December 2014 - Gnso-igo-ingo-crp

Re: [Gnso-igo-ingo-crp] Follow up from WG call of 17 December
by David W. Maher Dec. 22, 2014

Dec. 22, 2014

Thanks, Mary Regarding the 2007 draft text for an alternative DRP, I believe the opposition comments of the Registry Stakeholder Group are still relevant. One comment in particular is: "The fundamental question about the current proposal remains - whether or not ICANN should become a global law making body. The WIPO 2 recommendations are tantamount to asking ICANN to become an “enforcer of treaties”, which is not its proper role." David David W. Maher Senior Vice President – Law & Policy Public Interest Registry 312 375 4849 From: Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>> Date: Monday, December 22, 2014 9:02 AM To: "gnso-igo-ingo-crp(a)icann.org<mailto:gnso-igo-ingo-crp@icann.org>" <gnso-igo-ingo-crp(a)icann.org<mailto:gnso-igo-ingo-crp@icann.org>> Subject: [Gnso-igo-ingo-crp] Follow up from WG call of 17 December Dear all, Following up n the last WG call on 17 December, the WG co-chairs would like to remind everyone to review the 2007 draft text for an alternative dispute resolution process that was created by ICANN staff at the request of the then-GNSO Council, with a view toward further discussion of the standing and sovereign immunity questions. In addition, since the 17 December call saw a very detailed “walk through” and discussion of the Article 6ter process and scope, the WG co-chairs would like to invite follow up comments to the mailing list on that topic, as well as encourage members/observers who were not able to join the call to review the discussion that took place. For your convenience, the agenda, documents, Adobe Connect chat transcript, MP3 recording and meeting transcript have all been uploaded to the WG wiki here: https://community.icann.org/x/jooQAw On behalf of Petter and Phil, our co-chairs, and Berry, Steve and the rest of the ICANN policy staff, here’s wishing you and yours a very happy holiday and a great start to 2015! 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<mailto:mary.wong@icann.org>

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Follow up from WG call of 17 December
by Mary Wong Dec. 22, 2014

Dec. 22, 2014

Dear all, Following up n the last WG call on 17 December, the WG co-chairs would like to remind everyone to review the 2007 draft text for an alternative dispute resolution process that was created by ICANN staff at the request of the then-GNSO Council, with a view toward further discussion of the standing and sovereign immunity questions. In addition, since the 17 December call saw a very detailed ³walk through² and discussion of the Article 6ter process and scope, the WG co-chairs would like to invite follow up comments to the mailing list on that topic, as well as encourage members/observers who were not able to join the call to review the discussion that took place. For your convenience, the agenda, documents, Adobe Connect chat transcript, MP3 recording and meeting transcript have all been uploaded to the WG wiki here: https://community.icann.org/x/jooQAw On behalf of Petter and Phil, our co-chairs, and Berry, Steve and the rest of the ICANN policy staff, here¹s wishing you and yours a very happy holiday and a great start to 2015! 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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MP3 IGO WG - Wednesday, 17 December 2014 at 1700 UTC
by Terri Agnew Dec. 17, 2014

Dec. 17, 2014

Dear All, Please find the MP3 recording for IGO-INGO Access to Curative Rights Protection Mechanisms Working Group call on Wednesday, 17 December 2014 at 1700 UTC at: http://audio.icann.org/gnso/gnso-igo-ingo-crp-access-20141217-en.mp3 On page: http://gnso.icann.org/en/group-activities/calendar#dec The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page: http://gnso.icann.org/calendar/ Attendees: George Kirikos - Individual Petter Rindforth - IPC Phil Corwin - BC Kristine Dorrain- Individual Mason Cole - RySG David Maher - RySG Val Sherman - IPC Osvaldo Novoa - ISPCP Gary Campbell - GAC Paul Tattersfiled - Individual Jay Chapman - Individual Jim Bikoff - IPC Kathy Kleiman - NCUC Apologies: Lori Schulman - NPOC ICANN staff: Mary Wong Amy Bivins Steve Chan Berry Cobb Terri Agnew ** Please let me know if your name has been left off the list ** Mailing list archives: http://mm.icann.org/pipermail/gnso-igo-ingo-crp/ Wiki page: https://community.icann.org/x/97rhAg Thank you. Kind regards, Terri Agnew ------------------------------- Adobe Connect chat transcript for Wednesday, 17 December 2014: Terri Agnew:Dear all, welcome to the IGO-INGO Curative Rights Protection PDP WG Meeting on the 17 December 2014 George Kirikos:Hi everyone. Happy Hanukkah to those celebrating the holiday. George Kirikos:Woah, someone needs to mute. :-) Philip Corwin:Thanks George George Kirikos:Hey Phil. How are you doing? Philip Corwin:Good Gary Campbell:Hi everyone Paul Tattersfield:Hi George, everyone Jay Chapman:Hello, all! George Kirikos:Hi Gary, Paul, and Jay. val sherman:Hello everybody. And thanks George! George Kirikos:Hi Val. George Kirikos:It might be easier to refer to paragraph numbers, rather than the page number. Terri Agnew:Welcome Kristine Dorrain Mary Wong:@Phil, yes, the expansion to WTO member countries expands the Convention fairly substantially. Osvaldo Novoa:Hello all, I had a problem with my audio Terri Agnew:@Osvaldo, are you able to hear now? Mary Wong:The extension to WTO member countries was effected by the WTO Agreements, specifically, the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). Osvaldo Novoa:@Terry, yes is fine now.. I think the problem was in my PC George Kirikos:They have to communicate it. George Kirikos:See paragraph 27, as Mary is discussing. George Kirikos:Also paragraph 40. Mary Wong:Yes, the 6ter protection is for use AS A TRADEMARK, and applies only against uses that suggest a connection with the IGO or that misleads the public into thinking there is such a connection. Terri Agnew 2:Kathy Kleiman has joined George Kirikos:Paragraph 47 is also important, as it reinforces the notion that enforcement is done at the *national* level, (and not some international tribunal). "the ultimate decision as to the nature of a requesting organization and its eligibility for the purposes of Article 6ter(1)(b) and (3)(b) remains with the ****States**** George Kirikos:(and when I see the word "states", I think ultimately that means the national courts within a state. George Kirikos:Acttually, not correct, Kathy. Mary Wong:@Kathy, unless the countries are also members of the Trademark Law treaty George Kirikos:It does apply to service marks, elsewhere in the document. George Kirikos:See para 32, though. Mary Wong:So a country that's either a member of Paris or the WTO and the Trademark Law Treaty must apply 6ter to both goods and service marks, but a country that's not a member of the Trademark Law Treaty does NOT need to extend protection to service marks. George Kirikos:Here's a list of who signed it. George Kirikos:http://www.wipo.int/treaties/en/notifications/tlt/treaty_tlt_1.html George Kirikos:Austria, Belarus, Belgium, Bosnia and Herzegovina, China, Côte d'Ivoire, Cuba, Czech Republic, Denmark, Dominican Republic, Hungary, Indonesia, Israel, Italy, Kenya, Latvia, Lithuania, Luxembourg, Malta, Mexico, Monaco, Portugal, Republic of Moldova, Russian Federation, Slovakia, Slovenia, South Africa, Swaziland, Switzerland, Togo, Trinidad and Tobago, Turkey, Ukraine, United Kingdom, United States of America, Uruguay, on October 28, 1994; George Kirikos:Germany, on November 7, 1994; Greece, on November 14, 1994; Senegal, on November 18, 1994; Liechtenstein, on March 8, 1995; Spain, on March 29, 1995; France, on April 12, 1995; Poland, on May 10, 1995; European Communities, on June 30, 1995; Finland, on July 27, 1995; Sweden, on September 26, 1995; Morocco, on October 5, 1995; Gabon, on October 17, 1995; Costa Rica, on October 18, 1995; Netherlands, on October 23, 1995; Cyprus, on October 27, 1995. Petter Rindforth:It is an old way of thinking - still identifying trademarks as only covering goods (Cl 1-34). .. Mary Wong:@Petter, yes, and it's very likely that even countries that didn't sign up to the Trademark Law Treaty would have extended their national TM regimes to service marks regardless. Petter Rindforth:I am not sure, but that can only be a handful countries/areas that not accept that there is something called service marks Mary Wong:Note that it's possible that some IGOs may have requested communication of 6ter protection but only for their emblems (ie not names or acronyms) - so the numbers may not be entirely accurate to our purpose. George Kirikos:NB: paragraph 60 mentions that the Article 6ter database "does not have any legal effect." Mary Wong:@George, yes - protections are national by each member state. George Kirikos:Agreed, Mary. I think that should mean enforcement should be left to national courts, rather than some international court. Mary Wong:Unless there is a specific narrow procedure dealing JUST with domain names that are registered or used as TMs :) (not a staff position; just saying!) Kathy K:Interesting - lots to think about George Kirikos:I'd like to be in the queue, too. Kathy K:Who's speaking? Mary Wong:Jim Bikoff George Kirikos:Jim Bikoff is speaking. Paul Tattersfield:Even late January is a very quick turn round for most Governments Petter Rindforth:And there will be a reminder sent out after new year? Mary Wong:@Petter, yes :) Petter Rindforth:Thanks - needed ;-) Paul Tattersfield:@george standing yes not sure about the inference of referring back to a nation court George Kirikos:I don't think they'd have any recourse if there was an objection in that country. Kathy K:@Phil, I think you raise an important hypothetical George Kirikos:(and those objections -- I'm not sure if they're saved in the WIPO Article 6ter online database. Mary Wong:This was prepared for the GNSO Council as part of the Issue Report scoping. George Kirikos:Bye everyone. Have a nice holiday. Kathy K:Very useful review - tx you! Kathy K:Happy Holidays, All!!!! val sherman:This was very helpful Thanks Phil, George and Mary for breaking it down. Osvaldo Novoa:Bye all, best wishes for these festivities val sherman:happy holidays to all Mary Wong:Happy holidays, all, and you're very welcome, Val! Petter Rindforth:The same to you all! Gary Campbell:Happy holidays all Paul Tattersfield:Thanks Phil that was very helpful - happy holidays everyone

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Fwd: Agenda and documents for WG call on 17 December 2014
by Mary Wong Dec. 17, 2014

Dec. 17, 2014

Please see below as well as the attached for the proposed agenda and documents for discussion on our WG call on Wednesday 17 December. Cheers Mary Sent from my iPhone Begin forwarded message: Dear WG members, Here is the proposed agenda for the next WG call on Wednesday 17 December, 1700 UTC: 1. Roll Call/Updates to SOI 2. Briefing on 2005 WIPO Secretariat Report on Article 6ter (see attached; briefing will be conducted either by the WG co-chairs or ICANN staff) 3. Continue brainstorming and general discussion on possible alternative basis for standing (other than trademarks) and on the sovereign immunity question (see the 2007 draft text for an alternative dispute resolution, attached) 4. Next steps Please note that, per the co-chairs' previous emails, this call is meant for general discussion purposes. As such, no decisions will be taken until after the New Year, when further research progress and possibly initial responses from the GAC and the IGOs may be forthcoming. The two documents attached for review and discussion had been uploaded to the WG wiki some time ago, as part of the Background Materials for our work. For your convenience, they are attached to this email - once again, for information and discussion purposes. 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<mailto:mary.wong@icann.org>

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sovereign immunity
by Paul Keating Dec. 15, 2014

Dec. 15, 2014

I wanted to add some further resources to the discussion on Sovereign Immunity. IMHO, I see no escape for sovereigns in the context of domain name disputes and even less when those disputes center around trademarks. Signing the RA would imply a waiver at least under the laws governing the RA agreement (assuming the US). The UDRP is not mandatory for Complainants. They need not pursue a UDRP claim. However, if they do: The incorporation of the UDRP requires that to participate, the Complainant MUST select a Mutual Jurisdiction for litigation purposes. The RA incorporates the UDRP which provides the losing Respondent with the right to litigate in the selected Mutual Jurisdiction. As to trademark issues in general, they are by definition commercial - most, if not all jurisdictions require commercial use to even obtain trademark protection. Note that to protect as against physhing, etc, trademarks are not required. Such actions are tantamount to fraud claims. My conclusion is that if IGOs have a concern about SI, they should have registrations held by a commercial entity with limited liability (e.g. As States do with national Airlines), or simply refrain from using the UDRP as an enforcement mechanism. Background: In the US, the relevant section of law is 28 U.S. Code § 1605 - (General exceptions to the jurisdictional immunity of a foreign state) which in relevant part states: (a) A foreign state shall not be immune from the jurisdiction of courts of the United States or of the States in any case―(1) in which the foreign state has waived its immunity either explicitly or by implication, notwithstanding any withdrawal of the waiver which the foreign state may purport to effect except in accordance with the terms of the waiver; (2) in which the action is based upon a commercial activity carried on in the United States by the foreign state; or upon an act performed in the United States in connection with a commercial activity of the foreign state elsewhere; or upon an act outside the territory of the United States in connection with a commercial activity of the foreign state elsewhere and that act causes a direct effect in the United States; (3) in which rights in property taken in violation of international law are in issue and that property or any property exchanged for such property is present in the United States in connection with a commercial activity carried on in the United States by the foreign state; or that property or any property exchanged for such property is owned or operated by an agency or instrumentality of the foreign state and that agency or instrumentality is engaged in a commercial activity in the United States; (4) in which rights in property in the United States acquired by succession or gift or rights in immovable property situated in the United States are in issue; (5) not otherwise encompassed in paragraph (2) above, in which money damages are sought against a foreign state for personal injury or death, or damage to or loss of property, occurring in the United States and caused by the tortious act or omission of that foreign state or of any official or employee of that foreign state while acting within the scope of his office or employment; except this paragraph shall not apply to―(A) any claim based upon the exercise or performance or the failure to exercise or perform a discretionary function regardless of whether the discretion be abused, or (B) any claim arising out of malicious prosecution, abuse of process, libel, slander, misrepresentation, deceit, or interference with contract rights; or (6) in which the action is brought, either to enforce an agreement made by the foreign state with or for the benefit of a private party to submit to arbitration all or any differences which have arisen or which may arise between the parties with respect to a defined legal relationship, whether contractual or not, concerning a subject matter capable of settlement by arbitration under the laws of the United States, or to confirm an award made pursuant to such an agreement to arbitrate, if (A) the arbitration takes place or is intended to take place in the United States, (B) the agreement or award is or may be governed by a treaty or other international agreement in force for the United States calling for the recognition and enforcement of arbitral awards, (C) the underlying claim, save for the agreement to arbitrate, could have been brought in a United States court under this section or section 1607 <http://www.law.cornell.edu/uscode/text/28/1607>, or (D) paragraph (1) of this subsection is otherwise applicable. SOURCE: http://www.law.cornell.edu/uscode/text/28/1605) In terms of case law in the US, we have the following examples: Phoenix Consulting, Inc., v. Republic of Angola, No. 99-7032 (DC Cir. 2000) http://www.cadc.uscourts.gov/internet/opinions.nsf/80FD57CDDEC9054485256F18 0065AF40/$file/99-7032a.txt (executed a written sales contract containing a choice of law provision subjecting the contract to the jurisdiction and laws of the United States--which, accord- ing to the legislative history of the FSIA, would by implica- tion have waived Angola's immunity from suit. See H.R. Rep. No. 94-1487, at 18 (1976), reprinted in 1976 U.S.C.C.A.N. 6604, 6616-17.) PERMANENT MISSION OF INDIA TO THE UNITED NATIONS et al. v. CITY OF NEW YORK, No. 06-134 (C2nd Cir. 2007) http://caselaw.lp.findlaw.com/scripts/getcase.pl?court=US&vol=000&invol=06- 134 FSIA's related purposes. First, Congress intended the FSIA to adopt the restrictive theory of sovereign immunity, which recognizes immunity "with regard to sovereign or public acts (jure imperii) of a state, but not ... private acts (jure gestionis)." Alfred Dunhill of London, Inc. v. Republic of Cuba, 425 U. S. 682, 711 <http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?navby=case&court=US&vol=4 25&invol=682&pageno=711>. Property ownership is not an inherently sovereign function. Alfred Dunhill of London, Inc. v. Republic of Cuba, 425 U. S. 682, 711 <http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?navby=case&court=US&vol=4 25&invol=682&pageno=711>. Distinguishing between the public and governmental acts of sovereign states on the one hand and their private and commercial acts on the other is not a novel approach. As the Court stated through Mr. Chief Justice Marshall long ago in Bank of the United States v. Planters' Bank of Georgia, 9 Wheat. 904, 907 (1824): "It is, we think, a sound principle, that when a government becomes a partner in any trading company, it divests itself, so far as concerns the transactions of that company, of its sovereign character, and takes that of a private citizen. Instead of communicating to the company its privileges and its prerogatives, it descends to a level with those with [425 U.S. 682, 696] whom it associates itself, and takes the character which belongs to its associates, and to the business which is to be transacted." Cf. Sloan Shipyards v. United States Fleet Corp., 258 U.S. 549, 567 <http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=us&vol=258&invol=54 9#567>-568 (1922). In this same tradition, South Carolina v. United States, 199 U.S. 437 <http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=us&vol=199&invol=43 7>(1905), drew a line for purposes of tax immunity between the historically recognized governmental functions of a State and businesses engaged in by a State of the kind which theretofore had been pursued by private enterprise. Similarly, in Ohio v. Helvering, 292 U.S. 360, 369 <http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=us&vol=292&invol=36 0#369>(1934), the Court said: "If a state chooses to go into the business of buying and selling commodities, its right to do so may be conceded so far as the Federal Constitution is concerned; but the exercise of the right is not the performance of a governmental function . . . . When a state enters the market place seeking customers it divests itself of its quasi sovereignty pro tanto, and takes on the character of a trader . . . ." It is thus a familiar concept that "there is a constitutional line between the State as government and the State as trader . . . ." New York v. United States, 326 U.S. 572, 579 <http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?navby=case&court=us&vol=3 26&invol=572#579>(1946). See also Parden v. Terminal R. Co., 377 U.S. 184, 189 <http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?navby=case&court=us&vol=3 77&invol=184#189>-190 (1964); California v. Taylor, 353 U.S. 553, 564 <http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?navby=case&court=us&vol=3 53&invol=553#564>(1957); United States v. California, 297 U.S. 175, 183 <http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=us&vol=297&invol=17 5#183>(1936).It is the position of the United States, stated in an amicus brief filed by the Solicitor General, that such a line should be drawn in defining the outer limits of the act of state concept and that repudiations by a foreign sovereign of its commercial debts should not be considered to be acts of state beyond legal question in our courts. Attached to the brief of the United States and to this opinion as Appendix 1 is the letter of November 26, 1975, in which the Department of State, speaking through its Legal Adviser agrees with the brief filed by the Solicitor General and, more specifically, declares that [425 U.S. 682, 697] "we do not believe that the Dunhill case raises an act of state question because the case involves an act which is commercial, 11 <http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?navby=case&court=US&vol=4 25&invol=682&pageno=711#f11>and not public, in nature." 12 <http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?navby=case&court=US&vol=4 25&invol=682&pageno=711#f12> On 12/12/14 12:06 PM, "George Kirikos" <icann(a)leap.com> wrote: > >4. One should not be creating new law. In particular, one must >consider how IGOs would enforce their rights in the offline world if >the UDRP never existed. Clearly, their recourse for enforcement would >be through the national courts of the alleged malfeasor/infringer. >They'd have no power whatsoever to compel a party to attend an >international tribunal, nor would that international tribunal have any >jurisdictional over the matter. This was a topic we discussed >previously (perhaps it was in a subgroup), namely questions we had for >the IGOs --- i.e. how are they enforcing their Article 6ter rights >offline, e.g. if a restaurants with the name "UNESCO" is opened up in >Toronto, Canada, how do they enforce their rights? So far, we have no >answer from the IGOs. > >5. Examples have been shown of IGOs waiving any such immunity >concerns, and actually utilizing the UDRP already (raising the >question of whether there's a serious issue at stake). See my prior >posts at: > >http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-December/000199.html >http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-December/000200.html >http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-December/000201.html > >The World Bank example is obvious. The UNITAID one is more subtle -- >it actually demonstrates a simple means for the IGOs to avoid the >immunity issue entirely, because the complaint was actually brought by >a **licensee** of Unitaid. The critical language is: > >http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2012-1922 > >"In 2009, a Fiduciary Agreement was made between the World Health >Organization/Unitaid and the Complainant to file and hold in its own >name, for the benefit of Unitaid, the necessary applications for the >protection of the “Unitaid” name, according to the instructions and >under the control of World Health Organization/Unitaid. > >In 2009, the Complainant thus registered, in its own name but for the >benefit of World Health Organization/Unitaid, UNITAID as a trademark >in numerous jurisdictions." > >In my opinion, those two paragraphs alone provide a perfect solution >for IGOs. Indeed, we could conceivably put an end to this workgroup, >by simply pointing to the above as a roadmap for IGOs to follow, to >work within an unamended UDRP. > >6. There are much better alternatives than that suggested by staff, >that are more tightly focused and preserve the rights of registrants. >In particular, I believe the following two have already been discussed >(perhaps in the subgroups, and not to to full list), > >(a) (my own idea, which I spent a lot of time thinking about before >this working group even started) Allow the national government in the >jurisdiction in the jurisdiction of the REGISTRANT to have standing as >the complainant on behalf of an IGO. Since the national government is >the signatory of the treaty, it makes sense that any enforcement >should fall upon them. Suppose a Canadian registered UNESCO.tld. >UNESCO could complain to the Federal government of Canada, and the >Federal government of Canada could file the UDRP. The Federal >government of Canada would have no problems with mutual jurisdiction >and immunity, because obviously a national of Canada can sue the >Federal government of Canada in their own national courts! > >(b) (I think was Paul Keating's suggestion) Limit the scope of an >IGO's potential liability from agreeing to the mutual jurisdiction to >that of the domain name itself. i.e. the purpose of IGO immunity is to >protect the IGO assets from being seized by 3rd parties. It's a >shield. If the IGOs provide a *limited waiver*, so that the only >downside for them involves the domain name itself (and thus no >incursion on their assets), then that should be sufficient. The court >action only takes place to block a transfer, so the domain name was >never in the IGO's possession (even if a UDRP decision favoured the >IGO). > >(c) the example in point #5 is a superior roadmap to follow than >either (a) or (b), because it wouldn't require any amendment to the >UDRP > >7. We haven't even begun to look at the costs/benefits.The Affirmation >of Commitments: > >https://www.icann.org/resources/pages/affirmation-of-commitments-2009-09-3 >0-en > >warns us about the "group of participants that engage in ICANN's >processes to a greater extent than Internet users generally." I would >suggest that the IGOs fall into this category. The AoC tells us that >we should be weighing the positive and negative effects. That requires >data. Where is the IGO data on the extent of cybersquatting, etc? What >are their "costs" from any waiver of immunity, beyond simply academic >and theoretical considerations? What are the costs of using >alternatives like in point #5, or 6(a) or 6(b)? > >I guess this is not as brief as I had hoped (but not yet 20 pages), so >I'll just summarize that it's great to be brainstorming, but hopefully >we'll not go down the dead-end of the rejected 2007 staff idea (which >really was not carefully thought out, in my opinion). Looking back, I >actually blogged about that 2007 report: > >http://www.circleid.com/posts/710118_short_domain_names_igo_udrp > >and others shared my concerns back then (and the proposal properly >went nowhere). As Esther Dyson says "Always make new mistakes!" :-) >There no need to recycle that old 2007 mistake. > >Sincerely, > >George Kirikos >416-588-0269 >http://www.leap.com/ > > > > >On Thu, Dec 11, 2014 at 11:07 PM, Mary Wong <mary.wong(a)icann.org> wrote: >> Dear all, >> >> This is not intended to take any position on the issue of standing; >> rather, we as support staff thought the WG might find useful the draft >> text that was produced for the GNSO Council in 2007 for an alternative >> dispute resolution procedure (DRP) (attached). As you¹ll recall this was >> part of the scoping that had been done at the time for an Issue Report >> which, however, did not lead to any policy work for lack of requisite >> votes on the GNSO Council. >> >> Of particular note is the modification of the UDRP requirements for a >> complaint and thus a mandatory administrative proceeding under 4(a) of >>the >> UDRP to be as follows: >> >> >> >> >> >> >> >> >> >> "(i) the registration or use, as a domain name, of the name or >> abbreviation of the 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 >> nameholder 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.² >> >> The draft text therefore suggests two alternative grounds for standing >>in >> lieu of trademark rights. >> >> FWIW the draft text also deals with the sovereign immunity issue by >> defining ³Mutual Jurisdiction² to be an arbitral tribunal constituted >> under the rules either of the AAA, ICDR, WIPO or the London Court of >> International Arbitration (see Definitions under the Rules of Procedure, >> 3.B.) >> >> I hope this is helpful. >> >> 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 >_______________________________________________ >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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Update on WG questions to the GAC
by Mason Cole Dec. 13, 2014

Dec. 13, 2014

All -- In my capacity as liaison between the GNSO and the GAC, I submitted on December 2 this WG's clarifying questions regarding the disparity between the WG's charter and the GAC's Los Angeles advice. The questions were sent to Suzanne Radell, Mark Carvell and Thomas Schneider of the GAC, who collectively have taken the lead on this issue within the GAC. I've been advised by Suzanne that they've been received and the GAC is expecting a briefing from her regarding the issue in order to take up their deliberations and hopefully answer these questions. They're also looking into a small group of IGOs who they could task to take up the issue. I took the liberty of advising Suzanne that the WG would likely welcome a discussion with IGOs as an agenda item during one of the WG meetings and that I would seek to arrange it were that agreeable. I will let you know what I hear back. Please let me know if you have questions in the meantime. Thanks -- Mason Mason Cole VP Communications & Industry Relations Donuts Inc. ………………………………………… mason(a)donuts.co Ofc +1 503 908 7623 Cell +1 503 407 2555

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Final SG/C Letter and Questions to Consider / How to proceed with our work
by Petter Rindforth Dec. 12, 2014

Dec. 12, 2014

Dear members of the GNSO’s IGO-INGO Curative Rights Protection Mechanisms WG: Thank you for your continued interest in the topic and your active participation this week! Also, thanks to Mary and Steve for your updates and for reminding us about the 2007 Staff Report on a Draft IGO Domain Name Dispute Resolution Procedure. That points out that, four months into our work, we continue to focus on and review additional materials related to it. It is always good to be reminded on what has already been done/discussed on a specific topic, so that we can both avoid mistakes and not support what we believe is not necessary, as well as proceed with ideas we support and build on them with improvements and refinements. As you all know, we have this week sent out a letter to all GNSO Stakeholder Group/Constituency Chair’s with four specific questions and a request for replies by late January. We certainly need to collect those inputs/replies before we make any conclusions and/or start working on any initial (preliminary) Report. We also remind you that there are discussions going on with IGOs, through the GAC, and hopefully we can also get inputs/clarifications from these parties of interest before we come to any conclusions. We, as your Co-Chairs, still suggest that we meet next Wednesday to summarize the comments so far, and then resume discussions in early January. Further, we believe it is too early to take votes or straw polls regarding IGOs, as that would violate the respect of those GNSO Stakeholder Groups, etc. that have now actively begun the work to reply to our four questions. We also believe that, given the sensitivity of this issue for ICANN’s Board, GAC, and GNSO Council, any final report and the conclusions underlying it must be based on thorough and well-documented review of all available materials if it is to settle this matter with reasonable finality. Additional investigation and discussion of the nature and force of the rights conferred on IGOs by Article 6ter, the ability and degree to which IGOs have registered their full names and/or acronyms as trademarks, and the manner in which various nations have implemented their Article 6ter protection responsibilities need to be undertaken to provide a solid basis for any final conclusions and report. We strongly suggest that no decisions be made until we have received inputs from all groups of interest. We also note that this WG has a facilitated face-to-face meeting scheduled in Singapore on Friday, February 13th; depending on our progress, it can serve as a forum to discuss elements of an initial report, or of further work to be done in advance of reaching final conclusions and reporting thereon. We welcome your feedback on these views, both by e-mail and during pour least call of 2014 taking place on Wednesday, December 17th. Best regards, Philip Corwin & Petter Rindforth -- 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

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FW: Update on WG questions to the GAC
by Phil Corwin Dec. 12, 2014

Dec. 12, 2014

Thanks to Mason; forwarding on his behalf-- 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: Friday, December 12, 2014 4:58 PM To: Phil Corwin; <petter.rindforth(a)fenixlegal.eu<mailto:petter.rindforth@fenixlegal.eu>> Rindforth Subject: Fwd: Update on WG questions to the GAC Phil and Petter -- Can you please forward this to the WG list until I can get email issues sorted out? Thanks. Mason Begin forwarded message: From: ntfy-gnso-igo-ingo-crp-owner(a)icann.org<mailto:ntfy-gnso-igo-ingo-crp-owner@icann.org> Subject: Update on WG questions to the GAC Date: December 12, 2014 1:55:40 PM PST To: mason(a)donuts.co<mailto:mason@donuts.co> Your message was rejected From: Mason Cole <mason(a)donuts.co<mailto:mason@donuts.co>> Subject: Update on WG questions to the GAC Date: December 12, 2014 1:55:17 PM PST To: Ntfy-gnso-igo-ingo-crp(a)icann.org<mailto:Ntfy-gnso-igo-ingo-crp@icann.org> All -- In my capacity as liaison between the GNSO and the GAC, I submitted on December 2 this WG's clarifying questions regarding the disparity between the WG's charter and the GAC's Los Angeles advice. The questions were sent to Suzanne Radell, Mark Carvell and Thomas Schneider of the GAC, who collectively have taken the lead on this issue within the GAC. I've been advised by Suzanne that they've been received and the GAC is expecting a briefing from her regarding the issue in order to take up their deliberations and hopefully answer these questions. They're also looking into a small group of IGOs who they could task to take up the issue. I took the liberty of advising Suzanne that the WG would likely welcome a discussion with IGOs as an agenda item during one of the WG meetings and that I would seek to arrange it were that agreeable. I will let you know what I hear back. Please let me know if you have questions in the meantime. Thanks -- Mason 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 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: 2015.0.5557 / Virus Database: 4223/8641 - Release Date: 11/27/14 Internal Virus Database is out of date.

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Straw Poll: Whether the UNITAID decision procedural roadmap fulfills this PDP's mandate?
by George Kirikos Dec. 12, 2014

Dec. 12, 2014

Hi folks, Just to highlight a snippet from a prior post, there was critical language in the UNITAID UDRP decision at: http://www.wipo.int/amc/en/domains/search/text.jsp?case=3DD2012-1922 which says: "In 2009, a Fiduciary Agreement was made between the World Health Organization/Unitaid and the Complainant to file and hold in its own name, for the benefit of Unitaid, the necessary applications for the protection of the “Unitaid” name, according to the instructions and under the control of World Health Organization/Unitaid. In 2009, the Complainant thus registered, in its own name but for the benefit of World Health Organization/Unitaid, UNITAID as a trademark in numerous jurisdictions." In my view, it really demonstrates how IGOs can work within the existing UDRP, without any amendments whatsoever and without any new DRP. Perhaps IGOs just aren't aware that they can do the above? It neatly and simultaneously handles concerns over standing and immunity, which are the main "issues" at the moment. Lenz & Staehelin, by the way, is a Swiss law firm, so they essentially stood as a proxy for the IGO itself (kind of like my own proposal in a prior email, where I suggested a Federal government in the same jurisdiction as the registrant might become the proxy). For INGOs, we called for a vote or straw poll or whatever to see whether we'd reached a conclusion on their issues. Perhaps the same kind of vote might be appropriate at this point, if everyone was satisfied that all IGOs could do the above? It's disappointing that the IGOs aren't participating directly in the PDP, because we're essentially trying to invent reasons to continue our work on their behalf, and are probably seeing that the issues are getting narrower and narrower and perhaps have shrunk to zero. I think if IGOs were made aware of that helpful precedent at WIPO, they might stop pestering the GAC, and allow us to conclude sooner, rather than later. I'd appreciate arguments as to why IGOs *can't* do the above procedure, if anyone has them. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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Food for thought on the "standing" requirement and sovereign immunity
by Mary Wong Dec. 12, 2014

Dec. 12, 2014

Dear all, This is not intended to take any position on the issue of standing; rather, we as support staff thought the WG might find useful the draft text that was produced for the GNSO Council in 2007 for an alternative dispute resolution procedure (DRP) (attached). As you¹ll recall this was part of the scoping that had been done at the time for an Issue Report which, however, did not lead to any policy work for lack of requisite votes on the GNSO Council. Of particular note is the modification of the UDRP requirements for a complaint and thus a mandatory administrative proceeding under 4(a) of the UDRP to be as follows: "(i) the registration or use, as a domain name, of the name or abbreviation of the 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 nameholder 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.² The draft text therefore suggests two alternative grounds for standing in lieu of trademark rights. FWIW the draft text also deals with the sovereign immunity issue by defining ³Mutual Jurisdiction² to be an arbitral tribunal constituted under the rules either of the AAA, ICDR, WIPO or the London Court of International Arbitration (see Definitions under the Rules of Procedure, 3.B.) I hope this is helpful. 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 -----Original Message----- From: <Dorrain>, Kristine <kdorrain(a)adrforum.com> Date: Friday, 12 December 2014 10:09 To: Jim Bikoff <jbikoff(a)sgbdc.com> Cc: "gnso-igo-ingo-crp(a)icann.org" <gnso-igo-ingo-crp(a)icann.org> Subject: Re: [Gnso-igo-ingo-crp] - Final SG/C Letter and Questions to Consider >Agree. > >Sent from my iPhone > >On Dec 11, 2014, at 5:45 PM, Jim Bikoff ><jbikoff(a)sgbdc.com<mailto:jbikoff@sgbdc.com>> wrote: > >Agree. > >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> > >Sent from my iPad > >On Dec 11, 2014, at 7:34 PM, David W. Maher ><dmaher(a)pir.org<mailto:dmaher@pir.org>> wrote: > >+1 >David W. Maher >Senior Vice President Law & Policy >Public Interest Registry >312 375 4849 > > >From: Mike Rodenbaugh <mike(a)rodenbaugh.com<mailto:mike@rodenbaugh.com>> >Date: Thursday, December 11, 2014 5:14 PM >To: Paul Keating <Paul(a)law.es<mailto:Paul@law.es>> >Cc: "gnso-igo-ingo-crp(a)icann.org<mailto:gnso-igo-ingo-crp@icann.org>" ><gnso-igo-ingo-crp(a)icann.org<mailto:gnso-igo-ingo-crp@icann.org>> >Subject: Re: [Gnso-igo-ingo-crp] - Final SG/C Letter and Questions to >Consider > >Generally agree with Paul, and had the same basic feeling: "My reaction >to the standing issue is that there is absolutely no reason to even >consider it. The UDRP has always been founded on the pre-requisite of >a trademark. " > >I am curious to hear if anyone could pose any other remotely justifiable >basis for standing, other than trademark rights. > >Best, >Mike > >Mike Rodenbaugh >RODENBAUGH LAW >tel/fax: +1.415.738.8087 >http://rodenbaugh.com > >On Thu, Dec 11, 2014 at 1:15 AM, Paul Keating ><Paul(a)law.es<mailto:Paul@law.es>> wrote: >Thank you Steve, > >Regarding the questions noted below, I wanted to respond to a comment I >believe that Peder made during the call regarding the requirement that >trademarks were no longer the standing requirement they once were in the >UDRP. I believe he used the example of famous people's names. I have >not listened to the MP3 recording so, if I am mistaken in attributing the >comment to Peder, let me be the first to apologize for my error. > >Peder, your comment was entirely incorrect. Those UDRPs involving famous >names have turned on whether the complainant's use of the name amounted >to a common law trademark right. In cases of mere fame without >commercialization, panels have found no t trademarks. In those in which >the names were clearly linked to commercial activities (music, books, >etc), the panels have found a common law trademark to exist. I know of >absolutely no UDRP decision in which the panel found a famous name >sufficient without also finding the requisite common law trademark right. > If you have one to mind, please share it and I will stand corrected. > >My reaction to the standing issue is that there is absolutely no reason >to even consider it. The UDRP has always been founded on the >pre-requisite of a trademark. The WIPO White Paper was clear that the >UDRP should not be a vehicle for the creation or expansion of >intellectual proper rights in cyber-space beyond those existing in the >"real world". Notwithstanding the clear "identical and confusingly >similar" language, panels have watered down the 1st Element to one of >mere standing which as I have previously said, is such a low barrier >that a worm could easily cross. The panels did so by progressively >ignoring the clear language ("identical or confusingly similar") which is >a widely recognized and well-honed term of art in trademark infringement >to one which is merely a text vs t ext comparison. However, this is not >and can never, IMHO be, a reason to ignore the language entirely and >permit some other substitution to a registered or common law mark. > >Further, to do so would require a wholesale amendment to the UDRP (and >URS). This would require an amendment to the ICANN/Registrar agreement >AND a change to the Registrar/Registrant agreement. > >Finally, although it was within our initial charter to consider >amendments, I feel seriously doing so would be impractical. In addition >to the above reasons, given that it would require an amendment to the >UDRP, I believe that such a task is better left to a Working Group >assigned for such purpose because once the suggestion is made to open an >amendment process, it will quickly include other and competing views on a >variety of subjects. > >It is for this reason I suggested our next session focus on the issue of >Sovereign Immunity and we leave the issue of rights expansion to January. > > >Finally, please allow me to apologize once again for not seeming to "get >it" with the audio portion of my participation. Someday I will be able >to arrange my black box to accurately interact with all of those >interconnected tubes in the "web"..:-) > > >Warmest regards, > >Paul > >From: Steve Chan <steve.chan(a)icann.org<mailto:steve.chan@icann.org>> >Date: Thursday, December 11, 2014 1:26 AM >To: "gnso-igo-ingo-crp(a)icann.org<mailto:gnso-igo-ingo-crp@icann.org>" ><gnso-igo-ingo-crp(a)icann.org<mailto:gnso-igo-ingo-crp@icann.org>> >Subject: [Gnso-igo-ingo-crp] - Final SG/C Letter and Questions to Consider > >Dear WG Members, > >Attached, please find the final version of the letter drafted to solicit >input from the stakeholder groups and constituencies; this letter was >sent to the chairs of each of the SG/Cs yesterday. > >In addition, it was agreed on today¹s call that at least for the moment, >the group would not break up into sub groups and would instead work >together over the list to debate the following item from the group¹s work >plan: "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 proceedings >(existing or new)² > >The WG may want to consider the following questions when thinking about >this item: > > * >What might be a justifiable, principled basis for ³standing² other than >TM rights, whether under the UDRP, URS or a new dispute resolution >procedure? > * >Assuming for the moment that sovereign immunity is a problem for IGOs >(pending responses from the GAC and the IGOs), what type of appeal >process other than what is now in the UDRP and URS might be a solution >that would still offer adequate protection to registrants? > >Best, >Steve > > >Steven Chan >Sr. Policy Manager > >ICANN >12025 Waterfront Drive, Suite 300 >Los Angeles, CA 90094-2536 >steve.chan(a)icann.org ><mailto:steve.chan@icann.org> >direct: +1.310.301.3886<tel:%2B1.310.301.3886> >mobile: +1.310.339.4410<tel:%2B1.310.339.4410> >tel: +1.310.301.5800<tel:%2B1.310.301.5800> >fax: +1.310.823.8649<tel:%2B1.310.823.8649> >_______________________________________________ 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 > >_______________________________________________ >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 > >_______________________________________________ >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 >_______________________________________________ >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 >_______________________________________________ >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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