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Mp3, Attendance & AC Chat for IGO-INGO Curative Rights Protection PDP WG
by Michelle DeSmyter Aug. 4, 2016

Aug. 4, 2016

Dear All, Please find the attendance and MP3 recording for the IGO-INGO Curative Rights Protection PDP WG Meeting held on Thursday, 04 August 2016 at 16:00 UTC at: http://audio.icann.org/gnso/gnso-igo-ingo-crp-access-04aug16-en.mp3 <http://audio.icann.org/gnso/gnso-igo-ingo-crp-access-04aug16-en.mp3> On page: http://gnso.icann.org/en/group-activities/calendar#august 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 Kathy Kleiman - NCUC Lori Schulman - IPC Mason Cole - RySG Paul Tattersfield - Individual Petter Rindforth - IPC Phil Corwin - BC Jay Chapman – Individual Gary Campbell - GAC Apologies: None ICANN staff: Berry Cobb Mary Wong David Tait Emily Barabas Michelle DeSmyter ** 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: Thank you. Kind regards, Michelle DeSmyter ------------------------------- Adobe Connect chat transcript for Thursday, 04 August 2016 Michelle DeSmyter:Dear all, welcome to the IGO-INGO Curative Rights Protection PDP WG Meeting on the Thursday, 04 August 2016 Michelle DeSmyter:Wiki Page: https://community.icann.org/x/IgCsAw George Kirikos:Hi folks. Michelle DeSmyter:Hello George! George Kirikos:Michelle, ma belle...these are words that go together well. :-) George Kirikos:Hi Michelle. How are you? Michelle DeSmyter:Yes, they do! :) Very well, thank you! George Kirikos:So, is anyone else excited about Suicide Squad (opening this week)? George Kirikos:Hear you very well. George Kirikos:The film was shot in Toronto. Philip Corwin:Hello all George Kirikos:Welcome, Phil. George Kirikos:1 staff for every participant (5 to 5) :-) Paul Tattersfield:Hello all Paul Tattersfield:Hi George George Kirikos:Hi Paul. Jay Chapman:Hi George, everyone. George Kirikos:Hey Jay. Mary Wong:Emily is the newest member of the ICANN GNSO Policy Staff and is observing a number of WGs Mary Wong:It's unsynced George Kirikos:Thanks for updating "A" to reflect the licensee option. Mary Wong:@George, you're welcome (and we will also update the RPM WG document in that PDP as well :) Mary Wong:@Phil, all - it may also be helpful to seek feedback from the providers as to what difficulties (if any) there may be with any of these options. Petter Rindforth:I agree, so far we are talking about already accepted proof of rights George Kirikos:That was Paul Keating's suggestion, not mine. George Kirikos:(although, I agree with it, since it maintains the status quo) Mary Wong:On Option C - staff notes that the GAC did not make a distinction between the UN and other IGOs; however, it remains an option due to what seems to be the different treatment in int'l law of at least the UN (and possibly its specialized agencies). Mary Wong:That is so, Phil. Paul Tattersfield:doesn;t need to be "|registered" George Kirikos:+1 Paul. I think most panels would accept unregistered 'common law' rights. Paul Tattersfield:it's the underlying use that is being protected Mary Wong:Yes, and that would be the case if the IGO chose to rely on its TM rights (registered or not) in filing a UDRP - which is the status quo. George Kirikos:Both sides could voluntarily agree to binding arbitration (as they can now, without changing the UDRP). Of course, I have a big problem (as do others) compelling a registrant to give up their legal rights to access their national courts. George Kirikos:Re: "pool of cases" is small --- the same can be said "what are the BENEFITS" :-) Mary Wong:Note that these Considerations are summaries of comments made by WG members in previous meetings. Mary Wong:(ie not staff observations :) Mary Wong:Thanks, Phil :) Mary Wong:Oops, sorry George :( Paul Tattersfield:Courts have a range of sanctions too George Kirikos:Reflecting econmic rationality, disputes will go to court only when the stakes are high (i.e. the domain name is very valuable). That's when folks will want all the protection that the courts provide. George Kirikos:UDRP is perfect for "low value" domains, i.e. kind of like small claims court. George Kirikos:Where an IGO has a dispute over a very valuable domain name, it should waive its immunity (just as it would have to for other kinds of disputes over high value assets). Paul Tattersfield:Also there are capital values and income values George Kirikos:Apple and Samsung chose courts, rather than arbitration. When the stakes are high, most litigants want the protection of the courts. Paul Tattersfield:interesting Mary thank you for raising it Mary Wong:You're very welcome, Paul! Lori:HI, my apologies for being late Mary Wong:Hi Lori, welcome! George Kirikos:Welcome, Lori. George Kirikos:I'd love to hear from Gary. George Kirikos:(since he might have input from GAC) Petter Rindforth:Through guidance Lori:I would like to follow up and ask for the getting the batting average of UNCITRAL in terms of the ratio of decisions in favor of and against UN agencies. I know that there is a concern with optics Lori:but I would rather be armed with data George Kirikos:Olympic hiatus :-) Lori:if we don't support the UNCITRAL option Lori:OK with Hiatus Mary Wong:@Lori - we can try but as it's procedural rules only and not a single institution administering arbitrations unde the Rules, I'm not sure we can get any reliable data. Mary Wong:Since they are private disputes (mostly) in various venues, with the only commonality being the parties' agreement to use the UNCITRAL Rules. Lori:so there is no data on how the rules work? Mary Wong:@Lori, we don't know - just noting that it may be hard to get reliable data as there's no single institutional source. Lori:Ok. I understand. Lori:I am not comfortable ruling it out if we don't have any data. I am in the dark in this. Not my area of expertise at all. George Kirikos:Lori: I found http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2526302 doing a Google search. It was more of a survey data, though, not actual stats. Mary Wong:Not that staff doesn't want to do the legwork, but they also cover all kinds of commercial disputes. Lori:Thanks George. Lori:Mary, I understand your concern. Mary Wong:@Phil, not really "bare bones" per se, but more procedural in nature. Lori:I will reach out to Brian Beckham at WIPO and ask Lori:He would have that data I think George Kirikos:Should we use the AGREE button? George Kirikos:(if we agree with the proposal) Jay Chapman:sorry, erroneous hand Lori:Good plan Mary Wong:@Phil, will do George Kirikos:Have a nice August, everyone! Bye. Jay Chapman:thanks, all! Paul Tattersfield:thanks all bye Mary Wong:have a great vacation, Phil and Petter! :) Petter Rindforth:Thanks!

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Agenda and updated documents for the WG call on Thursday 4 August
by Mary Wong Aug. 4, 2016

Aug. 4, 2016

Dear WG members, The proposed agenda for our next call, scheduled for Thursday 4 August at 1600 UTC, is as follows: 1. Roll call/updates to Statements of Interest 2. Continue discussion of policy options · Options B through E, and Additional Suggestions 1 & 2 (refer to updated document, attached) 3. Next steps · WG co-chairs’ proposal: no meetings for the remainder of August; straw poll of WG members to determine key elements for the Initial Report; staff to create outline of report for WG discussion (to resume 1 September) · Expected timeline from September through submission of Final Report to the GNSO Council 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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The UNCITRAL Arbitral Rules and the UDRP
by Mary Wong July 29, 2016

July 29, 2016

Dear all, As referenced by Professor Swaine and as part of the WG’s deliberations over the advisability of adding some form of arbitral appeal mechanism to the existing dispute resolution processes, here is the full set of the UNCITRAL Arbitral Rules (last revised in 2010): http://www.uncitral.org/pdf/english/texts/arbitration/arb-rules-revised/arb…. Not being an expert in international arbitration, it would nevertheless seem that some features of the Rules that might be of greatest interest to our WG include the following: · They are procedural only, and do not bind parties to a particular seat/location or a specific institution to administer the proceeding or appoint the arbitrator(s) · They can be modified by the parties’ agreement · They contemplate the possibility that an arbitration does not have to be in-person or involve oral hearings, i.e. can be decided on the basis of documents and submitted materials · The parties can agree on the number of arbitrators (e.g. a sole arbitrator) with allowance for a three-member panel in certain situations · The appointment of an arbitrator can be challenged · The arbitration is to be conducted “in such manner as [the arbitral tribunal] considers appropriate, provided that the parties are treated with equality and that at an appropriate stage of the proceedings each party is given a reasonable opportunity of presenting its case. The arbitral tribunal, in exercising its discretion, shall conduct the proceedings so as to avoid unnecessary delay and expense and to provide a fair and efficient process for resolving the parties’ dispute” · The language of the proceedings is determined by the arbitral tribunal · Expert witnesses can be appointed · The tribunal is to apply the “rules of law designated by the parties as applicable to the substance of the dispute. Failing such designation by the parties, the arbitral tribunal shall apply the law which it determines to be appropriate.” · The arbitration award is final and binding on all the parties · The tribunal can determine how to fix its fees, which are to be reasonable and subject to any framework developed by the appointing authority · Costs are in principle borne by the losing party, though the tribunal may apportion them in appropriate cases In view of the above, staff suggests that in further considering the option of adding/including arbitral appeal – possibly through reference to the UNCITRAL Arbitral Rules – the following questions can be discussed: 1. How appropriate, and applicable, are the UNCITRAL Arbitral Rules to an appeal from a domain name dispute between an IGO and a registrant? 2. Are there any parts of the Rules that need to be modified, if the Rules are adopted for an appeal arising out of a UDRP proceeding? 3. If adopted, should the [modified] Rules apply to all IGOs on the GAC list or only to certain IGOs (e.g. the UN and possibly also its Specialized Agencies)? Finally, the Working Group may find helpful a 2003 WIPO Secretariat paper that analyzed the use of arbitral appeal in the case of States and country names (i.e. not IGO names or acronyms): http://www.wipo.int/edocs/mdocs/sct/en/sct_11/sct_11_5.pdf. ICANN staff had summarized this paper for the Working Group in March 2015, and noted that the paper focused on a de novo appeal procedure that was not intended to replace the Mutual Jurisdiction clause of the UDRP, but that would “strike a balance between the privileges and immunities of sovereign states on the one hand, and the right of a losing UDRP respondent to have the dispute reconsidered in a neutral forum on the other”. It also contained the following general minimum recommendations: (1) The parties should be able to restate their case completely anew. They should not be confined to claiming that the UDRP panel did not consider certain relevant facts or wrongly applied the UDRP, but should also be able to submit new evidence and new factual or legal arguments. (2) In order to provide a meaningful “appeal,” conducting a de novo arbitration should, as a general rule, not be more burdensome than conducting litigation in a court of mutual jurisdiction. (3) The arbitral tribunal should consist of one or more neutral and independent decision makers, who should not be identical or related to the panelists who rendered the UDRP decision (4) Either party should be able to present its case in a complete manner. The arbitral tribunal should, for example, have the authority to allow for, or request, additional written submissions, and it should be possible to hold in‑person hearings. 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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Licensing as an alternative to assignment for IGOs
by George Kirikos July 29, 2016

July 29, 2016

Hi folks, Just to followup on today's call, and for the benefit of those not in attendance, in addition to assignment of rights by IGOs as a workaround to the "immunity" issue which we've already discussed before, they could take the route of *licensing* their marks, see: http://piersonpatentlaw.com/what-is-the-difference-between-assignment-and-a… Then, the licensee of the mark could bring the UDRP as a complainant (thereby shielding the IGO itself). The WIPO Overview, question 1.8, blesses that approach: http://www.wipo.int/amc/en/domains/search/overview2.0/#18 "1.8 Can a trademark licensee or a related company to a trademark holder have rights in a trademark for the purpose of filing a UDRP case? Consensus view: In most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding. Panels have in certain cases been prepared to infer the existence of a license and/or authorization from the particular facts, but in general, relevant evidence is desirable....." with several precedents cited (I cited one in the chat room during our call). Since licensing is simpler than assignment, it might allay and rebut the concerns that Professor Swaine expressed about assignment on pages 26-27 of his final report. Professor Swaine hadn't contemplated licensing, as this workgroup hadn't brought up the topic until now (i.e. we had only looked at how other IGOs had found a workaround using assignment, but hadn't considered that licensing might be an even superior workaround, and that licensees have already been granted standing in other cases not involving IGOs). Obviously, these workarounds demonstrate that IGOs can successfully file cases within the existing UDRP rules, and continue to enjoy "immunity" simply by using some creativity -- greater education might be all that is needed, to let them be aware of those creative options. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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Mp3, Attendance & AC Chat for IGO-INGO Curative Rights Protection PDP WG 28 July 2016
by Michelle DeSmyter July 28, 2016

July 28, 2016

Dear All, Please find the attendance and MP3 recording for the IGO-INGO Curative Rights Protection PDP WG Meeting held on Thursday, 28 May 2016 at 16:00 UTC at: http://audio.icann.org/gnso/gnso-igo-ingo-crp-access-28jul16-en.mp3 On page: http://gnso.icann.org/en/group-activities/calendar#july 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 Gary Campbell - GAC George Kirikos – Individual Holly Lance – IPC Jim Bikoff - IPC Lori Schulman - IPC Mason Cole - RySG Paul Tattersfield - Individual Petter Rindforth - IPC Phil Corwin - BC Apologies: None ICANN staff: Steve Chan Berry Cobb Mary Wong Emily Barabas Terri Agnew Michelle DeSmyter ** 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, Michelle DeSmyter ------------------------------- Adobe Connect chat transcript for Thursday, 28 July 2016 Michelle DeSmyter:Dear all, welcome to the IGO-INGO Curative Rights Protection PDP WG Meeting on the Thursday, 28 July 2016 Michelle DeSmyter:Agenda Wiki page: https://community.icann.org/x/dw2bAw George Kirikos:Hi folks. Petter Rindforth:Hi George George Kirikos:Hi Petter. How are you? Petter Rindforth:Fine - hoping for a productive meeting, and thanks for your comments after last week George Kirikos:I look forward to a productive meeting too. George Kirikos:Are you in Sweden, Petter? Petter Rindforth:yes, unusually nice and hot summer :-) George Kirikos:Must be really nice. I've been to Finland once in the summer, but not to Sweden. Those 20+ hours of sunlight are amazing in the summer (although scary in the winter!). George Kirikos:Sound is fine here. Philip Corwin:Hello. Waiting on operator George Kirikos:It took several minutes to get transferred into the telephone bridge. George Kirikos:There's always a spike at the top of each hour......maybe we should schedule our calls for 11:50 am. :-) Philip Corwin:Speant a long weekend in Stockholm after helsinki. Lovely city. Petter and I had dinner with the Prime Minister (well, he was in the same dining room ;-) Paul Tattersfield:Sorry I'm late George Kirikos:Welcome Paul. Philip Corwin:Finally on auduo George Kirikos:For suggestion #1 (which I don't favour; I'm in the "status quo + greater education + assignment camp), nullification should take place regardless when the court case is brough (since a court case can be brought at any time, even before the UDRP decision is rendered). George Kirikos:*brough = brought Mary Wong:Options A through D are more fully detailed in Prof Swaine's legal memo. Mary Wong:Option E brings us back to the standing issue - Phil provided a clarification last week that this, too, is an option to consider. Mary Wong:@George, but this would be a case filed by the losing respondent, right? Mary Wong:Against a UDRP decision in favor of the IGO. George Kirikos:Mary: it would be filed during the UDRP, before the panel has deemed the respondent a "loser" George Kirikos:A court case can be initiated at any time, even before the panel has made a decision. Mary Wong:Understood, but I had thought that the "nullification" point referred to vitiating the UDRP decision. George Kirikos:(that's how my company did it for the PUPA.com domain name dispute; Tucows has done the same several times, as have others) Mary Wong:Because, if there hasn't yet been a panel decision, there would not be a result to nullify. George Kirikos:Right, it would be nullified, even if the respondent didn't wait for the panel to reach a decision (i.e. they might make an adverse decision later, after the court case is brought). George Kirikos:Some panels will terminate, to defer to the courts. Some panels will still render a decision, though. George Kirikos:I didn't propose it -- Paul Keating did. George Kirikos:If common law rights have "standing" under the UDRP, I think most IGOs (if not all) would get standing for the first prong of the UDRP test. Paul Tattersfield:I do not believe 6ter (1)(a) grants exclusive use, rather, it grants the right to prevent the registration and use of trademarks which infringe a state’s mark, so if the UDRP panelist (has correctly) decided the domain should not be transferred they have probably done it with good reason and that should be the end of the matter as far as the UDRP case is concerned. Mary Wong:@Paul T, yes, 6ter does not grant exclusive use or, indeed, substantive legal rights George Kirikos:Right, not exclusive use. Philip Corwin:Mary, do you (or anyone else) believe that there was anything in the Swaine memo that compels us to believe that UN and its agencies have full soveriegn immunity and must have access to a separate DRP mechanism for appeal from a UDRP decision? Unless there is, and I don't believe there is, then my personal position is that the question of any IGO's immunity should be determined by the court of mutual jurisdiction if and when the IGO asserts it. George Kirikos:Even if they had full immunity, they have the ability to waive it (and they do). If waiving it is the "price" for access to the UDRP, that's the same "waiver" that essentially every other complainant makes, since every other complainant recognizes that UDRP isn't "final", but that the courts are, if a party wants to access the courts. George Kirikos:If the UDRP didn't exist at all, IGOs would have to waive their immunity to bring an action in court (e.g. the State Department letter). George Kirikos:Although, via assignment, there's a fantastic workaround for IGOs, to shield themselves. Mary Wong:There is a General Convention on Privileges and Immunities of the UN, and another relating to Privileges and Immunities of its Specialized Agencies. Mary Wong:However, these treaties are broader than just jurisdictional immunity. Philip Corwin:Supplementing what I just said -- if an IGO uses an agent to bring the UDRP, and the court of mutual jurisdiction permits the agent to participate in the appeal, then I would not see any need for availability of a DRP in that scenario as the IGO's immunity would not be at issue. George Kirikos:Trademark assignment and licensing are slightly different, see: http://piersonpatentlaw.com/what-is-the-difference-between-assignment-and-a… Petter Rindforth:See Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756 ("The Panel finds that Complainant, through its affiliation with its grandparent corporation which owns the trade-mark registration, has rights in and duties concerning the mark MIELE").See also Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000-0993 ("In this Panel’s view the test under paragraph 4(a)(i) of the Policy, which makes no mention of "exclusive rights" is or ought to be a relatively easy test for a Complainant to satisfy, its purpose simply being to ensure that Complainant has a bona fide basis for making the Complaint in the first place" George Kirikos:However, I think both assignees and licensees would have standing to bring the UDRP. George Kirikos:With a license, one doesn't have to worry about assignment of goodwill that the professor was worried about. Mary Wong:@George, would a non-exclusive licensee (as opposd to an exclusive licensee) be able to bring a complaint? Paul Tattersfield: @ Mary If they are using the mark that should be sufficent for bringing a UDRP Mary Wong:@Paul, that's what I would think (per the UDRP "in which the complainant has rights") but didn't want to assume Philip Corwin:regardless of the current language of the UDRP, this WG has the authority to recommend that an agent/assignee/licensee (whichever we choose, and it can be more than one of thos ecategories) of an IGO be permitted to have standing to bring an action on its behalf (even if non-exclusive, so long as IGO authorized the acton). We have no control over whether a particular court would allow that entity to participate in an appeal. George Kirikos:I found a precedent! George Kirikos:http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-0672 George Kirikos:"Although a licensee of a trademark or a company related to the registered owner (e.g., a subsidiary) of a trademark may have rights in a trademark under the UDRP, evidence of such license and/or authorization should be submitted (see, e.g., Komatsu Deutschland GmbH v. Ali Osman / ANS, WIPO Case No. D2009-0107)." Mary Wong:@George, perhaps you can speak to this? George Kirikos:Sure, Mary. I raised my hand. Philip Corwin:Good find, George Mary Wong:Thanks, just so the transcript and recording will have the details. George Kirikos:Actually, WIPO has a view on this, too: http://www.wipo.int/amc/en/domains/search/overview2.0/ George Kirikos:1.8 http://www.wipo.int/amc/en/domains/search/overview2.0/#18 George Kirikos:IP Services Policy Cooperation Reference About IP Inside WIPO SearchSearch WIPO searchHomeIP ServicesAlternative Dispute ResolutionDomain Name DisputesSearchadrWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")© 2011 World Intellectual Property OrganizationDecision-making authority under the Uniform Domain Name Dispute Resolution Policy and Rules (UDRP) lies exclusively with the appointed panels. To assist awareness of their views on certain questions that commonly arise in proceedings under the UDRP, the WIPO Arbitration and Mediation Center has produced the following update and extension of its informal overview of panel positions on key procedural and substantial issues. This WIPO Overview 2.0 includes new decision references supporting each line of opinion, with over 380 decisions (formerly 100) from over 180 (formerly 80) different UDRP panelists now listed. Reflecting the evolution of the Domain Name System and UDRP jurisprudence, the number of issues inc George Kirikos:Oops, sorry about that. George Kirikos:1.8 in the WIPO says that they can. Mary Wong:Thanks, George - very helpful. George Kirikos:WIPO cited several decisions, in thair answer to 1.8. George Kirikos:(I won't cut/paste, lest the disaster of last time be repeated) :-) George Kirikos:7 cited cases. George Kirikos:+1 Phil. George Kirikos:Mary has her hand up too, before we go. Philip Corwin:FYI, I will be on next week's call but will be on vacation in a remote location and absent from the call of August 11. George Kirikos:Bye folks! Mary Wong:Thanks George, Petter, Phil, everyone! Paul Tattersfield:thanks bye Petter Rindforth:Thanks, All Of You

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Agenda and documents for Working Group call today
by Mary Wong July 28, 2016

July 28, 2016

Dear all, It seems that an earlier email sent on this topic did not make it to the list; please accept our apologies for the inconvenience. I’m resending the proposed agenda and document for the call scheduled for today. Agenda: 1. Roll call/updates to Statements of Interest 2. Continue discussion of policy options (see attached document and further notes below) 3. Next steps/next meeting The attached document is a brief summary of the discussion that took place on the Working Group call last week. It was prepared by staff to supplement (and not replace) the full recording and transcript, as an aid to the Working Group’s further deliberations. For the call, we would like to ask that: (1) members review all the five policy options that have been identified to date (A-E); (2) respond with their views on the basic issue outlined for the arbitral appeal option; and (3) provide feedback on the two suggestions at the end of the document. We particularly request members who have not been able to participate on the Working Group calls more actively to provide their feedback. 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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Another example of a UDRP miscarriage of justice corrected via access to national courts
by George Kirikos July 21, 2016

July 21, 2016

Hi folks, During today's call, we discussed how UDRP panels repeatedly make wrong decisions, forcing the registrant of a valuable domain name to go to their national courts to receive justice. Another example came to light today: http://domainnamewire.com/2016/07/21/mike-mann-overturns-udrp-decision-cour… involving a UDRP decision, one that was "not even close" in the minds of the panelists (i.e. it was 3-0 in favour of the complainant). Yet, when it got to court, where much greater due process protections exist, there was a different result -- namely the registrant retained the domain name under the settlement. If the UDRP complainants really had a "winning case", they'd have been entitled to money damages under the ACPA of up to $100,000, in addition to the transfer of the domain name. In the chat I linked to similar court cases related to the UDRP, that WIPO lists at: http://www.wipo.int/amc/en/domains/challenged/ However, WIPO hasn't kept that page updated. I brought to their attention the AustinPain.com case: http://ia601008.us.archive.org/18/items/gov.uscourts.cod.147273/gov.uscourt… where not only was the UDRP decision at NAF overturned (see http://www.adrforum.com/domaindecisions/1536356.htm -- another 3-0 "not even close" decision in the minds of the panelists) but the "winner" of the UDRP ended up paying the domain name registrant $25,000 (and did not gain access to the domain name via the order; it looks as though they might have bought it afterwards, though; the WHOIS history at DomainTools shows it changed hands around Jul 2015, a year after the court order). Similarly, another case regarding the SDT.com domain name was settled with the domain name owner being paid $50,000 for legal fees, damages, etc., and of course Telepathy retained their valuable domain name, see: http://domainnamewire.com/2015/07/22/50000-penalty-for-filing-a-frivolous-u… This court case wasn't posted by WIPO either. As was discussed, this happens over and over and over again. Allowing IGOs (or anyone else for that matter) to engage in forum shopping to compel binding arbitration, where the result would be more favourable to them (and less favourable to registrants) than what might take place in a national court, would obviously not be acceptable to most registrants of valuable domain names. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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attendance and mp3 / IGO-INGO Curative Rights Protection PDP WG Meeting - Thursday, 21 July 2016 at 16:00 UTC
by Terri Agnew July 21, 2016

July 21, 2016

Dear All, Please find the attendance and MP3 recording for the IGO-INGO Curative Rights Protection PDP WG Meeting held on Thursday, 21 July 2016 at 16:00 UTC at: http://audio.icann.org/gnso/gnso-igo-ingo-crp-access-21jul16-en.mp3 On page: http://gnso.icann.org/en/group-activities/calendar#jul 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 Paul Keating - NCUC Gary Campbell - GAC Lori Schulman - IPC Kathy Kleiman - NCUC Apologies: none ICANN staff: Mary Wong Steve Chan Berry Cobb Terri Agnew ** Please let me know if your name has been left off the list ** Mailing list archives: http://mm.icann.org/pipermail/gnso-ppsai-pdp-wg/ Wiki page: https://community.icann.org/x/9iCfAg Thank you. Kind regards, Terri Agnew ------------------------------- Adobe Connect chat transcript for Thursday, 21 July 2016 Terri Agnew:Dear all, welcome to the IGO-INGO Curative Rights Protection PDP WG Meeting on the Thursday, 21 July 2016 Terri Agnew:agenda wiki page: https://community.icann.org/x/OwebAw George Kirikos:Hello. Jay Chapman:Hey George George Kirikos:Hi Jay. How are you? Jay Chapman:Great - you? George Kirikos:I'm pretty good, thanks. Paul Tattersfield:Hi George Kirikos:Welcome Paul. Paul Tattersfield:Hi George, do you follow the football (soccer) we didn't do much better than you :( George Kirikos:Which match? (I sometimes follow the big events) Paul Tattersfield:England played quite badly, Wales did better in the European cup George Kirikos:Indeed. There were lots of celebtrations in Portuguese neighbourhoods of Toronto. Philip Corwin:dialing in now George Kirikos:Just like there when when Greece won it all in 2004. Paul Tattersfield:I bet :0 Paul Tattersfield::) George Kirikos:*were when George Kirikos:This is like a game of Survivor....and then there were 8 participants left. :-) George Kirikos:Actually 7 left, since Berry is staff too. Mary Wong:Slides are unsync'ed - but there are only 4 slides anyway :) Mary Wong:These basically summarize the Swaine memo options, so please refer to the memo for the full details. Paul Tattersfield:I have no slides showing today is there a quick fix? Mary Wong:@Paul, you may have to relaunch AC or your browser Terri Agnew:@Paul, I am sending you an emial, you may need to update your plug in's for adobe connect Paul Tattersfield:thanks Terri & Mary Mary Wong:In case anyone wishes to listen to the recording of the Board-GAC call (which goes over the whole Communique, so while there are many issues concerning GNSO/gTLD policy, only part of it dealt with the IGO protections issue): https://gacweb.icann.org/display/gacweb/Governmental+Advisory+Committee?pre… Terri Agnew:Welcome Paul Keating Paul Keating:I am sorry for being late. Paul Keating:But if it is immune then it has the domain. What about invalidating the transfer upon immunity George Kirikos:Instead of showing hands, why not type in the chat which option we prefer? George Kirikos:i.e. instead of 4 polls, just read the chat Paul Keating:IF there is a change, I propose that the UDRP decision becomes null and void if the IGO seeks and is granted immunity in a subsequent legal action in a "mutual jurisdiction" George Kirikos:George Kirikos --- status quo (we can't create new law) Paul Tattersfield:@ Paul why? Paul Keating:because otherwise there is no legal recourse to a decision by a panel and often the panels are wrong. just look at the post UDRP statistics for reversal. George Kirikos:Right, Paul. Court action would be brought when there's a miscarriage of justice in the UDRP. George Kirikos:That's exactly when you NEED and WANT the protections afforded by national law. George Kirikos:We've seen all the dangers before of forum shopping. This is just another case of IGOs wanting to do some forum shopping, to gain an advantage that doesn't exist in real law. Terri Agnew:Welcome Gary Campbell Mary Wong:@Phil, staff agrees that the WG should discuss all the options identified before making a conclusion on whether to amend, not amend etc. George Kirikos:I agree no changes required -- just education. Mary Wong:Are staff allowed to vote? :) George Kirikos:(i.e. education on how to do assignment, etc. George Kirikos:(I don't think we need to modify in order to clarify -- we already have precedents established via UDRP decisions) George Kirikos:Mute? George Kirikos:*6 to unmute/remute Paul Keating:I vote for tweeking. my comments are above Paul Keating:cant speak. ple see chat Terri Agnew:@Paul Keating, your mic is not active. Please let me know if a dial out is needed Paul Keating:+34639371448 Terri Agnew:calling, one moment Terri Agnew:Lori Schulman has joined on the telephone George Kirikos:I think those clarifications need not be done via a Tweak --- they can be done via a "WIPO views on various questions" style document. George Kirikos:Right, not the words "style document". George Kirikos:*note the words Petter Rindforth:Agree, we need to offer somepractical solutions, without creating new policy Terri Agnew:@Paul K, I sent you a private AC chat Paul Keating:am on George Kirikos:While we wait for Paul, I wnated to note that I sent a couple of emails to the list. (1) PDDRP has the same issue of waiver of immunity (2) the World Bank comments about their Cease and Desist letters (implicit legal threats), and the "magnitude" of their problem (50 or 60 problem domains, most already handled successfully via C&D) George Kirikos:Those facts strongly weigh in favour of maintenance of the status quo. Jay Chapman:Subject to what a "tweak" consists of, I might agree with Petter and Phil as to providing guidance. My initial indication is strictly regarding whether any policy "change" was appropriate Mary Wong:@Jay, that's always possible (some sort of clarifying framework or policy guidance) - however, that's also why I raised the TM issue - as written currently, the UDRP and URS are limited to TM rights. Terri Agnew:Welcome Kathy Kleiman Mary Wong:It's not clear that having certain rights under Article 6ter = TM rights in the same way, or that even just limiting Article 6ter to standing to file only would mean that the other two grounds (no legitimate rights and bad faith) would apply wholesale. Mary Wong:In other words, this is perhaps something the WG needs to discuss more fully, in addition to the immunity issue. Jay Chapman:Yes, Mary, and we have seen sufficient evidence that, in spite of such seeming abiguity, IGOs have utilized the UDRP as it is. George Kirikos:Immunity is a DEFENSE to an action. George Kirikos:It wouldn't prejudice their rights to BRING an action. George Kirikos:It would simply be hypocritical, but wouldn't prejudice them. George Kirikos:Right, Paul. They didn't respond to attempts to circumscribe the waiver. Mary Wong:Isn't Mutual Jurisdiction limited to either that of the Registrar or the registrant/respondent? George Kirikos:Right, Paul. Court of competent jurisdiction would be accepted by most registrars. George Kirikos:I don't think it requires a change, given common law rights are recognized too. Mary Wong:@Phil, yes that's the nub. Art 6ter doesn't actually confer TM rights, so equating it wholesale with the first ground of the UDRP/URS (broader than just saying 6ter gives an IGO the procedural standingto sue) could be problematic. Petter Rindforth:I think we can do it clear by adding 6ter to the guidance, or supplemental rules, without the need to change the policy as such Mary Wong:i.e. equating Art 6ter with nat'l TM rights COULD run the risk of creating new legal rights where none currently exist (e.g. b/c the IGO hasn't followed up and actually filed and obtained a TM). Jay Chapman:good points, George George Kirikos:Yes, our report should definitely explain everything carefully, point out standing exists, assignment options, etc. Petter Rindforth:But you don't need a traditional registered trademark to use UDRP, even non-registered, well-known "trademarks" are accepted (one example: the nic-name of a famous artist) George Kirikos:+1 Petter Paul Tattersfield:exactly Petter Jay Chapman:agree, Petter George Kirikos:Common law rights are routinely given standing. Mary Wong:@Petter, yes - but that's still not what Art 6ter confers. George Kirikos:Pragmatically, cybersquatting has also been in decline. George Kirikos:The "fears" when this PDP was created haven't really come to fruition. George Kirikos:(primarily in decline because Pay-Per-Click parking is less profitable) George Kirikos:That's EXACTLY what the IGOs asked for --- that would deprive the registrants of their legal rights. Mary Wong:@George, all - might it be worth discussing whether/why/how arbitral appeal is not the same (in terms of, say, fairness) as filing in a national court? Paul Keating:@Lori, two problems (1) the small universe of d omains are extremely valuable domains; (2) the arbitration introduces yet another form of quasi judicial process subject to whatever "law" the arbitrators believe applies. Petter Rindforth:@Mary - I don't think we are going too far if we accept Article 6ter names as similar to at least non-registered trademarks George Kirikos:Still, you would need to leave the ability of folks to have the protection of their national courts. Mary Wong:@Petter, I don't know for sure - but my understanding is that the "rights" an IGO has under Article 6ter are not substantive legal rights.. Common law or non-registered TMs are still substantive legal rights confierred by particular jurisdictions. Mary Wong:@George, can't the arbitral panel be obliged to apply the applicable national law? George Kirikos:No, Mary. George Kirikos:I'd prefer real judges from my own jurisdiction, where one could appeal to the Supreme Court if necessary. Mary Wong:That way, the IGO is not dragged into court and doesn't risk its immunity, but the arbitral appeal still gets decided by the applicable national law. At least, that's something we can consider recommending? Lori Schulman:Thank you Phil. Petter Rindforth:The countries of the Union undertake to prohibit the unauthorized use in trade of the State armorial bearings of the other countries of the Union, when the use is of such a nature as to be misleading as to the origin of the goods. (WIPOs note on Article 6ter) Lori Schulman:The UDRP is meant to be a streamlined and results not contrary to law. I feel like we are forgetting context here. George Kirikos:Lori: they routinely get the wrong decision, though! That's why we need national courts, to ensure they get the correct result. George Kirikos:See: http://www.wipo.int/amc/en/domains/challenged/ for a set of cases. Jay Chapman:Agree, Paul. George Kirikos:And WIPO stopped updating that page. I told them of other cases, that they refused to post. Lori Schulman:National courts don't necessarily get it right either. George Kirikos:But, national courts have appeals mechanisms, etc. George Kirikos:The due process protection is much stronger in national courts. George Kirikos:Arbitration is routinely used to trample the rights of the 'weak'. Lori Schulman:Can Terri send me the straw poll choices? Paul Keating:to be clear I VOTE WITH PETTER. TWEEK. George Kirikos:(i.e. via forum shopping) Lori Schulman:In fact, arbitration can be as expensive and involved as litigation. George Kirikos:Google "criticisms of arbitration" it's been studied to death. Paul Keating:Can we start with an ouitline of the report? Lori Schulman:Sounds like a good approach. Thank you for listening to "the devil." :) Paul Keating:all points must be included and concensus is the outbcome/xoncludion Jay Chapman:Thanks, everyone. Appreciate the discussion Mary Wong:Thanks all! Paul Tattersfield:thanks, bye Paul Keating:thank you all. Goodbye. George Kirikos:Have a great day, everyone. Bye. Lori Schulman:Well aware of arb v lit issues. Lori Schulman:bye

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IGOs, Waiver of Immunity, and the PDDRP
by George Kirikos July 20, 2016

July 20, 2016

Hi folks, In relation to curative rights for IGOs, and the topic of jurisdiction, note that the PDDRP rules (for disputes against a new gTLD registry) specify: https://www.icann.org/resources/pages/pddrp-2014-01-09-en http://newgtlds.icann.org/en/applicants/agb/pddrp-rules-15oct13-en.pdf that: "...Complainant will submit, with respect to any challenges to a decision in the administrative proceeding, to the jurisdiction of the courts where the Registry has its principle place of business;" (Section 3(b)(x)) Thus, the waiver of immunity exists in this dispute resolution policy, as it does in the UDRP. I believe this clause exists because ICANN wanted to make sure that no "new law" was being created by the PDDRP, only a complementary procedure to existing law. It reflects the fact that if an IGO initiated a complaint against a registry in a court of law, it would by necessity waive its immunity (i.e. reflecting the fact it was the initiator of the dispute, rather than defending a dispute initiated by someone else). While the PDDRP was not a policy we were tasked to look at in this PDP, I think its example is informative, and reinforces the argument for the maintenance of the status quo --- i.e. we're not tasked to create "new law". Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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Agenda and documents for next Working Group meeting this Thursday
by Mary Wong July 20, 2016

July 20, 2016

Dear all, The proposed agenda for our next WG meeting, scheduled for Thursday 21 July at 1600 UTC, is as follows: 1. Roll call/updates to Statements of Interest 2. Discuss policy options for moving forward with Charter tasks in relation to the UDRP, URS or a new dispute resolution procedure (if warranted) 3. Next steps/next meeting For a starting point on Agenda Item #2, please refer to the last few pages of Professor Swaine’s memo (starting from Page 26 and attached for your convenience) and please bring forward any other suggestions on this point that you may have for WG discussion. 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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