January 2015 - Gnso-igo-ingo-crp

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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