legal Duplicitous ICANN Working Group Jeopardizes Domain Owners’ Rights

[GeorgeK]

A duplicitous ICANN Working Group has issued a report that is open for public comments that would have severe negative consequences for domain name owners. In particular, it would tilt the playing field in a domain name dispute (i.e. a UDRP or the URS) involving IGOs (intergovernmental organizations like the United Nations) in such a manner that it would be nearly impossible for domain owners to have their dispute decided on the merits by the courts. This would encourage consequence-free reverse domain name hijacking. Rather than accept the findings and recommendations of the prior working group, which reached a consensus, this new working group instead had tunnel vision and focused instead on ramming through an alternative recommendation (involving arbitration) for which there was an express consensus against in the prior working group!

The current deadline for comments (unless extended) is October 24, 2021.

Read more about this dangerous report and what you can do to stop its recommendations in my blog post at:

https://freespeech.com/2021/10/12/duplicitous-icann-working-group-jeopardizes-domain-owners-rights/

 

[robinnx]

they are either very stupid OR some people are going to make so much money from it very soon

 

[GeorgeK]

they are either very stupid OR some people are going to make so much money from it very soon

That's not an "either" / "or" --- it's more like BOTH when it comes to ICANN.

 

[Kai W.]

I can't quite understand the obvious consequences of the content of this proposal.
But this Requesters: Generic Names Supporting Organization let me understand that someone is come to rob the jewels, though my pockets are full of stones.

 

[GeorgeK]

I can't quite understand the obvious consequences of the content of this proposal.
But this Requesters: Generic Names Supporting Organization let me understand that someone is come to rob the jewels, though my pockets are full of stones.

Right now, if someone creates a dispute involving one of your domain names, and you lose the UDRP/URS, you have the fundamental right to have that dispute decided on its merits in the court system. With this proposal, they'll take that right away from you, starting with a special class of complainants (IGOs, e.g. the UN, WHO, World Bank, and organizations of that type). They'd replace the court access with arbitration.

This reduction in rights might seem at first glance to be small, but it's only the existence of court action that creates checks and balances for the UDRP/URS. Egregious decisions like the ADO.com case would become more common, and would not be able to be properly reversed in the courts if these kinds of proposals are adopted (since the courts would no longer be involved). It would lead to more reverse domain name hijacking attempts, and even more successful attempts to take away domains that are rightfully the property of the current domain name owners!

The entire UDRP policy is being reviewed for the first time ever very shortly (starting in the next few months), so you can be sure that if they got away with a proposal like this for IGOs, they'll be trying to get away with even more anti-registrant proposals for all complainants. If you don't defend your rights, they'll be happy to take them away from you.

 

[Future Sensors]

Thanks for the heads up @GeorgeK, will have a look at this. Tagging @Paul Nicks here as well, as one of ICA's Board members.

 

[GeorgeK]

Given GoDaddy's huge investment in domain names via NameFind, I hope they realize that this proposal is an attack on those ownership rights. To defend their investment, they should oppose this proposal.

I hate cybersquatters! We're not asking to protect those bad guys, only to create a level playing field so that the reverse domain name hijackers don't get away with their attempts to steal our assets. Access to the courts is a fundamental right, one that protects us against injustices like the ADO.com decision.

 

[eternaldomains]

First of all, thanks to @Eric Lyon or whomever the actual mod is who put up the banner. Just one thing: Is it possible to change the banner color to something like red to bring more attention to such super important matters?

 

[eternaldomains]

Been (speed-)reading past threads/articles about .org; so how do we get the attention of C-AG Xavier Becerra?

 

[eternaldomains]

@GeorgeK You should use a better acronym example in your blog instead of UN/ESCObakery - e.g. UNmarketing.com, UNcapital.com, UNconsulting.com

Using UN/ESCO as an example is undermining the seriousness of the problem. People at your blog are going to think that as long as they don't reg "obviously TM"-looking names they "aren't going to go into trouble", the kind of thinking that became ONE of the MANY reasons why many previous actions against ICA/NN failed miserably.

EDIT: for the record, UN already uses un.org & un.int; I'm sure they're now drooling to get un.com for free

 

[GeorgeK]

Take a look at the ICANN "reserved list" to see the kinds of valuable domains and strings that they can target:

https://www.icann.org/sites/default/files/packages/reserved-names/ReservedNames.xml

e.g. acs, au, can, ec, eco, ep, ico, idea, iso, pam, sco and many more.

Plus, this working group is trying to expand the eligible list of "IGOs" beyond that reserved list.

Since these are international treaty organizations, a new IGO called "SEX" can be created at-will between any 2 governments, e.g. maybe Tuvalu (.tv) and Cocos Islands (.cc) have their cash-strapped governments sign a treaty for establishing "Society Exchange". That new IGO might then target desirable strings to improve upon the sex.int domain (remember, there's an entire TLD created specifically for those types of organizations, at .int!).

Or perhaps a free speech site appears to write about the sexual abuse scandal of the World Health Organization:

https://www.reuters.com/world/afric...into-congo-sexual-abuse-diplomats-2021-10-13/
https://www.nbcnews.com/news/world/...ees-took-part-congo-sex-abuse-during-n1280315
https://www.npr.org/sections/goatsa...staff-perpetrated-harrowing-sexual-abuse-in-c

If that free speech site was of the form "WHOSexScandal.TLD" or "WorldHealthOrganizationSucks.TLD", etc., anything incorporating the IGO's name, then the IGO can get a free shot at shutting down legitimate free speech. If they get the right panelist (many of whom don't ascribe to American values such as free speech), then they can win that domain!

https://www.wipo.int/amc/en/domains/search/overview3.0/

2.6.2 Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., <trademark.tld> (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation. In certain cases involving parties exclusively from the United States, some panels applying US First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial criticism site may support a legitimate interest.

So, different results depending which panelist you get!

 

[GeorgeK]

P.S. One of the terms on the reserved list is "Las" --- maybe the $90 million LasVegas.com domain name is worth taking a free shot at, if it can't be appealed to the courts, and you get "the right panelists".

https://www.thedomains.com/2015/11/...gas-com-in-2005-for-up-to-90-million-dollars/

(e.g. maybe the same kinds of panelists Francois got for the ADO.com case!)

 

[tonyk2000]

First of all, thanks to @Eric Lyon or whomever the actual mod is who put up the banner. Just one thing: Is it possible to change the banner color to something like red to bring more attention to such super important matters?

.. as well as perform necessary actions (code, image size etc.) to make this thing visible in case of adblock solutions used. Or, in oher words, please do not use the current banner rotating/publishing system for this banner. Yeah, it is normal to whitelist sites you like, and we all like NP, but, due some some specific ads shown @ NP, some members do block NP ads all together, so they may not see this useful banner (link).

Also - sticky thread, text link or anything similar...

 

[AboGamil]

is this all about trademark words ? i dont understand the full list

 

[Steven McEvoy]

Am I missing something I don’t see what the problem here is?

specially trademark names

 

[GeorgeK]

is this all about trademark words ? i dont understand the full list

The UDRP & URS are trademark dispute resolution mechanisms for domain names. They don't need to be registered TMs, though --- a complainant can have "common law" unregistered TMs. IGOs typically do not register TMs corresponding to their names and/or acronyms with national trademark offices, but might be considered to have unregistered TMs in those terms in many cases.

Many IGOs register their names/acronyms in the "Article 6ter" database, see:

https://www.wipo.int/article6ter/en/

which is used by national trademark offices to block other terms from becoming registered, if they would be confusing. It's not an automatic block, as an identical or similar mark can be registered if it's not confusing.

e.g. "PAM" is in the Article 6ter database, for the World Food Programme. It can be seen as an 8900-series listing in the USPTO database:

https://tsdr.uspto.gov/#caseNumber=89000806&caseType=SERIAL_NO&searchType=statusSearch

(but it's not considered a registered TM -- it's just there to note the "blocking right")

But, there are numerous US registered TMs that were not blocked by that World Food Programme entry, see:

https://tsdr.uspto.gov/#caseNumber=72232915&caseType=SERIAL_NO&searchType=statusSearch [the cooking spray]

https://tsdr.uspto.gov/#caseNumber=85163866&caseType=SERIAL_NO&searchType=statusSearch [computer services for optometry]

etc.

The text of the Article 6ter treaty can be read at:

https://www.wipo.int/article6ter/en/legal_texts/article_6ter.html

Note the portion in 1(c):

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.

In the original working group that I was on (for 4 years!), we came to the recommendation that there be a "policy guidance" issued for UDRP/URS panelists to be aware of this (but not to modify the UDRP). This was recommendation #2 in the report (bottom of page 4):

https://gnso.icann.org/sites/defaul...ch/igo-ingo-crp-access-final-17jul18-en_0.pdf

Recommendation #2:
The Working Group notes that an IGO may seek to demonstrate that it has the
requisite standing to file a complaint under the UDRP or URS by showing that it has
complied with the requisite communication and notification procedure in accordance
with Article 6ter of the Paris Convention for the Protection of Industrial Property1
. An IGO may consider this to be an option where it does not have a registered trademark
or service mark in its name and/or acronym but believes it has certain unregistered
trademark or service mark rights for which it must adduce factual evidence to show
that it nevertheless has substantive legal rights in the name and/or acronym in
question. In this regard, the Working Group recommends that specific Policy Guidance
on this topic be issued by ICANN to clarify the following points:
(a) this alternative mechanism for standing is not needed in a situation where
an IGO already holds trademark or service mark rights in its name and/or
acronym, as the IGO would in such a case proceed in the same way as a nonIGO trademark owner; (b) whether or not compliance with Article 6ter will be considered determinative of standing is a decision to be made by the UDRP or URS panelist(s) based on the facts of each case; and (c) the possibility that an IGO may seek to rely on its compliance with Article 6ter to demonstrate standing should not modify or affect any of the existing grounds which UDRP and/or URS panelists have previously found sufficient for IGO standing (e.g. based on statutes and treaties).

This was a reasonable way to balance things, that Article 6ter registration did not automatically confer TM rights, but it is fact-specific, and given the appropriate facts might (if an IGO has used the term widely, etc.) rise to give them standing.

As you can see, we thought about all these issues quite carefully and deeply. But, the ICANN insiders pretend that we didn't do our homework, that we were somehow "rogue elements", when in fact it is they that want to trample upon the legitimate fundamental rights of domain name owners through their unbalanced and one-sided recommendations. They want to throw domain owners under the bus.

 

[eternaldomains]

Take a look at the ICANN "reserved list" to see the kinds of valuable domains and strings that they can target:

https://www.icann.org/sites/default/files/packages/reserved-names/ReservedNames.xml

e.g. acs, au, can, ec, eco, ep, ico, idea, iso, pam, sco and many more.

Plus, this working group is trying to expand the eligible list of "IGOs" beyond that reserved list.

Since these are international treaty organizations, a new IGO called "SEX" can be created at-will between any 2 governments, e.g. maybe Tuvalu (.tv) and Cocos Islands (.cc) have their cash-strapped governments sign a treaty for establishing "Society Exchange". That new IGO might then target desirable strings to improve upon the sex.int domain (remember, there's an entire TLD created specifically for those types of organizations, at .int!).

Or perhaps a free speech site appears to write about the sexual abuse scandal of the World Health Organization:

https://www.reuters.com/world/afric...into-congo-sexual-abuse-diplomats-2021-10-13/
https://www.nbcnews.com/news/world/...ees-took-part-congo-sex-abuse-during-n1280315
https://www.npr.org/sections/goatsa...staff-perpetrated-harrowing-sexual-abuse-in-c

If that free speech site was of the form "WHOSexScandal.TLD" or "WorldHealthOrganizationSucks.TLD", etc., anything incorporating the IGO's name, then the IGO can get a free shot at shutting down legitimate free speech. If they get the right panelist (many of whom don't ascribe to American values such as free speech), then they can win that domain!

https://www.wipo.int/amc/en/domains/search/overview3.0/



So, different results depending which panelist you get!

P.S. One of the terms on the reserved list is "Las" --- maybe the $90 million LasVegas.com domain name is worth taking a free shot at, if it can't be appealed to the courts, and you get "the right panelists".

https://www.thedomains.com/2015/11/...gas-com-in-2005-for-up-to-90-million-dollars/

(e.g. maybe the same kinds of panelists Francois got for the ADO.com case!)

The UDRP & URS are trademark dispute resolution mechanisms for domain names. They don't need to be registered TMs, though --- a complainant can have "common law" unregistered TMs. IGOs typically do not register TMs corresponding to their names and/or acronyms with national trademark offices, but might be considered to have unregistered TMs in those terms in many cases.

Many IGOs register their names/acronyms in the "Article 6ter" database, see:

https://www.wipo.int/article6ter/en/

which is used by national trademark offices to block other terms from becoming registered, if they would be confusing. It's not an automatic block, as an identical or similar mark can be registered if it's not confusing.

e.g. "PAM" is in the Article 6ter database, for the World Food Programme. It can be seen as an 8900-series listing in the USPTO database:

https://tsdr.uspto.gov/#caseNumber=89000806&caseType=SERIAL_NO&searchType=statusSearch

(but it's not considered a registered TM -- it's just there to note the "blocking right")

But, there are numerous US registered TMs that were not blocked by that World Food Programme entry, see:

https://tsdr.uspto.gov/#caseNumber=72232915&caseType=SERIAL_NO&searchType=statusSearch [the cooking spray]

https://tsdr.uspto.gov/#caseNumber=85163866&caseType=SERIAL_NO&searchType=statusSearch [computer services for optometry]

etc.

The text of the Article 6ter treaty can be read at:

https://www.wipo.int/article6ter/en/legal_texts/article_6ter.html

Note the portion in 1(c):



In the original working group that I was on (for 4 years!), we came to the recommendation that there be a "policy guidance" issued for UDRP/URS panelists to be aware of this (but not to modify the UDRP). This was recommendation #2 in the report (bottom of page 4):

https://gnso.icann.org/sites/defaul...ch/igo-ingo-crp-access-final-17jul18-en_0.pdf



This was a reasonable way to balance things, that Article 6ter registration did not automatically confer TM rights, but it is fact-specific, and given the appropriate facts might (if an IGO has used the term widely, etc.) rise to give them standing.

As you can see, we thought about all these issues quite carefully and deeply. But, the ICANN insiders pretend that we didn't do our homework, that we were somehow "rogue elements", when in fact it is they that want to trample upon the legitimate fundamental rights of domain name owners through their unbalanced and one-sided recommendations. They want to throw domain owners under the bus.

^
All this
v
You should update your blog post to add these elements - remember that end users don't go to NP and that the success of the .org defense was largely contributed by end users as well.

 

[Sheogorath]

It's double-edged sword for many possible reasons.
No one wants scammers getting free UDRP wins all over the place, it will create chaos all over the internet, from the small business to large corporations.
I don't believe there is a chance for it to be finally approved.

 

[eternaldomains]

It's double-edged sword for many possible reasons.
No one wants scammers getting free UDRP wins all over the place, it will create chaos all over the internet, from the small business to large corporations.
I don't believe there is a chance for it to be finally approved.

Beliefs don't matter. Only actions matter. Do your part or lose your rights. Do your part or prepare to see the most ridiculous shit approved arbitrarily by greedy and powerful people.

 

[GeorgeK]

Only 10 days left to comment, folks:

https://www.icann.org/en/public-com...c-curative-rights-protections-igos-14-09-2021

(which also has the email for the policy staff; highly recommend reaching out to them to demand more time to research the issues, if 11 days isn't enough time to get up to speed)

You'll note only 2 comment submissions have been made:

https://www.icann.org/en/public-com...2021/submissions?page=1&sort-direction=newest

with 1 explicitly against, and 1 asking for more time:

https://www.icann.org/en/public-com...9-2021/submissions/rodenbaugh-mike-13-10-2021

I would like to have more time to understand and consider the implications of this report, well beyond the standard 40 days. I note these issues have been discussed for many years, so I do not understand the urgency or the stealthiness behind this work. At first glance at least, it appears to disregard the output of a duly formed GNSO Working Group tasked with the same policy development, in which I participated. At minimum, I would have expected this EPDP team to have consulted with the members of that Working Group before publishing a report that varies so drastically with the prior output.

I would like to have more time to understand and consider the implications of this report.

If they enact these horrible amendments, your rights to due process will be diminished. This isn't about tilting the rules in favour of domain name owners --- we're not protecting the bad guys. Bad guys and criminals would lose in court. This is about protecting people's rights to access the courts, have their cases decided on the merits in the courts, so that they don't face the injustices seen by Francois with the ADO.com decision at WIPO, and similar travesties.

Remember what happened with France.com? The French government is fighting hard to assert their immunity in the US courts, to ensure that the prior owner can't have their property returned to them. IGOs are creations of governments. Do you think that if this proposal goes through to benefit IGOs, that they'll stop there? Heck no! The next step would be to give governments the same kind of immunity. So, perhaps the Iranian government would go after a domain name owned by a person in the UK or Japan. Or the Italian government would go after a domain name owned by a person in the USA. And if given immunity, the domain owner wouldn't be able to appeal to their national courts.

And then the next step would be to take away court access for appeals when it's just a regular TM holder. This is already the case in the UK, folks!

https://circleid.com/posts/20180103_the_udrp_and_judicial_review

You'll note my proposals (in the RPM PDP, and made separately in the IGO PDP) fixes the problem for both the UK-affected registrants, and the IGO issue. [because the root cause for both issues is the same, and I attacked the root cause, not the symptoms]

If you have a domain name at a UK-based registrar, and you are based in the UK yourself, you're basically screwed if you get an unjust adverse ruling in the UDRP/URS, because you're most likely not even able to appeal to the courts (unless a brand new precedent is set at a higher court, that reverses the current situation).

 

[eternaldomains]

@Dynadot @DAN.COM @DaaZ @Deven Patel @Nick R

 

[eternaldomains]

@name.com

 

[GeorgeK]

I made a new blog post today, to respond to the GAC and IGOs which have been overstating the nature of the IGO protections:

https://freespeech.com/2021/10/14/an-open-letter-to-the-icann-board-regarding-igo-protections/

 

[GeorgeK]

FYI: Chris Disspain of Donuts, the chair of the working group, responded and he refused to extend the deadline for comments (despite numerous other ICANN comment periods being extended historically). e.g. search for "public comments" extended:

https://www.google.com/search?q=site:icann.org+extended+"public+comments"

10 days left.

While I escalated to the Complaints Office (adding to my existing complaint from April, which they still never responded to), it wouldn't hurt if more people demanded more time to study the issues in order to submit meaningful public comments.

I can't do things alone, folks. It only takes a few minutes to help yourself (and others like myself are investing dozens of hours on this, on top of the thousands of hours in the past, to help all domain name owners). The other side wants you to simply "give up", so that they can get their way. Never give up!

 

[GeorgeK]

Jeff Neuman and I have been going back and forth on Twitter all day, and so I was researching historical documents. And I found a juicy one. In particular, I found the old article I wrote about what IGOs tried to do in 2007 (changing "AND" to "OR" in the UDRP test):

https://circleid.com/posts/710118_short_domain_names_igo_udrp/

and one of the comments was by Jeff Neuman himself (all the comments are worth reading, including Berryhill, ICA at the time, etc.), where Jeff linked to a 2001 letter by Louis Touton on the subject:

https://www.icann.org/resources/unt...k-for-international-settlements-2001-05-21-en

"Under Article 6ter(1)(c) of the Paris Convention, the protection of abbreviations of international intergovernmental organizations provided by Article 6ter(1)(b) does not extend to exclude use or registration that is "not of such a nature as to suggest to the public that a connection exists between the organization concerned and the . . . abbreviations", nor is there any exclusion 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." In simple terms, the Convention's protection of abbreviations of international intergovernmental organizations, where it applies, only extends to source-identifying uses of those abbreviations."​

That matches my own analysis, in the blog post of today and in the working group I was on, and is the only reasonable analysis.

If this doesn't make you furious, that despite all this, ICANN continues to humour the false arguments presented by the GAC and IGOs, I suppose nothing will. Literally millions of dollars of people's time has been squandered all these years. IGOs shouldn't be rewarded for literally 2 decades of false arguments (repeated again in this week's letter from the GAC) with a "gift" at the expense of domain name registrants' fundamental legal rights.