September 2016 - Gnso-igo-ingo-crp

Attendance and mp3 / IGO-INGO Curative Rights Protection PDP WG Meeting - Thursday, 08 September 2016 at 17:00 UTC
by Yesim Nazlar Sept. 9, 2016

Sept. 9, 2016

Dear All, Please find the attendance and MP3 recording for the IGO-INGO Curative Rights Protection PDP WG Meeting held on Thursday, 08 September 2016 at 17:00 UTC at: http://audio.icann.org/gnso/gnso-igo-ingo-crp-access-08sep16-en.mp3 On page: https://gnso.icann.org/en/group-activities/calendar#sep The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page: http://gnso.icann.org/en/group-activities/calendar Attendees: George Kirikos - Individual Petter Rindforth - IPC Phil Corwin - BC Jay Chapman – Individual Paul Tattersfiled – Individual Mason Cole – RySG Lori Schulman - IPC Gary S. Campbell - GAC Apologies: David Maher - RySG ICANN staff: Mary Wong Steve Chan Berry Cobb Dennis Chang Yeşim Nazlar ** 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/>http://mm.icann.org/pipermail/gnso-igo-ingo-crp/ Wiki page: https://community.icann.org/x/37rhAg Thank you. Kind regards, Yeşim Nazlar ------------------------------- Adobe Connect chat transcript for Thursday, 08 September 2016 Yesim Nazlar:Welcome to the IGO-INGO Curative Rights Protection PDP WG Meeting held on Thursday, 08 September 2016 at 17:00 UTC Yesim Nazlar:Agenda: https://community.icann.org/x/UxmsAw George Kirikos:Hi folks! Paul Tattersfield:Hi George Kirikos:Hey Paul. Paul Tattersfield:How's things in Canada? George Kirikos:Great here, thanks. How are you today? Paul Tattersfield:Great thanks, were having an Indian Summer so it's a good time of year Philip Corwin:Hello all Mary Wong:First things first, welcome back Steve Chan from medical leave! George Kirikos:Nice to hear things went well, Steve. Steve Chan:Thanks Phil, Mary, everyone! Mason Cole:Good to have you back, Steve! George Kirikos:Sounds good, Phil. George Kirikos:#1 shouldn't be controversial. Jay Chapman:#1 good George Kirikos:We're just focusing on the BOLD language, for now. Jay Chapman:i do have questions about the final paragraph of the content for rec #1, but sounds like we're discussing this later Mary Wong:Yes, that's right, Phil George Kirikos:Is there an email with the staff concerns that was sent to the mailing list?? Mary Wong:@George, we have only discussed this with the co-chairs for now, as a follow up to last week's WG call George Kirikos:Thanks, Mary. Mary Wong:But if the co-chairs wish, we can forward that to the WG of course. Jay Chapman:that would help, Mary George Kirikos:+1 Phil. I think the UDRP panelists would give standing. George Kirikos:One additional argument would be that it would fall under 3(xiii) George Kirikos:https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en George Kirikos:"re warranted under these Rules and under applicable law," i.e. the words "and under applicable law" would trigger standing. Yesim Nazlar:Lori Schulman has joined on the phone bridge only Lori Schulman:I am now online. Thank you Yesim Nazlar:Lori Schulman is now on AC as well Paul Tattersfield:Hi Lori Lori Schulman:Hi Paul Yesim Nazlar:Gary S. Campbell joined George Kirikos:1.7 of the WIPO overviews also show how "unregistered" rights can be demonstrated. http://www.wipo.int/amc/en/domains/search/overview2.0/#17 Gary S Campbell:Hi Guys Lori Schulman:Thank you. I heard the end of your opinion. I will listen to the recording. George Kirikos:Welcome, Gary. Paul Tattersfield:+1 George the registration of rights is only a marker in time George Kirikos:Thanks Phil. George Kirikos:Page 5 of 11. George Kirikos:(very bottom of page 5) Lori Schulman:I am missing page 5 Lori Schulman:can't seem to scroll to it George Kirikos:Here's the text of Article 6ter: http://www.wipo.int/article6ter/en/legal_texts/article_6ter.html Lori Schulman:Using the copy Mary sent last night George Kirikos:I assume we want to capture the language "is not of such a nature as to suggest to the public that a connection exists between the organization concerned" ?? Lori Schulman:That was my typing sorry. George Kirikos:and also "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." George Kirikos:Changing that would mean creating new law, which we shouldn't contemplate. George Kirikos:Where it says "agent or licensee", perhaps make it "agent, assignee, or licensee"? (i.e. add "assignee" as a potential route) George Kirikos:I would be in favour of Option #1, because it most closely reflects the "status quo" if we did a thought experiment of "what would happen if the UDRP never existed". i.e. IGO would waive immunity to bring a court dispute, if the UDRP doesn't exist. If Option 2 exists, then it would support gaming by complainants. Lori Schulman:George, what do you mean by gaming? George Kirikos:I'll try to get in queue. Lori Schulman:ok Jay Chapman:exactly George George Kirikos:* 6 to unmute Mary Wong:FWIW Lori's concern is one shared by staff as well. Jay Chapman:the issue here is not immunity, it is the likelihood that a registrant's domain name can be taken away from them Jay Chapman:without due process Jay Chapman:due process = via a court of mutual jurisdiction Mary Wong:Our reasons include the fact that a successful plea of immunity is not the same substantive ground as vitiating a panel decision. George Kirikos:New hand. George Kirikos:We posted evidence of cases where courts overturned arbitrators. Mary Wong:@George, yes, but after consideration of the actual case facts, not simply based on an IGO successfully pleading immunity, surely? George Kirikos:IF arbitrators can't be trusted to give the correct decision, then removing the court option makes those arbitrators unaccountable. Lori Schulman:The system is not predictable. You cannot have a 100% predicatble system. George Kirikos:Courts are far more protective of due process than arbitration. Lori Schulman:Judges make incorrect decisions too. We through ourselves at the mercy of any system. Lori Schulman:throw George Kirikos:Yes, but courts have multiple levels of appeals, etc. Lori Schulman:George I get that but IGO's are not typical rightsholders Lori Schulman:that's the whole point George Kirikos:I disagree, Lori. IGOs still have to go to the courts if I start selling UNESCO biscuits, etc. George Kirikos:My devil's argument would be "get rid of the UDRP completely", Option #3. Lori Schulman:George, totally unacceptable to trademark owners and you know that. George Kirikos:What would IGOs (and TM holders) have as choices under Option #3?? George Kirikos:The "bargain" in the creation of the UDRP was that it wouldn't override the courts. Lori Schulman:The point of the UDRP was to make the system efficient and reasonably reliable for all concerned. George Kirikos:THe national courts still existed, for either side to use, if the decision was incorrect. Mary Wong:@George, it's likely that Option 3 is outside the scope of this WG. George Kirikos:I disagree, Lori. Vehemently. Lori Schulman:Yes, but the UDRP is geared toward private parites. Lori Schulman:private parties Lori Schulman:we don't have private parties here Lori Schulman:we have a governmental org Lori Schulman:How is that treated in Canada? George Kirikos:If you want a "more efficient" system, you could go the "URS" 1 page form, for the UDRP. THat would be very efficient. George Kirikos:Wouldn't get due process, though. Lori Schulman:URS does not impose permanent remedies Lori Schulman:names get recirculated not redelegated Lori Schulman:or transferred Mary Wong:And my hand is up too Lori Schulman:George, I am talking about problems related to IGO's Jay Chapman:Where an IGO licenses its rights to a third party for UDRP assertion, an option 1 or 2 would never arise, because immunity is not at issue George Kirikos:+1 Jay. We gave them the mechanism. They would only choose to avoid the licensing, etc., if they think they can game the outcome. George Kirikos:Sound was breaking up there. George Kirikos:I wasn't seriously proposing Option #3, but I am saying that Option #1 is more consistent with a hypothetical Option #3. George Kirikos:Should we jump to #5 first? Lori Schulman:i will defer my time to Mary Mary Wong:Right, George, understood - so just noting for the record, nothing more. George Kirikos:(bottom of page 10) George Kirikos:Oops, looks like we have Rec #6 too. Lori Schulman:I am not talking about parallel systems Lori Schulman:I am talking about arbitration as a reasonable road to address the concerns of an important minority of rights holders = IGO's Mary Wong:@Petter, this could be one of the open questions for which the WG seeks public input. George Kirikos:Reasonable for one side, but not both, Lori. George Kirikos:Mandatory arbitration has too many issues. Lori Schulman:George, we can find decisions that run favorable to registrants and investors Lori Schulman:As does court action for IGO's --too many serious, complicated issues Lori Schulman:UNESCO can take make roads to deal with its biscuits but lets stick to domain centered issues Lori Schulman:many George Kirikos:I disagreee, Lori. The law should be the same for biscuits as it is for domain names. Lori Schulman:demands, negotiation, mediation, arbitration. Court should never be a first resort George Kirikos:We shouldn't be creating new laws, here, just reflecting existing laws. Lori Schulman:We are. Lori Schulman:I believe re IGO immunity. George Kirikos:IGO waives that immunity, when it is the complainant. George Kirikos:It is 100% shielded, if it doesn't want to file any complaint. Lori Schulman:the standards of proof for actions in trademark vs domain cases aer not the same George Kirikos:Let's suppose an IGO hacks my domain name registrar, and steals my domain name. Lori Schulman:I am not a litigator so I can't go into deep details but I know that each cause of action has different legal hurdles George Kirikos:I would be unable to sue them to recover my domain -- they have immunity there, because they are the defendant. Lori Schulman:trademark claims v domain claims George Kirikos:However, in the opposite situation, as complainant, they have to waiver their immunity, to take property through the legal system from someone else. Lori Schulman:then there is a forum for your recourse Lori Schulman:that's how it works in U.S. a special court for the types of claims you describe so why not special forum Lori Schulman:for IGO issue George Kirikos:Which "IGO special court" exists for biscuit disputes? Lori Schulman:in US it court of claims Lori Schulman:don't know outside of us Lori Schulman:it is a court but with special rules for USG entities Lori Schulman:I don't know about IGO's Lori Schulman:Wish more were here to defend Lori Schulman:that may say something too Lori Schulman:can't sue for TM and Copyight claims in US Lori Schulman:it's an issue, I won't deny that but agencies are generally careful but no always George Kirikos:Are we back to 12 noon next week? Or sticking to 1 pm (Eastern time)? Mary Wong:Yes, I think so, Phil Mary Wong:Not at the moment Mary Wong:Will do, Phil Lori Schulman:This was lively. Thanks everyone. Jay Chapman:appreciate the discussion George Kirikos:Bye folks. Mary Wong:Thank you all! Jay Chapman:Bye everyone - thanks Yesim Nazlar:Next Call is set to 15 September at 16:00 UTC Lori Schulman:thank you phil Paul Tattersfield:thanks bye all Yesim Nazlar:Thank you all!

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Letter from NGPC to the GAC from January 2015
by Mary Wong Sept. 8, 2016

Sept. 8, 2016

Dear Working Group members, Here is the link to the letter we mentioned on the call today. This is a letter that the NGPC sent to the GAC in January 2015, querying potential concerns of some GAC members regarding the resolution of IGO curative rights issues: https://gacweb.icann.org/download/attachments/27492514/chalaby-to-schneider…. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889

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FOR REVIEW/DISCUSSION: Agenda for WG call on 8 September and initial draft text for preliminary recommendations
by Mary Wong Sept. 7, 2016

Sept. 7, 2016

Dear Working Group members, Here is the draft agenda (which is still subject to further amendment by the co-chairs) for the next WG call scheduled for Thursday 8 September at 1700 UTC: 1. Roll call/updates to SOI 2. WG discussion of draft text proposed for Section 6 of the WG’s Initial Report (see attached document); the purpose of this discussion is to ensure that the language of the draft recommendations captures substantively the main points of the WG’s deliberations and conclusions 3. WG discussion as to whether any open questions or remaining topics that are not currently addressed by the draft text needs to be included 4. Next steps/next meeting Please note that the draft text contains several comments and questions from the co-chairs and staff for further discussion by the full WG. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889

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attendance and mp3 / IGO-INGO Curative Rights Protection PDP WG Meeting - Thursday, 01 September 2016 at 16:00 UTC
by Terri Agnew Sept. 2, 2016

Sept. 2, 2016

Dear All, Please find the attendance and MP3 recording for the IGO-INGO Curative Rights Protection PDP WG Meeting held on Thursday, 01 September 2016 at 16:00 UTC at: http://audio.icann.org/gnso/gnso-igo-ingo-crp-access-01sep16-en.mp3 On page: https://gnso.icann.org/en/group-activities/calendar#sep The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page: http://gnso.icann.org/en/group-activities/calendar<http://gnso.icann.org/en/group-activities/calendar#nov> Attendees: David Maher - PIR George Kirikos - Individual Petter Rindforth - IPC Phil Corwin - BC Jay Chapman - Individual Paul Tattersfiled - Individual Mason Cole - RySG Lori Schulman - IPC Jim Bikoff - IPC Holly Lance - IPC Apologies: Osvaldo Novoa Kathy Kleiman Steve Chan (Staff) ICANN staff: Mary Wong Glen de Saint Gery Terri Agnew ** Please let me know if your name has been left off the list ** Mailing list archives: http://mm.icann.org/pipermail/gnso-ppsai-pdp-wg/ Wiki page: https://community.icann.org/x/9iCfAg Thank you. Kind regards, Terri Agnew ------------------------------- Adobe Connect chat transcript for Thursday, 01 September 2016 Terri Agnew:Dear all, welcome to the IGO-INGO Curative Rights Protection PDP WG Meeting on the Thursday, 01 September 2016 Terri Agnew:agenda wiki page: https://community.icann.org/x/fxisAw George Kirikos:Hi folks. Petter Rindforth:Hi there! George Kirikos:Hi Petter. Jay Chapman:Hello, everyone George Kirikos:Hi Jay. Paul Tattersfield:Hi All George Kirikos:Hi Paul. George Kirikos:Some folks might be trying for a 5-day long weekend. :-) Lori Schulman:Hi Terri Agnew:Welcome Lori Schulman Lori Schulman:I am in favor of 5 day weekend. Lori Schulman:Mary, you sound like Lauren Bacall Mary Wong:@Lori, haha - thanks! Terri Agnew:Welcome Phil Corwin Mary Wong:@Petter, yes that is correct Philip Corwin 2:Hello all George Kirikos:Welcome clone of Phil. :-) Philip Corwin:Have no idea how that happened, as I only logged in once Mary Wong:Phil has a doppelganger Philip Corwin:But my alter ego has been sent back to the attic ;-) George Kirikos:I wish I had a clone -- it could do all my work, so I could relax. :-) George Kirikos:lol Phil George Kirikos:Is anyone here against the emerging consensus? (i.e. like the movie "12 Angry Men", perhaps they should have the floor, if they exist) George Kirikos:Article 6ter is more about blocking rights. Paul Tattersfield:but that doen't matter for UDRP does it Mary? George Kirikos:But, the blocking right doesn't make it a total blocking, if the proposed TM application isn't going to cause confusion, etc. George Kirikos:So, in a sense, it implies that Article 6ter registration is akin to (unregistered) TM rights, for the goods/services the IGO provides. Mary Wong:@Paul, that's part of our question. It seems that the first ground under the UDRP depends on having substantive trademark rights. That isn't the same protection as what Article 6ter provides. George Kirikos:Of course, the IGOs can/do register those TM rights in some nations, too, to be more direct than their unregistered marks. Mary Wong:And our concern here is the risk of expanding legal rights in the DNS where there isn't a substantive equivalent in the TM realm. Mary Wong:@George, blocking a third party from registering a TM isnt the same as having substantive ritghts you can enforce. Paul Tattersfield:the registration of trademarks don't confer the rights just evidence them George Kirikos:True, Mary, although it's somewhat implied that the IGO must have TM rights, otherwise why would they register in the Article 6ter DB in the first place? Mary Wong:@Paul, yes, but the fact remains (doesn't it?) that there must be a substantive legal right. So the question is, does 6ter confer that on IGO names and acronyms? George Kirikos:+1 Paul. Mary Wong:6ter language - countries must "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" George Kirikos:If one consults with the USPTO TM database, and searches for "Article 6ter", there are 704 marks under the 8900xxxxx series, that are in the database. George Kirikos:Under "Refine Search", I use: (article 6ter)[ALL] Paul Tattersfield:exactly 6ter allows those entries Philip Corwin:Thanks Mary. So that language clearly goes beyond just blocking -- allows for subsequent invalidation or prohibitions on use. Mary Wong:Text of 6ter (see (1)(a)) - http://www.wipo.int/article6ter/en/legal_texts/article_6ter.html Paul Tattersfield:@ phil in all classes or conflicting classes Philip Corwin:When I say "standing" I mean the qualification to initiate a UDRP or URS due to rights in a name or acronym that is identical or confusingly similar to the allegedly infringing domain(s). Mary Wong:ok thanks Phil Mary Wong:So basically Policy Guidance (authoritative) that says "TM rights" under the UDRP and URS includes, for IGOs only, the protections under 6ter (if they fulfill the filing and notification requirements). Philip Corwin:Article 6ter clearly creates certain rights in signatory and WTO nations George Kirikos:WIPO Views, #1.7, is also very broad, making standing fairly easy for IGOs. http://www.wipo.int/amc/en/domains/search/overview2.0/#17 Paul Tattersfield:(1)(a) should be sufficient to prevent a claimant trying to take away domain from a state or an IGO since (1)(b) extends a subset of a state's rights found in (1)(a) to IGOs. but (1)(a) can not be used to secure the property and rights of others who are not infringing a state's (or IGO's) marks. Philip Corwin:@Paul--I believe the question of classes in addressed when an examiner looks at the actual use of the domain -- e.g., where an apple-related domain has content related to electronics or to fruits or something else unrelated to the famous California company Mary Wong:We just wanted to raise our concern over the possible distinction between a "right to prevent third party registrations" and a "substantive legal right that can be enforced". Paul Tattersfield:This is reinforced in (1)(c) which goes on to mention cases where (1)(a) shall not apply are where "it is not" and "is probably not" of such a nature as to mislead the public as to the existence of a connection between the user and the organisation Paul Tattersfield:This is very important because a more broad interpretation risks creating a false sense of entitlement, in the same way some companies (and even certain panellists) when presented with a newly registered trademark feel UDRP gives them an explicit right to have a domain transferred even when there is no infringement whatsoever of underlying goods or services. George Kirikos:Right, Paul. Philip Corwin:@Mary--the quoted language from A6ter appears to confer substantive legal rights in signatory nations Lori Schulman:To my recollection from my examiner days there absolutely are substantive legal rights Lori Schulman:Mary is first Mary Wong:@Lori, the recommendation under consideration here is whether an IGO that just has an Article 6ter notification - without any national TM registrations - can file a UDRP or URS complaint. Sounds like the WG is inclined to say yes. Paul Tattersfield:the existing rrights are already protected under udrp whether or whether there is not a newly minted trademark Lori Schulman:Yes, I am inclined to say yes Lori Schulman:I may have confused the question. Lori Schulman:My apologies. The broad statements about new TM registrations is what raised an issue for me Lori Schulman:Thanks, Paul. George Kirikos:Tarnishing. Lori Schulman:Yes, but they have uses in commerce Lori Schulman:performing public services, publishing content, etc George Kirikos:Even non-profits have services, e.g. "fundraising" or "promotion of XXXXXX" or .... Lori Schulman:There is a duality with IGOs and INGOs Lori Schulman:It's the duality that is prompting this WG Mary Wong:THanks, all - this has been very helpful and instructive for staff as we try to put "meat on the bones" of the outline report. Philip Corwin:IMHO if an IGO is eligible to assert A6ter protections it can assert UDRP or URS standing, regardless of whether it is on the GAC's list Lori Schulman:I agree with Phil George Kirikos:Article 6ter database seems to have some State Emblems (registered by countries, not IGOs), so we should be careful to state that Article 6ter registration in itself is just for IGOs. George Kirikos:(otherwise countries could try to "expand" rights, to claim their country names, etc., if they get rid of the figurative elements of those emblems) Mary Wong:@Petter, do we have a conclusion(s) from the WG about the policy options for immunity? Philip Corwin:@george--we can make clear in our standing recommendations that they apply only to IGOs that have registered under A6ter George Kirikos:e.g. search for "Canada" or "Iceland" in the Article 6ter online database. George Kirikos:Thanks Phil. George Kirikos:No change in the policy for immunity, but greater education for IGOs. Mary Wong:I ask b/c we didnt get any responses or much discussion about the UNCITRAL rules as I recall. George Kirikos:(e.g. assignment, licensing, etc.) Mary Wong:More broadly, the pros and cons about either using them as an arbitral appeal option, or amending the Mutual Jurisdiction clause wording (per Prof Swaine). George Kirikos:I wouldn't add the UNICTRAL section to the UDRP. Paul Tattersfield:Should we suggest that the RPM WG look at a voluntary internal appeals process for UDRPs the IGO's raised the issue of outlier decisions by panels? George Kirikos:(i.e. wouldn't change the UDRP at all, but suggest greater education) Mary Wong:Thanks Phil. George Kirikos:The IGO would have waived immunity, though, and IGOs are perfectly capable of waiving that immunity, as per the report. George Kirikos:(by Swaine) Lori Schulman: I have asked Brian Beckham for any data INCITRAL rules favoring UN agencies as a data point Lori Schulman:I can't type. My apologies. George Kirikos:Bye everyone. Have a nice long weekend. Lori Schulman:Data about decisions for or against UN agencies under UNCITRAL Lori Schulman:Ciao George Kirikos:That'd be 1 pm Eastern time, then? Fine for me. Paul Tattersfield:thanks all , bye Mary Wong:@George, yup Philip Corwin:Yes 1 pm ET Mary Wong:And 1 a.m. for me in Asia :) George Kirikos:Bye folks. Philip Corwin:Bye all

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FW: FOR YOUR INFORMATION: Update from Chris Disspain on the IGO protections issue
by Mary Wong Sept. 1, 2016

Sept. 1, 2016

Dear Working Group members, At our co-chairs’ suggestion, I’m forwarding a note that ICANN Board member Chris Disspain just sent to the GNSO Council concerning work on IGO acronyms protection. You may be interested in particular in those parts of his message that reference the work of our group, as well as the fact that the Board does not plan to act on GAC advice relating to curative rights before the completion of our PDP. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889 From: Mary Wong <mary.wong(a)icann.org> Date: Monday, August 22, 2016 at 15:02 To: "council(a)gnso.icann.org" <council(a)gnso.icann.org> Subject: FOR YOUR INFORMATION: Update from Chris Disspain on the IGO protections issue Dear Councilors, Please find attached a note from ICANN Board member Chris Disspain that he has asked be forwarded to the Council, as a follow up to the discussions that took place in Helsinki on the issue of IGO acronym protections. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names and Numbers (ICANN) Email: mary.wong(a)icann.org Telephone: +1-603-5744889

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