission, due clarification 
as well as an accurate legal and factual picture of the status and protections 
enjoyed by the names and acronyms of IGOs, and the relevant differences when 
compared to organizations such as the RC and the IOC.
 
In this regard, the Preliminary Issue Report appears to accept a rather liberal 
application of the GAC two-tier test where the RC and the IOC are concerned, 
while disregarding the specific status of IGOs as explained above. 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.”
 
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 recognize those terms is sufficient to justify their protection 
in the new gTLD program. However, national recognition does not equate to 
treaty recognition and should not be considered as a substitute thereof. While 
the UPU also does not question the right of ICANN and its advisory bodies to 
evaluate whether IOC and RC names may be protected in the DNS, it is not 
accurate to suggest that the names mentioned above (other than the “Red Cross” 
and “Geneva Cross”) enjoy treaty protection.
 
Moreover, it should be emphasized that another reason behind the fact that some 
non-governmental organizations may have two “tiers” of protection stems from 
the simple fact that those organizations are not subject to the general legal 
protection accorded under article 6ter of the Paris Convention (as is the case 
for IGOs), and that the existing treaties applicable to those non-governmental 
organizations may not be sufficient to afford the intended protection. From the 
perspective of IGOs, this also explains why, as a matter of principle, there is 
no need for “specific laws” to deal with the protection of their names and 
acronyms in multiple jurisdictions (even though many countries have enacted 
related domestic legislation as indicated above).
 
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, since extensive examples of abuse of 
names and acronyms of IGOs in detriment of their public interest missions and 
mandates were provided in the 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, as already specified by OECD in 
its submission (with the support of other IGOs).
 
This was also 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.” Moreover, 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 organization 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”, yet it goes on 
to propose six criteria - most of them of legally and factually questionable 
relevance - which might be used to determine whether a particular organization 
should qualify for special protection.
 
As if to complicate matters, much of the proposed criteria would be near 
impossible to set a fair and objective standard for and would be complicated 
and inefficient to implement. This can be said for the duration of the 
existence of an organization, the number of its member states, the number of 
countries in which the organization has offices and operations (organizations 
with headquarters or offices in only one or a few countries, as is the case 
with the UPU, DO have a global reach without establishing offices or field 
operations outside headquarters), and the frequency at which its symbols and 
names are utilized in the public media. With respect to the latter, the 
relevance of popular recognition to protection is not readily apparent and has 
never been considered for statutory protection of IGO names and acronyms under 
international treaties or even national jurisdictions. In addition, the 
acceptance of the GNSO-suggested criteria above, as well the adoption of the 
GAC two-tier test (a procedure which “the GAC established for RCRC and IOC, 
i.e. non-profit, humanitarian organizations whose names are currently protected 
by existing international treaties and national laws in multiple 
jurisdictions"), would surely lead to subjective value judgments which run 
completely counter to established principles and rules of international law 
concerning the protection of the names and acronyms of IGOs, not to mention 
similar subjective considerations on the "humanitarian" character of IGOs 
(which, in line with their public common good mandates, are to be deemed as 
humanitarian by definition).
 
What is even more troubling about the selection of the criteria are the 
criteria which are noticeably missing. For instance, the status of the 
organizations under public international law, privileges and immunities enjoyed 
by the organizations, the principal source of financing of those organizations, 
as well as the protection of common goods including market principles, the rule 
of law, freedom of expression (essential for the development of Internet), are 
considerations 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 cost of defense, questions as to the principal 
source of financing of the organizations seems quite pertinent.  IGOs are 
funded essentially with public (taxpayer) funds, through contributions to their 
budgets from 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 IGOs. Finally, as also pointed out on many occasions, 
in addition to generating significant costs, the curative mechanisms and 
processes proposed by ICANN for the new gTLD program are inconsistent with the 
privileges and immunities and in particular the principle of immunity from 
legal process as enjoyed by IGOs, which further highlights the need to provide 
IGO names and acronyms with protection in the new gTLD program.
 
Conclusions
 
In conclusion, the UPU hopes that the information and views provided in these 
comments (once more, on the basis of the original submission by OECD as 
supported by other IGOs) will be helpful in refining the issues, statements and 
recommendations included in the Preliminary Issue Report as well in any advice 
to be provided by the GAC and the ICANN Board on the matter, and supports the 
initiation of the PDP referred to above, provided that this is carried out on 
the basis of fair, objective and justified criteria corroborated by a proper 
evaluation of factual and legal considerations, and that such PDP would be 
concluded in sufficient time for the protection to be in place for the first 
round of gTLDs.