November 2014 - Gnso-igo-ingo-crp

Agenda for WG call today
by Mary Wong Nov. 12, 2014

Nov. 12, 2014

Dear WG members, Here is the agenda for our WG meeting today at 1600 UTC: 1. Roll Call/Updates to SOI 2. Continue deliberations on: (a) potentially differentiating between IGOs and INGOs; and (b) potentially differentiating the Red Cross and IOC from other INGOs 3. Commence deliberations on the next Work Plan/Charter question: "Develop potential considerations (e.g. qualifying requirements, authentication criteria and appeal processes) for IGOs and INGOs that would be relevant to their use of dispute resolution proceedings² (if time permits) 4. Next steps Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names & Numbers (ICANN) Telephone: +1 603 574 4892 Email: mary.wong(a)icann.org

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Article 6ter and Enforcement -- US position
by George Kirikos Nov. 11, 2014

Nov. 11, 2014

Hi folks, In doing some research, I found a very interesting and informative telegram on the US State Department website: http://www.state.gov/s/l/38648.htm I think it's important enough to reproduce in full below: ------ start telegram ----------- 26. U.S. Mission to the United Nations, Note on the Enforcement of Obligations under the Paris Convention for the Protection of Industrial Property (June 2002) June 07, 2002 NotesTele UNCLASSIFIED TELEGRAM To: USMISSION USUN N Y - PRIORITY Origin: L From: SECSTATE WASHDC (STATE 110717 - PRIORITY) TAGS: OFDP Captions: None Subject: UNIFEM"/PARIS CONVENTION REPLY TO CORELL Ref: None 1. This is an action message. USUN is requested to send the note in para 2 to the UN Legal Counsel in response to his inquiry regarding the domain name registration for an INTERNET site. 2. begin text. The (Mission) (Permanent Representative of) the United States to the United Nations refers to the December 28, 2001, note from the Legal Counsel of the United Nations regarding the domain name registration for an INTERNET site. In the United States' note of February XX, 2002, the United States indicated that it would explore further with relevant agencies the obligations of the United States under article 6ter of the Paris Convention for the Protection of Industrial Property. Having now done so, the United States now provides the following additional response. While practice on implementation of article titer appears to be limited, the commentators on the Convention suggest that Member States enjoy wide latitude in determining how to implement its requirements. The United States does not consider that Paris Union Members assumed obligations under article titer to pursue enforcement actions on behalf of third parties. In the United States, enforcement of intellectual property rights in specific cases, including in cases involving alleged infringement of rights under article 6ter, is a private matter for the party concerned. In satisfaction of its obligation under the Convention to prohibit by Page 1 NotesTele appropriate measures the use without authorization of emblems, abbreviations and names of international intergovernmental organizations communicated through the intermediary of the International Bureau, World Intellectual Property Organization, the United States has adopted laws which prohibit unauthorized use of infringing trademarks. For example, the Trademark Act of 1946, as amended, 15 U.S.C. u 1051 et seq., offers the possibility for interested parties to challenge use of marks in commerce based on theories, inter alia, of likelihood of confusion, false association and unfair competition. These laws satisfy U.S. obligations under article 6ter by providing the opportunity for States and international intergovernmental organizations to pursue remedies for the unauthorized use of names and other insignia listed in article 6ter, including in cases involving use on the INTERNET. Responsibility for evaluating potentially infringing use of trademarks and other intellectual property, and for taking enforcement action when deemed appropriate, however, rests with the party whose interests are affected. Moreover, the United States notes that with respect to international intergovernmental organizations, obligations under article titer arise only after receipt of a request for extension of protection through the International Bureau, in accordance with the procedures in articles 6ter(3)(b) and (4). The United States is not aware, at this time, of a notification under article 6ter with respect to the name or abbreviation "UNIFEM." Once notified pursuant to article titer, United States authorities would refuse registration, or invalidate, conflicting trademarks consistent with the terms of that article, and would be under an obligation to prohibit by appropriate measures unauthorized use of the notified emblem, abbreviation and name. But, as noted in the preceding paragraph, the latter obligation would be met under the laws of general application that the United States has enacted, and it is the responsibility of the party claiming than an infringement has occurred to take action under U.S. law to challenge perceived unlawful use in commerce. The United States regrets, therefore, that it is unable to provide the direct enforcement assistance requested in this matter. end text. POWELL Additional Addressees: None ----- end telegram ------------- I believe the most important paragraphs are these ones (with asterisk highlights): "For example, the Trademark Act of 1946, as amended, 15 U.S.C. u 1051 et seq., offers the possibility for interested parties to challenge use of marks in commerce based on theories, inter alia, of likelihood of confusion, false association and unfair competition. These laws satisfy U.S. obligations under article 6ter by providing the opportunity for States and international intergovernmental organizations to pursue remedies for the unauthorized use of names and other insignia listed in article 6ter, including in cases involving use on the INTERNET. ****Responsibility for evaluating potentially infringing use of trademarks and other intellectual property, and for taking enforcement action when deemed appropriate, however, rests with the party whose interests are affected.****" ****But, as noted in the preceding paragraph, the latter obligation would be met under the laws of general application that the United States has enacted, and it is the responsibility of the party claiming than an infringement has occurred to take action under U.S. law to challenge perceived unlawful use in commerce.**** This informs our discussion, making it very clear that IGOs and states who claim to have "rights" under Article 6ter still need to enforce them in real courts, under real laws. That is the "status quo", namely that they have no special immunity or short-cuts. I don't believe the prior working group was aware of the above document (e.g. zero matches in Google for: site:icann.org "USMISSION USUN"). I believe it would be incorrect, and a departure from established law, to offer a procedure to IGOs where they'd have immunity, when in the real world they have no such immunity when taking enforcement measures. While IGOs might have concerns with the mutual jurisdiction clause in the UDRP, the same issues arise *at all times* they seek to enforce Article 6ter rights. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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PLEASE RESPOND ASAP -- Revised Draft of Letter to Council regarding GAC Communique
by Phil Corwin Nov. 10, 2014

Nov. 10, 2014

WG members: Please find attached a revised draft letter to the GNSO Council regarding the LA GAC Communique that reflects our discussion earlier today. The only changes are to the second bullet point on page 3. PLEASE LET US KNOW IF THESE CHANGES ARE ACCEPTABLE WITHIN THE NEXT 24 HOURS. WE WANT TO FORARD THIS LETTER TO THE COUNCILL ASAP TO MAXIMIZE THE POSSIBILITY THAT IT WILL BE ADDED TO THE AGENDA FOR ITS MEETING NEXT THURSDAY. Thanks in advance. Best, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey

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Invitation to GAC Observers to join our WG
by Mary Wong Nov. 6, 2014

Nov. 6, 2014

Hello everyone, While staff is happy to extend the invitation, we think it would be appropriate to first consult the Council as I do not recall another instance (at least, not in recent years that I know of) where a WG has formally invited specific GAC participants to join a WG. I¹ll send a note to the Council on behalf of the group, and let you all know the Council¹s view. On a related note the GAC list of Observers does include entities such as the International Red Cross Movement, who while they are protected by international treaty are not ³IGOs² as defined for our purposes (multinational organizations created or constituted by governments). Also, the GAC list of Observers includes IGOs that are NOT on the GAC List of Protected IGOs (sent to ICANN in 2013 and the basis on which current protections, including those GNSO consensus recommendations recently adopted by the Board and other interim protections, have been extended. Does the WG wish to invite all GAC Observers accordingly? Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names & Numbers (ICANN) Telephone: +1 603 574 4892 Email: mary.wong(a)icann.org From: Petter Rindforth <petter.rindforth(a)fenixlegal.eu> Reply-To: "petter.rindforth(a)fenixlegal.eu" <petter.rindforth(a)fenixlegal.eu> Date: Thursday, November 6, 2014 at 3:45 AM To: George Kirikos <icann(a)leap.com> Cc: "gnso-igo-ingo-crp(a)icann.org" <gnso-igo-ingo-crp(a)icann.org> Subject: Re: [Gnso-igo-ingo-crp] PLEASE RESPOND ASAP -- Revised Draft of Letter to Council regarding GAC Communique > George, > > Good idea! (at least worth a try ;-) > > Formal question: Who will officially arrange for such invitation - ICANN > Staff, GNSO Council, or?? > > Best, > Petter > > -- > Petter Rindforth, LL M > > Fenix Legal KB > Stureplan 4c, 4tr > 114 35 Stockholm > Sweden > Fax: +46(0)8-4631010 > Direct phone: +46(0)702-369360 > E-mail: petter.rindforth(a)fenixlegal.eu > www.fenixlegal.eu > > > NOTICE > This e-mail message is intended solely for the individual or individuals to > whom it is addressed. It may contain confidential attorney-client privileged > information and attorney work product. If the reader of this message is not > the intended recipient, you are requested not to read, copy or distribute it > or any of the information it contains. Please delete it immediately and notify > us by return e-mail. > Fenix Legal KB, Sweden, www.fenixlegal.eu > Thank you > > > 6 november 2014, George Kirikos <icann(a)leap.com> skrev: >> >> Hello, >> >> The revised draft letter looks fine to me. >> >> On another note, I noticed that the GAC website lists all the "observers": >> >> https://gacweb.icann.org/display/gacweb/GAC+Observers >> >> with most of their contact information. To disintermediate, perhaps we >> should extend an invitation to the IGO observers (there are a few >> non-IGOs, e.g. Red Cross) to see whether they'd join our working >> group? >> >> Sincerely, >> >> George Kirikos >> 416-588-0269 >> http://www.leap.com/ >> _______________________________________________ >> Gnso-igo-ingo-crp mailing list >> Gnso-igo-ingo-crp(a)icann.org >> https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp

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Re: [Gnso-igo-ingo-crp] PLEASE RESPOND ASAP -- Revised Draft of Letter to Council regarding GAC Communique
by Phil Corwin Nov. 6, 2014

Nov. 6, 2014

WG members: Attached is a third and hopefully final draft of the letter to Council that substitutes Mason's proposed language at the final bullet point. I believe that we have consensus on this language - so please only reply if you have concerns, suggested modifications, or objections to it. Mary, unless we get further feedback by late today then please make this the final version and transmit it to the Council tomorrow morning (use the clean version and after striking the "DRAFT#3-FOR DISCUSSION ONLY" notation on page 1 please check the final formatting so that Attachments A & B start at the top of page - thanks). Best to all, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Mason Cole [mailto:mason@donuts.co] Sent: Wednesday, November 05, 2014 4:55 PM To: Phil Corwin Subject: Re: [Gnso-igo-ingo-crp] PLEASE RESPOND ASAP -- Revised Draft of Letter to Council regarding GAC Communique Thanks Phil. On Nov 5, 2014, at 1:49 PM, Phil Corwin wrote: Mason: Given that you have the delicate task of interfacing with the GAC, I think your proposed minor modifications are fine. Best, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: Mason Cole [mailto:mason@donuts.co] Sent: Wednesday, November 05, 2014 3:50 PM To: Phil Corwin Cc: gnso-igo-ingo-crp(a)icann.org<mailto:gnso-igo-ingo-crp@icann.org> Subject: Re: [Gnso-igo-ingo-crp] PLEASE RESPOND ASAP -- Revised Draft of Letter to Council regarding GAC Communique Importance: High Phil -- In my capacity as liaison, let me suggest an edit or two in the bullet point in question that might give us better luck in getting some useful information from the GAC: In regard to the issue of potential amendment of the UDRP - It would be instructive to know the GAC's rationale for opposing any UDRP amendments as a means of providing IGOs with access to curative rights. Further, in opposing such amendments, does the GAC thus advise the GNSO to preclude any possible change to its "Mutual Jurisdiction" provisions to address specific sovereign immunity concerns of IGOs? Finally, if it is the GAC's position that an entirely new curative rights mechanism must be created, is it the GAC's understanding that the protections afforded to qualifying IGOs under Article 6ter of the Paris Convention would be the criteria for establishing standing under any dispute resolution procedure that may apply to IGOs? On Nov 5, 2014, at 11:56 AM, Phil Corwin wrote: WG members: Please find attached a revised draft letter to the GNSO Council regarding the LA GAC Communique that reflects our discussion earlier today. The only changes are to the second bullet point on page 3. PLEASE LET US KNOW IF THESE CHANGES ARE ACCEPTABLE WITHIN THE NEXT 24 HOURS. WE WANT TO FORARD THIS LETTER TO THE COUNCILL ASAP TO MAXIMIZE THE POSSIBILITY THAT IT WILL BE ADDED TO THE AGENDA FOR ITS MEETING NEXT THURSDAY. Thanks in advance. Best, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey <ICANN-IGO_INGO_CRWG-Letter to GNSO Council-LA_GAC_Advice-draft#2.docx>_______________________________________________ Gnso-igo-ingo-crp mailing list Gnso-igo-ingo-crp(a)icann.org<mailto:Gnso-igo-ingo-crp@icann.org> https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp Mason Cole VP Communications & Industry Relations Donuts Inc. .................................... ...... ...... mason(a)donuts.co<mailto:mason@donuts.co> Ofc +1 503 908 7623 Cell +1 503 407 2555 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com/> Version: 2015.0.5315 / Virus Database: 4189/8462 - Release Date: 10/27/14 Internal Virus Database is out of date. Mason Cole VP Communications & Industry Relations Donuts Inc. .................................... ...... ...... mason(a)donuts.co<mailto:mason@donuts.co> Ofc +1 503 908 7623 Cell +1 503 407 2555 ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com> Version: 2015.0.5315 / Virus Database: 4189/8462 - Release Date: 10/27/14 Internal Virus Database is out of date.

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PLEASE RESPOND ASAP -- Revised Draft of Letter to Council regarding GAC Communique
by Jim Bikoff Nov. 6, 2014

Nov. 6, 2014

Phil, Some non-substantive comments to the revised draft letter to the Council regarding the GAC communique are attached. We do question the inclusion of the question on the second page that asks whether the GAC has "considered that an inability to amend the UDRP would preclude any possible change to its "Mutual Jurisdiction" provisions to address specific sovereign immunity concerns of IGOs". It seems that the new IGO-specific curative rights mechanism GAC seeks would already address sovereign immunity concerns. Given that all IGOs have these concerns, they would presumably all opt to use the new CRM. Jim James L. Bikoff Silverberg, Goldman & Bikoff, LLP 1101 30th Street, NW Suite 120 Washington, DC 20007 Tel: 202-944-3303 Fax: 202-944-3306 jbikoff(a)sgbdc.com<mailto:jbikoff@sgbdc.com> ________________________________ From: gnso-igo-ingo-crp-bounces(a)icann.org<mailto:gnso-igo-ingo-crp-bounces@icann.org> [gnso-igo-ingo-crp-bounces(a)icann.org] on behalf of Petter Rindforth [petter.rindforth(a)fenixlegal.eu] Sent: Thursday, November 06, 2014 3:45 AM To: George Kirikos Cc: gnso-igo-ingo-crp(a)icann.org<mailto:gnso-igo-ingo-crp@icann.org> Subject: Re: [Gnso-igo-ingo-crp] PLEASE RESPOND ASAP -- Revised Draft of Letter to Council regarding GAC Communique George, Good idea! (at least worth a try ;-) Formal question: Who will officially arrange for such invitation - ICANN Staff, GNSO Council, or?? Best, Petter -- Petter Rindforth, LL M Fenix Legal KB Stureplan 4c, 4tr 114 35 Stockholm Sweden Fax: +46(0)8-4631010 Direct phone: +46(0)702-369360 E-mail: petter.rindforth(a)fenixlegal.eu<mailto:petter.rindforth@fenixlegal.eu> www.fenixlegal.eu<http://www.fenixlegal.eu> NOTICE This e-mail message is intended solely for the individual or individuals to whom it is addressed. It may contain confidential attorney-client privileged information and attorney work product. If the reader of this message is not the intended recipient, you are requested not to read, copy or distribute it or any of the information it contains. Please delete it immediately and notify us by return e-mail. Fenix Legal KB, Sweden, www.fenixlegal.eu<http://www.fenixlegal.eu> Thank you 6 november 2014, George Kirikos <icann(a)leap.com<mailto:icann@leap.com>> skrev: Hello, The revised draft letter looks fine to me. On another note, I noticed that the GAC website lists all the "observers": https://gacweb.icann.org/display/gacweb/GAC+Observers with most of their contact information. To disintermediate, perhaps we should extend an invitation to the IGO observers (there are a few non-IGOs, e.g. Red Cross) to see whether they'd join our working group? Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ Gnso-igo-ingo-crp mailing list Gnso-igo-ingo-crp(a)icann.org<mailto:Gnso-igo-ingo-crp@icann.org> https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp

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Re: [Gnso-igo-ingo-crp] On creating a UDRP-like procedure for IGOs, and on 6ter processes
by Mary Wong Nov. 6, 2014

Nov. 6, 2014

And here is the link to the draft procedure created in 2007: https://community.icann.org/download/attachments/48347918/Staff%20Draft%20Te xt%20for%20IGO%20DRP%20%26%20Rules%20-%20Sept%202007.pdf?version=1&modificat ionDate=1410802165000&api=v2. It can also be accessed from our WG¹s Background Documents page, along with the other ³historical² information and relevant materials (which we will be adding to as we obtain more): https://community.icann.org/x/DrvhAg From: Mary Wong <mary.wong(a)icann.org> Date: Thursday, November 6, 2014 at 12:27 PM Cc: "gnso-igo-ingo-crp(a)icann.org" <gnso-igo-ingo-crp(a)icann.org> Subject: Re: [Gnso-igo-ingo-crp] On creating a UDRP-like procedure for IGOs, and on 6ter processes > Hello again everybody, > > I just wanted to follow up on Paul¹s, Petter¹s and George¹s recent emails with > a few additional clarifications. > > APPLICABILITY TO EXISTING (LEGACY) DOMAINS > * Our WG charter (based on the scoping done in the Preliminary and Final Issue > Reports) acknowledges that the URS is not currently a Consensus Policy. As > such, it only applies to new gTLDs. The UDRP (as a Consensus Policy) is > binding on all ICANN Contracted Parties via the incorporation clause found in > all registry and registrar agreements (new and existing). In considering a > dispute resolution procedure (DRP) whether a ³modified UDRP/URS² or a ³new² > DRP our WG will therefore have to bear in mind that if this is in fact the > final recommendation(s), it may be in the form of a Consensus Policy binding > on all contracted parties. > UDRP vs URS vs New DRP > * Our Charter also contemplates that we may distinguish between a UDRP and > URS, so for instance the WG could decide to only amend one but not the other > (among other options). This is a topic we will need to put on the WG agenda at > a future meeting. > * In the previous GNSO scoping effort (2007), draft language was in fact > prepared for a possible separate DRP. We have included this document on the WG > wiki: > * Our WG Charter also contemplates that should a separate DRP be recommended, > it must be narrowly tailored and applicable only to the protected > organizations. > ARTICLE 6ter PROCESS > * As George and Paul have noted previously, protection under 6ter is not > automatic, and even after the notification is filed a country/government can > object to it. My understanding is that in many jurisdictions, 6ter protection > is effective only if there is national law effectuating 6ter protection in > that jurisdiction (e.g. by requiring a trademark registration or other form of > statutory protection). The WG will likely want to address this as part of its > discussion on standing in relation to any form of amended or new DRP. > CREATING NEW LEGAL RIGHTS > * This problem was acknowledged early on in the WIPO-2 Process (2001-2). > However, do note that 6ter itself contains limitations in that: (1) protection > of the IGO name/acronym is against use without authorization as a trademark or > as elements of trademarks; AND (2) the use is of such a nature as to either > suggest to or mislead the public as to a possible connection between the user > and the organization concerned. In considering whether or not to amend the > UDRP/URS or develop a new DRP, these limitations may be of assistance to our > WG. > * It is also open to the WG to develop specific and additional express > defenses for any DRP (as was spelled out in the URS, for example). > I realize these do not answer the many excellent questions that have been > raised (nor are they supposed to), and do not address the tricky issues of > immunity/appeal or costs, but I hope they are helpful as background > nonetheless. > > Cheers > Mary > > Mary Wong > Senior Policy Director > Internet Corporation for Assigned Names & Numbers (ICANN) > Telephone: +1 603 574 4892 > Email: mary.wong(a)icann.org > > > > > > From: Paul Keating <paul(a)law.es> > Date: Thursday, November 6, 2014 at 8:47 AM > To: "petter.rindforth(a)fenixlegal.eu" <petter.rindforth(a)fenixlegal.eu> > Cc: "gnso-igo-ingo-crp(a)icann.org" <gnso-igo-ingo-crp(a)icann.org> > Subject: Re: [Gnso-igo-ingo-crp] PLEASE RESPOND ASAP -- Revised Draft of > Letter to Council regarding GAC Communique > >> Petter, >> >> Creating some UDRP-like CRP for the domains at issue would create huge >> issues. In addition to issues noted by others: >> >> 1. It would apply on a domain level basis crossing all extensions. >> >> 2. It would require a change to the RAA and RA for each extension. >> >> 3. All of these Curative Rights mechanisms exist ONLY as a matter of >> contract (ICANN - Registrar (RAA) and Registrar - Registrant (RA)). Thus, >> any new system could not, as a matter of contract law, apply to existing >> domains until a new RAA is signed with every registrar and a new RA is signed >> with each registrant. Thus, a current registration for 10 years would mean >> the domain was exempt from the new CRP for 10 years until the domain was >> renewed. >> >> 4. The protection here exists ONLY as between members of the Paris >> Convention and/or WTO. >> >> How would it apply to a registrant holding a registration per an >> agreement subject to the laws of a non-PC or non-WTO member state? >> >> How would it apply to a registrant holding a registration per an >> agreement subject to the laws of a country who had objected to the particular >> name/symbol being included under 6ter? >> >> 5. Because the UDRP (and other CRPs) already apply "as to all" domains >> covered there under (e.g UDRP applies to ALL .COM domains), an amendment to >> the UDRP (and other CRPs) is required to exclude its application to domains >> falling under 6ter. >> >> 6. How is the registrar or,registrant to know that the new CRP is to apply >> to any particular domain? E.g. Is "expletive+IOC" included? What about >> "olympicburgers.com <http://olympicburgers.com> " or >> "OlympicPeninsulaCampingSites.com <http://OlympicPeninsulaCampingSites.com> >> "? It becomes even worse with acronyms. >> >> I revert to something George K said in a prior email. ICANN has neither the >> right nor the obligation to create new legal rights. This was true during >> the heady drafting days of the UDRP and remains the case today IMHO. >> >> The more I look the more I feel that neither the GAC nor the IGOs have really >> thought this through. I fully understand that many of the IGOs both do great >> things and unlike the RC or IOC have very little money. However, and at the >> risk of sounding crass, it seems more of a case of late-comers to the party >> wanting to be relieved of consequences of their tardiness. >> >> This begs us to consider other alternatives such as informing them of the >> existence of .INT or even the possible creation of .IGO and advising that any >> new CRP be limited to those extensions. >> >> Regards, >> >> Paul Keating >> >> On 06 Nov 2014, at 10:11 am, Petter Rindforth >> <petter.rindforth(a)fenixlegal.eu> wrote: >> >>> I am not sure if GAC as such has considered this to 100%, but I am sure that >>> IGO¹s wants to avoid any changes of the UDRP. >>> But, to refer to our previous discussion of ³new CRP vs modified version of >>> the UDRP², what we talk about (if not add/change to the current UDRP) is not >>> to create a completely new dispute resolution procedure for IGO¹s, but >>> rather ³a modified version of UDRP² that will get a separate name and >>> Regulation. >>> Our ³IGOUDRP² can therefore well be the existing UDRP with some minor >>> changes related to IGO¹s, and perhaps formally limited to IGO complainants >>> if they are officially listed as IGO¹s - to avoid other >>> organizations/companies to claim that they can use this ³new² system. >>> >>> / Petter >>> >>> >>> -- >>> Petter Rindforth, LL M >>> >>> Fenix Legal KB >>> Stureplan 4c, 4tr >>> 114 35 Stockholm >>> Sweden >>> Fax: +46(0)8-4631010 >>> Direct phone: +46(0)702-369360 >>> E-mail: petter.rindforth(a)fenixlegal.eu >>> www.fenixlegal.eu <http://www.fenixlegal.eu> >>> >>> >>> NOTICE >>> This e-mail message is intended solely for the individual or individuals to >>> whom it is addressed. It may contain confidential attorney-client privileged >>> information and attorney work product. If the reader of this message is not >>> the intended recipient, you are requested not to read, copy or distribute it >>> or any of the information it contains. Please delete it immediately and >>> notify us by return e-mail. >>> Fenix Legal KB, Sweden, www.fenixlegal.eu <http://www.fenixlegal.eu> >>> Thank you >>> >>> >>> 5 november 2014, Phil Corwin <psc(a)vlaw-dc.com> skrev: >>>> >>>> I guess we could drill down a bit on the substance/procedures matter >>>> although my guess is that they haven¹t even thought about it, and were >>>> meaning to say that they want a new CRP for IGOs rather than any modified >>>> version of the UDRP. >>>> >>>> >>>> >>>> What do others think? >>>> >>>> >>>> >>>> Philip S. Corwin, Founding Principal >>>> >>>> Virtualaw LLC >>>> >>>> 1155 F Street, NW >>>> >>>> Suite 1050 >>>> >>>> Washington, DC 20004 >>>> >>>> 202-559-8597/Direct >>>> >>>> 202-559-8750/Fax >>>> >>>> 202-255-6172/cell >>>> >>>> >>>> >>>> Twitter: @VlawDC >>>> >>>> >>>> >>>> "Luck is the residue of design" -- Branch Rickey >>>> >>>> >>>> >>>> From: Paul Tattersfield [mailto:gpmgroup@gmail.com] >>>> Sent: Wednesday, November 05, 2014 5:13 PM >>>> To: Phil Corwin >>>> Cc: Mason Cole; gnso-igo-ingo-crp(a)icann.org >>>> Subject: Re: [Gnso-igo-ingo-crp] PLEASE RESPOND ASAP -- Revised Draft of >>>> Letter to Council regarding GAC Communique >>>> >>>> >>>> >>>> Mason's wording is very good. Do you guys think it would be worth building >>>> on Mason¹s wording to try and ascertain if the GAC's proposed prohibition >>>> on UDRP changes is for substantive changes only or if they are seeking to >>>> prohibit procedural changes too? >>>> >>>> >>>> >>>> Yours sincerely, >>>> >>>> >>>> >>>> >>>> >>>> Paul >>>> >>>> >>>> >>>> On Wed, Nov 5, 2014 at 9:49 PM, Phil Corwin <psc(a)vlaw-dc.com> wrote: >>>> >>>> Mason: >>>> >>>> >>>> >>>> Given that you have the delicate task of interfacing with the GAC, I think >>>> your proposed minor modifications are fine. >>>> >>>> >>>> >>>> Best, Philip >>>> >>>> >>>> >>>> Philip S. Corwin, Founding Principal >>>> >>>> Virtualaw LLC >>>> >>>> 1155 F Street, NW >>>> >>>> Suite 1050 >>>> >>>> Washington, DC 20004 >>>> >>>> 202-559-8597 <tel:202-559-8597> /Direct >>>> >>>> 202-559-8750 <tel:202-559-8750> /Fax >>>> >>>> 202-255-6172 <tel:202-255-6172> /cell >>>> >>>> >>>> >>>> Twitter: @VlawDC >>>> >>>> >>>> >>>> "Luck is the residue of design" -- Branch Rickey >>>> >>>> >>>> >>>> From: Mason Cole [mailto:mason@donuts.co] >>>> Sent: Wednesday, November 05, 2014 3:50 PM >>>> To: Phil Corwin >>>> Cc: gnso-igo-ingo-crp(a)icann.org >>>> Subject: Re: [Gnso-igo-ingo-crp] PLEASE RESPOND ASAP -- Revised Draft of >>>> Letter to Council regarding GAC Communique >>>> Importance: High >>>> >>>> >>>> >>>> Phil -- >>>> >>>> >>>> >>>> In my capacity as liaison, let me suggest an edit or two in the bullet >>>> point in question that might give us better luck in getting some useful >>>> information from the GAC: >>>> >>>> >>>> >>>> In regard to the issue of potential amendment of the UDRP It would be >>>> instructive to know the GAC¹s rationale for opposing any UDRP amendments as >>>> a means of providing IGOs with access to curative rights. Further, in >>>> opposing such amendments, does the GAC thus advise the GNSO to preclude any >>>> possible change to its "Mutual Jurisdiction" provisions to address specific >>>> sovereign immunity concerns of IGOs? Finally, if it is the GAC¹s position >>>> that an entirely new curative rights mechanism must be created, is it the >>>> GAC's understanding that the protections afforded to qualifying IGOs under >>>> Article 6ter of the Paris Convention would be the criteria for establishing >>>> standing under any dispute resolution procedure that may apply to IGOs? >>>> >>>> >>>> >>>> On Nov 5, 2014, at 11:56 AM, Phil Corwin wrote: >>>> >>>> >>>> >>>> WG members: >>>> >>>> >>>> >>>> Please find attached a revised draft letter to the GNSO Council regarding >>>> the LA GAC Communique that reflects our discussion earlier today. >>>> >>>> >>>> >>>> The only changes are to the second bullet point on page 3. >>>> >>>> >>>> >>>> PLEASE LET US KNOW IF THESE CHANGES ARE ACCEPTABLE WITHIN THE NEXT 24 >>>> HOURS. WE WANT TO FORARD THIS LETTER TO THE COUNCILL ASAP TO MAXIMIZE THE >>>> POSSIBILITY THAT IT WILL BE ADDED TO THE AGENDA FOR ITS MEETING NEXT >>>> THURSDAY. >>>> >>>> >>>> >>>> Thanks in advance. >>>> >>>> >>>> >>>> Best, Philip >>>> >>>> >>>> >>>> Philip S. Corwin, Founding Principal >>>> >>>> Virtualaw LLC >>>> >>>> 1155 F Street, NW >>>> >>>> Suite 1050 >>>> >>>> Washington, DC 20004 >>>> >>>> 202-559-8597 <tel:202-559-8597> /Direct >>>> >>>> 202-559-8750 <tel:202-559-8750> /Fax >>>> >>>> 202-255-6172 <tel:202-255-6172> /cell >>>> >>>> >>>> >>>> Twitter: @VlawDC >>>> >>>> >>>> >>>> "Luck is the residue of design" -- Branch Rickey >>>> >>>> >>>> >>>> <ICANN-IGO_INGO_CRWG-Letter to GNSO >>>> Council-LA_GAC_Advice-draft#2.docx>________________________________________ >>>> _______ >>>> Gnso-igo-ingo-crp mailing list >>>> Gnso-igo-ingo-crp(a)icann.org >>>> https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp >>>> >>>> >>>> >>>> Mason Cole >>>> >>>> VP Communications & Industry Relations >>>> >>>> Donuts Inc. >>>> >>>> >>>> >>>> >>>> >>>> >>>> >>>> mason(a)donuts.co >>>> >>>> Ofc +1 503 908 7623 <tel:%2B1%20503%20908%207623> >>>> >>>> Cell +1 503 407 2555 <tel:%2B1%20503%20407%202555> >>>> >>>> >>>> >>>> >>>> >>>> >>>> >>>> >>>> >>>> >>>> No virus found in this message. >>>> Checked by AVG - www.avg.com <http://www.avg.com> >>>> Version: 2015.0.5315 / Virus Database: 4189/8462 - Release Date: 10/27/14 >>>> Internal Virus Database is out of date. >>>> >>>> >>>> _______________________________________________ >>>> Gnso-igo-ingo-crp mailing list >>>> Gnso-igo-ingo-crp(a)icann.org >>>> https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp >>>> >>>> >>>> >>>> >>>> No virus found in this message. >>>> Checked by AVG - www.avg.com <http://www.avg.com> >>>> Version: 2015.0.5315 / Virus Database: 4189/8462 - Release Date: 10/27/14 >>>> Internal Virus Database is out of date. >>>> >>>> _______________________________________________ >>>> Gnso-igo-ingo-crp mailing list >>>> Gnso-igo-ingo-crp(a)icann.org >>>> https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp >>> _______________________________________________ >>> Gnso-igo-ingo-crp mailing list >>> Gnso-igo-ingo-crp(a)icann.org >>> https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp

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Re: [Gnso-igo-ingo-crp] On creating a UDRP-like procedure for IGOs, and on 6ter processes
by Mary Wong Nov. 6, 2014

Nov. 6, 2014

Hello again everybody, I just wanted to follow up on Paul¹s, Petter¹s and George¹s recent emails with a few additional clarifications. APPLICABILITY TO EXISTING (LEGACY) DOMAINS * Our WG charter (based on the scoping done in the Preliminary and Final Issue Reports) acknowledges that the URS is not currently a Consensus Policy. As such, it only applies to new gTLDs. The UDRP (as a Consensus Policy) is binding on all ICANN Contracted Parties via the incorporation clause found in all registry and registrar agreements (new and existing). In considering a dispute resolution procedure (DRP) whether a ³modified UDRP/URS² or a ³new² DRP our WG will therefore have to bear in mind that if this is in fact the final recommendation(s), it may be in the form of a Consensus Policy binding on all contracted parties. UDRP vs URS vs New DRP * Our Charter also contemplates that we may distinguish between a UDRP and URS, so for instance the WG could decide to only amend one but not the other (among other options). This is a topic we will need to put on the WG agenda at a future meeting. * In the previous GNSO scoping effort (2007), draft language was in fact prepared for a possible separate DRP. We have included this document on the WG wiki: * Our WG Charter also contemplates that should a separate DRP be recommended, it must be narrowly tailored and applicable only to the protected organizations. ARTICLE 6ter PROCESS * As George and Paul have noted previously, protection under 6ter is not automatic, and even after the notification is filed a country/government can object to it. My understanding is that in many jurisdictions, 6ter protection is effective only if there is national law effectuating 6ter protection in that jurisdiction (e.g. by requiring a trademark registration or other form of statutory protection). The WG will likely want to address this as part of its discussion on standing in relation to any form of amended or new DRP. CREATING NEW LEGAL RIGHTS * This problem was acknowledged early on in the WIPO-2 Process (2001-2). However, do note that 6ter itself contains limitations in that: (1) protection of the IGO name/acronym is against use without authorization as a trademark or as elements of trademarks; AND (2) the use is of such a nature as to either suggest to or mislead the public as to a possible connection between the user and the organization concerned. In considering whether or not to amend the UDRP/URS or develop a new DRP, these limitations may be of assistance to our WG. * It is also open to the WG to develop specific and additional express defenses for any DRP (as was spelled out in the URS, for example). I realize these do not answer the many excellent questions that have been raised (nor are they supposed to), and do not address the tricky issues of immunity/appeal or costs, but I hope they are helpful as background nonetheless. Cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names & Numbers (ICANN) Telephone: +1 603 574 4892 Email: mary.wong(a)icann.org From: Paul Keating <paul(a)law.es> Date: Thursday, November 6, 2014 at 8:47 AM To: "petter.rindforth(a)fenixlegal.eu" <petter.rindforth(a)fenixlegal.eu> Cc: "gnso-igo-ingo-crp(a)icann.org" <gnso-igo-ingo-crp(a)icann.org> Subject: Re: [Gnso-igo-ingo-crp] PLEASE RESPOND ASAP -- Revised Draft of Letter to Council regarding GAC Communique > Petter, > > Creating some UDRP-like CRP for the domains at issue would create huge issues. > In addition to issues noted by others: > > 1. It would apply on a domain level basis crossing all extensions. > > 2. It would require a change to the RAA and RA for each extension. > > 3. All of these Curative Rights mechanisms exist ONLY as a matter of contract > (ICANN - Registrar (RAA) and Registrar - Registrant (RA)). Thus, any new > system could not, as a matter of contract law, apply to existing domains until > a new RAA is signed with every registrar and a new RA is signed with each > registrant. Thus, a current registration for 10 years would mean the domain > was exempt from the new CRP for 10 years until the domain was renewed. > > 4. The protection here exists ONLY as between members of the Paris > Convention and/or WTO. > > How would it apply to a registrant holding a registration per an > agreement subject to the laws of a non-PC or non-WTO member state? > > How would it apply to a registrant holding a registration per an > agreement subject to the laws of a country who had objected to the particular > name/symbol being included under 6ter? > > 5. Because the UDRP (and other CRPs) already apply "as to all" domains > covered there under (e.g UDRP applies to ALL .COM domains), an amendment to > the UDRP (and other CRPs) is required to exclude its application to domains > falling under 6ter. > > 6. How is the registrar or,registrant to know that the new CRP is to apply to > any particular domain? E.g. Is "expletive+IOC" included? What about > "olympicburgers.com <http://olympicburgers.com> " or > "OlympicPeninsulaCampingSites.com <http://OlympicPeninsulaCampingSites.com> "? > It becomes even worse with acronyms. > > I revert to something George K said in a prior email. ICANN has neither the > right nor the obligation to create new legal rights. This was true during the > heady drafting days of the UDRP and remains the case today IMHO. > > The more I look the more I feel that neither the GAC nor the IGOs have really > thought this through. I fully understand that many of the IGOs both do great > things and unlike the RC or IOC have very little money. However, and at the > risk of sounding crass, it seems more of a case of late-comers to the party > wanting to be relieved of consequences of their tardiness. > > This begs us to consider other alternatives such as informing them of the > existence of .INT or even the possible creation of .IGO and advising that any > new CRP be limited to those extensions. > > Regards, > > Paul Keating > > On 06 Nov 2014, at 10:11 am, Petter Rindforth <petter.rindforth(a)fenixlegal.eu> > wrote: > >> I am not sure if GAC as such has considered this to 100%, but I am sure that >> IGO¹s wants to avoid any changes of the UDRP. >> But, to refer to our previous discussion of ³new CRP vs modified version of >> the UDRP², what we talk about (if not add/change to the current UDRP) is not >> to create a completely new dispute resolution procedure for IGO¹s, but rather >> ³a modified version of UDRP² that will get a separate name and Regulation. >> Our ³IGOUDRP² can therefore well be the existing UDRP with some minor changes >> related to IGO¹s, and perhaps formally limited to IGO complainants if they >> are officially listed as IGO¹s - to avoid other organizations/companies to >> claim that they can use this ³new² system. >> >> / Petter >> >> >> -- >> Petter Rindforth, LL M >> >> Fenix Legal KB >> Stureplan 4c, 4tr >> 114 35 Stockholm >> Sweden >> Fax: +46(0)8-4631010 >> Direct phone: +46(0)702-369360 >> E-mail: petter.rindforth(a)fenixlegal.eu >> www.fenixlegal.eu <http://www.fenixlegal.eu> >> >> >> NOTICE >> This e-mail message is intended solely for the individual or individuals to >> whom it is addressed. It may contain confidential attorney-client privileged >> information and attorney work product. If the reader of this message is not >> the intended recipient, you are requested not to read, copy or distribute it >> or any of the information it contains. Please delete it immediately and >> notify us by return e-mail. >> Fenix Legal KB, Sweden, www.fenixlegal.eu <http://www.fenixlegal.eu> >> Thank you >> >> >> 5 november 2014, Phil Corwin <psc(a)vlaw-dc.com> skrev: >>> >>> I guess we could drill down a bit on the substance/procedures matter >>> although my guess is that they haven¹t even thought about it, and were >>> meaning to say that they want a new CRP for IGOs rather than any modified >>> version of the UDRP. >>> >>> >>> >>> What do others think? >>> >>> >>> >>> Philip S. Corwin, Founding Principal >>> >>> Virtualaw LLC >>> >>> 1155 F Street, NW >>> >>> Suite 1050 >>> >>> Washington, DC 20004 >>> >>> 202-559-8597/Direct >>> >>> 202-559-8750/Fax >>> >>> 202-255-6172/cell >>> >>> >>> >>> Twitter: @VlawDC >>> >>> >>> >>> "Luck is the residue of design" -- Branch Rickey >>> >>> >>> >>> From: Paul Tattersfield [mailto:gpmgroup@gmail.com] >>> Sent: Wednesday, November 05, 2014 5:13 PM >>> To: Phil Corwin >>> Cc: Mason Cole; gnso-igo-ingo-crp(a)icann.org >>> Subject: Re: [Gnso-igo-ingo-crp] PLEASE RESPOND ASAP -- Revised Draft of >>> Letter to Council regarding GAC Communique >>> >>> >>> >>> Mason's wording is very good. Do you guys think it would be worth building >>> on Mason¹s wording to try and ascertain if the GAC's proposed prohibition on >>> UDRP changes is for substantive changes only or if they are seeking to >>> prohibit procedural changes too? >>> >>> >>> >>> Yours sincerely, >>> >>> >>> >>> >>> >>> Paul >>> >>> >>> >>> On Wed, Nov 5, 2014 at 9:49 PM, Phil Corwin <psc(a)vlaw-dc.com> wrote: >>> >>> Mason: >>> >>> >>> >>> Given that you have the delicate task of interfacing with the GAC, I think >>> your proposed minor modifications are fine. >>> >>> >>> >>> Best, Philip >>> >>> >>> >>> Philip S. Corwin, Founding Principal >>> >>> Virtualaw LLC >>> >>> 1155 F Street, NW >>> >>> Suite 1050 >>> >>> Washington, DC 20004 >>> >>> 202-559-8597 <tel:202-559-8597> /Direct >>> >>> 202-559-8750 <tel:202-559-8750> /Fax >>> >>> 202-255-6172 <tel:202-255-6172> /cell >>> >>> >>> >>> Twitter: @VlawDC >>> >>> >>> >>> "Luck is the residue of design" -- Branch Rickey >>> >>> >>> >>> From: Mason Cole [mailto:mason@donuts.co] >>> Sent: Wednesday, November 05, 2014 3:50 PM >>> To: Phil Corwin >>> Cc: gnso-igo-ingo-crp(a)icann.org >>> Subject: Re: [Gnso-igo-ingo-crp] PLEASE RESPOND ASAP -- Revised Draft of >>> Letter to Council regarding GAC Communique >>> Importance: High >>> >>> >>> >>> Phil -- >>> >>> >>> >>> In my capacity as liaison, let me suggest an edit or two in the bullet point >>> in question that might give us better luck in getting some useful >>> information from the GAC: >>> >>> >>> >>> In regard to the issue of potential amendment of the UDRP It would be >>> instructive to know the GAC¹s rationale for opposing any UDRP amendments as >>> a means of providing IGOs with access to curative rights. Further, in >>> opposing such amendments, does the GAC thus advise the GNSO to preclude any >>> possible change to its "Mutual Jurisdiction" provisions to address specific >>> sovereign immunity concerns of IGOs? Finally, if it is the GAC¹s position >>> that an entirely new curative rights mechanism must be created, is it the >>> GAC's understanding that the protections afforded to qualifying IGOs under >>> Article 6ter of the Paris Convention would be the criteria for establishing >>> standing under any dispute resolution procedure that may apply to IGOs? >>> >>> >>> >>> On Nov 5, 2014, at 11:56 AM, Phil Corwin wrote: >>> >>> >>> >>> WG members: >>> >>> >>> >>> Please find attached a revised draft letter to the GNSO Council regarding >>> the LA GAC Communique that reflects our discussion earlier today. >>> >>> >>> >>> The only changes are to the second bullet point on page 3. >>> >>> >>> >>> PLEASE LET US KNOW IF THESE CHANGES ARE ACCEPTABLE WITHIN THE NEXT 24 HOURS. >>> WE WANT TO FORARD THIS LETTER TO THE COUNCILL ASAP TO MAXIMIZE THE >>> POSSIBILITY THAT IT WILL BE ADDED TO THE AGENDA FOR ITS MEETING NEXT >>> THURSDAY. >>> >>> >>> >>> Thanks in advance. >>> >>> >>> >>> Best, Philip >>> >>> >>> >>> Philip S. Corwin, Founding Principal >>> >>> Virtualaw LLC >>> >>> 1155 F Street, NW >>> >>> Suite 1050 >>> >>> Washington, DC 20004 >>> >>> 202-559-8597 <tel:202-559-8597> /Direct >>> >>> 202-559-8750 <tel:202-559-8750> /Fax >>> >>> 202-255-6172 <tel:202-255-6172> /cell >>> >>> >>> >>> Twitter: @VlawDC >>> >>> >>> >>> "Luck is the residue of design" -- Branch Rickey >>> >>> >>> >>> <ICANN-IGO_INGO_CRWG-Letter to GNSO >>> Council-LA_GAC_Advice-draft#2.docx>_________________________________________ >>> ______ >>> Gnso-igo-ingo-crp mailing list >>> Gnso-igo-ingo-crp(a)icann.org >>> https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp >>> >>> >>> >>> Mason Cole >>> >>> VP Communications & Industry Relations >>> >>> Donuts Inc. >>> >>> >>> >>> >>> >>> >>> >>> mason(a)donuts.co >>> >>> Ofc +1 503 908 7623 <tel:%2B1%20503%20908%207623> >>> >>> Cell +1 503 407 2555 <tel:%2B1%20503%20407%202555> >>> >>> >>> >>> >>> >>> >>> >>> >>> >>> >>> No virus found in this message. >>> Checked by AVG - www.avg.com <http://www.avg.com> >>> Version: 2015.0.5315 / Virus Database: 4189/8462 - Release Date: 10/27/14 >>> Internal Virus Database is out of date. >>> >>> >>> _______________________________________________ >>> Gnso-igo-ingo-crp mailing list >>> Gnso-igo-ingo-crp(a)icann.org >>> https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp >>> >>> >>> >>> >>> No virus found in this message. >>> Checked by AVG - www.avg.com <http://www.avg.com> >>> Version: 2015.0.5315 / Virus Database: 4189/8462 - Release Date: 10/27/14 >>> Internal Virus Database is out of date. >>> >>> _______________________________________________ >>> Gnso-igo-ingo-crp mailing list >>> Gnso-igo-ingo-crp(a)icann.org >>> https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp >> _______________________________________________ >> Gnso-igo-ingo-crp mailing list >> Gnso-igo-ingo-crp(a)icann.org >> https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp

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IGOs
by Paul Keating Nov. 6, 2014

Nov. 6, 2014

Phil, I want to add something to George's recent email regarding the need to privately enforce. I believe there may be a common misconception in the WG that the names etc of IGOS are trademarks just because they are referenced in the Paris Convention. This is not the case. 6ter of the Convention does not create TM rights. Rather the Paris Convention merely provides that members will not allow registration or use of identical symbols by others for use AS TRADEMARKS. Art 6ter was subsequently expanded to apply to and benefit all WTO members. This means several things. 1. Use for non-trademark purposes is not prohibited, 2. Registration or use of the trademark is prohibited only if it "suggest[s] to the public that a connection exists between the organization concerned and the armorial bearings, flags, emblems, abbreviations, and names"; 3. Registration or use of the trademark is allowed if it "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." 4. "Prohibition of the use of official signs and hallmarks indicating control and warranty shall apply solely in cases where the marks in which they are incorporated are intended to be used on goods of the same or a similar kind." 5. The requirement is "heraldic". As State emblems frequently comprise common symbols, such as a lion, an eagle or the sun, imitations are forbidden only if they reproduce the heraldic characteristics of the State sign concerned. In consequence, the symbol as such remains free and may be used in the composition of trademarks. So, the convention neither creates a right nor precludes registration in absolute terms. The operative language is as follows: > “(1) (a) The countries of the Union agree to refuse or to invalidate the registration, and 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, and any imitation from a heraldic point of view. > > (b) The provisions of subparagraph (a), above, shall apply equally to armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organizations of which one or more countries of the Union are members, with the exception of armorial bearings, flags, other emblems, abbreviations, and names, that are already the subject of international agreements in force, intended to ensure their protection. > > (c) No country of the Union shall be required to apply the provisions of subparagraph (b), above, to the prejudice of the owners of rights acquired in good faith before the entry into force, in that country, of this Convention. 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. > > (2) Prohibition of the use of official signs and hallmarks indicating control and warranty shall apply solely in cases where the marks in which they are incorporated are intended to be used on goods of the same or a similar kind. " > In looking at the language (and the relevant language of 15 USC 1152), it thus does not appear that IGO names, etc are in fact provided the status of trademarks. Rather, any "right" is limited to a right to prevent any person from registering a Heraldically identical sign for use AS A TRADEMARK. And, even this blocking right is further limited as noted above (items listed 2-4). IMPACT ON ANALYSIS. This impacts,our analysis in several important aspects. Standing. For those IGOs that have no trademark registration (in any country), the absence of registration rights means that standing under current CRPs requires establishment of common law trademark rights. Although the Paris Convention established a centralized Database of covered symbols etc, (http://www.wipo.int/article6ter/en) It is clear that registration with the "international bureau" does not create rights. This is evident in the objection process which allows any state to simply object to a proposed name/symbol but does not require resolution of the objection. There have in fact been objections in the past to both state and IGO communications. If the common law approach is felt to be insufficient, the only way I see around the issue would be to either amend the UDRP (and each NewgTLD policy) to include State and IGO names/symbols appearing in the WIPO database as "trademarks" under the 1st Element f the Policy, or create an entirely new CRP system. Additional changes to the UDRP may be required as a result of: (a) The absolute limitation of any right when complained of use is not as a trademark; (b) Limitations on the blocking right which go beyond or are arguably different from the language of the Policy relative to legitimate rights and bad faith (non TM use and no confusion); (c) The Convention' somewhat inconsistent reference to registration OR use as a trademark; (d) The absolute limitation of any restriction to prospective application only (meaning no enforcement as against marks that pre-dated the particular State or IGO name or symbol). And, of course the above does not address the issues of costs and/or immunity. :( I attach a link to a very good review of the 6ter issue published in 2005 by the STANDING COMMITTEE ON THE LAW OF TRADEMARKS. It includes the actual text of the Paris Convention AND the explanatory notes published there with. See:http://www.wipo.int/edocs/mdocs/sct/en/sct_15/sct_15_3.pdf Also, I note two added references which I have not been able to obtain thus far (Mary could you assist please). These are, 1. Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property, WIPO Publication No. 611, WIPO, Geneva, 2004, pp. 94-103 - a detailed legal analysis to Article 6ter. 2. Document P/A/XIX/4, Report adopted by the Assembly of the Paris Union which appears to be a 1992 memorandum outlining the basic requirements that each 6ter symbol/name must meet to qualify. Please ignore any typos etc. I find it difficult to produce anything serious on an IPad. Regards, Paul Keating

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Re: [Gnso-igo-ingo-crp] PLEASE RESPOND ASAP -- Revised Draft of Letter to Council regarding GAC Communique
by George Kirikos Nov. 6, 2014

Nov. 6, 2014

Hello, The revised draft letter looks fine to me. On another note, I noticed that the GAC website lists all the "observers": https://gacweb.icann.org/display/gacweb/GAC+Observers with most of their contact information. To disintermediate, perhaps we should extend an invitation to the IGO observers (there are a few non-IGOs, e.g. Red Cross) to see whether they'd join our working group? Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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