January 2015 - Gnso-igo-ingo-crp

Re: [Gnso-igo-ingo-crp] Draft for discussion/comparison (if UDRP is to be amended) - question
by Kathryn Kleiman Feb. 5, 2015

Feb. 5, 2015

Hi All, Two questions: a) Does anyone know how many IGOs are involved in the definition that Heather and the GAC seek in their letter of 2013? b) if we are not trying to create additional legal rights, and if these IGOs have not invoked their rights under the treaties seeking to be recognized by national trademark offices, might we be overstepping our bounds in giving automatic UDRP protection to these IGOs (those who have not sought the protection)? Best and tx, Kathy p.s. from Mary's email below and Heather Dryden's letter: (b) an intergovernmental organization having received a standing invitation to participate as observer in the sessions and the work of the United Nations General Assembly.² (taken from the letter enclosing the list, sent by the GAC Chair: https://www.icann.org/en/system/files/correspondence/dryden-to-crocker-chal aby-annex1-22mar13-en.pdf.) -----Original Message----- From: gnso-igo-ingo-crp-bounces(a)icann.org [mailto:gnso-igo-ingo-crp-bounces@icann.org] On Behalf Of Mary Wong Sent: Wednesday, January 21, 2015 3:55 PM To: gnso-igo-ingo-crp(a)icann.org Subject: Re: [Gnso-igo-ingo-crp] Draft for discussion/comparison (if UDRP is to be amended) Hello George and all, As noted during the WG call today, WG members are kindly invited to continue to provide their feedback on the ³thought experiment² draft text that was circulated on 14 January, and again earlier today. This will enable the group to continue its substantive deliberations on this mailing list, in lieu of an agenda item on this topic at our meeting next week, and should hopefully provide some good points to circle back to when we meet face to face (including with our remote participants) in Singapore on 13 February. Thanks to George and Paul (in a separate email also sent to this list) for kicking off the discussion on this issue. FWIW here are a few staff notes and comments to George¹s feedback, numbered according to his comments. 1. George¹s very helpful and detailed analysis for Sub-Group B was posted to the WG wiki space upon receipt, and is available here: https://community.icann.org/x/mxbxAg. Also, as noted in the Adobe chat during the meeting, the GAC¹s criteria for including an IGO on their list, supplied to ICANN in 2013, was that it be "(a) an international organization established by a treaty and which possesses international legal personality; or (b) an intergovernmental organization having received a standing invitation to participate as observer in the sessions and the work of the United Nations General Assembly.² (taken from the letter enclosing the list, sent by the GAC Chair: https://www.icann.org/en/system/files/correspondence/dryden-to-crocker-chal aby-annex1-22mar13-en.pdf.) WG members may wish to note that in this letter the GAC also suggests that the list be reviewed prior to the delegation of any new gTLD in subsequent rounds, or every three years, whichever first occurs. As Phil noted on the call today, the WG will at some point need to discuss the differences between those IGOs that may be protected under whatever mechanism the WG recommends (should that be the case) and those listed by the GAC. 3. On the addition of the ³For avoidance of doubt² paragraph, the intention was to address the scope of a UDRP claim and the question of legitimate third party rights, rather than bad faith. In other words, it would not be enough for an IGO to simply show that the domain name complained of is identical or substantially similar to its name or acronym. Rather - and matching the scope of Article 6ter protections - the third party would not be permitted to register or use the domain name only if this implies a connection between it and the IGO. The language here is taken basically word for word from Article 6ter, and as George noted, may need some further tweaking and change, but that was the basic idea. We hope the above is helpful in clarifying some of the ongoing discussions within the WG. 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 -----Original Message----- From: George Kirikos <icann(a)leap.com> Date: Wednesday, January 21, 2015 at 09:45 To: "gnso-igo-ingo-crp(a)icann.org" <gnso-igo-ingo-crp(a)icann.org> Subject: Re: [Gnso-igo-ingo-crp] Draft for discussion/comparison (if UDRP is to be amended) >With respect, this "thought experiment" is akin to my "Straw Poll" >earlier (which was deemed 'too early'), in that's jumping ahead to a >'solution', without first considering all the data, identifying whether >there's a real problem, etc. > >That being said, here are my thoughts: > >1. On October 28, 2014, in subgroup B I sent a detailed analysis >comparing the ICANN Reserved Names of IGOs list to the Article 6ter >database. Less than half (271 of 549) of the currently 'protected' IGO >reserved identifiers are even in the Article 6ter database! I'm not >sure if the spreadsheets were ever posted on the Wiki, but attached is >the analysis in HTML format (in the Subgroup, I also sent them in Excel >and OpenOffice formats). Thus, if we limit things to Article 6ter >marks, a lot of existing reserved names lose protection (perhaps >rightly so) 2. The amendment for 4(a)(i) is not necessary, since the >proposed change is already consistent with common law marks that IGOs >can currently assert. Furthermore, the proposed language is awkward. I >would rearrange it (if forced to -- I don't approve of any change) as: > > >4(a)(i): your domain name is identical or confusingly similar to a >trademark or service mark in which the complainant has rights; or, >where the complainant is an international intergovernmental >organization whose name or abbreviation has been communicated, as >prescribed by Article 6ter of the Paris Convention for the Protection >of Industrial Property, to the countries constituting the Union to >which the Convention applies (including Members of the World Trade >Organization to whom the Convention applies in accordance with Articles >1.3 and 2.1 of the Agreement on Trade-Related Aspects of Intellectual >Property Rights), your domain name is identical or confusingly similar >to complainant's Article 6ter registered name or abbreviation; and > >(the slight change placed a semi-colon directly after "rights" as per >the existing UDRP language, and then added a fresh "or" directly after, >but then specific at the beginning the entities that the "or" >applied to, i.e. IGOs. > >3. In the language that begins with "For the avoidance of doubt" >(below 4(a)(iii)), it seems illogical. By definition, the domain name >is going to be "confusingly similar" if it's an identical match, so to >that that "the domain name shall NOT be regarded as confusingly similar >" (i.e. 4(a)(i))", the first prong of the UDRP 3-part test, doesn't >make sense. Instead, I believe what the text is trying to say is that >the domain name was not registered or being used "in bad faith" (the >3rd part of the 3-part test). So, the text would need to be rewritten >to clarify that part (i.e. it's not the first test -- it's the 2nd >and/or 3rd parts of the test). > >Furthermore, the language is dangerously unclear with its use of "use >or registration" .... "is not of such a nature". That can be >interpreted several ways, e.g. it might be interpreted to mean that an >IGO can pass the test if it shows just bad faith "use" OR >"registration", instead of both. In other words, it's not "avoiding the >doubt" enough! > >Furthermore, this is *not* sufficient language to protect registrants. >For example, the domain name might not yet be in use at all -- e.g. it >might be under construction, not resolving, etc. Rather than saying "is >probably not of such a nature as to mislead the public as to the >existence of a connection.......", the "test" must be much stronger. >TO avoid the doubt, the IGO must prove that the registration AND the >use can only be of such a nature to actively impersonate the IGO in >question. I'm not sure that the language is "bulletproof" yet. > >4. For the amendments under 3(b)(viii) (the draft says 3(b)(vii), but >it is actually below 3(b)(viii)), there is no requirement that the IGO >discuss how their Article 6ter names/abbreviations are used. This is >something that would need to be communicated in a complaint, to allow >the respondent to know who the IGO is, what they do, etc. Recall that >these IGOs are generally obscure. Respondent needs to have enough >information in the complaint to mount a defence. Indeed, IGOs should be >compelled to include the full Article 6ter filing in their complaint >(which includes the date of the registration), since those generally >won't appear in national trademark databases. > >5. WIPO overview, draft 1.5. First, I would renumber it 1.12 (otherwise >all the other UDRP element overviews would need to get renumbered). >Also, I would instead suggest that WIPO overview 1.7 >*already* applies to IGOs (What needs to be shown for the complainant >to successfully assert common law or unregistered trademark rights) > >http://www.wipo.int/amc/en/domains/search/overview2.0/#17 > >"Consensus view: The complainant must show that the name has become a >distinctive identifier associated with the complainant or its goods or >services. " > >If we wanted to be consistent, better language might be: > >1.12: Can a complainant show UDRP-relevant rights in a name or >abbreviation that has been communicated under Article 6ter of the Paris >Convention for the Protection of Industrial Property? > >(notice I've changed the several words slightly, including 'Does' to >"Can"). The "discussion section can be changed in a similar manner). > >In conclusion, I don't think any changes are needed to the UDRP itself >(perhaps at best just the "WIPO Overview", i.e. improving education). >We need to step back and consider *why* we'd want to change the UDRP >-- is this just a 'political' thing, to be "seen to be doing >something", just for the sake of appeasing governments? If that's the >case, I don't think that's very proper for a technical policymaking >body. Instead, we should feel pressured to "do something" for "show", >but instead should be able to conclude that no changes whatsoever are >required, if that's where the *facts* lead us. > >Sincerely, > >George Kirikos >416-588-0269 >http://www.leap.com/ > > >On Wed, Jan 14, 2015 at 4:35 PM, Mary Wong <mary.wong(a)icann.org> wrote: >> Dear WG members, >> >> As a thought experiment, the WG co-chairs would like to offer the >>attached draft document for review and discussion by the WG. Since we >>have been looking at the 2007 draft text for a possible alternative >>dispute resolution procedure as a potential starting point for such a >>process (should the WG eventually decide on such a path), the >>co-chairs thought it would be helpful also for the WG to consider >>what might be a possible starting point for amending the UDRP (should >>that be the preferred option). >> >> The WG may wish to discuss this draft along with its further comments >>on the >> 2007 draft text. >> >> 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 >> >> >> _______________________________________________ >> 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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Date of next conference call?
by George Kirikos Jan. 30, 2015

Jan. 30, 2015

I just wanted to confirm, are we having a conference call next week (Wednesday, Feb 4)? Or, is the next one the all day session after the Singapore ICANN meeting (i.e. Feb 13 Singapore time, Feb 12 North American time)? Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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MP3 IGO WG - Wednesday, 28 january 2015 at 1700 UTC
by Nathalie Peregrine Jan. 28, 2015

Jan. 28, 2015

Dear All, Please find the MP3 recording for IGO-INGO Access to Curative Rights Protection Mechanisms Working Group call on Wednesday, 28 January 2015 at 1700 UTC at: On page: http://audio.icann.org/gnso/gnso-igo-ingo-crp-access-28jan15-en.mp3 <http://gnso.icann.org/en/group-activities/calendar#dec>http://gnso.icann.org/en/group-activities/calendar#j<http://gnso.icann.org/en/group-activities/calendar#jan>an<http://gnso.icann.org/en/group-activities/calendar#jan> 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 Val Sherman - IPC Gary Campbell - GAC Jay Chapman – Individual David Heasley – IPC Alexander Lehrman - Individual Paul Keating - NCUC Paul Tattersfield - Individual Osvaldo Novoa – ISPCP David Cake – GNSO Vice Chair Imran Ahmed Shah - Jim Bikoff- IPC Lori Schulman - NPOC Apologies: Kathy Kleiman - NCUC David Maher – RySG ICANN staff: Mary Wong Steve Chan Nathalie Peregrine ** 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, Nathalie ------------------------------- Adobe Connect chat transcript for Wednesday, 28 January 2015: Nathalie Peregrine:Dear all, welcome to the IGO-INGO Curative Rights Protection PDP WG Meeting on the 28 January 2015 Gary Campbell:Hi Nathalie Nathalie Peregrine:Hello Gary and Petter! Petter Rindforth:Hi All! Osvaldo Novoa:Hello all Osvaldo Novoa:All, unfortunatelly I won't be able to join the WG F2F meeting in Singapore. Mary Wong 2:Hi all - sorry I'm late; operator insisted I had the wrong call time and was 5 hours too early! :) Jay Chapman:Hi All George Kirikos:Hi everyone. George Kirikos:It took a few tries to get into the Adobe again. Mary Wong 2:It's 1 a.m. in Singapore so believe me, I'd prefer the call to be 5 hours later :) :) Paul Tattersfield:Hi All, whois the confrence leader they sometimes ask for with the passcode? Mary Wong 2:I'm getting a bad echo Mary Wong 2:OK fixed Nathalie Peregrine:So it must have been my line then, apologies,I'll be muted from now on Nathalie Peregrine:Paul Keating has joined the call Osvaldo Novoa:The audio is a not very clear. Is it just me? George Kirikos:9:30 am Friday Singapore time is 8:30 pm Eastern time on THURSDAY (Feb 12). George Kirikos:(Eastern Time = Toronto, NYC, etc.) George Kirikos:I'd agree with having them as observers. Mary Wong 2:@George, sorry - we'll add clarification that it's Singapore time and date on the agenda George Kirikos:It'd be a long night as 5:30 pm Singapore time is 6:30 am Toronto/NYC time. Nathalie Peregrine:Alexanfer Lernab has joined the call Mary Wong 2:So far, besides the IGOs, we have responses from the ISP and IP constituencies of the GNSO Philip Corwin:I am traveling next Wednesday, as are many others George Kirikos:Is it possible to start the meeting earlier in the day in Singapore? (i.e. if folks in Singapore have nothing in the morning) E.g. 7:00 am or 7:30 am? George Kirikos:(might make it more convenient for those in North American participating via remote) George Kirikos:(start earlier, and end earlier) Paul Keating:Mary, have the responses received thus far been distributed? If so could you please resend to me as I have noothing in my inbox. David Cake:I would rather not start as early as 7 or 7.30. George Kirikos:That'd make it a bit better, as 8:30 pm to 6:30 am Eastern time in NYC/Toronto might be rough for some. George Kirikos:Oops, it's actually 8:30 pm to 4:30 am Lori Schulman:Sorry for joining late. Mary Wong 2:We'll check on the start time - whether it can be changed. Will revert ASAP. George Kirikos:Not as bad as I thought. George Kirikos:5:30 pm to 1:30 am for those in Pacific Time (LA, SF, etc.) David Cake:I would echo Phils comments. end of a long week. Lori Schulman:As an East Coaster who can't attend in person, I am planning to pull the all nighter. The next day is Saturday. I can sleep. Paul Keating:Singapore is GMT+8 so no problem for Europeans on call-in George Kirikos:Lori: the next day is Friday, actually. Lori Schulman:Oh, right. I forgot about the dateline. No worries. I will still do it. George Kirikos:Friday 9:30 am Singapore time = THURSDAY 8:30 pm Thursday. David Cake:And in my experience, starting earlier will mean we are less effective at the end of the day. George Kirikos:Will we have Adobe and/or video during the session? (video so we can see any whiteboards, etc?) Nathalie Peregrine:We will have the AC room Nathalie Peregrine:Not this one, you will need to access it fromthe MainSchedule on the ICANN website Nathalie Peregrine:Dial in details for remote participation will also be sent to the mailing list over the next few days Philip Corwin:Bye all/safe travel Jay Chapman:safe travels to those who are Alexander Lerman:THANKS Osvaldo Novoa:By all val sherman:Thanks all George Kirikos:Bye everyone.

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Re: [Gnso-igo-ingo-crp] Apologies
by Kathryn Kleiman Jan. 28, 2015

Jan. 28, 2015

Hi All, With apologies I will be unable to attend the call today. Best, Kathy -----Original Message----- From: gnso-igo-ingo-crp-bounces(a)icann.org [mailto:gnso-igo-ingo-crp-bounces@icann.org] On Behalf Of Phil Corwin Sent: Wednesday, January 21, 2015 9:56 AM To: George Kirikos; gnso-igo-ingo-crp(a)icann.org Subject: Re: [Gnso-igo-ingo-crp] Response from the IGO "small group" Thanks for the always useful feedback, George. Talk to you soon. 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 -----Original Message----- From: gnso-igo-ingo-crp-bounces(a)icann.org [mailto:gnso-igo-ingo-crp-bounces@icann.org] On Behalf Of George Kirikos Sent: Wednesday, January 21, 2015 8:39 AM To: gnso-igo-ingo-crp(a)icann.org Subject: Re: [Gnso-igo-ingo-crp] Response from the IGO "small group" In regards to this document from the IGOs: 1. The IGOs incorrectly believe that "IGOs would generally find difficulty in meeting the UDRP and URS standing requirements of holding a trademark registration." That's simply not correct -- a trademark registration is NOT required. Common law marks are recognized, as we've discussed previously. Standing is trivial to obtain. 2. Their position on immunity is misleading and incorrect. Immunity can be waived, and is routinely done in their contracts, not some 'exceptional' thing that rarely happens. It was waived in the World Bank UDRP that we've previously discussed. Indeed, *every* domain name registration contract entered into by IGOs specifies a jurisdiction and availability for court proceedings! Immunity is a *shield* (to defend against a process), never a *sword* used to assert "rights" against others. Those rights *must* be asserted in a national court. Now, the IGOs do go on to say: "Similarly, the enforcement of misuse of IGO identifiers is the responsibility of the State signatory of the Paris Convention and/or WTO TRIPS." which is consistent with one of the early proposals that I made, namely that a simple modification of the UDRP would allow for a proxy to bring forth the UDRP. i.e. in the words of the IGOs: "IGOs may also seek the assistance of the relevant government entities, in particular the ministries of justice or foreign affairs, as well as the national representatives of the IGO." That's entirely consistent with my proposal, i.e. allow the ministry of justice, or district attorney, etc. for a given nation (i.e. the same country as the domain name registrant) to bring forth a UDRP on behalf of the IGO as a proxy. That proxy could *not* assert immunity, and the domain name registrant could go to the national courts in the usual manner. Indeed, the proxy might decide to do nothing at all, as per the US State Department letter that we previously discussed in this group http://www.state.gov/s/l/38648.htm in relation to the UNIFEM.com domain name (apparently). Furthermore, we've previously discussed the workaround used in the UNITAID UDRP, namely having the marks held by a law firm, who can then assert the claim on behalf of the UDRP (and that law firm would not be able to claim 'immunity'). This would not require any change in the UDRP, since it's already been a tactic employed by them, successfully. So, in conclusion, I think this letter was somewhat helpful, in that it: (a) shows the gaps in the IGOs knowledge (thus allowing 'further education' to help close the gap, and alleviate their concerns), and (b) confirms to us that enforcement can be done through the "relevant government entities" (which was consistent with my proposal on allowing a 'proxy' complainant, to solve various issues) I look forward to our telephone call later today. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ On Mon, Jan 19, 2015 at 1:30 PM, Mary Wong <mary.wong(a)icann.org> wrote: > Dear WG members, > > Please find attached the IGOs’ response to the WG’s questions that had > been sent to the small group of IGOs who have been engaged in > discussing issues concerning IGO protections (including the > recommendations from the GNSO’s previous PDP on the topic) with the > Board’s New gTLD Program Committee, the GAC and the GNSO Council. > > You will note that the IGOs’ explanation of the level and nature of > protection under Article 6ter of the Paris Convention comports with > what was discussed on our last WG call, i.e. that protection under > 6ter is more prohibitory in nature and does not necessarily depend on > an IGO’s having acquired a national trademark registration in its name and/or acronym. > Rather, as we have noted since, the implementation by states of > Article 6ter means that third parties are prohibited from registering > as trademarks (or elements thereof) IGO names, acronyms, flags, > armorial bearings and so on, that suggest a connection between them > and the IGO in question. While IGOs may go further and proceed to > register its name and acronym as a trademark in various national > jurisdictions, that would in many cases constitute additional protections beyond those conferred by Article 6ter. > > (To recap the last WG discussions, we have seen that countries such as > the United States and Australia implement their 6ter obligations by > treating IGO names and acronyms which have been properly notified to > each state by WIPO as particular types of marks, e.g. by assigning > specific serial/sequence numbers to them and by requiring that a > trademark examiner refuse a third party registration on grounds within > the scope of 6ter, such as falsely suggesting a connection with the > IGO.) > > In light of the IGO response and the WG’s current discussions, staff > will consult with Petter and Phil as to how best to approach our work > in the lead-up to Singapore, where it is expected that the progress > made by our WG may be on the agenda for discussions between the GNSO and the GAC. > > 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 > > > _______________________________________________ > 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 ----- No virus found in this message. Checked by AVG - www.avg.com Version: 2015.0.5645 / Virus Database: 4260/8932 - Release Date: 01/14/15 _______________________________________________ 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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FW: Request for Input: IGO/INGO Curative Rights
by Glen de Saint Géry Jan. 25, 2015

Jan. 25, 2015

FYI Glen de Saint Géry GNSO Secretariat gnso.secretariat(a)gnso.icann.org http://gnso.icann.org -----Original Message----- From: Novoa, Osvaldo [mailto:onovoa@Antel.com.uy] Sent: samedi 24 janvier 2015 22:55 To: Glen de Saint Géry Cc: ispcp(a)icann.org Subject: Re: Request for Input: IGO/INGO Curative Rights Sorry, I forgot the attachment. Best regards, Osvaldo > El 24/1/2015, a las 19:52, Novoa, Osvaldo <onovoa(a)Antel.com.uy> escribió: > > Dear Glen, > I am enclosing the answers of the Internet Service Providers and Connectivity Providers Constituency to the questions sent by the IGO-INGO CRP WG co-Chairs. > We are sorry we could not present them last Friday, but I was traveling and my flight delayed. > We hope our answers are useful and in line with the Working Group objectives. > Best Regards, > Osvaldo Novoa > > >> >> De: Glen de Saint G谷ry <Glen(a)icann.org<mailto:Glen@icann.org>> >> Fecha: 9 de enero de 2015, 3:35:21 GMT-5 >> Para: "tony holmes >> (tonyarholmes(a)btinternet.com<mailto:tonyarholmes@btinternet.com>)" >> <tonyarholmes(a)btinternet.com<mailto:tonyarholmes@btinternet.com>>, >> "Novoa, Osvaldo" <onovoa(a)Antel.com.uy<mailto:onovoa@Antel.com.uy>>, >> 'WUKnoben' >> <wolf-ulrich.knoben(a)t-online.de<mailto:wolf-ulrich.knoben@t-online.de >> >> >> Cc: Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>>, >> Steve Chan <steve.chan(a)icann.org<mailto:steve.chan@icann.org>>, >> "gnso.secretariat(a)gnso.icann.org<mailto:gnso.secretariat@gnso.icann.o >> rg>" >> <gnso.secretariat(a)gnso.icann.org<mailto:gnso.secretariat@gnso.icann.o >> rg>>, "Petter Rindforth >> (petter.rindforth(a)fenixlegal.eu<mailto:petter.rindforth@fenixlegal.eu >> >) >> (petter.rindforth(a)fenixlegal.eu<mailto:petter.rindforth@fenixlegal.eu >> >)" >> <petter.rindforth(a)fenixlegal.eu<mailto:petter.rindforth@fenixlegal.eu >> >>, Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>> >> Asunto: FW: Request for Input: IGO/INGO Curative Rights >> >> Dear Tony, >> >> On behalf of Philip Corwin & Petter Rindforth (WG Co-Chairs) of the PDP IGO-INGO Access to Curative Rights Protection Mechanisms WG, we would like to provide a friendly reminder that the WG hopes to receive any comments and input that you and the organization you Chair are able to provide, regarding the email below, by Friday, 23 January 2015. If you have any questions, please let us know. >> >> Thank you very much. >> Kind regards, >> >> Glen >> >> Glen de Saint G谷ry >> GNSO Secretariat >> gnso.secretariat(a)gnso.icann.org<mailto:gnso.secretariat@gnso.icann.or >> g> http://gnso.icann.org<http://gnso.icann.org/> >> >> >> >> >> >> From: Glen de Saint G谷ry >> Sent: vendredi 12 d谷cembre 2014 00:06 >> To: tony holmes (tonyarholmes(a)btinternet.com<mailto:tonyarholmes@btinternet.com>); Novoa, Osvaldo; 'WUKnoben' >> Cc: Steve Chan; Glen de Saint G谷ry; >> gnso-secs(a)icann.org<mailto:gnso-secs@icann.org> >> Subject: FW: Request for Input: IGO/INGO Curative Rights >> >> >> Dear Tony, >> >> In regards to the email below, it was brought to our attention that there is some confusion regarding which questions the working group is seeking feedback. Please see the revised message below from the co-chairs of the group: >> >> "On behalf of Philip Corwin & Petter Rindforth (WG Co-Chairs) of the PDP IGO-INGO Access to Curative Rights Protection Mechanisms WG, we seek to inform you that the WG has come to some initial conclusions and wish to update you on the activities within this WG, as well as request your input on 4 questions contained in the attachment to the original email" >> >> Kind Regards, >> Glen >> >> >> Glen de Saint G谷ry >> GNSO Secretariat >> gnso.secretariat(a)gnso.icann.org<mailto:gnso.secretariat@gnso.icann.or >> g> http://gnso.icann.org<http://gnso.icann.org/> >> >> From: Glen de Saint G谷ry >> Sent: mercredi 10 d谷cembre 2014 00:24 >> To: tony holmes >> (tonyarholmes(a)btinternet.com<mailto:tonyarholmes@btinternet.com>); >> Novoa, Osvaldo; WUKnoben >> Cc: gnso-secs(a)icann.org<mailto:gnso-secs@icann.org>; Glen de Saint >> G谷ry; Steve Chan >> Subject: Request for Input: IGO/INGO Curative Rights >> >> >> Dear Tony, >> >> On behalf of Philip Corwin & Petter Rindforth (WG Co--坼Chairs) of the PDP IGO-INGO Access to Curative Rights Protection Mechanisms WG we request your input on: >> (1) Whether the Uniform Dispute Resolution Policy (UDRP) and/or the >> Uniform Rapid Suspension procedure (URS) should be amended, and if >> so, how; or >> >> (2) Whether a separate, narrowly-tailored dispute resolution procedure modeled on the UDRP and/or the URS should be developed, in either case to address the specific needs and concerns of International Governmental Organizations (IGOs) and/or International Non-Governmental Organizations (INGOs). >> Please see the attached document for full details. >> >> Thank you very much. >> Kind regards, >> >> Glen >> Glen de Saint G谷ry >> GNSO Secretariat >> gnso.secretariat(a)gnso.icann.org<mailto:gnso.secretariat@gnso.icann.or >> g> >> http://gnso.icann.org >> >> >> >> >> ________________________________ >> >> El presente correo y cualquier posible archivo adjunto est芍 dirigido >> 迆nicamente al destinatario del mensaje y contiene informaci車n que >> puede ser confidencial. Si Ud. no es el destinatario correcto por >> favor notifique al remitente respondiendo anexando este mensaje y >> elimine inmediatamente el e-mail y los posibles archivos adjuntos al >> mismo de su sistema. Est芍 prohibida cualquier utilizaci車n, difusi車n o >> copia de este e-mail por cualquier persona o entidad que no sean las >> espec赤ficas destinatarias del mensaje. ANTEL no acepta ninguna >> responsabilidad con respecto a cualquier comunicaci車n que haya sido >> emitida incumpliendo nuestra Pol赤tica de Seguridad de la Informaci車n >> >> >> This e-mail and any attachment is confidential and is intended solely for the addressee(s). If you are not intended recipient please inform the sender immediately, answering this e-mail and delete it as well as the attached files. Any use, circulation or copy of this e-mail by any person or entity that is not the specific addressee(s) is prohibited. ANTEL is not responsible for any communication emitted without respecting our Information Security Policy. >> <ICANN-IGO-Letter to GNSO SG Cs for initial input-Final_draft.pdf> > ________________________________ El presente correo y cualquier posible archivo adjunto está dirigido únicamente al destinatario del mensaje y contiene información que puede ser confidencial. Si Ud. no es el destinatario correcto por favor notifique al remitente respondiendo anexando este mensaje y elimine inmediatamente el e-mail y los posibles archivos adjuntos al mismo de su sistema. Está prohibida cualquier utilización, difusión o copia de este e-mail por cualquier persona o entidad que no sean las específicas destinatarias del mensaje. ANTEL no acepta ninguna responsabilidad con respecto a cualquier comunicación que haya sido emitida incumpliendo nuestra Política de Seguridad de la Información This e-mail and any attachment is confidential and is intended solely for the addressee(s). If you are not intended recipient please inform the sender immediately, answering this e-mail and delete it as well as the attached files. Any use, circulation or copy of this e-mail by any person or entity that is not the specific addressee(s) is prohibited. ANTEL is not responsible for any communication emitted without respecting our Information Security Policy.

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Letter to GAC Chair from Cherine Chalaby
by Mary Wong Jan. 23, 2015

Jan. 23, 2015

Dear WG members, I suppose today can be said to be one of those days ³when it rains, it pours² Please note that Cherine Chalaby, Chair of the Board¹s New gTLD Program Committee (NGPC), has just sent a letter to Thomas Schneider, Chair of the GAC, requesting further information from the GAC on the issue of curative rights protection for IGOs. I would note also that in his letter, Cherine expressly highlights the fact that this issue is being dealt with by the GNSO through our Working Group. As we know, the GAC has recently indicated to us via its policy support staff that its response to the set of questions we had sent them can only be expected after the Singapore meeting. In light of Cherine¹s letter, we can perhaps expect that there will be a response forthcoming from the GAC at that time. The letter can be viewed at: https://www.icann.org/en/system/files/correspondence/chalaby-to-schneider-22 jan15-en.pdf. 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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FW: Request for Input: IGO/INGO Curative Rights
by Glen de Saint Géry Jan. 23, 2015

Jan. 23, 2015

FYI From: Metalitz, Steven Sent: vendredi 23 janvier 2015 22:37 To: Glen de Saint G��ry Cc: Steve Chan; Mary Wong; Phil Corwin; Petter Rindforth, gnso.secretariat(a)gnso.icann.org Subject: RE: Request for Input: IGO/INGO Curative Rights Dear Glen, Attached please find the response of the Intellectual Property Constituency to the questions posed by the co-chairs of the Working Group and contained in an attachment to your e-mail of December 10. We appreciate the chance to comment and hope these responses are helpful to the Working Group. Steve Metalitz, IPC Acting President From: Glen de Saint G��ry [mailto:Glen@icann.org] Sent: Friday, January 09, 2015 3:36 AM To: Metalitz, Steven Cc: Steve Chan; Mary Wong; Phil Corwin; Petter Rindforth (petter.rindforth(a)fenixlegal.eu<mailto:petter.rindforth@fenixlegal.eu>) (petter.rindforth(a)fenixlegal.eu<mailto:petter.rindforth@fenixlegal.eu>); gnso.secretariat(a)gnso.icann.org<mailto:gnso.secretariat@gnso.icann.org>; Rosette, Kristina Subject: FW: Request for Input: IGO/INGO Curative Rights Dear Steve, On behalf of Philip Corwin & Petter Rindforth (WG Co-Chairs) of the PDP IGO-INGO Access to Curative Rights Protection Mechanisms WG, we would like to provide a friendly reminder that the WG hopes to receive any comments and input that you and the organization you Chair are able to provide, regarding the email below, by Friday, 23 January 2015. If you have any questions, please let us know. Thank you very much. Kind regards, Glen Glen de Saint G��ry GNSO Secretariat gnso.secretariat(a)gnso.icann.org<mailto:gnso.secretariat@gnso.icann.org> http://gnso.icann.org<http://gnso.icann.org/> From: Glen de Saint G��ry Sent: vendredi 12 d��cembre 2014 00:07 To: Rosette, Kristina; met(a)msk.com<mailto:met@msk.com> Cc: Steve Chan; Glen de Saint G��ry; gnso-secs(a)icann.org<mailto:gnso-secs@icann.org> Subject: FW: Request for Input: IGO/INGO Curative Rights Dear Kristina, In regards to the email below, it was brought to our attention that there is some confusion regarding which questions the working group is seeking feedback. Please see the revised message below from the co-chairs of the group: "On behalf of Philip Corwin & Petter Rindforth (WG Co-Chairs) of the PDP IGO-INGO Access to Curative Rights Protection Mechanisms WG, we seek to inform you that the WG has come to some initial conclusions and wish to update you on the activities within this WG, as well as request your input on 4 questions contained in the attachment to the original email" Kind Regards, Glen Glen de Saint G��ry GNSO Secretariat gnso.secretariat(a)gnso.icann.org<mailto:gnso.secretariat@gnso.icann.org> http://gnso.icann.org<http://gnso.icann.org/> From: Glen de Saint G��ry Sent: mercredi 10 d��cembre 2014 00:25 To: Rosette, Kristina; met(a)msk.com<mailto:met@msk.com> Cc: gnso-secs(a)icann.org<mailto:gnso-secs@icann.org>; Glen de Saint G��ry; Steve Chan Subject: Request for Input: IGO/INGO Curative Rights Dear Kristina, On behalf of Philip Corwin & Petter Rindforth (WG Co--�\Chairs) of the PDP IGO-INGO Access to Curative Rights Protection Mechanisms WG we request your input on: (1) Whether the Uniform Dispute Resolution Policy (UDRP) and/or the Uniform Rapid Suspension procedure (URS) should be amended, and if so, how; or (2) Whether a separate, narrowly-tailored dispute resolution procedure modeled on the UDRP and/or the URS should be developed, in either case to address the specific needs and concerns of International Governmental Organizations (IGOs) and/or International Non-Governmental Organizations (INGOs). Please see the attached document for full details. Thank you very much. Kind regards, Glen Glen de Saint G��ry GNSO Secretariat gnso.secretariat(a)gnso.icann.org<mailto:gnso.secretariat@gnso.icann.org> http://gnso.icann.org

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Draft for discussion/comparison (if UDRP is to be amended)
by Mary Wong Jan. 21, 2015

Jan. 21, 2015

Dear WG members, As a thought experiment, the WG co-chairs would like to offer the attached draft document for review and discussion by the WG. Since we have been looking at the 2007 draft text for a possible alternative dispute resolution procedure as a potential starting point for such a process (should the WG eventually decide on such a path), the co-chairs thought it would be helpful also for the WG to consider what might be a possible starting point for amending the UDRP (should that be the preferred option). The WG may wish to discuss this draft along with its further comments on the 2007 draft text. 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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Updated attendance MP3 IGO WG - Wednesday, 21 january 2015 at 1700 UTC
by Nathalie Peregrine Jan. 21, 2015

Jan. 21, 2015

With updated attendance Dear All, Please find the MP3 recording for IGO-INGO Access to Curative Rights Protection Mechanisms Working Group call on Wednesday, 21 January 2015 at 1700 UTC at: On page: http://audio.icann.org/gnso/gnso-igo-ingo-crp-access-21jan15-en.mp3 <http://gnso.icann.org/en/group-activities/calendar#dec>http://gnso.icann.org/en/group-activities/calendar#j<http://gnso.icann.org/en/group-activities/calendar#jan>an<http://gnso.icann.org/en/group-activities/calendar#jan> 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 Gary Campbell - GAC Jay Chapman – Individual Kathy Kleiman - NCUC David Heasley – IPC Nat Cohen – BC Alexander Lehrman - Apologies: Paul Keating Paul Tattersfield ICANN staff: Mary Wong Steve Chan Nathalie Peregrine ** 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, Nathalie ------------------------------- Adobe Connect chat transcript for Wednesday, 21 January 2015: Nathalie Peregrine:Dear all, welcome to the IGO-INGO Curative Rights Protection PDP WG Meeting on the 21 January 2015 Philip Corwin:Good morning or whatever to all who are joining the call George Kirikos:Hi everyone. George Kirikos:The Adobe took 2 tries to load. Very odd. Val Sherman:Hello everyone George Kirikos:Hi Val. Kristine Dorrain-NAF:Hello everyone! Just a pre-apology...I have to cut out early, in 1/2 hour. Mary Wong:@Kristine, thanks for the head's up. If you have comments on the agenda items that we don't get to before you drop off, would you mind typing them here in chat or sending an email? Mary Wong:We will draft a proposed agenda for the chairs and WG before next week's call, to review/discuss/edit. Petter Rindforth:Kristine, if you have time, please e-mail me/us your comments on point 3 Nathalie Peregrine:Kathy Kleiman and gary Campbell have joined the call Mary Wong:Note that when acknowledging receipt of the response, we also noted that the WG has since proceeded with a deeper analysis of 6ter per Phil's summary - so there ought not to be any further misunderstanding as to the nature of 6ter protctions. George Kirikos:Signatories are countries --- not the public, not ICANN, etc. George Kirikos:NYSE and NASDAQ issue stock symbols. They're not signatories either (and stock symbols are not trademarks, just like domain names are not TMs). George Kirikos:Article 6ter, *and* common law. George Kirikos:1/2 the ICANN reserved IGO names weren't in Article 6ter DB. George Kirikos:So, presumably even ICANN and the GAC were saying tht the other half were "common law." Mary Wong:@George, yes - the GAC's list of IGOs is not limited to/determined by notification under 6ter. The GAC defined IGOs as inter-governmental orgs having international legal personality and who are protected under one or more international treaty(ies) Mary Wong:TRIPS = Agreement on Trade-Related Aspects of Intellectual Property Rights (one of the WTO Agreements from 1994) Nathalie Peregrine:Nat Cohen has joined the audio bridge Kathy Kleiman:So where did GAC get its IGO list - do we know? Mary Wong:That is in the GAC letter enclosing the IGO list, sent in April 2013 George Kirikos:But, there are some marks in the Article 6ter DB that ICANN hasn't reserved. George Kirikos:Are these the "less important" IGOs? :0 George Kirikos::-) Kathy Kleiman:Perhaps a good topic of discussion with GAC members (perhaps the letter writers?) George Kirikos:A treaty between Angola and Kenya might create an IGO, but it shouldn't impact a registrant in Canada or the USA. Kathy Kleiman:@George, good point Jay Chapman:George, you comment leads to the question - How does an org become an IGO? How wide and deep can the IGO list become? George Kirikos:http://www.uia.org/yearbook says there are a lot of them. George Kirikos:Prevention could happen by making the TMCH apply to existing gTLDs. George Kirikos:Since, most folks would be completely unaware of most of these IGOs. Kathy Kleiman:I think the URS is not a good fit for the type of discussion taking place -- because the URS is intended for "quick and easy" decisions and this (IGOs) is fairly complicated (as our many discussions have shown) -- a much better match with UDRP, I think, than URS. George Kirikos:http://en.wikipedia.org/wiki/Intergovernmental_organization "Held and McGrew (2002) counted thousands of IGOs worldwide,[7] and this number continues to rise" Nathalie Peregrine:Alexander Lehrman has joined the audio bridge Kathy Kleiman:@Mary, what's an alternate word to "rights"?? George Kirikos:Perhaps use the word "privilege" Mary Wong:@Kathy, we are more concerned with using descriptions like "common law rights". The word "rights" has multiple connotations, and in the legal literature can be contrasted with concepts such as "privileges", "liberties" and so on (channeling Hohfeld from my law prof days :)) Kathy Kleiman:@Mary, I think Phil's explanation makes sense -- a 6ter mark appears to have the limited rights to fight against abusive and misleading uses within the context of trademark offices, etc George Kirikos:Divine Right of IGOs. :-) http://en.wikipedia.org/wiki/Divine_right_of_kings Mary Wong:We suggest sticking with the description (not definition) "protections" for now ... George Kirikos:ICANN does block IGO registrations on that special list. George Kirikos:(e.g. eco.horse is blocked) Mary Wong:@Kathy, that makes sense too - so as long as the WG uses that word/phrase in its full meaning that will be clear. Kathy Kleiman:"prevention is not foolproof" -- I like this! George Kirikos:Note that IGOs haven't shown how their needs for online fraud and confusion are "special" relative to any other entity concerned about the same thing, nor have they provided any data on the extent of existing alleged abuse. George Kirikos:World Bank waived their 'immunity' and brought a successful UDRP. George Kirikos:My comments on the draft 'thought experiment' text are at: http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2015-January/000249.html Mary Wong:Thanks for sending a substantive response so quickly, George! George Kirikos:Paul Keating couldn't make it, but was opposed to amendment. George Kirikos:(he sent an email to the list earlier today) George Kirikos:Is next week just admin stuff for Singapore? (i.e. next steps?) George Kirikos:Perhaps folks can give their thoughts on the 'thought experiment' on the mailing list, if there's a 2 week gap to the next substantive meeting. Kathy Kleiman:Tx you - very interesting discussion today! Mary Wong:@George, good idea - we will send a reminder to the list Mary Wong:There are a few others signed up who are not on the call today Val Sherman:David Heasley and Jim Bikoff will also join remotely George Kirikos:Have a wonderful day, everyone! Val Sherman:Thanks Phil. Thanks all! Jay Chapman:Good day all Gary Campbell:Bye

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MP3 IGO WG - Wednesday, 21 january 2015 at 1700 UTC
by Nathalie Peregrine Jan. 21, 2015

Jan. 21, 2015

Dear All, Please find the MP3 recording for IGO-INGO Access to Curative Rights Protection Mechanisms Working Group call on Wednesday, 21 January 2015 at 1700 UTC at: On page: http://audio.icann.org/gnso/gnso-igo-ingo-crp-access-21jan15-en.mp3 <http://gnso.icann.org/en/group-activities/calendar#dec>http://gnso.icann.org/en/group-activities/calendar#j<http://gnso.icann.org/en/group-activities/calendar#jan>an<http://gnso.icann.org/en/group-activities/calendar#jan> 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 Gary Campbell - GAC Jay Chapman – Individual Kathy Kleiman - NCUC David Heasley – IPC Nat Cohen – BC Alexander Lehrman - Apologies: Paul Keating ICANN staff: Mary Wong Steve Chan Nathalie Peregrine ** 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, Nathalie ------------------------------- Adobe Connect chat transcript for Wednesday, 21 January 2015: Nathalie Peregrine:Dear all, welcome to the IGO-INGO Curative Rights Protection PDP WG Meeting on the 21 January 2015 Philip Corwin:Good morning or whatever to all who are joining the call George Kirikos:Hi everyone. George Kirikos:The Adobe took 2 tries to load. Very odd. Val Sherman:Hello everyone George Kirikos:Hi Val. Kristine Dorrain-NAF:Hello everyone! Just a pre-apology...I have to cut out early, in 1/2 hour. Mary Wong:@Kristine, thanks for the head's up. If you have comments on the agenda items that we don't get to before you drop off, would you mind typing them here in chat or sending an email? Mary Wong:We will draft a proposed agenda for the chairs and WG before next week's call, to review/discuss/edit. Petter Rindforth:Kristine, if you have time, please e-mail me/us your comments on point 3 Nathalie Peregrine:Kathy Kleiman and gary Campbell have joined the call Mary Wong:Note that when acknowledging receipt of the response, we also noted that the WG has since proceeded with a deeper analysis of 6ter per Phil's summary - so there ought not to be any further misunderstanding as to the nature of 6ter protctions. George Kirikos:Signatories are countries --- not the public, not ICANN, etc. George Kirikos:NYSE and NASDAQ issue stock symbols. They're not signatories either (and stock symbols are not trademarks, just like domain names are not TMs). George Kirikos:Article 6ter, *and* common law. George Kirikos:1/2 the ICANN reserved IGO names weren't in Article 6ter DB. George Kirikos:So, presumably even ICANN and the GAC were saying tht the other half were "common law." Mary Wong:@George, yes - the GAC's list of IGOs is not limited to/determined by notification under 6ter. The GAC defined IGOs as inter-governmental orgs having international legal personality and who are protected under one or more international treaty(ies) Mary Wong:TRIPS = Agreement on Trade-Related Aspects of Intellectual Property Rights (one of the WTO Agreements from 1994) Nathalie Peregrine:Nat Cohen has joined the audio bridge Kathy Kleiman:So where did GAC get its IGO list - do we know? Mary Wong:That is in the GAC letter enclosing the IGO list, sent in April 2013 George Kirikos:But, there are some marks in the Article 6ter DB that ICANN hasn't reserved. George Kirikos:Are these the "less important" IGOs? :0 George Kirikos::-) Kathy Kleiman:Perhaps a good topic of discussion with GAC members (perhaps the letter writers?) George Kirikos:A treaty between Angola and Kenya might create an IGO, but it shouldn't impact a registrant in Canada or the USA. Kathy Kleiman:@George, good point Jay Chapman:George, you comment leads to the question - How does an org become an IGO? How wide and deep can the IGO list become? George Kirikos:http://www.uia.org/yearbook says there are a lot of them. George Kirikos:Prevention could happen by making the TMCH apply to existing gTLDs. George Kirikos:Since, most folks would be completely unaware of most of these IGOs. Kathy Kleiman:I think the URS is not a good fit for the type of discussion taking place -- because the URS is intended for "quick and easy" decisions and this (IGOs) is fairly complicated (as our many discussions have shown) -- a much better match with UDRP, I think, than URS. George Kirikos:http://en.wikipedia.org/wiki/Intergovernmental_organization "Held and McGrew (2002) counted thousands of IGOs worldwide,[7] and this number continues to rise" Nathalie Peregrine:Alexander Lehrman has joined the audio bridge Kathy Kleiman:@Mary, what's an alternate word to "rights"?? George Kirikos:Perhaps use the word "privilege" Mary Wong:@Kathy, we are more concerned with using descriptions like "common law rights". The word "rights" has multiple connotations, and in the legal literature can be contrasted with concepts such as "privileges", "liberties" and so on (channeling Hohfeld from my law prof days :)) Kathy Kleiman:@Mary, I think Phil's explanation makes sense -- a 6ter mark appears to have the limited rights to fight against abusive and misleading uses within the context of trademark offices, etc George Kirikos:Divine Right of IGOs. :-) http://en.wikipedia.org/wiki/Divine_right_of_kings Mary Wong:We suggest sticking with the description (not definition) "protections" for now ... George Kirikos:ICANN does block IGO registrations on that special list. George Kirikos:(e.g. eco.horse is blocked) Mary Wong:@Kathy, that makes sense too - so as long as the WG uses that word/phrase in its full meaning that will be clear. Kathy Kleiman:"prevention is not foolproof" -- I like this! George Kirikos:Note that IGOs haven't shown how their needs for online fraud and confusion are "special" relative to any other entity concerned about the same thing, nor have they provided any data on the extent of existing alleged abuse. George Kirikos:World Bank waived their 'immunity' and brought a successful UDRP. George Kirikos:My comments on the draft 'thought experiment' text are at: http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2015-January/000249.html Mary Wong:Thanks for sending a substantive response so quickly, George! George Kirikos:Paul Keating couldn't make it, but was opposed to amendment. George Kirikos:(he sent an email to the list earlier today) George Kirikos:Is next week just admin stuff for Singapore? (i.e. next steps?) George Kirikos:Perhaps folks can give their thoughts on the 'thought experiment' on the mailing list, if there's a 2 week gap to the next substantive meeting. Kathy Kleiman:Tx you - very interesting discussion today! Mary Wong:@George, good idea - we will send a reminder to the list Mary Wong:There are a few others signed up who are not on the call today Val Sherman:David Heasley and Jim Bikoff will also join remotely George Kirikos:Have a wonderful day, everyone! Val Sherman:Thanks Phil. Thanks all! Jay Chapman:Good day all Gary Campbell:Bye

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Agenda and documents for WG call today
by Mary Wong Jan. 21, 2015

Jan. 21, 2015

Dear WG members, For the WG call today, the co-chairs would like to continue (and make further progress toward finalizing) the WG¹s discussion on the so-called ³standing² requirement, i.e. the legal basis (such as would, for instance, be substantively equivalent to a registered trademark) upon which an IGO may file a complaint, whether it be under an amended form of the UDRP/URS or in a separate proceeding. Since we looked at an early draft text for a separate alternative procedure in previous calls, they would like the WG to discuss the document that was sent out last week (on 14 January), as a ³thought exercise² on what an amended UDRP might look like (understanding that neither text is intended to limit the WG¹s deliberations as to its course of action or ultimate recommendations). As such, the proposed agenda for the call today is: 1. Roll Call/Updates to SOI 2. Discuss IGO small group response relating only to Article 6ter and standing (to ensure the WG agrees on and understand the protections conferred by 6ter versus a national TM registration) 3. Discuss draft ³alternative² UDRP (solely in relation to the standing requirement) 4. Next steps/next meeting The document for Agenda Item #3 is re-attached for your convenience; the IGO ³small group² response was sent to the WG on Monday 19 January. 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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Response from the IGO "small group"
by Mary Wong Jan. 21, 2015

Jan. 21, 2015

Dear WG members, Please find attached the IGOs¹ response to the WG¹s questions that had been sent to the small group of IGOs who have been engaged in discussing issues concerning IGO protections (including the recommendations from the GNSO¹s previous PDP on the topic) with the Board¹s New gTLD Program Committee, the GAC and the GNSO Council. You will note that the IGOs¹ explanation of the level and nature of protection under Article 6ter of the Paris Convention comports with what was discussed on our last WG call, i.e. that protection under 6ter is more prohibitory in nature and does not necessarily depend on an IGO¹s having acquired a national trademark registration in its name and/or acronym. Rather, as we have noted since, the implementation by states of Article 6ter means that third parties are prohibited from registering as trademarks (or elements thereof) IGO names, acronyms, flags, armorial bearings and so on, that suggest a connection between them and the IGO in question. While IGOs may go further and proceed to register its name and acronym as a trademark in various national jurisdictions, that would in many cases constitute additional protections beyond those conferred by Article 6ter. (To recap the last WG discussions, we have seen that countries such as the United States and Australia implement their 6ter obligations by treating IGO names and acronyms which have been properly notified to each state by WIPO as particular types of marks, e.g. by assigning specific serial/sequence numbers to them and by requiring that a trademark examiner refuse a third party registration on grounds within the scope of 6ter, such as falsely suggesting a connection with the IGO.) In light of the IGO response and the WG¹s current discussions, staff will consult with Petter and Phil as to how best to approach our work in the lead-up to Singapore, where it is expected that the progress made by our WG may be on the agenda for discussions between the GNSO and the GAC. 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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With updated MP3 IGO WG - Wednesday, 7 january 2015 at 1700 UTC
by Nathalie Peregrine Jan. 14, 2015

Jan. 14, 2015

With updated mp3: http://audio.icann.org/gnso/gnso-igo-ingo-crp-access-07jan15-en.mp3 Apologies for the inconvenience! Nathalie From: Nathalie Peregrine <nathalie.peregrine(a)icann.org<mailto:nathalie.peregrine@icann.org>> Date: Wednesday, January 7, 2015 at 11:32 PM 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>> Cc: "gnso-secs(a)icann.org<mailto:gnso-secs@icann.org>" <gnso-secs(a)icann.org<mailto:gnso-secs@icann.org>> Subject: [gnso-secs] MP3 IGO WG - Wednesday, 7 january 2015 at 1700 UTC Dear All, Please find the MP3 recording for IGO-INGO Access to Curative Rights Protection Mechanisms Working Group call on Wednesday, 07 January 2015 at 1700 UTC at: http://audio.icann.org/gnso/gnso-igo-ingo-crp-access-20150107-en.mp3 On page: <http://gnso.icann.org/en/group-activities/calendar#dec>http://gnso.icann.org/en/group-activities/calendar#j<http://gnso.icann.org/en/group-activities/calendar#jan>an<http://gnso.icann.org/en/group-activities/calendar#jan> 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 Gary Campbell - GAC Paul Tattersfiled – Individual Jay Chapman – Individual Kathy Kleiman - NCUC Lori Schulman - NPOC Apologies:none ICANN staff: Mary Wong Steve Chan Berry Cobb Nathalie Peregrine ** 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, Nathalie ------------------------------- Adobe Connect chat transcript for Wednesday, 07 January 2015: The chat history has been cleared Nathalie Peregrine: Dear all, welcome to the IGO-INGO Curative Rights Protection PDP WG Meeting on the 07 January 2015 George Kirikos: Hi everyone! I hope you had great holidays. Nathalie Peregrine: Welcome George and best wishes to you! Mary Wong: 1 a.m. here in Singapore :) Lori Schulman: I don't have audio. Lori Schulman: I will dial in. George Kirikos: 1-866-692-5726, code = IGO George Kirikos: (in the USA/Canada) Nathalie Peregrine: Phil Corwin is on the audio bridge Nathalie Peregrine: Val Sherman has joined the call Nathalie Peregrine: @ Lori, there is audio in the AC room, maybe a reboot would help? Philip Corwin: Good day and Happy New Year to all! Lori Schulman: I am connected via phone. Thanks, George. Gary Campbell: Hi all George Kirikos: Did we have any comments/feedback yet from the constituencies? George Kirikos: (I think they were due on Friday) Mary Wong: @George, not yet (as expected). We (staff) are due to send reminders to all by the end of this week :) Steve Chan: @George, the due date is actually 23 January George Kirikos: Oh, sorry. I thought something was due earlier. Did we hear back from the IGOs (within the GAC observers?). Philip Corwin: Yes, we gave them more time on the tehory that asking for feedback just after the end of the holidays was not realistic. George Kirikos: Or, ICANN legal, who was going to get back with some searches of legal precedent. Philip Corwin: theory that is K: @Mary, are you sure it is an exact match standard?? K: BTW, this is Kathy Kleiman George Kirikos: They wou;dn't refuse the mark. George Kirikos: Only if it's CONFUSING. George Kirikos: i.e. wouldn't refuse automatically. Mary Wong: @Kathy, sorry - you're right, not necessarily an exact match (sorry for sloppy language!) Lori Schulman: the individual PTO's would apply whatever their national standards are. In the U.S. and other commonlaw jurisdictions, the standard is "confusingly similar" Mary Wong: It would be whatever standard/test/language in that particular jurisdiction that is equivalent to the 6ter language of "as trademarks or as elements of trademarks". Mary Wong: (per Lori - thank you!) George Kirikos: Note *full* text of Article 6ter at: http://www.wipo.int/article6ter/en/legal_texts/article_6ter.html (in particular, paragraph (c) shows it's not absolute) Mary Wong: @George, yes Kathy Kleiman: Sorry, I am on hold Kathy Kleiman: waiting to get onto the bridge Kathy Kleiman: please don't wait... Mary Wong: Essentially, the type of protection mandated by 6ter is prohibitive (subject to limitations of that national law) and does not specifically require an IGO to first obtain a national TM (unless, perhaps, that is the national law in any country). Nathalie Peregrine: the operator is keeping an eye out for your call Kathy Kathy Kleiman: here now Nathalie Peregrine: great! George Kirikos: I think most UDRP panelists would see Article 6ter registration as evidence of "common law" marks. George Kirikos: So, I don't see that as a controversial issue per se. Mary Wong: And per @George, the prohibition is not absolute - the third party has to be trying to use the mark as a trademark, and limited to suggesting a connection between the IGO and the third party. George Kirikos: I think Kathy's on to something, that there could be appeals to the legal system in each nation. George Kirikos: e.g. in the USA, first at the TTAB http://en.wikipedia.org/wiki/Trademark_Trial_and_Appeal_Board George Kirikos: So, there's some interaction with the immunity issue. I'm guessing the IGO would need to appeal/challenge a decision in that jurisdiction. Lori Schulman: If I recall from my examining days, there is no special consideration. Lori Schulman: The marks are compared as any other marks. Lori Schulman: I would have to confirm through the TMEP Kathy Kleiman: @ Mary, tx you. Kathy Kleiman: It is my understanding that the marks are compared as any othe rprior (already rgistered) marks - as Lori states Lori Schulman: You have to evaluate on 2 bases: confusingly similar and false association Lori Schulman: 2 different parts of the Act. TM Act Section 2(d) and 2(a) Mary Wong: And 6ter reflects this - the prohibited use must be as a TM or element(s) thereof, such as to suggest a connection etc. etc. Lori Schulman: as well as all other considerations Lori Schulman: descriptiveness, etc. Kathy Kleiman: I think this issue is huge - how individual national trademark offices treat the "registered" 6ter IGOs in their evaluations - because this is the essence of what we might be asking a UDRP or UDRP-type panel to do. George Kirikos: I believe Canada is moving to a system of TM registrations without reviews, more like the European systems. George Kirikos: I've already posted my views of the 2007 report. I didn't think it was a very good draft, for the reasons at: http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-December/000217.html George Kirikos: report = proposal Kathy Kleiman: Does anyone know if the 6ter list (those IGOs seeking the 6ter treaty protections) is a public list? George Kirikos: Yes, it is, Kathy. George Kirikos: http://www.wipo.int/article6ter/en/ George Kirikos: "Article 6ter Express database" or you can download the database. Kathy Kleiman: @tx Mary for the USPTO TMEP! Mary Wong: Note that the 6ter database doesn't just contain IGO names and acroyms; it includes all 6ter protected marks (armorial bearings, flags etc.) George Kirikos: 4(a) in that report was very flawed, as it changed everything from "and" to "or", for example. George Kirikos: (compared with the UDRP) Jay Chapman: while small, that is a monumental "change" from the UDRP, George Philip Corwin: Yes, going from "and' to "or' would be a very fundamental change in UDRP and URS practice and is a path I would not support this group going down. Paul Tattersfield: agree George - Too much thinking is based around the issuance of a trademark, I think more thought needs to be given to whether or not the underlying goods / services are being infringed. Kathy Kleiman: +1 George: this may be an education issues - for both IGOs and UDRP Panelists Kathy Kleiman: ... and the protection is common law + statutory (e.g., showing that the IGO has invoked the treaty rights and is on the "6ter" list) George Kirikos: If we were able to engage with the IGOs, to educate them more, this WG might be able to dissolve. George Kirikos: Albeit, with the immunity issue being a point of contention. But, even that can be worked around, as per the World Bank, UNITAID examples. George Kirikos: (where the law firms, for example, held the marks) George Kirikos: Kristine is here from NAF. Perhaps she might want to speak to the education aspect. George Kirikos: (not sure if we have that WIPO person here today) George Kirikos: Whether IGOs are aware that "common law' marks are sufficient to file. Mary Wong: @George, observers to the WG don't participate on calls :) George Kirikos: (and that panelists have found for IGOs in the past, e.g. World Bank, UNITAID, etc. George Kirikos: Do any of the law firms here have IGOs as clients? How do they do their "brand protection" these days? (offline or online, for that matter) Kathy Kleiman: @Kristine: is education of Panelists an issue here too? Kathy Kleiman: I think you answsered this, Kristine, tx you! Kristine Dorrain-NAF: Yes, thanks. George Kirikos: Something = "outreach" & "education"? George Kirikos: Perhaps adding to section 1 of http://www.wipo.int/amc/en/domains/search/overview2.0/ Paul Tattersfield: The emphasis should be that standing should come from usage not registration Kristine Dorrain-NAF: Good point on an affirmative step, Phil. George Kirikos: 1.12 Are IGO "marks" eligible for the first UDRP element? Answer: Yes. LOL Kristine Dorrain-NAF: All good, but that still doesn't reach them with UDRP as an option. You're relying on an IGO finding the UDRP and saying "oh geez, we can't use this"... Maybe I'm wrong, but I think the point is to say "you have options, people!" (Push vs Pull dynamic) George Kirikos: The terms of reference of this WG is even narrower, as it was limited to the subset of marks on that "reserved list" for new gTLDs. George Kirikos: So, reserved list only had around 100 marks, Article 6ter DB has 3000. Of course, under common law, any IGO could qualify.for a UDRP filing. Philip Corwin: Was such a reserve list ever created for new gTLD program, other than Red Cross/Crescent and IOC? George Kirikos: Yes, Philip. I had made up the spreadsheet, etc. George Kirikos: See: https://www.icann.org/sites/default/files/packages/reserved-names/ReservedN… George Kirikos: (scroll down to IGO names) Kristine Dorrain-NAF: Thanks for the really great discussion, all, I have to sign off a few minutes early for my next appointment. :) George Kirikos: No, it doesn't require a trademark registration, Phil. George Kirikos: Common law marks are recognized. Paul Tattersfield: @ Phil I don’t think it does – the registration is just a public declaration of in intent Philip Corwin: Ok, I stand corrected. But does lack of registration and therefore notice to DN registrants become an element in finding bad faith? Kathy Kleiman: Re: education - educating registrants/consumers might also be something we would consider Philip Corwin: Bad faith of course requires some intent Mary Wong: @Phil, yes - that would be one distinction George Kirikos: What's the plan for next week? George Kirikos: (before we go?) Mary Wong: @George, we'll caucus with the co-chairs George Kirikos: i.e. "next steps" in the Agenda. Philip Corwin: Haven't discussed yet. Suggestions are welcome Kathy Kleiman: Note all: Bad faith was largely new when we worked on the UDRP (only used a bit before that) so it would not be part of the treaty language, but would it encompass it? George Kirikos: Great meeting. Bye everyone. Lori Schulman: Thank you Philip Corwin: Bye all Jay Chapman: good bye Kathy Kleiman: by all! Paul Tattersfield: thanks, bye

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Webinar: Interactive Presentation of the Initial Report of the Translation and Transliteration of Contact Information PDP Working Group
by Nathalie Peregrine Jan. 13, 2015

Jan. 13, 2015

Webinar: Interactive Presentation of the Initial Report of the Translation and Transliteration of Contact Information PDP Working Group <https://www.addthis.com/bookmark.php?v=300&winname=addthis&pub=ra-52fcc7eb2…><https://www.icann.org/news/announcement-2015-01-09-en#><https://www.icann.org/news/announcement-2015-01-09-en#><https://www.addthis.com/bookmark.php?v=300&winname=addthis&pub=ra-52fcc7eb2…><https://www.icann.org/news/announcement-2015-01-09-en#><https://www.icann.org/news/announcement-2015-01-09-en#> The PDP Working Group on Translation and Transliteration of Contact Information has been chartered to determine whether contact information data should be translated or transliterated into a common language and/or script. The Group has published its Initial Report recommending not to make translation/transliteration of contact information mandatory but to allow for it on a voluntary basis. The public comment<https://www.icann.org/public-comments/transliteration-contact-initial-2014-…> period on this Report is open until 1 February 2015. To help the Community understand the Working Group's reasoning and to facilitate the submission of public comments, the Working Group co-Chairs will hold a 30-min webinar on Friday 16 January at 14:00 UTC. The aim is to present the preliminary recommendations and allow for an extended question and answer session, providing an opportunity for an interactive exchange between the Community and members of this PDPWorking Group. Webinar on 16 January 2015; 14.00-14.30 UTC To take part please RSVP via gnso-secs(a)icann.org<mailto:gnso-secs@icann.org>

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Scheduling WG call for this week
by Mary Wong Jan. 12, 2015

Jan. 12, 2015

Dear WG members, We understand that a number of WG members are at an industry conference this week, and our co-chairs are hoping shortly to circulate an initial draft discussion paper that compares the UDRP/URS with possible grounds applicable to IGOs (as a follow up from the WG discussion last week). As such, can you please reply to this note if you are NOT able to participate on a WG call this week? 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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MP3 IGO WG - Wednesday, 7 january 2015 at 1700 UTC
by Nathalie Peregrine Jan. 7, 2015

Jan. 7, 2015

Dear All, Please find the MP3 recording for IGO-INGO Access to Curative Rights Protection Mechanisms Working Group call on Wednesday, 07 January 2015 at 1700 UTC at: http://audio.icann.org/gnso/gnso-igo-ingo-crp-access-20150107-en.mp3 On page: <http://gnso.icann.org/en/group-activities/calendar#dec>http://gnso.icann.org/en/group-activities/calendar#j<http://gnso.icann.org/en/group-activities/calendar#jan>an<http://gnso.icann.org/en/group-activities/calendar#jan> 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 Gary Campbell - GAC Paul Tattersfiled – Individual Jay Chapman – Individual Kathy Kleiman - NCUC Lori Schulman - NPOC Apologies:none ICANN staff: Mary Wong Steve Chan Berry Cobb Nathalie Peregrine ** 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, Nathalie ------------------------------- Adobe Connect chat transcript for Wednesday, 07 January 2015: The chat history has been cleared Nathalie Peregrine: Dear all, welcome to the IGO-INGO Curative Rights Protection PDP WG Meeting on the 07 January 2015 George Kirikos: Hi everyone! I hope you had great holidays. Nathalie Peregrine: Welcome George and best wishes to you! Mary Wong: 1 a.m. here in Singapore :) Lori Schulman: I don't have audio. Lori Schulman: I will dial in. George Kirikos: 1-866-692-5726, code = IGO George Kirikos: (in the USA/Canada) Nathalie Peregrine: Phil Corwin is on the audio bridge Nathalie Peregrine: Val Sherman has joined the call Nathalie Peregrine: @ Lori, there is audio in the AC room, maybe a reboot would help? Philip Corwin: Good day and Happy New Year to all! Lori Schulman: I am connected via phone. Thanks, George. Gary Campbell: Hi all George Kirikos: Did we have any comments/feedback yet from the constituencies? George Kirikos: (I think they were due on Friday) Mary Wong: @George, not yet (as expected). We (staff) are due to send reminders to all by the end of this week :) Steve Chan: @George, the due date is actually 23 January George Kirikos: Oh, sorry. I thought something was due earlier. Did we hear back from the IGOs (within the GAC observers?). Philip Corwin: Yes, we gave them more time on the tehory that asking for feedback just after the end of the holidays was not realistic. George Kirikos: Or, ICANN legal, who was going to get back with some searches of legal precedent. Philip Corwin: theory that is K: @Mary, are you sure it is an exact match standard?? K: BTW, this is Kathy Kleiman George Kirikos: They wou;dn't refuse the mark. George Kirikos: Only if it's CONFUSING. George Kirikos: i.e. wouldn't refuse automatically. Mary Wong: @Kathy, sorry - you're right, not necessarily an exact match (sorry for sloppy language!) Lori Schulman: the individual PTO's would apply whatever their national standards are. In the U.S. and other commonlaw jurisdictions, the standard is "confusingly similar" Mary Wong: It would be whatever standard/test/language in that particular jurisdiction that is equivalent to the 6ter language of "as trademarks or as elements of trademarks". Mary Wong: (per Lori - thank you!) George Kirikos: Note *full* text of Article 6ter at: http://www.wipo.int/article6ter/en/legal_texts/article_6ter.html (in particular, paragraph (c) shows it's not absolute) Mary Wong: @George, yes Kathy Kleiman: Sorry, I am on hold Kathy Kleiman: waiting to get onto the bridge Kathy Kleiman: please don't wait... Mary Wong: Essentially, the type of protection mandated by 6ter is prohibitive (subject to limitations of that national law) and does not specifically require an IGO to first obtain a national TM (unless, perhaps, that is the national law in any country). Nathalie Peregrine: the operator is keeping an eye out for your call Kathy Kathy Kleiman: here now Nathalie Peregrine: great! George Kirikos: I think most UDRP panelists would see Article 6ter registration as evidence of "common law" marks. George Kirikos: So, I don't see that as a controversial issue per se. Mary Wong: And per @George, the prohibition is not absolute - the third party has to be trying to use the mark as a trademark, and limited to suggesting a connection between the IGO and the third party. George Kirikos: I think Kathy's on to something, that there could be appeals to the legal system in each nation. George Kirikos: e.g. in the USA, first at the TTAB http://en.wikipedia.org/wiki/Trademark_Trial_and_Appeal_Board George Kirikos: So, there's some interaction with the immunity issue. I'm guessing the IGO would need to appeal/challenge a decision in that jurisdiction. Lori Schulman: If I recall from my examining days, there is no special consideration. Lori Schulman: The marks are compared as any other marks. Lori Schulman: I would have to confirm through the TMEP Kathy Kleiman: @ Mary, tx you. Kathy Kleiman: It is my understanding that the marks are compared as any othe rprior (already rgistered) marks - as Lori states Lori Schulman: You have to evaluate on 2 bases: confusingly similar and false association Lori Schulman: 2 different parts of the Act. TM Act Section 2(d) and 2(a) Mary Wong: And 6ter reflects this - the prohibited use must be as a TM or element(s) thereof, such as to suggest a connection etc. etc. Lori Schulman: as well as all other considerations Lori Schulman: descriptiveness, etc. Kathy Kleiman: I think this issue is huge - how individual national trademark offices treat the "registered" 6ter IGOs in their evaluations - because this is the essence of what we might be asking a UDRP or UDRP-type panel to do. George Kirikos: I believe Canada is moving to a system of TM registrations without reviews, more like the European systems. George Kirikos: I've already posted my views of the 2007 report. I didn't think it was a very good draft, for the reasons at: http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-December/000217.html George Kirikos: report = proposal Kathy Kleiman: Does anyone know if the 6ter list (those IGOs seeking the 6ter treaty protections) is a public list? George Kirikos: Yes, it is, Kathy. George Kirikos: http://www.wipo.int/article6ter/en/ George Kirikos: "Article 6ter Express database" or you can download the database. Kathy Kleiman: @tx Mary for the USPTO TMEP! Mary Wong: Note that the 6ter database doesn't just contain IGO names and acroyms; it includes all 6ter protected marks (armorial bearings, flags etc.) George Kirikos: 4(a) in that report was very flawed, as it changed everything from "and" to "or", for example. George Kirikos: (compared with the UDRP) Jay Chapman: while small, that is a monumental "change" from the UDRP, George Philip Corwin: Yes, going from "and' to "or' would be a very fundamental change in UDRP and URS practice and is a path I would not support this group going down. Paul Tattersfield: agree George - Too much thinking is based around the issuance of a trademark, I think more thought needs to be given to whether or not the underlying goods / services are being infringed. Kathy Kleiman: +1 George: this may be an education issues - for both IGOs and UDRP Panelists Kathy Kleiman: ... and the protection is common law + statutory (e.g., showing that the IGO has invoked the treaty rights and is on the "6ter" list) George Kirikos: If we were able to engage with the IGOs, to educate them more, this WG might be able to dissolve. George Kirikos: Albeit, with the immunity issue being a point of contention. But, even that can be worked around, as per the World Bank, UNITAID examples. George Kirikos: (where the law firms, for example, held the marks) George Kirikos: Kristine is here from NAF. Perhaps she might want to speak to the education aspect. George Kirikos: (not sure if we have that WIPO person here today) George Kirikos: Whether IGOs are aware that "common law' marks are sufficient to file. Mary Wong: @George, observers to the WG don't participate on calls :) George Kirikos: (and that panelists have found for IGOs in the past, e.g. World Bank, UNITAID, etc. George Kirikos: Do any of the law firms here have IGOs as clients? How do they do their "brand protection" these days? (offline or online, for that matter) Kathy Kleiman: @Kristine: is education of Panelists an issue here too? Kathy Kleiman: I think you answsered this, Kristine, tx you! Kristine Dorrain-NAF: Yes, thanks. George Kirikos: Something = "outreach" & "education"? George Kirikos: Perhaps adding to section 1 of http://www.wipo.int/amc/en/domains/search/overview2.0/ Paul Tattersfield: The emphasis should be that standing should come from usage not registration Kristine Dorrain-NAF: Good point on an affirmative step, Phil. George Kirikos: 1.12 Are IGO "marks" eligible for the first UDRP element? Answer: Yes. LOL Kristine Dorrain-NAF: All good, but that still doesn't reach them with UDRP as an option. You're relying on an IGO finding the UDRP and saying "oh geez, we can't use this"... Maybe I'm wrong, but I think the point is to say "you have options, people!" (Push vs Pull dynamic) George Kirikos: The terms of reference of this WG is even narrower, as it was limited to the subset of marks on that "reserved list" for new gTLDs. George Kirikos: So, reserved list only had around 100 marks, Article 6ter DB has 3000. Of course, under common law, any IGO could qualify.for a UDRP filing. Philip Corwin: Was such a reserve list ever created for new gTLD program, other than Red Cross/Crescent and IOC? George Kirikos: Yes, Philip. I had made up the spreadsheet, etc. George Kirikos: See: https://www.icann.org/sites/default/files/packages/reserved-names/ReservedN… George Kirikos: (scroll down to IGO names) Kristine Dorrain-NAF: Thanks for the really great discussion, all, I have to sign off a few minutes early for my next appointment. :) George Kirikos: No, it doesn't require a trademark registration, Phil. George Kirikos: Common law marks are recognized. Paul Tattersfield: @ Phil I don’t think it does – the registration is just a public declaration of in intent Philip Corwin: Ok, I stand corrected. But does lack of registration and therefore notice to DN registrants become an element in finding bad faith? Kathy Kleiman: Re: education - educating registrants/consumers might also be something we would consider Philip Corwin: Bad faith of course requires some intent Mary Wong: @Phil, yes - that would be one distinction George Kirikos: What's the plan for next week? George Kirikos: (before we go?) Mary Wong: @George, we'll caucus with the co-chairs George Kirikos: i.e. "next steps" in the Agenda. Philip Corwin: Haven't discussed yet. Suggestions are welcome Kathy Kleiman: Note all: Bad faith was largely new when we worked on the UDRP (only used a bit before that) so it would not be part of the treaty language, but would it encompass it? George Kirikos: Great meeting. Bye everyone. Lori Schulman: Thank you Philip Corwin: Bye all Jay Chapman: good bye Kathy Kleiman: by all! Paul Tattersfield: thanks, bye

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Relevant language from Article 6ter and the US' Trademark Manual of Examining Procedure
by Mary Wong Jan. 7, 2015

Jan. 7, 2015

Dear WG members, Following the discussions on the WG call earlier today, we thought it might be helpful to reproduce for you the partial text of Article 6ter of the Paris Convention and the extract from the United States¹ Trademark Manual of Examining Procedure (TMEP) that were highlighted on the call. Partial text of Article 6ter: * 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. * 1(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. * 1(c) - The countries of the Union shall not be required to apply the said provisions when the use or registration 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. * 3(b) - this Article shall apply only to such armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organizations as the latter have communicated to the countries of the Union through the intermediary of the International Bureau. * 4 - Any country of the Union may, within a period of twelve months from the receipt of the notification, transmit its objections, if any, through the intermediary of the International Bureau, to the country or international intergovernmental organization concerned. How one country (here, the USA) deals with IGOs who have communicated their 6ter protections, duly notified by WIPO to all relevant countries, where no objection was made within the requisite 12-month period; extract from the USPTO TMEP (S. 1205(2)): * When the USPTO receives requests for protection under Article 6ter from the [International Bureau (WIPO], they are assigned serial numbers in the "89" series code, i.e., serial numbers beginning with the digits "89," and are sometimes referred to as "non-registrations." The USPTO searches its records for conflicting marks, but the requests are not subjected to a full examination by an examining attorney or published for opposition. Copies of the designations are filed in the paper records of the Trademark Search Library, and pertinent information is entered in the automated search records of the Office and should be discovered in an examining attorney's search. * The Paris Convention requires that the United States refuse to register designations that have been deposited pursuant to Article 6ter and to which the United States has transmitted no objections. Depending on the nature and use of the mark, §§2(a) and 2(b) of the Trademark Act, 15 U.S.C. §§1052(a) and 1052(b), may bar registration of these marks. A refusal under §2(d) of the Trademark Act is not appropriate. The issue is not whether the marks are confusingly similar, but whether registration of the mark would violate §§2(a) or 2(b) of the Trademark Act. * For example, it may be appropriate for the examining attorney to refuse registration under §2(a) of the Act on the ground that the mark comprises matter that may falsely suggest a connection with a national symbol of a member country or an international intergovernmental organization. See TMEP §1203.03(e). Other §2(a) bases for refusal could also apply. See TMEP §§1203 et seq. It may be appropriate to refuse registration under §2(b) of the Act if the proposed mark comprises a flag, coat of arms or other similar insignia. See TMEP §1204. In some instances, it may be appropriate to refuse registration under §§1, 2 (preamble) and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127, on the ground that the subject matter would not be perceived as a trademark. (For service mark applications, §3 of the Act, 15 U.S.C. 1053, should also be cited as a basis for refusal.) Note also that there have been cases in the United States before the Trademark Trial and Appeals Board (TTAB) concerning attempted registrations and/or refusals of registrations by the USPTO in respect of some 6ter-protected designations, e.g. flags. The questions raised in these administrative cases included matters such as the correctness of a USPTO TM examiner¹s decision on whether to permit the registration of a TM application that contained state flags and other 6ter-protected emblems that have (per the TMEP) been recorded by the USPTO. We hope the above 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

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Agenda and documents for WG call on Wednesday 7 January 2015
by Mary Wong Jan. 7, 2015

Jan. 7, 2015

Dear WG members, Just a reminder about the note and requests below, from the last WG call on 17 December. For your convenience, the draft text from 2007 relating to a possible alternative dispute resolution procedure (DRP) is also attached to this email. On the upcoming WG call, the co-chairs and staff will update everyone on progress to date, and I expect that discussions will pick up from where we left off on 17 December. 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: Mary Wong <mary.wong(a)icann.org> Date: Monday, 22 December 2014 23:02 To: <gnso-igo-ingo-crp(a)icann.org> Subject: 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 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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