May 2017 - Gnso-igo-ingo-crp

- Proposed Agenda for WG call on Thursday 11 May 2017 at 1600 UTC
by Steve Chan May 11, 2017

May 11, 2017

Dear WG Members, Apologies for the late delivery. The proposed agenda for the upcoming WG call this Thursday 11 May 2017 at 1600 UTC is as follows; please also note that this call has been scheduled for 90 minutes: 1. Welcome/SOIs 2. Review of updated table of facts, arguments, new sources (attached and distributed by Mary Wong on 9 May) 3. Discussion of arbitration as an option 4. Discussion about the possibility of a separate and narrow dispute resolution procedure for IGOs 5. AOB Best, Steve Steven Chan  Sr. Policy Manager   ICANN 12025 Waterfront Drive, Suite 300 Los Angeles, CA 90094-2536  steve.chan(a)icann.org mobile: +1.310.339.4410 office tel: +1.310.301.5800 office fax: +1.310.823.8649 Find out more about the GNSO by taking our interactive courses and visiting the GNSO Newcomer pages. Follow @GNSO on Twitter: https://twitter.com/ICANN_GNSO Follow the GNSO on Facebook: https://www.facebook.com/icanngnso/ http://gnso.icann.org/en/

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FOR REVIEW & DISCUSSION: Updated table of facts, arguments, new sources
by Mary Wong May 9, 2017

May 9, 2017

Dear all, Please find attached an updated table of the list of potential new facts, arguments and sources that the Working Group began to discuss at its meeting last week. These updates attempt to summarize the state of the Working Group’s discussion on these topics to date, and adds a new entry that more clearly references the support provided for Recommendation #4, in particular, Option 2. Pending confirmation by the co-chairs as to an agenda for the next meeting this Thursday, our (staff) assumption is that the Working Group will continue its discussion of arbitration as an option, followed by the possibility of a separate and narrow dispute resolution procedure. Working Group members who were not able to participate in recent meetings are strongly encouraged to review the recordings and transcripts as the rest of the group has now concluded its review of the public comments received and is beginning to develop its final recommendations. The meeting transcripts and recordings are all posted on the Working Group wiki and ordered by date (see this page for those from last week: https://community.icann.org/x/OQPfAw) Please also use this email list to continue discussions from the calls. Thanks and cheers Mary

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MP3, Attendance & AC Chat for IGO-INGO CRP PDP WG call on Thursday, 04 May 2017
by Julie Bisland May 4, 2017

May 4, 2017

Dear All, Please find the attendance and MP3 recording along with the AC recording and chat below for the IGO-INGO Curative Rights Protection PDP WG Meeting held on Thursday, 04 May2017 at 16:00 UTC. Mp3: https://audio.icann.org/gnso/gnso-igo-ingo-crp-pdp-04may17-en.mp3 AC Recording: https://participate.icann.org/p7zh4k5xsa0/<https://participate.icann.org/p7zh4k5xsa0/?OWASP_CSRFTOKEN=c2f1519bc5e7ea0d…> <https://urldefense.proofpoint.com/v2/url?u=http-3A__audio.icann.org_gnso_gn…>The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page: http://gnso.icann.org/en/group-activities/calendar<https://urldefense.proofpoint.com/v2/url?u=http-3A__gnso.icann.org_en_group…> Attendees: David Maher (RySG) George Kirikos Jay Chapman Mason Cole Paul Tattersfield Petter Rindforth Philip Corwin Poncelet Ileleji Apologies: Osvaldo Novoa, Paul Keating ICANN staff: Nathalie Peregrine Mary Wong Steve Chan Berry Cobb Dennis Chang Eric Evrard Julie Bisland Michelle DeSmyter ** 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 Agenda page: https://community.icann.org/x/OQPfAw Thank you. Kind regards, Julie ------------------------------- Adobe Connect chat transcript for Thursday, 04 May 2017 Julie Bisland:Welcome to the IGO-INGO Access to Curative Rights Protection Mechanisms Working Group call on Thursday, 04 May 2017 at 16:00 UTC for 90 minutes. Julie Bisland:Agenda Wiki page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_… George Kirikos:Hi folks. Petter Rindforth:Hi All :-) George Kirikos:Hi Petter. How's it going? Petter Rindforth:You will soon hear the latest news George Kirikos:Perhaps blast out a reminder email? Paul Tattersfield:Hi everyone George Kirikos:Hey Paul. How are you? Paul Tattersfield:I'm good, George - Nice Spring Summer day here, how are you and Canada? Michelle DeSmyter:we have Philip Corwin on Audio only at this time George Kirikos:I'm doing fine, thanks. Very rainy here in Toronto. George Kirikos:1 staff member per participant. :-) Mary Wong:That's personalized service for the community, George :) George Kirikos:Indeed, Mary! lol Paul Tattersfield::) George Kirikos:Here's a link to the latest emails on that list: http://mm.icann.org/pipermail/discussion-igo-rc/2017-May/date.html George Kirikos:The email Petter is reading from: http://mm.icann.org/pipermail/discussion-igo-rc/2017-May/000156.html Mary Wong:We will be reviewing the OECD's and other IGOs' views on some points in Prof Swaine's memo as part of this current discussion on new facts and arguments. Paul Tattersfield:We were also very rigorous in the selection of an Expert George Kirikos:+1 Phil George Kirikos:Seems there's a big overlap -- maybe they should just join our group. :-) George Kirikos:We seemed to be swayed last week into changing the Article 6ter from "proof" of TM rights, to "evidence" of common law TM rights. Do I have that right? George Kirikos:("proof" of standing, vs. "evidence" of common law TM rights, rather) Mary Wong:@George, Art 6ter never proved TM rights Mary Wong:(and we acknowledged that in our Initial Report - that it doesn't confer substantive legal rights) George Kirikos:Article 6ter DB does show list of objectors. e.g. search at: https://urldefense.proofpoint.com/v2/url?u=http-3A__www.wipo.int_ipdl_en_6t… (bottom field can be switched to United States). George Kirikos:@Mary: right, not TM rights, most "it was sufficient from standing initially; now we seem to be moving to the position of it being 'evidence' of standing (not sufficient, but evidence), via evidence of common law rights. Mary Wong:@George, that seemed to be the tenor of the WG's most recent discussions (though I need to say again that staff has serious concerns about that as well). George Kirikos:Ugh, typos; "before, it was sufficient for standing initially, ......) Paul Tattersfield:What kind of serious concerns Mary? Mary Wong:6ter only confers protections that allow IGOs to prevent third parties from registering trademarks in Member States, we are not sure that "translates" into any evidence of unregistered right in any jurisdiction. George Kirikos:Eliminates the need for the GAC to come up with a list in secret. George Kirikos:Kind of like how ICANN relies on a separate group for the 2-letter ccTLD codes. Mary Wong:There is no substantive test or evaluation of a 6ter notification. It's just sent to Member States, who then deal with that according to their own individual laws (and as the USG comment notes, that is not uniform). George Kirikos:(ICANN relies on the ISO list, see: https://urldefense.proofpoint.com/v2/url?u=https-3A__en.wikipedia.org_wiki_… ) Mason Cole:Unfortunately, must exit the call early today. Thanks Petter and Phil for the timely update on Bruce's proposal. Talk with you all soon. George Kirikos:Bye Mason. Paul Tattersfield:As with trademarks it's use that matters - registration / 6ter listing are comparable, both simply evidence the claims George Kirikos:+1 Paul. There are 3 prongs to satisfy to win a UDRP. Seems there's a tempest in a teapot re: the 1st prong. Jay Chapman:I also have to go for today. I'll catch up on transcripts - good day, everyone George Kirikos:Bye Jay! George Kirikos:The example Phil gave to the mailing list today also showed it can be non-commercial, and still be victorious in the UDRP. George Kirikos:(which seemed to be a huge concern for IGOs) George Kirikos:Press releases, newspaper articles, lots of other sources of evidence. George Kirikos:(website archives) George Kirikos:Perhaps we scan scale back the recommendation so that it applies *only* if Article 6ter is used for evidence? Poncelet Ileleji:I concur on that George Mary Wong:@George, there isn't a necessary link George Kirikos:(IGO doesn't need to use Article 6ter, but if they do, then......) Mary Wong:If 6ter is NOT the basis for standing but merely evidence of standing, then there is no reason to incorporate the rest of 6ter into the UDRP, is there? George Kirikos:(although, conceivably that's an argument that can be raised by respondents, without us having to make it formal guidance) Philip Corwin:The criticisms to item #2 are all avoided if we just use 6ter as evidence of common law TM rights George Kirikos:So, we can just remove that recommendation entirely, and leave it up to the Respondent to raise it as a point, when considering the 2nd and 3rd prongs of the UDRP? George Kirikos:(i.e. "my website has nothing to do with the IGO, so isn't being used in bad faith"; coexistence) George Kirikos:Should we have a raise of hands? Poncelet Ileleji:i raised my hand I concur George Kirikos:Or checkmarks. George Kirikos:https://gnso.icann.org/en/issues/igo-ingo-crp-access-initial-19jan1… George Kirikos:Recommendation #3: The WG does not recommend any specific changes to the substantive grounds under the UDRP or URS upon which a complainant may file and succeed on a claim against a respondent (e.g. as listed in Section 4(a)(i) - (iii) of the UDRP). However, the WG proposes that the Policy Guidance document referred to in Recommendation #2 includes a further recommendation that UDRP and URS panelists should take into account the limitation enshrined in Article 6ter(1)(c) of the Paris Convention in determining whether a registrant against whom an IGO has filed a complaint registered and used the domain name in bad faith. George Kirikos:Ugh. Poor copy/paste. David Maher (RySG):I have to drop off Mary Wong:It's been copied into the Notes pod, if that's easier. George Kirikos:So we can delete Rec #3 entirely, then? George Kirikos:I understand, yes. Keeping the first part of #3 makes sense. George Kirikos:To clearly state that the 3-prong test shouldn't be changed for IGOs. George Kirikos:(i.e. it puts on the record that we actually considered and reviewed the topic) Philip Corwin:That's fine. We can delete #3 and note elsewhere in final report we are not recommending substantive change. George Kirikos:We can maybe even renumber the recommendations, so that Rec #3 (first part) goes before Rec 2 (as modified by our latest analysis). Mary Wong:@George, yes - it doesn't need to be a separate recommendation for us to place it clearly on the record. Mary Wong:Thanks, Phil. Philip Corwin:So that's a change in oral statement I made a few minutes ago. George Kirikos:Or, we can rephrase it affirmatively, "recommend that the 3-prong test be retained". :-) George Kirikos:This was just "new arguments", though. George Kirikos:(that's a different document) Mary Wong:@George, yes that was why we extracted these only for this table. George Kirikos:+1 Mary George Kirikos:It's just for us to reconsider whether we "missed anything" Mary Wong:@Phil, no worries at all - we appreciate that you are very supportive of staff and were not saying we were selectively providing only one side of an argument to influence the discussion :) Mary Wong:If everyone agrees that we understand the points made about consenting to Mutual Jurisdiction = waiver of immunity, problems with using assignees, and different views about the Swaine memo, then the more substantive discussion can be on Option 2 and arbitration, and on a possible separate DRP. George Kirikos:You meant if we adopt option 2? George Kirikos:(option 2 involved arbitration; option 1 was to vitiate) Mary Wong:I've pasted the language we used for both Options in the Notes pod. George Kirikos:And we've seen that IGOs have even brought court cases, so they can, do and have waived their immunity, when the circumstances warranted. George Kirikos:Option 2 would be criticized by registrants, too. Mary Wong:The WG can provide guidance to ICANN on the type of providers to select in relation to who decides, if Option 2 is where we go. In terms of the actual rules to govern the arbitration, as Phil notes, we can look at the UNCITRAL rules and other major rules as well. Mary Wong:Do you want to propose a break for 18 and 25 May? George Kirikos:We can still have email discussions, though. Mary Wong:@George, absolutely. Paul Tattersfield:Thanks all, bye George Kirikos:Bye everyone! Poncelet Ileleji:bye all

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Re: [Gnso-igo-ingo-crp] Fwd: HMRC recover two domain names using their trademark
by Paul Keating May 4, 2017

May 4, 2017

There is no post domain dispute ³appeal² right in the UK after the Air Emirates decision. Although that case dealt with a post DRS .co.uk domain, the reasoning applies to the UDRP just as well (regardless of what I might think of the judge¹s logic). This is a continuing issue for UDRP purposes. The language as written simply presumed that a post UDRP claim of sorts existed ³just like in the US². This is hardly the case. It is for this reason that I long ago reversed my original advise to clients regarding where to register. I advise registering all valuable domains with a US registrar. This serves several purposes: 1. It gives them the ability to file post-UDRP under the ACPA 2. It gives them a virtual slam dunk on any claim involving a non-use registered trademark 3. It gives them the ability to challenge the distinctive nature of the underlying trademark 4. It gives them the ability to seek damages 5. They can still opt NOT to pursue the claim if they are concerned about a possible counterclaim. I continue to cringe on ICANN Working Group calls whenever I hear US attorneys speak up. They repeatedly fail to understand that the real world is not like ³their² world. PRK From: <gnso-igo-ingo-crp-bounces(a)icann.org> on behalf of Phil Corwin <psc(a)vlaw-dc.com> Date: Wednesday, May 3, 2017 at 8:23 PM To: "gnso-igo-ingo-crp(a)icann.org" <gnso-igo-ingo-crp(a)icann.org> Subject: [Gnso-igo-ingo-crp] Fwd: HMRC recover two domain names using their trademark > FYI, here's a just published WIPO UDRP decision in which the UK's taxing > authority successfully recovered two domains. > > While the respondent resided in the UK and thus any "appeal" would have been > to a UK court (presuming that the registrars were similarly situated) this > filing still involved acceptance of the mutual jurisdiction clause by a > sovereign entity. > > 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 > > Sent from my iPad > > Begin forwarded message: > >> From: Phil Corwin <psc(a)vlaw-dc.com> >> Date: May 3, 2017 at 2:18:33 PM EDT >> To: Phil Corwin <psc(a)vlaw-dc.com> >> Subject: HMRC recover two domain names using their trademark >> >> >> http://www.trademarksandbrandsonline.com/news/hmrc-recover-two-domain-names… >> sing-their-trademark-4988?utm_source=World+IP+Review&utm_campaign=3247f97d3b- >> TBO_Digital_Newsletter_19_04_2017&utm_medium=email&utm_term=0_d76dcadc01-3247 >> f97d3b-27370301 >> >> >> 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 >> >> Sent from my iPad > _______________________________________________ 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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CALL ON NOW: IGO-INGO Access to Curative Rights Protection Mechanisms Working Group
by ICANN Policy Calendar May 4, 2017

May 4, 2017

From: PolicyCalendar(a)icann.org When: 12:00 - 13:30 May 4, 2017 Subject: IGO-INGO Access to Curative Rights Protection Mechanisms Working Group call Location: 16:00 UTC Dear all, The IGO-INGO Access to Curative Rights Protection Mechanisms Working Group call will take place on Thursday, 04 May 2017 at 16:00 UTC for 90 minutes 09:00 PDT, 12:00 EDT, 17:00 London, 18:00 CET For other times: http://tinyurl.com/mhe542v Adobe Connect WITH AUDIO enabled: https://participate.icann.org/crp For those of you using the Adobe Connect audio, you may do so by activating your computer microphone via the Adobe room (Using a headset is preferable here). Please confirm your dial-out requests to GNSO Secretariats gnso-secs(a)icann.org<mailto:gnso-secs@icann.org> ______________________________________________________________________ Participant passcode: IGO Dial in numbers: Country Toll Numbers Freephone/ Toll Free Number ARGENTINA 0800-777-0519 AUSTRALIA ADELAIDE: 61-8-8121-4842 1-800-657-260 AUSTRALIA BRISBANE: 61-7-3102-0944 1-800-657-260 AUSTRALIA CANBERRA: 61-2-6100-1944 1-800-657-260 AUSTRALIA MELBOURNE: 61-3-9010-7713 1-800-657-260 AUSTRALIA PERTH: 61-8-9467-5223 1-800-657-260 AUSTRALIA SYDNEY: 61-2-8205-8129 1-800-657-260 AUSTRIA 43-1-92-81-113 0800-005-259 BELGIUM 32-2-400-9861 0800-3-8795 BRAZIL SAO PAULO: 55-11-3958-0779 0800-7610651 CHILE 1230-020-2863 CHINA CHINA A: 86-400-810-4789 10800-712-1670 CHINA CHINA B: 86-400-810-4789 10800-120-1670 COLOMBIA 01800-9-156474 CROATIA 080-08-06-309 CZECH REPUBLIC 420-2-25-98-56-64 800-700-177 DENMARK 45-7014-0284 8088-8324 ESTONIA 800-011-1093 FINLAND 358-9-5424-7162 0-800-9-14610 FRANCE LYON: 33-4-26-69-12-85 080-511-1496 FRANCE MARSEILLE: 33-4-86-06-00-85 080-511-1496 FRANCE PARIS: 33-1-70-70-60-72 080-511-1496 GERMANY 49-69-2222-20362 0800-664-4247 GREECE 30-80-1-100-0687 00800-12-7312 HONG KONG 852-3001-3863 800-962-856 HUNGARY 36-1-700-8856 06-800-12755 INDIA INDIA A: 000-800-852-1268 INDIA INDIA B: 000-800-001-6305 INDIA INDIA C: 1800-300-00491 INDONESIA 001-803-011-3982 IRELAND 353-1-246-7646 1800-992-368 ISRAEL 1-80-9216162 ITALY MILAN: 39-02-3600-6007 800-986-383 ITALY ROME: 39-06-8751-6018 800-986-383 ITALY TORINO: 39-011-510-0118 800-986-383 JAPAN OSAKA: 81-6-7878-2631 0066-33-132439 JAPAN TOKYO: 81-3-6868-2631 0066-33-132439 LATVIA 8000-3185 LUXEMBOURG 352-27-000-1364 8002-9246 MALAYSIA 1-800-81-3065 MEXICO GUADALAJARA (JAL): 52-33-3208-7310 001-866-376-9696 MEXICO MEXICO CITY: 52-55-5062-9110 001-866-376-9696 MEXICO MONTERREY: 52-81-2482-0610 001-866-376-9696 NETHERLANDS 31-20-718-8588 0800-023-4378 NEW ZEALAND 64-9-970-4771 0800-447-722 NORWAY 47-21-590-062 800-15157 PANAMA 011-001-800-5072065 PERU 0800-53713 PHILIPPINES 63-2-858-3716 1800-111-42453 POLAND 00-800-1212572 PORTUGAL 8008-14052 ROMANIA 40-31-630-01-79 RUSSIA 8-10-8002-0144011 SAUDI ARABIA 800-8-110087 SINGAPORE 65-6883-9230 800-120-4663 SLOVAK REPUBLIC 421-2-322-422-25 0800-002066 SOUTH AFRICA 080-09-80414 SOUTH KOREA 82-2-6744-1083 00798-14800-7352 SPAIN 34-91-414-25-33 800-300-053 SWEDEN 46-8-566-19-348 0200-884-622 SWITZERLAND 41-44-580-6398 0800-120-032 TAIWAN 886-2-2795-7379 00801-137-797 THAILAND 001-800-1206-66056 TURKEY 00-800-151-0516 UNITED ARAB EMIRATES 8000-35702370 UNITED KINGDOM BIRMINGHAM: 44-121-210-9025 0808-238-6029 UNITED KINGDOM GLASGOW: 44-141-202-3225 0808-238-6029 UNITED KINGDOM LEEDS: 44-113-301-2125 0808-238-6029 UNITED KINGDOM LONDON: 44-20-7108-6370 0808-238-6029 UNITED KINGDOM MANCHESTER: 44-161-601-1425 0808-238-6029 URUGUAY 000-413-598-3421 USA 1-517-345-9004 866-692-5726 VENEZUELA 0800-1-00-3702 Thank you. Kind regards, Julie

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Fwd: HMRC recover two domain names using their trademark
by Phil Corwin May 3, 2017

May 3, 2017

FYI, here's a just published WIPO UDRP decision in which the UK's taxing authority successfully recovered two domains. While the respondent resided in the UK and thus any "appeal" would have been to a UK court (presuming that the registrars were similarly situated) this filing still involved acceptance of the mutual jurisdiction clause by a sovereign entity. 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 Sent from my iPad Begin forwarded message: From: Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>> Date: May 3, 2017 at 2:18:33 PM EDT To: Phil Corwin <psc(a)vlaw-dc.com<mailto:psc@vlaw-dc.com>> Subject: HMRC recover two domain names using their trademark http://www.trademarksandbrandsonline.com/news/hmrc-recover-two-domain-names… 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 Sent from my iPad

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FOR DISCUSSION: Document summarizing Additional Information and New Facts and Arguments
by Mary Wong May 2, 2017

May 2, 2017

Dear all, Please find attached a document that links, in tabular form, the list of new facts, arguments and sources that was discussed toward the end of the Working Group call last week with the specific comment from which that new fact, argument or source originated. In a few cases, we have either rephrased or combined one or more of the specific points from the last list, to flow better with the original comment. We have also added hyperlinks to two documents – the New York Convention on the Enforcement of Foreign Arbitral Awards (mentioned in the OECD comment) and the 2007 draft text for a possible IGO dispute resolution procedure (which the Working Group had previously deferred review of, pending a first pass through the public comments). We hope this table is helpful. I’m also attaching a second document, which is just the list of new facts, arguments and sources, which we hope will aid in your review of the table. Finally, I am sorry that staff has not yet had a chance to fill in the color coding on the much longer Public Comment Review Tool. At this stage, we can start to fill it in but in view of the excerpts we have included in this new table, we think it may be an easier task to complete the fill after the discussion this Thursday. Thanks and cheers Mary

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