[alac] Re: [alac-admin] suggested WIPO edits

["Sebastian Ricciardi" <sricciardi@xxxxxxxxxxxxxxx>]

Re: [alac-admin] suggested WIPO editsWorks for me.

Sebastian
  ----- Original Message ----- 
  From: Denise Michel 
  To: ALAC members 
  Sent: Tuesday, April 29, 2003 3:20 PM
  Subject: FW: [alac-admin] suggested WIPO edits


  Thanks, Wendy.  Looks good to me.  Are others comfortable soliciting comments 
on this version?  Again, this would be a draft for posting/comment -- subject 
to further ALAC revision -- *not* a final version you need to approve.

  Let me know.

  Thanks.
  Denise   
    -----Original Message-----
    From: Wendy Seltzer [mailto:wendy@xxxxxxxxxxx]
    Sent: Tuesday, April 29, 2003 11:05 AM
    To: Denise Michel
    Cc: ALAC members
    Subject: Re: [alac-admin] suggested WIPO edits


    Thanks Denise,
    I think your edits strengthen the piece overall.  I've made a few changes, 
toning down the praise for UDRP (I still don't like it!) and clarifying a few 
sentences. On the appendix, I'm of mixed minds.  Since, as you note, the Board 
is already on track to have the GNSO initiate policy development, I thought we 
might get a jump start on having our substantive thoughts on the PDP considered 
at this time.  Others' thoughts?


    I've pasted suggested revised text below and attached a Word doc.


    --Wendy

    Introduction
    The Interim At-Large Advisory Committee <http://alac.icann.org/>  thanks 
the Board for the opportunity to comment 
<http://forum.icann.org/mail-archive/alac/msg00179.html>  on the 
recommendations 
<http://www.icann.org/correspondence/gurry-letter-to-cerf-lynn-21feb03.htm>  
concerning the protection of the names and acronyms of intergovernmental 
organizations 
<http://www.icann.org/correspondence/gurry-letter-to-cerf-lynn-21feb03.htm#ANNEX1>
 (IGOs) and of country names 
<http://www.icann.org/correspondence/gurry-letter-to-cerf-lynn-21feb03.htm#ANNEX2>
  in the DNS, communicated to ICANN by the World Intellectual Property 
Organization (WIPO) on February 21, 2003.

    The present comments focus on the ALAC's basic concerns with the subject 
matter of these recommendations, which appears to be out of scope of ICANN's 
limited mission. We would submit a more detailed analysis of the 
recommendations proper if and when WIPO's recommendations are subject to 
policy-development processes. 
<http://www.icann.org/general/archive-bylaws/bylaws-25feb03.htm#AnnexA>



    Subject Matter Concerns
    ICANN's mission and core values <http://www.icann.org/general/bylaws.htm#I> 
 have a clear focus on the organization's technical coordination function -- 
ICANN is clearly not intended to be an international law-making body. Rather, 
ICANN acts within a framework of national and international laws. It serves to 
provide architectural support for existing laws, not to make new laws.

    Both ICANN and WIPO have followed this principle relatively successfully in 
the past, when establishing the UDRP <http://www.icann.org/udrp/>  as an 
inexpensive method to address the bad faith registration of others' trademarks 
as domain names, while deferring to the courts in situations in which several 
parties may have legitimate claims to a domain name. Underlying the UDRP is a 
body of law which is reasonably uniform, internationally.

    In the Committee's view, two key features of the UDRP help to keep ICANN 
out of any lawmaking role.

    First, the UDRP addresses only situations where a complainant has rights 
under existing trademark laws. Decisions are specifically required to be made 
in accordance with the rules and principles of law that the panel finds 
applicable. The UDRP implements existing law which has been developed by 
well-established governmental law-making mechanisms. It does not create new 
trademark law.

    Second, parties dissatisfied with UDRP rulings can obtain judicial review 
in an appropriate court. This helps to ensure that the UDRP does not supersede 
applicable national law.

    The Committee is concerned to observe that WIPO's recommendations on the 
protection of the names of IGOs and countries seem to contemplate creation of  
rights in names without support in existing law. Indeed,  WIPO's September 2001 
Report of the Second WIPO Internet Domain Name Process (The Recognition of 
Rights and the Use of Names in the Internet Domain Name System 
<http://wipo2.wipo.int/process2/report/html/report.html> , September 3, 2001, 
"WIPO Report") recognizes that there is no basis in existing law for the rights 
in domain names that the current recommendations seek to have implemented 
through forced cancellation or transfer of domain names.

    In the case of the WIPO recommendations on IGOs, paragraph 138 of the WIPO 
Report describes the limited nature of rights of IGOs in their names and 
abbreviations under Article 6ter of the Paris Convention.  In paragraph 168, 
the WIPO Report recognizes that cancellation or transfer of domain names 
through an ICANN-mandated administrative procedure:


      would involve, at least in cases not involving the use of domain names as 
trademarks, the creation of new international law. It would represent an 
extension of the principles in Article 6ter of the Paris Convention, the 
Trademark Law Treaty and the TRIPS Agreement.  While it is believed that such 
an extension is desirable, it would require a legitimate source in 
international law.  It would be for States to determine the appropriate basis 
for such an extension of law, either in the form of a resolution of a competent 
treaty organ, a memorandum of understanding duly accepted by national 
authorities or a treaty.


    Despite these observations, WIPO has now transmitted recommendations 
calling for creation of a mandatory administrative procedure, disregarding 
existing law's limitations on rights in IGO names and abbreviations.  The 
recommendations would also remove the current UDRP's assurance that existing 
legal principles will be observed. Instead, the recommendations replace the 
right to review in a national court applying national law with only a binding 
arbitration mechanism, applying the "extension of principles" of established 
law, as described in the WIPO Report.

    In the case of the WIPO recommendations on country names, the WIPO Report 
is even more direct about the lack of basis in existing law.  It states in 
paragraphs 286 and 287:

      286. . . . Rather than expressing agreement or disagreement with this 
position [favoring exclusive rights in country names], we draw attention to the 
following fundamental characteristics of the debate, as they have emerged from 
the Second WIPO Process:


      (i) The question of the appropriateness of the registration of country 
names in the gTLDs is inextricably linked by some governments to what they 
perceive to be their national sovereign interest.


      (ii) Protecting country names in the gTLDs would require or amount to the 
creation of new law, a function traditionally reserved for States.


      287. Both points lead us to conclude that we have reached the limits of 
what can be achieved legitimately through consultation processes, such as the 
WIPO Internet Domain Name Processes or any similar ICANN processes.  In other 
words, we agree with those commentators who are of the view that this 
particular question is more appropriately dealt with by governments.


    Despite this clear recognition that there is no basis in current law for 
recognition exclusive rights to country names, the current WIPO recommendations 
propose amendment of the UDRP to implement those "rights."

    We believe that it would be inappropriate for ICANN to assume the role of 
an international legislator, and to try to establish such new law through its 
contracts and policy processes. For this reason, any policy-making processes 
which are based upon WIPO's recommendations in the areas of the protection of 
IGOs' and countries' names must pay close attention to staying within the 
confines of supporting existing, internationally uniform law.

    In view of these new difficulties -- which are less evident in the 
trademark-centric review of the UDRP currently underway -- the Committee 
supports the GNSO Council's recommendation to separate the UDRP's review from 
discussions about implementation of WIPO's recommendations, and to address the 
additional WIPO requests in a separate policy-making process.

    The Committee also recommends to the Board that any separate policy-making 
process begin with a careful review of the legal basis for rights that are 
proposed to be created or implemented.  The September 2001 WIPO Report strongly 
indicates that the current WIPO recommendations propose to implement "rights" 
that are not supported by existing law.  The Board, in common with other ICANN 
bodies, has a responsibility to take care that ICANN adhere to its limited 
mission.  The Committee urges the Board to ensure that ICANN's policy 
development proceed only where there is a solid legal foundation and a full 
understanding of the limits of existing legal consensus.



    Annex: Preliminary Analysis of the Recommendations
    We note that a more precise analysis will be necessary for a final 
assessment of the extent to which an implementation of WIPO's recommendations 
would indeed amount to the creation of new international law. We do not provide 
that analysis in this document, but will focus on a number of remarks on the 
merits of the individual recommendations.

    We would ask in the first instance whether there is any real problem of 
mis-registration of names of IGOs and Countries, or whether perceived problems 
can be solved without new ICANN intervention, for example through use of the 
existing restricted .int TLD and countries' own ccTLDs. Where such a minimally 
disruptive alternative is available, that should be examined thoroughly before 
more extensive regulation is proposed.


    Names and Acronyms of IGOs
    *The committee notes that the WIPO Report disparages the .int top-level 
domain for its internal limitations and lack of public awareness. Rather than 
reshaping the rest of the domain name system to solve those deficiencies, the 
Committee proposes that the .int TLD should be re-examined as a dedicated TLD 
for IGOs.

    *The language proposed by WIPO seems to apply to past and future 
registrations. The committe notes that, given that most IGOs' acronyms are 
short, there is a high likelihood that these might be used as good-faith 
acronyms for other entities, and may have been registered in good faith. The 
settled expectations of existing domain name holders should not be upset.

    *Recommendation 1.A suggests a complaint system based on "registration or 
use" of a domain name which need to be of a certain "nature" in order to 
justify a complaint. This wording, and the subjectivity of the determination it 
entails, bears a considerable risk of extending policy-based dispute resolution 
mechanisms to areas touching upon the regulation of net content. We recommend 
that such disputes be left to regular courts.

    *Recommendation 1.B's wording is rather comprehensive -- as presented, this 
recommendation would not be limited to IGOs' names and acronyms as registered 
according to Paris Convention art. 6ter, but may cover any names and acronyms 
covered by any international contract. The right to complain would be given to 
any IGO. This recommendation may be misread as an attempt to use ICANN policies 
as an instrument for the enforcement of arbitrary international contracts. The 
Committee suggests that ICANN should seek clarification of this recommendation 
from WIPO.


    Country Names
    *The language on country names once again relies upon criteria applied to 
the "registration or use" of domain names. The same concerns as above apply.

    *Once again, it seems more appropriate to give each country control of its 
name (and any other character strings it chooses) in its unique ccTLD, not to 
grant it monopoly rights in strings across all TLDs.

     





    At 10:34 -0700 4/28/03, Denise Michel wrote:
      I think the ALAC has a powerful statement/position on the WIPO letter 
(thank you Thomas & Wendy), and an opportunity for taking a leadership position 
and directly effecting Board action on this issue.  Based on conversations and 
research, some changes are suggested (below -- additions in blue, deletes in 
red, notes w/ ***) that are intended to strengthen the ALAC's case and provide 
the Board specific and usable advice about how the policy-development process 
might proceed in a way that is compatible with the ALACâs concerns.  Please 
share your thoughts ASAP.

      Thanks.
      Denise



-- 

    --
    Wendy Seltzer -- wendy@xxxxxxxxxxx || wendy@xxxxxxx
    Staff Attorney, Electronic Frontier Foundation
    Fellow, Berkman Center for Internet & Society at Harvard Law School
    http://cyber.law.harvard.edu/seltzer.html