ICANN | General Counsel's Briefing Concerning Policy-Development Process on WIPO-2 Recommendations | 1 June 2003
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General Counsel's Briefing Concerning Policy-Development Process on WIPO-2 Recommendations
1 June 2003

General Counsel's Briefing Concerning Policy-Development Process on WIPO-2 Recommendations

To the Board:


In late-February 2003, ICANN received a letter from Francis Gurry, Assistant Director General of WIPO, concerning the results of the WIPO Second Internet Domain Name Process (WIPO-2 Process). In my 7 March 2003 Briefing Concerning Letter Received from WIPO Concerning Second Internet Domain Name Process, I very briefly summarized the WIPO-2 Process, reviewed the provisions of the relevant ICANN bylaws concerning the process ICANN should follow, and recommended that the Board invite the ICANN supporting organizations and advisory committees to make preliminary comments on the letter.

At its 12 March 2003 meeting, the Board adopted resolution 03.22 requesting "the President to inform the Governmental Advisory Committee, the Supporting Organizations, and the other Advisory Committees of the 21 February 2003 letter from WIPO; to provide those bodies with a copy of the text of the letter; and to invite them to provide, no later than 12 May 2003, any comments they may formulate, according to their processes, concerning the matters discussed in the WIPO letter." This was done, and comments were received from the GAC, the GNSO Council, and the At-Large Advisory Committee (ALAC):

In addition, comments were received from the Intellectual Property Interests Constituency and the Commercial and Business Users Constituency of the GNSO:

Now that these comments have been received, it is appropriate for the Board to consider what steps should be taken next in responding to the WIPO letter and the recommendations it makes.

Discussion of Comments Received

The various comments received concern both the substance of the WIPO-2 recommendations and the process ICANN should follow in responding to those recommendations. The comments received are detailed and thoughtful, and merit careful and reflective consideration. (See the links above.)

The Governmental Advisory Committee, in its Rio de Janeiro Communiqué, endorses the WIPO-2 recommendations that the names and acronyms of intergovernmental organizations (IGOs) and the names of countries be protected against abusive registration as domain names. The Communiqué advises the ICANN Board to implement WIPO's recommendations that protections be provided from such abusive registrations. At the same time, however, the GAC notes that "the practical and technical aspects of extending this protection, and notably the implications for the UDRP, need to be fully understood". The GAC therefore proposes "that a joint working group should be established in conjunction with other interested ICANN constituencies, in particular the gTLD and ccTLD communities."1

The GNSO Council, as the ICANN body assigned the responsibility under ICANN's bylaws for developing and recommending to the ICANN Board substantive policies relating to gTLDs, makes the following recommendations:

(1) consider the WIPO recommendations separately from the review of the existing Universal Dispute Resolution Policy (UDRP) which is aimed at trademarks.

(2) consider that the WIPO recommendations associated with Names and Acronymns of International Intergovernmental Organisations and Country Names should be subject to a policy development process to look at how they can be implemented taking into account a thorough examination of the issues surrounding the recommendations.

The ALAC's comments set forth significant concerns regarding whether the WIPO-2 recommendations are within the scope of ICANN's mission. In its comments, the ALAC states that ICANN is not intended to be an international law-making body, and that implementation of the WIPO-2 recommendations would extend the UDRP in a way that eliminates two key features currently embodied in the UDRP that avoid placing ICANN in a law-making 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.

On the first point, the ALAC comments bring to light the conclusions reached in a September 2001 WIPO report that extensively analyzed the legal basis for protection of the names and acronyms of IGOs and the names of countries. In that analysis, WIPO concluded that extending the UDRP to protect IGO names and acronyms would involve "creation of new international law" (paragraph 168). Similarly, WIPO concluded that "[p]rotecting country names in the gTLDs would require or amount to the creation of new law, a function traditionally reserved for States" (paragraph 286).

On the second point, the ALAC points out that the WIPO-2 recommendations (in the case of IGO names and acronyms and possibly country names as well) would preclude the ultimate recourse to the competent national courts (i.e. those with which the registrant has a connection) on questions of national law, instead requiring that challenges to decisions (under an extended UDRP) to transfer names to IGOs and countries be addressed through binding arbitration.

The ALAC comments raise very substantial questions regarding whether extending the UDRP in the recommended manner would exceed the scope of ICANN's mission. The recommendations seek the extension of the UDRP, which currently provides a procedural mechanism for resolving cases of abusive registrations based on existing legal principles established by governments, to situations where it appears that normative rules for resolving disputes among third parties with competing claims have not been created by governments.2

In conclusion, the ALAC gives the following advice:

[1] 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.

[2] 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.

In an annex to its comments, the ALAC also expresses various concerns with the substance of the WIPO-2 recommendations.

The GNSO Intellectual Property Interests Constituency comments express opposition to amending the UDRP to accommodate the WIPO-2 recommendation that disputes relating to IGOs should not be required to submit to the jurisdiction of national courts. Echoing the concerns of the ALAC, the IPC comments note that the availability of national court review "properly ensures that the courts are the ones who are ultimately responsible for interpreting the law – both national and international alike."

In its comments, the GNSO Commercial and Business Users Constituency makes the following recommendations:

1. The existing UDRP relating to trademarks and domain names must remain entirely unaffected by the WIPO2 proposals.

2. The new WIPO proposals on disputes relevant to international organisations and country names should be evaluated for both the merit of the need and the merit of the proposed solutions.

In this evaluation it should be remembered that both proposals are political compromises. In the case of IGOs, certain countries had specific disputes but WIPO did not agree to the more courageous solution of a new treaty. In the case of country names, WIPO has plucked this one item out of an on-going debate on other geographical names, and has not yet addressed the relevant complications.

3. If any action is determined necessary a separate dispute system should be established for international organisations and country names.

Options for Proceeding

There are at least three options now available for progressing the evaluation of the WIPO-2 recommendations:

A. Initiation of a Formal Policy-Development Process. One option is to initiate a formal policy-development process. Because the WIPO-2 recommendations concern extension of the UDRP, which applies in gTLDs, Article X, Section 1 of the bylaws makes the GNSO the relevant body to carry out the policy-development process:


There shall be a policy-development body known as the Generic Names Supporting Organization (GNSO), which shall be responsible for developing and recommending to the ICANN Board substantive policies relating to generic top-level domains.

To initiate a policy-development process on whether to adopt the WIPO-2 recommendations, the Board should adopt a resolution under item 1(a) of the GNSO Policy-Development Process:

a. Issue Raised by the Board. If the Board directs the Council to initiate the PDP, then the Council shall meet and do so within fifteen (15) calendar days after receipt of the Issue Report, with no intermediate vote of the Council.

This approach has the advantage of proceeding to consideration of the WIPO-2 recommendations without delay. It has the disadvantages of (a) proceeding without a full understanding of whether the WIPO-2 recommendations are within the scope of ICANN's mission (see Alternative B below) and (b) focusing the discussion of the WIPO-2 recommendations in the GNSO at this stage, when the GAC has expressed an interest in participating in a joint working group with other ICANN constituencies. While the GAC has a liaison to the GNSO Council, and the GNSO Council can consult with the GAC at various points of the policy-development process, the opportunity for GAC input at this stage would be be less in a formal policy-development process than that entailed by a joint working group as suggested by the GAC.

B. Clarification of Relationship of WIPO-2 Recommendations to ICANN's Mission. Alternatively, it may be appropriate, particularly in view of the September 2001 WIPO analysis, to investigate whether the WIPO-2 recommendations would involve ICANN in what the ALAC calls "law-making" activities. If the WIPO analysis is correct, the WIPO-2 recommendations would appear to require that ICANN prescribe adherence to normative rules, not based on established laws enacted by governments and without relation to technical considerations, for the definition of rights as between third parties to register names.

Clarification of these concerns as an initial step has the advantage of clearly delineating the limitations inherent in ICANN's mission before devoting considerable resources toward the development of a policy that may exceed that mission. While it is true that the GNSO Policy-Development Process requires early consideration of whether an issue is properly within the scope of the ICANN policy process, that determination must be made in a very short time-frame (15 days) that is unlikely to allow proper consultation with legal experts on the correctness of the September 2001 WIPO analysis. Moreover, as the ALAC observed in its comments, "[t]he Board, in common with other ICANN bodies, has a responsibility to take care that ICANN adhere to its limited mission." A disadvantage of this approach is that it would delay the commencement of a formal policy-development process on the WIPO recommendations.

C. Establishment of a Joint Working Group for Initial Analysis. As noted above, the GAC recommended the establishment of a joint working group including both the GAC and affected constituencies to evaluate the practical and technical implications of the WIPO-2 recommendations. This approach would result in a delay in the initiation of formal policy-development activities (Alternative A above), but could be pursued in parallel with clarification of legal issues pertinent to ICANN's mission, as described in Alternative B above.

Best regards,

Louis Touton
General Counsel


1. Since the WIPO-2 recommendations appear, like the UDRP itself, to concern only gTLDs, the basis for including "ccTLD communities" as interested is unclear.

2. In resolution 02.43, the ICANN Board agreed to reserve 329 country names in .info for the purpose of making them available for registration by governments. This reservation was made based in part on the willingness of Afilias, the operator of the .info top-level domain, to address concerns raised by the Governmental Advisory Committee. The reservation was specifically limited to .info, and not applicable to other gTLDs, then existing or later established.

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