[council] ALAC comment on WIPO2 recommendations

[Thomas Roessler <roessler@does-not-exist.org>]

To the council: The attached advice from the ALAC on the "WIPO2
recommendations" has been formally submitted to Louis Touton last
night.

Regards,
-- 
Thomas Roessler				<roessler@does-not-exist.org>

Title: Introduction

ALAC Comments on WIPO 2 Recommendations to ICANN

Introduction

The Interim At-Large Advisory Committee thanks the Board for the opportunity to comment on the recommendations concerning the protection of the names and acronyms of intergovernmental organizations (IGOs) and of country names 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 therefore provide only a preliminary analysis of the recommendations proper (see Annex I below), and would submit a more detailed analysis of the recommendations if and when WIPO's recommendations are subject to policy-development processes.

Subject Matter Concerns

ICANN's mission and core values 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 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 a 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 procedure or 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, September 3, 2001, "WIPO Report") recognizes that there is no basis in existing law for the special rights that the current recommendations would implement 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 an "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: 
>   
> 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.

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Annex I: 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 be possible without leading 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 because there is a general lack of public awareness of the TLD. Rather than reshaping the rest of the domain name system to solve those deficiencies, the Committee proposes that the .int TLD be re-examined and restructured, if necessary, 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 in good-faith be used as 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 Internet 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 for each country to control its name (and related strings as it chooses) in its unique ccTLD, where the matter can be addressed on a national level according to national law, not to grant it monopoly rights in character strings across all TLDs.

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Annex II: Comments received

The ALAC solicited public comments on a draft version of the present advice. A single comment was submitted, by Alexander Svensson. In this comment, Mr. Svensson supports the draft statement, and points out: “ICANN already had to deal with the request by its Governmental Advisory Committee (GAC) to reserve country names under the .INFO top level domain. Interestingly, it seems that only a small group of governments has put the reserved domain names to use.”