- Gnso-igo-ingo-crp - lists.icann.org

Poll: Attendance for 25 May Working Group call
by Mary Wong May 19, 2017

May 19, 2017

Dear all, In view of the fact that several active Working Group members plan to be at the International Trademark Association (INTA) Annual Meeting, our co-chairs would like to know how many members will be able to attend a meeting on Thursday 25 May 2017 at our usual time of 1600 UTC. Please reply to this email if you plan to be on the Thursday 25 May call. Thank you! Cheers Mary

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Follow up from WG call on Thursday 11 May 2017 at 1600 UTC
by Mary Wong May 17, 2017

May 17, 2017

Dear Working Group members, As requested on the call last Thursday, please find attached copies of: (1) the New York Convention for the Enforcement of Foreign Arbitral Awards; and (2) the UNCITRAL Arbitration Rules. Note that their scope is very different - the Convention is the main international treaty that specifies the conditions and process of recognition by national courts of a foreign arbitration award, whereas the UNCITRAL Rules are a well-known set of procedural rules that can be chosen by parties in a commercial dispute to govern the arbitration between them. The UNCITRAL Rules do not, however, specify a particular venue or dispute resolution provider to manage the arbitration proceeding. You can also find these texts as well as additional information and background, respectively, at: http://www.newyorkconvention.org/ and http://www.uncitral.org/uncitral/en/uncitral_texts/arbitration/2010Arbitrat…. Finally, staff is currently working on a draft of a document outlining the pros/cons for Options 1 and 2 in relation to the Working Group’s preliminary recommendation #4. We hope to circulate this as soon as we can so that members can review and discuss this topic via this mailing list in lieu of a meeting this week (the next Working Group meeting is scheduled to take place next week – 25 May – instead). Thanks and cheers Mary From: <gnso-igo-ingo-crp-bounces(a)icann.org> on behalf of Steve Chan <steve.chan(a)icann.org> Date: Thursday, May 11, 2017 at 07:52 To: "gnso-igo-ingo-crp(a)icann.org" <gnso-igo-ingo-crp(a)icann.org> Subject: [Gnso-igo-ingo-crp] - Proposed Agenda for WG call on Thursday 11 May 2017 at 1600 UTC 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<mailto:steve.chan@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<applewebdata://310CAD3E-E244-4690-A938-C2655DD44BDE/learn.icann.org/courses…> and visiting the GNSO Newcomer pages<http://gnso.icann.org/sites/gnso.icann.org/files/gnso/presentations/policy-…>. 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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Recordings, Attendance & AC Chat for IGO-INGO Curative Rights Protection PDP WG call on Thursday, 11 May 2017 at 16:00 UTC
by Michelle DeSmyter May 11, 2017

May 11, 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, 11 May 2017 at 16:00 UTC. Mp3: http://audio.icann.org/gnso/gnso-igo-ingo-crp-pdp-11may17-en.mp3 AC Recording: https://participate.icann.org/p23uuk35dy3/ <https://urldefense.proofpoint.com/v2/url?u=http-3A__audio.icann.org_gnso_gn…> On page: https://gnso.icann.org/en/group-activities/calendar 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: George Kirikos – Individual Jay Chapman – Individual Paul Tattersfield – Individual Petter Rindforth – IPC (co-chair) Phil Corwin – BC (co-chair) Mason Cole – RySG Paul Keating - NCUC Apologies: ICANN staff: Mary Wong Steve Chan Dennis Chang Berry Cobb 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/ow7fAw Thank you. Kind regards, Michelle ------------------------------- Adobe Connect chat transcript for Thursday, 11 May 2017 Michelle DeSmyter:Welcome to the IGO-INGO Access to Curative Rights Protection Mechanisms Working Group call on Thursday, 11 May 2017 at 16:00 UTC for 90 minutes. Michelle DeSmyter:Agenda wiki page: https://urldefense.proofpoint.com/v2/url?u=https-3A__community.icann.org_x_… George Kirikos:Hi folks. Petter Rindforth:HI George & All George Kirikos:Hi Petter. Michelle DeSmyter 2:Hello Petter and George! George Kirikos:Hi Michelle. Petter Rindforth:Hi there - hope we will soon see more participants Michelle DeSmyter 2:I just sent out another reminder to the group :) Petter Rindforth:Thanks! Philip Corwin:I am waiting on operator George Kirikos:What's the quorum for a PDP? George Kirikos:Welcome, Phil. Michelle DeSmyter 2:I will let them know you are waiting for an operator to answer Philip Corwin:Thanks George Paul Tattersfield:Hello everyone George Kirikos:Welcome Paul. Petter Rindforth:waiting as well... Philip Corwin:On call now Petter Rindforth:same here Mary Wong:Hola Mary Wong:Steve Chan has his hand up George Kirikos:We've gone through much of it already. George Kirikos:This is better than Mary's regular connection. :-) Petter Rindforth:External legal advice on 6ter: OECD, UN, UPU, WHO & WIPO: regarding the consultation of a legal expert, my (Jonathan Passaro, OECD) IGO colleagues share the OECD’s concern that such an exercise will significantly prolong what has already been an extensive and resource-intensive process. George Kirikos:Page 10. George Kirikos:Oops, maybe 9. George Kirikos:Even page 7. George Kirikos:http://www.newyorkconvention.org/11165/web/files/original/1/5/15432… Paul Keating:It applies to ANY arbitration. Mary Wong:It covers recognition by a national court of an arbitration decision. Paul Tattersfield:commercial disputes? George Kirikos:It seems to just be a general thing, not specific to IGOs, saying that arbitrations might be recognized. Note there are exceptions when it can't be recognized, e.g. Article V(2). Mary Wong:It is not specific to IGOs. Paul Keating:@Phil, This is a set of standards which if met means that the arbitration award can be enforced as a judgment in ANY country that has signed the convention. Nothing more. George Kirikos:All this says is that if both parties agree to arbitration, then courts can recognize the decisions. Nothing really magical. Mary Wong:We will circulate the treaty text as well as the previously-circulated UNCITRAL Arbitration Rules. George Kirikos:Article 1.3 is interesting, as it mentions that States can limit it to commercial disputes. Petter Rindforth:Those offering the arbitration (some examples): https://urldefense.proofpoint.com/v2/url?u=https-3A__iccwbo.org_about-2Dus_… , https://urldefense.proofpoint.com/v2/url?u=https-3A__www.swissarbitration.o… , https://urldefense.proofpoint.com/v2/url?u=http-3A__www.sccinstitute.com_&d… , www.lcia.org/ Paul Tattersfield:George :) Petter Rindforth:As said, we already have the IGO input and majority support for arbitrration George Kirikos:The arbitration would also be assuming that the relevant "law" is the UDRP (with its remedies like transfer), vs. national courts who could interpret the ACPA, etc. George Kirikos:(with money damages, etc.) George Kirikos:A separate DRP would also be replacing national law with a process that takes away a registrant's rights, if it cannot be appealed to the courts. George Kirikos:Imposing binding arbitration means that the status quo, whereby the existence of a UDRP doesn't interfere with either party's legal rights, would be upset. George Kirikos:(i.e under the status quo, legal rights in national courts are not affected) George Kirikos:+1 Paul George Kirikos:It would be a contract of adhesion to impose arbitration for that 3rd party beneficiary. George Kirikos:What have registrants gained, in "agreeing" to such a bargain? Nothing. George Kirikos:Option 1 is the only solution to preserve the status quo legal rights of all parties. Mary Wong:@George, there are ways to deal with that - e.g. have the registrant choose whether to agree to binding arbitration when the complaint is filed. George Kirikos:@Mary: the registrant can agree to binding arbitration even without the UDRP. George Kirikos:However, the IGOs are talking about taking away that voluntary choice. George Kirikos:We already advised IGOs that they can use an assignee, agent, licensee. George Kirikos:It's the IGOs choice if they don't want to shield themselves. Mason Cole:All, I've been called away from this call. Speak to all soon. George Kirikos:Bye Mason. George Kirikos:We shouldn't let politics decide our analysis. Petter Rindforth:Whatever we decide, it much better to have a majority or full support for one solutions, rather than give it the the GNSO Council to decide Petter Rindforth:I agree on Option 2 George Kirikos:It wouldn't permit cybersquatting to continue. The governments or national authorities or IGOs could still use the courts (as they can if the UDRP didn't exist). George Kirikos:Right, Paul --- no TM holder would agree to binding arbitration, instead of accepting the courts. Jay Chapman:exactly, Paul George Kirikos:There's no principled reason to create a new policy for domains, unlike TMs themselves. Mary Wong:@Paul, yes - this kind of recommendation is within the remit of our WG. If we go with Option 2, all that you are suggesting can be specified. Mary Wong:@George, on your last point - if we go down that path, there will likely need to be some kind of notice to a registrant that if he/she is the respondent to a complaint, he/she may be asked to submit to binding arbitration. This is similar to what I said in chat earlier. George Kirikos:Option 2 doesn't even end the story, since a registrant could then sue the IGO in court, once it obtained the domain name. George Kirikos:Since IGOs are bound by the registrar-registrant agreement. George Kirikos:Option 2 would mean also having to modify every registration agreement?? George Kirikos:"GOVERNING LAW. THIS AGREEMENT SHALL BE GOVERNED BY AND INTERPRETED AND ENFORCED IN ACCORDANCE WITH THE LAWS OF PROVINCE OF ONTARIO AND THE FEDERAL LAWS OF CANADA APPLICABLE THEREIN WITHOUT REFERENCE TO RULES GOVERNING CHOICE OF LAWS. ANY ACTION RELATING TO THIS AGREEMENT MUST BE BROUGHT IN ONTARIO AND YOU IRREVOCABLY CONSENT TO THE JURISDICTION OF SUCH COURTS." George Kirikos:http://www.loffs.com/Domains/Legal/master.html George Kirikos:Is every registrar going to be forced to rewrite their agreements, to say disputes for IGOs are different? (if Option 2 is supported) George Kirikos:"Remedies of the panel" -- implies that the UDRP is the relevant law, which is untenable. George Kirikos:That staff report was already rejected by the community in the past. Which circumstances changed? Other than the introduction of the failed new gTLD program, nothing. Mary Wong:@George, it wasn't so much rejected as that the GNSO at the time did not proceed with a PDP in which that text would be discussed. As there was no PDP, there was no substantive discussion on it. George Kirikos:One other point I forgot to make ---- if the GAC is so concerned, why is it there are no ccTLDs we're aware of that create a special procedure for IGOs? George Kirikos:(GAC members could certainly impose such policies within their own countries, but don't) George Kirikos:Can we have a straw poll on Option 1 vs Option 2 at this point? George Kirikos:e.g. checkmark for Option 1, X for option 2? Mary Wong:@George, there are only 5 WG members on the call so not sure that would indicate much George Kirikos:(we know Phil is leaning to option 2) George Kirikos:Would be interesting to see where we stand, for those here. Mary Wong:@Petter, thanks - much appreciated ) Mary Wong::) George Kirikos:May 25th? Mary Wong:OK we will send a note to the mailing list George Kirikos:Bye folks. Paul Tattersfield:thanks all, bye everyone Paul Keating:thank you all. Good bye

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Issues raised by Small discussion group concerning IGO and Red Cross identifiers
by George Kirikos May 11, 2017

May 11, 2017

Hi folks, During today's call, reference was made to the Small discussion group concerning IGO and Red Cross identifiers, whose mailing list archives can be visited via: https://mm.icann.org/mailman/listinfo/discussion-igo-rc http://mm.icann.org/pipermail/discussion-igo-rc/ Our own Phil Corwin is on that mailing list, and doing an excellent job in my opinion of representing our work to date. I've been going through the archives, and have some comments/thoughts below: 1. in the post at: http://mm.icann.org/pipermail/discussion-igo-rc/2017-March/000116.html the OECD rep made bold and overbroad assertions about the nature of IGO protections in national legislation, stating: "Canada's legislation in this regard extends beyond simple refusal to register a conflicting trademark: §9(1) of the Trade-marks Act states that "No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark..." That's a highly misleading statement/snippet, perhaps assuming that no one would actually look up the full text of the Canadian legislation. I did. It's at: http://laws-lois.justice.gc.ca/eng/acts/t-13/ http://laws-lois.justice.gc.ca/eng/acts/t-13/page-2.html#h-3 and it makes clear via explicit language that there are excepted uses: 9(2) Excepted uses (2) Nothing in this section prevents the adoption, use or registration as a trade-mark or otherwise, in connection with a business, of any mark ..... (ii) an armorial bearing, flag, emblem or abbreviation mentioned in paragraph (1)(i.3), *****unless the use of the mark is likely to mislead the public as to a connection between the user and the organization.***** (emphasis added) And section 9(1)(i.3) was (on the same page) referencing IGOs and Article 6ter: "(i.3) any armorial bearing, flag or other emblem, or the name or any abbreviation of the name, of an international intergovernmental organization, if the armorial bearing, flag, emblem, name or abbreviation is on a list communicated under article 6ter of the Convention or pursuant to the obligations under the Agreement on Trade-related Aspects of Intellectual Property Rights set out in Annex 1C to the WTO Agreement stemming from that article, and the Registrar gives public notice of the communication;" So, it's clear that that the "Excepted uses" in Canada law recognizes coexistence explicitly, mirroring the language of Article 6ter section 1(c) which made the recognition of coexistence via exceptions for: "when the use or registration referred to in subparagraph (a), above, is not of such a nature as to suggest to the public that a connection exists between the organization concerned and the armorial bearings, flags, emblems, abbreviations, and names, or if such use or registration is probably not of such a nature as to mislead the public as to the existence of a connection between the user and the organization." and which is reflected in our own group's recommendations (which the IGOs did not like, as they seem to ignore section 1(c) of Article 6ter repeatedly). So, I hope this is brought to the attention of the "Small discussion group", to ensure that they're not making incorrect assessments of the nature of the IGO protections based on misleading statements from the IGOs. 2. In the post at: http://mm.icann.org/pipermail/discussion-igo-rc/2017-April/000132.html where, as we discussed today during the call, Bruce Tonkin proposed asking for external legal advice regard relevant national laws in relation to IGO protection, "before being able to design a new dispute resolution process." I am confident that at least in Canada and the USA, that no such national laws limit the due process rights of those accused of misusing the IGO marks --- the accused would still "get to have their day in court." In the past, we discussed the possibility of allowing representatives of national authorities to bring the UDRP/URS actions (instead of the IGOs themselves), as a way forward. Perhaps this should be revisited, to handle the immunity issue once and for all. National authorities would obviously face no question of immunity before their own courts (except perhaps those in totalitarian regimes where due process doesn't exist). If a Canadian entity is accused of misuse of an IGO by a Canadian national authority in a UDRP/URS, a decision could be appealed by either side to the relevant Canadian courts, leaving the IGO out of the process and shielded from the immunity issue. Bruce Tonkin might be sympathetic to that possibility, when he mentioned in a later post at: http://mm.icann.org/pipermail/discussion-igo-rc/2017-April/000147.html "a Government on their behalf" can act to protect IGOs via the laws of their jurisdictions. He also wrote: " I am assuming that it is in the "public interest" for an IGO or Government to take some action to stop the mis-use - just trying to be clear "how" that would be done." If, in the public interest, we explicitly allow governments or national authorities to bring the UDRP/URS, as "agents" of the IGO, this would appear to solve many issues. We already issued policy guidance about "assignees, licensees and agents", so perhaps we could be more explicit in our report about permitting national authorities to be the agents of the IGOs, as part of our "workaround"?? [Of course, the national authorities don't have to use the UDRP/URS at all, they could just go directly to their courts using existing judicial mechanisms.] Any ICANN-developed process *needs* to ensure that full due process for domain name registrants (including via access to the courts) is not eliminated, otherwise ICANN would be making up new law, beyond what exists in national laws. 3. The rep from WIPO stated at: http://mm.icann.org/pipermail/discussion-igo-rc/2017-April/000134.html "Standing for IGOs which need not be expressly grounded in trademark law as such, as IGOs are created by governments under international law and are in an objectively different category of rights holders." which is an odd statement, given that the OECD rep previously pointed explicitly at Canada's Trademark Act! While other nation's laws differ, we should not be creating new DRPs for every possible event of fraud or misuse of the DNS --- that's what the national courts are there for. When Barclays plead guilty of manipulating FX rates: http://www.circleid.com/posts/20150520_should_barclays_lose_the_barclays_to… the national authorities didn't seek "relief" for that disgusting and illegal behaviour via the UDRP or some other DRP created by ICANN, or argue that ICANN should create a new DRP for FX manipulation. There has been talk about creating a "Copyright" version of the UDRP, for example, or other DRPs. ICANN should not be wasting limited volunteer resources and time via mission creep, trying to replace or supercede the national laws of 200+ members. At least with the UDRP/URS, there was a strong "lowest common denominator" amongst those national trademark laws, which are reflected in the policies, and the policies directly permit court action at any time, either before, during or after a panel decision. It's clear that the IGOs want to eliminate those due process protections of the courts, by compelling arbitration, by revisiting issues that have been looked at for nearly 20 years (and repeatedly rejected by the community). 4. As I've noted in the past (and noted in my comments on our draft report) https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/… IGOs seem to misunderstand their choices. As I wrote: "Note that the above roadmap is in addition to all the other legal and non-legal options that an IGO has, including: - sending cease and desist letters - filing WHOIS accuracy complaints (most criminals use false WHOIS) - contacting registrars when there is abusive/illegal conduct - contacting payment processors (Paypal, Visa, Mastercard, etc.) in the event of financial fraud - contacting webhosting companies to take down illegal content - pursuing court action as a first option - asking law enforcement to pursue criminal behaviour" The entire work of that "small discussion group" seems to want to reinvent the wheel, and replace all existing law in 200+ countries with poorly thought out ICANN mechanisms that eliminate due process for registrants. 5. One of the ICANN board members stated at http://mm.icann.org/pipermail/discussion-igo-rc/2017-April/000139.html that "I agree, excellent idea, but selection of the expert will be key. The GNSO had asked for a legal opinion before, but it was a US expert whose conception of international law was not necessarily shared by the Europeans!" Not only is this an unfair assessment of Professor Swaine's work, it seems to suggest that IGOs can "massage" the process and predetermine the outcome through selection of an "expert" who will parrot their incorrect views. This is alarming. While he seemed to backtrack a bit in a followup post at: http://mm.icann.org/pipermail/discussion-igo-rc/2017-April/000142.html it still seems that there are issues of gaming the outcome via selection of a "sympathetic expert". We saw that in the new gTLD process itself, when ICANN commissioned dubious external "economic reports" by the Compass Group in order to support a predetermined outcome desired by the ICANN Board. In conclusion, I think this demonstrates why having a "parallel" group is a bad idea, because it's trying to redo our comprehensive work, and has fewer eyes on it compared to this formal PDP. It makes little sense to me that IGOs have ample time to participate in that mailing list, yet had no time to participate in our PDP as members. I think that highlights the "forum shopping" argument, that IGOs are looking for sympathetic forums (of which binding arbitration is an example) to gain advantages of an uneven playing field. Other members of this PDP working group might want to take some time to review those mailing list archives (took me a couple of hours, although I didn't review any audio or transcripts or their Wiki), to look for other factual errors and issues that might not have been caught by that group. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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Laptops. Travel warnings - INTA
by Paul Keating May 11, 2017

May 11, 2017

Sounds like no more laptops on planes. They don't discuss iPads..... http://www.thedailybeast.com/articles/2017/05/10/u-s-to-ban-laptops-in-all-… Sent from my iPad

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- 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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