Preliminary Summary of Legal Research & Data on IGO & INGO Protections Prepared for the IGO-INGO Curative Rights Protections (CRP) WG 15 September 2014

I. EARLY WORK BY/AT WIPO The WIPO-2 Process & Recommendations II. ICANN WORK TO DATE 2004 President’s Joint WG following WIPO GNSO Work on Dispute Handling for IGO Abbreviations 2012 GNSO Final Issue Report leading to initiation of the original IGO-INGO PDP WG 2013 ICANN GCO Report to IGO-INGO PDP WG III. ONE EXAMPLE OF INGO DOMAIN NAME ABUSE 2

I. The Early Reviews: the WIPO Second Internet Domain Name Process (WIPO-2) WIPO SECRETARIAT REPORT (2002): Most abusive domain name registrations affecting international organizations are misleading variations of their names and acronyms, rather than identical matches. Number of abusive registrations of acronyms of international organizations is significantly higher than those affecting their full names. In many cases it would appear that domain name registrants may have a legitimate interest in the acronym of an international organization.

For efficiency, preferable to rely on existing legal frameworks for the protection of names and acronyms of international organizations in the DNS, rather than creating new special- purpose forms of protection. Registrants who would lose their registrations as a result of the application of any protective measures, for reasons of due process, should have the opportunity to have their cases reconsidered. Any protective measures should recognize the privileges and immunities from which the United Nations and its Specialized Agencies benefit under international law.

Further Secretariat Notes: As of 2002, certain govts & govt entities had already filed UDRP complaints (and thus submitted to jurisdiction of nat’l courts) Advantages of UDRP: - Maintains uniformity - Technical amendments only necessary - Safeguards already exist (including right of appeal) Disadvantages of UDRP: - State immunity issue - Cost

Advantages of a separate DRP: - Substantive basis can be similar to UDRP - Administrative appeal mechanism would solve immunity problem Disadvantages of a separate DRP: - May create confusion and add complexity to an already-difficult problem area (IP protection in the DNS) - Is there sufficient number of entities to be protected to warrant a separate process?

Secretariat Recommendation: An administrative challenge procedure that will be: Adversarial in nature Not amount to binding legal (judicial) precedent Applicable to “identical and misleadingly similar” IGO names & acronyms protected under international law To protect registrants while respecting IGO immunity, propose appeal by way of arbitration Substantive grounds similar to UDRP – but additionally “where users are likely to be misled into believing that there is an association between the registrant and the international organization in question”

THE FINAL WIPO-2 REPORT: Legal basis for IGO protections – Article 6ter, Paris Convention for the Protection of Intellectual Property: “(a) The countries of the Union agree to … prohibit by appropriate measures the use, without authorization by the competent authorities, either as trademarks or as elements of trademarks, of armorial bearings, flags, and other State emblems, of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them … (b) The provisions of subparagraph (a), above, shall apply equally to... abbreviations, and names, of international intergovernmental organizations of which one or more countries of the Union are members, with the exception of... abbreviations, and names, that are already the subject of international agreements in force, intended to ensure their protection.”

Scope of national protection for IGO identifiers in Member States is not uniform Paris Convention permits exception where third party use or registration of a trademark: “is not of such a nature as to suggest to the public that a connection exists between the organization concerned and the... abbreviations, and names” or “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” Many IGOs showed “abundant evidence” of abusive second level domain name registrations constituting harmful practices

Further Notes from the Report: “protection of the names of IGOs raises less complicated and more straightforward questions than the protection of the acronyms of IGOs, where necessarily there is far greater scope for the concurrent, good faith use of the same letters as the acronyms of some IGOs in various different contexts and in various different naming systems” Recommended not amending the UDRP, but creating a new, special DRP to be independently developed and managed within the existing framework of international administrative tribunals

“There is clearly an existing basis in international law for the protection of the names and the acronyms of IGOs, but this basis is not adequate to deal with the whole problem of the bad faith registration and use of the names and acronyms of IGOs as domain names” Current situation is “unbalanced” – third parties can cheaply and quickly register domains, but pursuing protection “not only is distractful to the central missions of IGOs and wasteful of their limited resources, but also may involve questionably unnecessary deviation from the standard principle of immunity of IGOs from jurisdiction.”

However, creating a special administrative procedure under the supervision of States (not ICANN) would involve ”at least in cases not involving the use of domain names as trademarks, the creation of new international law [and] an extension of the principles in Article 6ter …” “While it is believed that such an extension is desirable … 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.”

NOTE: Recommendations in Final Report not accepted in full by the WIPO General Assembly of Member States: Instead, WIPO GA amended the recommendations and preferred amending the UDRP as an alternative

II. ICANN Work to Date REPORT OF THE PRESIDENT’S JOINT WORKING GROUP (2004): No consensus/recommendation for adopting WIPO-2 by amending the UDRP Agreed that developing a separate DRP would satisfy WIPO-2 but unclear what difference would be from amending UDRP Disagreement over substance of WIPO-2 recommendations, and whether reviewing them would exceed ICANN’s mandate Discussions took place over ICANN’s use of contractual mechanisms that could exceed existing international law Discussions also over use of an arbitration appeal mechanism instead of appeal to a national court As of the Report, 117 IGOs had filed notifications under Article 6ter

GNSO WORK ON DISPUTE HANDLING FOR IGO ABBREVIATIONS (2007): GNSO Issue Report recommended: New gTLD agreements could protect IGO names and abbreviations as a contractual condition for new gTLDs Separate Dispute Resolution Procedure for IGO names and abbreviations at the second or third level in new gTLDs Framework developed for handling objections or challenges related to IGO names and abbreviations in the upcoming application round for new gTLDs No PDP launched as proposal failed to carry for lack of votes

Draft Text for Possible Separate DRP (based on UDRP): IGOs can file complaint on basis that: (i)“the registration or use, as a domain name, of the name or abbreviation of the (ii)complainant that has been communicated under Article 6ter of the Paris Convention is of a nature: (a)to suggest to the public that a connection exists between the domain name holder and the complainant; or (b) to mislead the public as to the existence of a connection between the domain name holder and the complainant; or (ii) on the ground that the registration or use, as a domain name, of a name or abbreviation of the complainant protected under an international treaty violates the terms of that treaty.”

Appeal would be to arbitral tribunal of registrant’s choice Arbitral tribunal defined as “an arbitral tribunal constituted under the rules of either the American Arbitration Association ICDR, the International Chamber of Commerce, the London Court of International Arbitration, or the World Intellectual Property Organization Arbitration and Mediation Center” IGO defined as “an international legal personality established by international agreement, however characterized, creating enforceable rights and obligations and includes organizations created by international treaties and organizations whose names and acronyms may be protected under Article 6ter of the Paris Convention for the Protection of Industrial Property.”

GNSO FINAL ISSUE REPORT (2012): Scoped out who is an “International Organization” – could be over 5000 IGOs and over 35,000 active NGOs [NOTE: Eventual PDP WG agreed to consider only the GAC- approved list of IGOs and the ECOSOC list of INGOs] Protection for Red Cross: Geneva Convention (protects Red Cross, Red Crescent, Red Crystal and Red Lion and Sun emblems, and use of words “Red Cross” and “Geneva Cross) Protection for IOC: Nairobi Treaty (over 80 signatory countries; 31 have national legislation)

ICANN GENERAL COUNSEL RESEARCH REPORT (2013): Note that GCO was not requested to do research on general extent of treaty or other legal protections Question: Is ICANN aware of any jurisdiction in which a statute, treaty or other applicable law prohibits either or both of the following actions by or under the authority of ICANN: (a)The assignment by ICANN at the top level; or (b)The registration by a registry or registrar accredited by ICANN of a domain name requested by any party at the second level, of the name or acronym of an IGO or INGO receiving protection under treaties and statutes under multiple jurisdictions?

Question (and research) did not address liabilities or restrictions on registrants Very few jurisdictions have specific laws directly regulating top-level delegation or second-level registration of domains Nearly all eleven sampled jurisdictions protected Red Cross & IOC names and/or acronyms Many sampled jurisdictions also protect IGOs on the 6ter list (though procedures and specific protections differ)

III. On INGOs: An Example of Misuse - the Red Cross Movement Domestic state-by-state enforcement cumbersome and ineffective in a global environment UDRP requires trademark ownership – which is not a legal requirement for RC protection under international law (i.e. Geneva Convention) Cited Examples: Pornography: e.g. caribredcross.org Domain for Sale: e.g. redcrescent.org Commercial Uses: e.g. redcrossdrug.org Other Uses: e.g. redcross-relief.com Reserved but not used: e.g. usredcrescent.org