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Webinar: Interactive Presentation of the Initial Report of the Translation and Transliteration of Contact Information PDP Working Group
by Nathalie Peregrine Jan. 13, 2015

Jan. 13, 2015

Webinar: Interactive Presentation of the Initial Report of the Translation and Transliteration of Contact Information PDP Working Group <https://www.addthis.com/bookmark.php?v=300&winname=addthis&pub=ra-52fcc7eb2…><https://www.icann.org/news/announcement-2015-01-09-en#><https://www.icann.org/news/announcement-2015-01-09-en#><https://www.addthis.com/bookmark.php?v=300&winname=addthis&pub=ra-52fcc7eb2…><https://www.icann.org/news/announcement-2015-01-09-en#><https://www.icann.org/news/announcement-2015-01-09-en#> The PDP Working Group on Translation and Transliteration of Contact Information has been chartered to determine whether contact information data should be translated or transliterated into a common language and/or script. The Group has published its Initial Report recommending not to make translation/transliteration of contact information mandatory but to allow for it on a voluntary basis. The public comment<https://www.icann.org/public-comments/transliteration-contact-initial-2014-…> period on this Report is open until 1 February 2015. To help the Community understand the Working Group's reasoning and to facilitate the submission of public comments, the Working Group co-Chairs will hold a 30-min webinar on Friday 16 January at 14:00 UTC. The aim is to present the preliminary recommendations and allow for an extended question and answer session, providing an opportunity for an interactive exchange between the Community and members of this PDPWorking Group. Webinar on 16 January 2015; 14.00-14.30 UTC To take part please RSVP via gnso-secs(a)icann.org<mailto:gnso-secs@icann.org>

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Scheduling WG call for this week
by Mary Wong Jan. 12, 2015

Jan. 12, 2015

Dear WG members, We understand that a number of WG members are at an industry conference this week, and our co-chairs are hoping shortly to circulate an initial draft discussion paper that compares the UDRP/URS with possible grounds applicable to IGOs (as a follow up from the WG discussion last week). As such, can you please reply to this note if you are NOT able to participate on a WG call this week? Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names & Numbers (ICANN) Telephone: +1 603 574 4892 Email: mary.wong(a)icann.org

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MP3 IGO WG - Wednesday, 7 january 2015 at 1700 UTC
by Nathalie Peregrine Jan. 7, 2015

Jan. 7, 2015

Dear All, Please find the MP3 recording for IGO-INGO Access to Curative Rights Protection Mechanisms Working Group call on Wednesday, 07 January 2015 at 1700 UTC at: http://audio.icann.org/gnso/gnso-igo-ingo-crp-access-20150107-en.mp3 On page: <http://gnso.icann.org/en/group-activities/calendar#dec>http://gnso.icann.org/en/group-activities/calendar#j<http://gnso.icann.org/en/group-activities/calendar#jan>an<http://gnso.icann.org/en/group-activities/calendar#jan> The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page: http://gnso.icann.org/calendar/ Attendees: George Kirikos - Individual Petter Rindforth – IPC Phil Corwin – BC Kristine Dorrain- Individual Mason Cole – RySG David Maher – RySG Val Sherman - IPC Gary Campbell - GAC Paul Tattersfiled – Individual Jay Chapman – Individual Kathy Kleiman - NCUC Lori Schulman - NPOC Apologies:none ICANN staff: Mary Wong Steve Chan Berry Cobb Nathalie Peregrine ** Please let me know if your name has been left off the list ** Mailing list archives:http://mm.icann.org/pipermail/gnso-igo-ingo-crp/ Wiki page: https://community.icann.org/x/97rhAg Thank you. Kind regards, Nathalie ------------------------------- Adobe Connect chat transcript for Wednesday, 07 January 2015: The chat history has been cleared Nathalie Peregrine: Dear all, welcome to the IGO-INGO Curative Rights Protection PDP WG Meeting on the 07 January 2015 George Kirikos: Hi everyone! I hope you had great holidays. Nathalie Peregrine: Welcome George and best wishes to you! Mary Wong: 1 a.m. here in Singapore :) Lori Schulman: I don't have audio. Lori Schulman: I will dial in. George Kirikos: 1-866-692-5726, code = IGO George Kirikos: (in the USA/Canada) Nathalie Peregrine: Phil Corwin is on the audio bridge Nathalie Peregrine: Val Sherman has joined the call Nathalie Peregrine: @ Lori, there is audio in the AC room, maybe a reboot would help? Philip Corwin: Good day and Happy New Year to all! Lori Schulman: I am connected via phone. Thanks, George. Gary Campbell: Hi all George Kirikos: Did we have any comments/feedback yet from the constituencies? George Kirikos: (I think they were due on Friday) Mary Wong: @George, not yet (as expected). We (staff) are due to send reminders to all by the end of this week :) Steve Chan: @George, the due date is actually 23 January George Kirikos: Oh, sorry. I thought something was due earlier. Did we hear back from the IGOs (within the GAC observers?). Philip Corwin: Yes, we gave them more time on the tehory that asking for feedback just after the end of the holidays was not realistic. George Kirikos: Or, ICANN legal, who was going to get back with some searches of legal precedent. Philip Corwin: theory that is K: @Mary, are you sure it is an exact match standard?? K: BTW, this is Kathy Kleiman George Kirikos: They wou;dn't refuse the mark. George Kirikos: Only if it's CONFUSING. George Kirikos: i.e. wouldn't refuse automatically. Mary Wong: @Kathy, sorry - you're right, not necessarily an exact match (sorry for sloppy language!) Lori Schulman: the individual PTO's would apply whatever their national standards are. In the U.S. and other commonlaw jurisdictions, the standard is "confusingly similar" Mary Wong: It would be whatever standard/test/language in that particular jurisdiction that is equivalent to the 6ter language of "as trademarks or as elements of trademarks". Mary Wong: (per Lori - thank you!) George Kirikos: Note *full* text of Article 6ter at: http://www.wipo.int/article6ter/en/legal_texts/article_6ter.html (in particular, paragraph (c) shows it's not absolute) Mary Wong: @George, yes Kathy Kleiman: Sorry, I am on hold Kathy Kleiman: waiting to get onto the bridge Kathy Kleiman: please don't wait... Mary Wong: Essentially, the type of protection mandated by 6ter is prohibitive (subject to limitations of that national law) and does not specifically require an IGO to first obtain a national TM (unless, perhaps, that is the national law in any country). Nathalie Peregrine: the operator is keeping an eye out for your call Kathy Kathy Kleiman: here now Nathalie Peregrine: great! George Kirikos: I think most UDRP panelists would see Article 6ter registration as evidence of "common law" marks. George Kirikos: So, I don't see that as a controversial issue per se. Mary Wong: And per @George, the prohibition is not absolute - the third party has to be trying to use the mark as a trademark, and limited to suggesting a connection between the IGO and the third party. George Kirikos: I think Kathy's on to something, that there could be appeals to the legal system in each nation. George Kirikos: e.g. in the USA, first at the TTAB http://en.wikipedia.org/wiki/Trademark_Trial_and_Appeal_Board George Kirikos: So, there's some interaction with the immunity issue. I'm guessing the IGO would need to appeal/challenge a decision in that jurisdiction. Lori Schulman: If I recall from my examining days, there is no special consideration. Lori Schulman: The marks are compared as any other marks. Lori Schulman: I would have to confirm through the TMEP Kathy Kleiman: @ Mary, tx you. Kathy Kleiman: It is my understanding that the marks are compared as any othe rprior (already rgistered) marks - as Lori states Lori Schulman: You have to evaluate on 2 bases: confusingly similar and false association Lori Schulman: 2 different parts of the Act. TM Act Section 2(d) and 2(a) Mary Wong: And 6ter reflects this - the prohibited use must be as a TM or element(s) thereof, such as to suggest a connection etc. etc. Lori Schulman: as well as all other considerations Lori Schulman: descriptiveness, etc. Kathy Kleiman: I think this issue is huge - how individual national trademark offices treat the "registered" 6ter IGOs in their evaluations - because this is the essence of what we might be asking a UDRP or UDRP-type panel to do. George Kirikos: I believe Canada is moving to a system of TM registrations without reviews, more like the European systems. George Kirikos: I've already posted my views of the 2007 report. I didn't think it was a very good draft, for the reasons at: http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-December/000217.html George Kirikos: report = proposal Kathy Kleiman: Does anyone know if the 6ter list (those IGOs seeking the 6ter treaty protections) is a public list? George Kirikos: Yes, it is, Kathy. George Kirikos: http://www.wipo.int/article6ter/en/ George Kirikos: "Article 6ter Express database" or you can download the database. Kathy Kleiman: @tx Mary for the USPTO TMEP! Mary Wong: Note that the 6ter database doesn't just contain IGO names and acroyms; it includes all 6ter protected marks (armorial bearings, flags etc.) George Kirikos: 4(a) in that report was very flawed, as it changed everything from "and" to "or", for example. George Kirikos: (compared with the UDRP) Jay Chapman: while small, that is a monumental "change" from the UDRP, George Philip Corwin: Yes, going from "and' to "or' would be a very fundamental change in UDRP and URS practice and is a path I would not support this group going down. Paul Tattersfield: agree George - Too much thinking is based around the issuance of a trademark, I think more thought needs to be given to whether or not the underlying goods / services are being infringed. Kathy Kleiman: +1 George: this may be an education issues - for both IGOs and UDRP Panelists Kathy Kleiman: ... and the protection is common law + statutory (e.g., showing that the IGO has invoked the treaty rights and is on the "6ter" list) George Kirikos: If we were able to engage with the IGOs, to educate them more, this WG might be able to dissolve. George Kirikos: Albeit, with the immunity issue being a point of contention. But, even that can be worked around, as per the World Bank, UNITAID examples. George Kirikos: (where the law firms, for example, held the marks) George Kirikos: Kristine is here from NAF. Perhaps she might want to speak to the education aspect. George Kirikos: (not sure if we have that WIPO person here today) George Kirikos: Whether IGOs are aware that "common law' marks are sufficient to file. Mary Wong: @George, observers to the WG don't participate on calls :) George Kirikos: (and that panelists have found for IGOs in the past, e.g. World Bank, UNITAID, etc. George Kirikos: Do any of the law firms here have IGOs as clients? How do they do their "brand protection" these days? (offline or online, for that matter) Kathy Kleiman: @Kristine: is education of Panelists an issue here too? Kathy Kleiman: I think you answsered this, Kristine, tx you! Kristine Dorrain-NAF: Yes, thanks. George Kirikos: Something = "outreach" & "education"? George Kirikos: Perhaps adding to section 1 of http://www.wipo.int/amc/en/domains/search/overview2.0/ Paul Tattersfield: The emphasis should be that standing should come from usage not registration Kristine Dorrain-NAF: Good point on an affirmative step, Phil. George Kirikos: 1.12 Are IGO "marks" eligible for the first UDRP element? Answer: Yes. LOL Kristine Dorrain-NAF: All good, but that still doesn't reach them with UDRP as an option. You're relying on an IGO finding the UDRP and saying "oh geez, we can't use this"... Maybe I'm wrong, but I think the point is to say "you have options, people!" (Push vs Pull dynamic) George Kirikos: The terms of reference of this WG is even narrower, as it was limited to the subset of marks on that "reserved list" for new gTLDs. George Kirikos: So, reserved list only had around 100 marks, Article 6ter DB has 3000. Of course, under common law, any IGO could qualify.for a UDRP filing. Philip Corwin: Was such a reserve list ever created for new gTLD program, other than Red Cross/Crescent and IOC? George Kirikos: Yes, Philip. I had made up the spreadsheet, etc. George Kirikos: See: https://www.icann.org/sites/default/files/packages/reserved-names/ReservedN… George Kirikos: (scroll down to IGO names) Kristine Dorrain-NAF: Thanks for the really great discussion, all, I have to sign off a few minutes early for my next appointment. :) George Kirikos: No, it doesn't require a trademark registration, Phil. George Kirikos: Common law marks are recognized. Paul Tattersfield: @ Phil I don’t think it does – the registration is just a public declaration of in intent Philip Corwin: Ok, I stand corrected. But does lack of registration and therefore notice to DN registrants become an element in finding bad faith? Kathy Kleiman: Re: education - educating registrants/consumers might also be something we would consider Philip Corwin: Bad faith of course requires some intent Mary Wong: @Phil, yes - that would be one distinction George Kirikos: What's the plan for next week? George Kirikos: (before we go?) Mary Wong: @George, we'll caucus with the co-chairs George Kirikos: i.e. "next steps" in the Agenda. Philip Corwin: Haven't discussed yet. Suggestions are welcome Kathy Kleiman: Note all: Bad faith was largely new when we worked on the UDRP (only used a bit before that) so it would not be part of the treaty language, but would it encompass it? George Kirikos: Great meeting. Bye everyone. Lori Schulman: Thank you Philip Corwin: Bye all Jay Chapman: good bye Kathy Kleiman: by all! Paul Tattersfield: thanks, bye

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Relevant language from Article 6ter and the US' Trademark Manual of Examining Procedure
by Mary Wong Jan. 7, 2015

Jan. 7, 2015

Dear WG members, Following the discussions on the WG call earlier today, we thought it might be helpful to reproduce for you the partial text of Article 6ter of the Paris Convention and the extract from the United States¹ Trademark Manual of Examining Procedure (TMEP) that were highlighted on the call. Partial text of Article 6ter: * 1(a) - The countries of the Union agree to refuse or to invalidate the registration, and to prohibit by appropriate measures the use, without authorization by the competent authorities, either as trademarks or as elements of trademarks, of armorial bearings, flags, and other State emblems, of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view. * 1(b) - The provisions of subparagraph (a), above, shall apply equally to armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organizations of which one or more countries of the Union are members, with the exception of armorial bearings, flags, other emblems, abbreviations, and names, that are already the subject of international agreements in force, intended to ensure their protection. * 1(c) - The countries of the Union shall not be required to apply the said provisions when the use or registration is not of such a nature as to suggest to the public that a connection exists between the organization concerned and the armorial bearings, flags, emblems, abbreviations, and names, or if such use or registration is probably not of such a nature as to mislead the public as to the existence of a connection between the user and the organization. * 3(b) - this Article shall apply only to such armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organizations as the latter have communicated to the countries of the Union through the intermediary of the International Bureau. * 4 - Any country of the Union may, within a period of twelve months from the receipt of the notification, transmit its objections, if any, through the intermediary of the International Bureau, to the country or international intergovernmental organization concerned. How one country (here, the USA) deals with IGOs who have communicated their 6ter protections, duly notified by WIPO to all relevant countries, where no objection was made within the requisite 12-month period; extract from the USPTO TMEP (S. 1205(2)): * When the USPTO receives requests for protection under Article 6ter from the [International Bureau (WIPO], they are assigned serial numbers in the "89" series code, i.e., serial numbers beginning with the digits "89," and are sometimes referred to as "non-registrations." The USPTO searches its records for conflicting marks, but the requests are not subjected to a full examination by an examining attorney or published for opposition. Copies of the designations are filed in the paper records of the Trademark Search Library, and pertinent information is entered in the automated search records of the Office and should be discovered in an examining attorney's search. * The Paris Convention requires that the United States refuse to register designations that have been deposited pursuant to Article 6ter and to which the United States has transmitted no objections. Depending on the nature and use of the mark, §§2(a) and 2(b) of the Trademark Act, 15 U.S.C. §§1052(a) and 1052(b), may bar registration of these marks. A refusal under §2(d) of the Trademark Act is not appropriate. The issue is not whether the marks are confusingly similar, but whether registration of the mark would violate §§2(a) or 2(b) of the Trademark Act. * For example, it may be appropriate for the examining attorney to refuse registration under §2(a) of the Act on the ground that the mark comprises matter that may falsely suggest a connection with a national symbol of a member country or an international intergovernmental organization. See TMEP §1203.03(e). Other §2(a) bases for refusal could also apply. See TMEP §§1203 et seq. It may be appropriate to refuse registration under §2(b) of the Act if the proposed mark comprises a flag, coat of arms or other similar insignia. See TMEP §1204. In some instances, it may be appropriate to refuse registration under §§1, 2 (preamble) and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127, on the ground that the subject matter would not be perceived as a trademark. (For service mark applications, §3 of the Act, 15 U.S.C. 1053, should also be cited as a basis for refusal.) Note also that there have been cases in the United States before the Trademark Trial and Appeals Board (TTAB) concerning attempted registrations and/or refusals of registrations by the USPTO in respect of some 6ter-protected designations, e.g. flags. The questions raised in these administrative cases included matters such as the correctness of a USPTO TM examiner¹s decision on whether to permit the registration of a TM application that contained state flags and other 6ter-protected emblems that have (per the TMEP) been recorded by the USPTO. We hope the above is helpful. Cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names & Numbers (ICANN) Telephone: +1 603 574 4892 Email: mary.wong(a)icann.org

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Agenda and documents for WG call on Wednesday 7 January 2015
by Mary Wong Jan. 7, 2015

Jan. 7, 2015

Dear WG members, Just a reminder about the note and requests below, from the last WG call on 17 December. For your convenience, the draft text from 2007 relating to a possible alternative dispute resolution procedure (DRP) is also attached to this email. On the upcoming WG call, the co-chairs and staff will update everyone on progress to date, and I expect that discussions will pick up from where we left off on 17 December. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names & Numbers (ICANN) Telephone: +1 603 574 4892 Email: mary.wong(a)icann.org From: Mary Wong <mary.wong(a)icann.org> Date: Monday, 22 December 2014 23:02 To: <gnso-igo-ingo-crp(a)icann.org> Subject: Follow up from WG call of 17 December > Dear all, > > Following up n the last WG call on 17 December, the WG co-chairs would like to > remind everyone to review the 2007 draft text for an alternative dispute > resolution process that was created by ICANN staff at the request of the > then-GNSO Council, with a view toward further discussion of the standing and > sovereign immunity questions. In addition, since the 17 December call saw a > very detailed ³walk through² and discussion of the Article 6ter process and > scope, the WG co-chairs would like to invite follow up comments to the mailing > list on that topic, as well as encourage members/observers who were not able > to join the call to review the discussion that took place. > > For your convenience, the agenda, documents, Adobe Connect chat transcript, > MP3 recording and meeting transcript have all been uploaded to the WG wiki > here: https://community.icann.org/x/jooQAw > > On behalf of Petter and Phil, our co-chairs, and Berry, Steve and the rest of > the ICANN policy staff, here¹s wishing you and yours a very happy holiday and > a great start to 2015! > > Cheers > Mary > > Mary Wong > Senior Policy Director > Internet Corporation for Assigned Names & Numbers (ICANN) > Telephone: +1 603 574 4892 > Email: mary.wong(a)icann.org > >

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Re: [Gnso-igo-ingo-crp] Follow up from WG call of 17 December
by David W. Maher Dec. 22, 2014

Dec. 22, 2014

Thanks, Mary Regarding the 2007 draft text for an alternative DRP, I believe the opposition comments of the Registry Stakeholder Group are still relevant. One comment in particular is: "The fundamental question about the current proposal remains - whether or not ICANN should become a global law making body. The WIPO 2 recommendations are tantamount to asking ICANN to become an “enforcer of treaties”, which is not its proper role." David David W. Maher Senior Vice President – Law & Policy Public Interest Registry 312 375 4849 From: Mary Wong <mary.wong(a)icann.org<mailto:mary.wong@icann.org>> Date: Monday, December 22, 2014 9:02 AM To: "gnso-igo-ingo-crp(a)icann.org<mailto:gnso-igo-ingo-crp@icann.org>" <gnso-igo-ingo-crp(a)icann.org<mailto:gnso-igo-ingo-crp@icann.org>> Subject: [Gnso-igo-ingo-crp] Follow up from WG call of 17 December Dear all, Following up n the last WG call on 17 December, the WG co-chairs would like to remind everyone to review the 2007 draft text for an alternative dispute resolution process that was created by ICANN staff at the request of the then-GNSO Council, with a view toward further discussion of the standing and sovereign immunity questions. In addition, since the 17 December call saw a very detailed “walk through” and discussion of the Article 6ter process and scope, the WG co-chairs would like to invite follow up comments to the mailing list on that topic, as well as encourage members/observers who were not able to join the call to review the discussion that took place. For your convenience, the agenda, documents, Adobe Connect chat transcript, MP3 recording and meeting transcript have all been uploaded to the WG wiki here: https://community.icann.org/x/jooQAw On behalf of Petter and Phil, our co-chairs, and Berry, Steve and the rest of the ICANN policy staff, here’s wishing you and yours a very happy holiday and a great start to 2015! Cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names & Numbers (ICANN) Telephone: +1 603 574 4892 Email: mary.wong(a)icann.org<mailto:mary.wong@icann.org>

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Follow up from WG call of 17 December
by Mary Wong Dec. 22, 2014

Dec. 22, 2014

Dear all, Following up n the last WG call on 17 December, the WG co-chairs would like to remind everyone to review the 2007 draft text for an alternative dispute resolution process that was created by ICANN staff at the request of the then-GNSO Council, with a view toward further discussion of the standing and sovereign immunity questions. In addition, since the 17 December call saw a very detailed ³walk through² and discussion of the Article 6ter process and scope, the WG co-chairs would like to invite follow up comments to the mailing list on that topic, as well as encourage members/observers who were not able to join the call to review the discussion that took place. For your convenience, the agenda, documents, Adobe Connect chat transcript, MP3 recording and meeting transcript have all been uploaded to the WG wiki here: https://community.icann.org/x/jooQAw On behalf of Petter and Phil, our co-chairs, and Berry, Steve and the rest of the ICANN policy staff, here¹s wishing you and yours a very happy holiday and a great start to 2015! Cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names & Numbers (ICANN) Telephone: +1 603 574 4892 Email: mary.wong(a)icann.org

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MP3 IGO WG - Wednesday, 17 December 2014 at 1700 UTC
by Terri Agnew Dec. 17, 2014

Dec. 17, 2014

Dear All, Please find the MP3 recording for IGO-INGO Access to Curative Rights Protection Mechanisms Working Group call on Wednesday, 17 December 2014 at 1700 UTC at: http://audio.icann.org/gnso/gnso-igo-ingo-crp-access-20141217-en.mp3 On page: http://gnso.icann.org/en/group-activities/calendar#dec The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page: http://gnso.icann.org/calendar/ Attendees: George Kirikos - Individual Petter Rindforth - IPC Phil Corwin - BC Kristine Dorrain- Individual Mason Cole - RySG David Maher - RySG Val Sherman - IPC Osvaldo Novoa - ISPCP Gary Campbell - GAC Paul Tattersfiled - Individual Jay Chapman - Individual Jim Bikoff - IPC Kathy Kleiman - NCUC Apologies: Lori Schulman - NPOC ICANN staff: Mary Wong Amy Bivins 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-igo-ingo-crp/ Wiki page: https://community.icann.org/x/97rhAg Thank you. Kind regards, Terri Agnew ------------------------------- Adobe Connect chat transcript for Wednesday, 17 December 2014: Terri Agnew:Dear all, welcome to the IGO-INGO Curative Rights Protection PDP WG Meeting on the 17 December 2014 George Kirikos:Hi everyone. Happy Hanukkah to those celebrating the holiday. George Kirikos:Woah, someone needs to mute. :-) Philip Corwin:Thanks George George Kirikos:Hey Phil. How are you doing? Philip Corwin:Good Gary Campbell:Hi everyone Paul Tattersfield:Hi George, everyone Jay Chapman:Hello, all! George Kirikos:Hi Gary, Paul, and Jay. val sherman:Hello everybody. And thanks George! George Kirikos:Hi Val. George Kirikos:It might be easier to refer to paragraph numbers, rather than the page number. Terri Agnew:Welcome Kristine Dorrain Mary Wong:@Phil, yes, the expansion to WTO member countries expands the Convention fairly substantially. Osvaldo Novoa:Hello all, I had a problem with my audio Terri Agnew:@Osvaldo, are you able to hear now? Mary Wong:The extension to WTO member countries was effected by the WTO Agreements, specifically, the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). Osvaldo Novoa:@Terry, yes is fine now.. I think the problem was in my PC George Kirikos:They have to communicate it. George Kirikos:See paragraph 27, as Mary is discussing. George Kirikos:Also paragraph 40. Mary Wong:Yes, the 6ter protection is for use AS A TRADEMARK, and applies only against uses that suggest a connection with the IGO or that misleads the public into thinking there is such a connection. Terri Agnew 2:Kathy Kleiman has joined George Kirikos:Paragraph 47 is also important, as it reinforces the notion that enforcement is done at the *national* level, (and not some international tribunal). "the ultimate decision as to the nature of a requesting organization and its eligibility for the purposes of Article 6ter(1)(b) and (3)(b) remains with the ****States**** George Kirikos:(and when I see the word "states", I think ultimately that means the national courts within a state. George Kirikos:Acttually, not correct, Kathy. Mary Wong:@Kathy, unless the countries are also members of the Trademark Law treaty George Kirikos:It does apply to service marks, elsewhere in the document. George Kirikos:See para 32, though. Mary Wong:So a country that's either a member of Paris or the WTO and the Trademark Law Treaty must apply 6ter to both goods and service marks, but a country that's not a member of the Trademark Law Treaty does NOT need to extend protection to service marks. George Kirikos:Here's a list of who signed it. George Kirikos:http://www.wipo.int/treaties/en/notifications/tlt/treaty_tlt_1.html George Kirikos:Austria, Belarus, Belgium, Bosnia and Herzegovina, China, Côte d'Ivoire, Cuba, Czech Republic, Denmark, Dominican Republic, Hungary, Indonesia, Israel, Italy, Kenya, Latvia, Lithuania, Luxembourg, Malta, Mexico, Monaco, Portugal, Republic of Moldova, Russian Federation, Slovakia, Slovenia, South Africa, Swaziland, Switzerland, Togo, Trinidad and Tobago, Turkey, Ukraine, United Kingdom, United States of America, Uruguay, on October 28, 1994; George Kirikos:Germany, on November 7, 1994; Greece, on November 14, 1994; Senegal, on November 18, 1994; Liechtenstein, on March 8, 1995; Spain, on March 29, 1995; France, on April 12, 1995; Poland, on May 10, 1995; European Communities, on June 30, 1995; Finland, on July 27, 1995; Sweden, on September 26, 1995; Morocco, on October 5, 1995; Gabon, on October 17, 1995; Costa Rica, on October 18, 1995; Netherlands, on October 23, 1995; Cyprus, on October 27, 1995. Petter Rindforth:It is an old way of thinking - still identifying trademarks as only covering goods (Cl 1-34). .. Mary Wong:@Petter, yes, and it's very likely that even countries that didn't sign up to the Trademark Law Treaty would have extended their national TM regimes to service marks regardless. Petter Rindforth:I am not sure, but that can only be a handful countries/areas that not accept that there is something called service marks Mary Wong:Note that it's possible that some IGOs may have requested communication of 6ter protection but only for their emblems (ie not names or acronyms) - so the numbers may not be entirely accurate to our purpose. George Kirikos:NB: paragraph 60 mentions that the Article 6ter database "does not have any legal effect." Mary Wong:@George, yes - protections are national by each member state. George Kirikos:Agreed, Mary. I think that should mean enforcement should be left to national courts, rather than some international court. Mary Wong:Unless there is a specific narrow procedure dealing JUST with domain names that are registered or used as TMs :) (not a staff position; just saying!) Kathy K:Interesting - lots to think about George Kirikos:I'd like to be in the queue, too. Kathy K:Who's speaking? Mary Wong:Jim Bikoff George Kirikos:Jim Bikoff is speaking. Paul Tattersfield:Even late January is a very quick turn round for most Governments Petter Rindforth:And there will be a reminder sent out after new year? Mary Wong:@Petter, yes :) Petter Rindforth:Thanks - needed ;-) Paul Tattersfield:@george standing yes not sure about the inference of referring back to a nation court George Kirikos:I don't think they'd have any recourse if there was an objection in that country. Kathy K:@Phil, I think you raise an important hypothetical George Kirikos:(and those objections -- I'm not sure if they're saved in the WIPO Article 6ter online database. Mary Wong:This was prepared for the GNSO Council as part of the Issue Report scoping. George Kirikos:Bye everyone. Have a nice holiday. Kathy K:Very useful review - tx you! Kathy K:Happy Holidays, All!!!! val sherman:This was very helpful Thanks Phil, George and Mary for breaking it down. Osvaldo Novoa:Bye all, best wishes for these festivities val sherman:happy holidays to all Mary Wong:Happy holidays, all, and you're very welcome, Val! Petter Rindforth:The same to you all! Gary Campbell:Happy holidays all Paul Tattersfield:Thanks Phil that was very helpful - happy holidays everyone

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Fwd: Agenda and documents for WG call on 17 December 2014
by Mary Wong Dec. 17, 2014

Dec. 17, 2014

Please see below as well as the attached for the proposed agenda and documents for discussion on our WG call on Wednesday 17 December. Cheers Mary Sent from my iPhone Begin forwarded message: Dear WG members, Here is the proposed agenda for the next WG call on Wednesday 17 December, 1700 UTC: 1. Roll Call/Updates to SOI 2. Briefing on 2005 WIPO Secretariat Report on Article 6ter (see attached; briefing will be conducted either by the WG co-chairs or ICANN staff) 3. Continue brainstorming and general discussion on possible alternative basis for standing (other than trademarks) and on the sovereign immunity question (see the 2007 draft text for an alternative dispute resolution, attached) 4. Next steps Please note that, per the co-chairs' previous emails, this call is meant for general discussion purposes. As such, no decisions will be taken until after the New Year, when further research progress and possibly initial responses from the GAC and the IGOs may be forthcoming. The two documents attached for review and discussion had been uploaded to the WG wiki some time ago, as part of the Background Materials for our work. For your convenience, they are attached to this email - once again, for information and discussion purposes. Thanks and cheers Mary Mary Wong Senior Policy Director Internet Corporation for Assigned Names & Numbers (ICANN) Telephone: +1 603 574 4892 Email: mary.wong(a)icann.org<mailto:mary.wong@icann.org>

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sovereign immunity
by Paul Keating Dec. 15, 2014

Dec. 15, 2014

I wanted to add some further resources to the discussion on Sovereign Immunity. IMHO, I see no escape for sovereigns in the context of domain name disputes and even less when those disputes center around trademarks. Signing the RA would imply a waiver at least under the laws governing the RA agreement (assuming the US). The UDRP is not mandatory for Complainants. They need not pursue a UDRP claim. However, if they do: The incorporation of the UDRP requires that to participate, the Complainant MUST select a Mutual Jurisdiction for litigation purposes. The RA incorporates the UDRP which provides the losing Respondent with the right to litigate in the selected Mutual Jurisdiction. As to trademark issues in general, they are by definition commercial - most, if not all jurisdictions require commercial use to even obtain trademark protection. Note that to protect as against physhing, etc, trademarks are not required. Such actions are tantamount to fraud claims. My conclusion is that if IGOs have a concern about SI, they should have registrations held by a commercial entity with limited liability (e.g. As States do with national Airlines), or simply refrain from using the UDRP as an enforcement mechanism. Background: In the US, the relevant section of law is 28 U.S. Code § 1605 - (General exceptions to the jurisdictional immunity of a foreign state) which in relevant part states: (a) A foreign state shall not be immune from the jurisdiction of courts of the United States or of the States in any case―(1) in which the foreign state has waived its immunity either explicitly or by implication, notwithstanding any withdrawal of the waiver which the foreign state may purport to effect except in accordance with the terms of the waiver; (2) in which the action is based upon a commercial activity carried on in the United States by the foreign state; or upon an act performed in the United States in connection with a commercial activity of the foreign state elsewhere; or upon an act outside the territory of the United States in connection with a commercial activity of the foreign state elsewhere and that act causes a direct effect in the United States; (3) in which rights in property taken in violation of international law are in issue and that property or any property exchanged for such property is present in the United States in connection with a commercial activity carried on in the United States by the foreign state; or that property or any property exchanged for such property is owned or operated by an agency or instrumentality of the foreign state and that agency or instrumentality is engaged in a commercial activity in the United States; (4) in which rights in property in the United States acquired by succession or gift or rights in immovable property situated in the United States are in issue; (5) not otherwise encompassed in paragraph (2) above, in which money damages are sought against a foreign state for personal injury or death, or damage to or loss of property, occurring in the United States and caused by the tortious act or omission of that foreign state or of any official or employee of that foreign state while acting within the scope of his office or employment; except this paragraph shall not apply to―(A) any claim based upon the exercise or performance or the failure to exercise or perform a discretionary function regardless of whether the discretion be abused, or (B) any claim arising out of malicious prosecution, abuse of process, libel, slander, misrepresentation, deceit, or interference with contract rights; or (6) in which the action is brought, either to enforce an agreement made by the foreign state with or for the benefit of a private party to submit to arbitration all or any differences which have arisen or which may arise between the parties with respect to a defined legal relationship, whether contractual or not, concerning a subject matter capable of settlement by arbitration under the laws of the United States, or to confirm an award made pursuant to such an agreement to arbitrate, if (A) the arbitration takes place or is intended to take place in the United States, (B) the agreement or award is or may be governed by a treaty or other international agreement in force for the United States calling for the recognition and enforcement of arbitral awards, (C) the underlying claim, save for the agreement to arbitrate, could have been brought in a United States court under this section or section 1607 <http://www.law.cornell.edu/uscode/text/28/1607>, or (D) paragraph (1) of this subsection is otherwise applicable. SOURCE: http://www.law.cornell.edu/uscode/text/28/1605) In terms of case law in the US, we have the following examples: Phoenix Consulting, Inc., v. Republic of Angola, No. 99-7032 (DC Cir. 2000) http://www.cadc.uscourts.gov/internet/opinions.nsf/80FD57CDDEC9054485256F18 0065AF40/$file/99-7032a.txt (executed a written sales contract containing a choice of law provision subjecting the contract to the jurisdiction and laws of the United States--which, accord- ing to the legislative history of the FSIA, would by implica- tion have waived Angola's immunity from suit. See H.R. Rep. No. 94-1487, at 18 (1976), reprinted in 1976 U.S.C.C.A.N. 6604, 6616-17.) PERMANENT MISSION OF INDIA TO THE UNITED NATIONS et al. v. CITY OF NEW YORK, No. 06-134 (C2nd Cir. 2007) http://caselaw.lp.findlaw.com/scripts/getcase.pl?court=US&vol=000&invol=06- 134 FSIA's related purposes. First, Congress intended the FSIA to adopt the restrictive theory of sovereign immunity, which recognizes immunity "with regard to sovereign or public acts (jure imperii) of a state, but not ... private acts (jure gestionis)." Alfred Dunhill of London, Inc. v. Republic of Cuba, 425 U. S. 682, 711 <http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?navby=case&court=US&vol=4 25&invol=682&pageno=711>. Property ownership is not an inherently sovereign function. Alfred Dunhill of London, Inc. v. Republic of Cuba, 425 U. S. 682, 711 <http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?navby=case&court=US&vol=4 25&invol=682&pageno=711>. Distinguishing between the public and governmental acts of sovereign states on the one hand and their private and commercial acts on the other is not a novel approach. As the Court stated through Mr. Chief Justice Marshall long ago in Bank of the United States v. Planters' Bank of Georgia, 9 Wheat. 904, 907 (1824): "It is, we think, a sound principle, that when a government becomes a partner in any trading company, it divests itself, so far as concerns the transactions of that company, of its sovereign character, and takes that of a private citizen. Instead of communicating to the company its privileges and its prerogatives, it descends to a level with those with [425 U.S. 682, 696] whom it associates itself, and takes the character which belongs to its associates, and to the business which is to be transacted." Cf. Sloan Shipyards v. United States Fleet Corp., 258 U.S. 549, 567 <http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=us&vol=258&invol=54 9#567>-568 (1922). In this same tradition, South Carolina v. United States, 199 U.S. 437 <http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=us&vol=199&invol=43 7>(1905), drew a line for purposes of tax immunity between the historically recognized governmental functions of a State and businesses engaged in by a State of the kind which theretofore had been pursued by private enterprise. Similarly, in Ohio v. Helvering, 292 U.S. 360, 369 <http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=us&vol=292&invol=36 0#369>(1934), the Court said: "If a state chooses to go into the business of buying and selling commodities, its right to do so may be conceded so far as the Federal Constitution is concerned; but the exercise of the right is not the performance of a governmental function . . . . When a state enters the market place seeking customers it divests itself of its quasi sovereignty pro tanto, and takes on the character of a trader . . . ." It is thus a familiar concept that "there is a constitutional line between the State as government and the State as trader . . . ." New York v. United States, 326 U.S. 572, 579 <http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?navby=case&court=us&vol=3 26&invol=572#579>(1946). See also Parden v. Terminal R. Co., 377 U.S. 184, 189 <http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?navby=case&court=us&vol=3 77&invol=184#189>-190 (1964); California v. Taylor, 353 U.S. 553, 564 <http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?navby=case&court=us&vol=3 53&invol=553#564>(1957); United States v. California, 297 U.S. 175, 183 <http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=us&vol=297&invol=17 5#183>(1936).It is the position of the United States, stated in an amicus brief filed by the Solicitor General, that such a line should be drawn in defining the outer limits of the act of state concept and that repudiations by a foreign sovereign of its commercial debts should not be considered to be acts of state beyond legal question in our courts. Attached to the brief of the United States and to this opinion as Appendix 1 is the letter of November 26, 1975, in which the Department of State, speaking through its Legal Adviser agrees with the brief filed by the Solicitor General and, more specifically, declares that [425 U.S. 682, 697] "we do not believe that the Dunhill case raises an act of state question because the case involves an act which is commercial, 11 <http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?navby=case&court=US&vol=4 25&invol=682&pageno=711#f11>and not public, in nature." 12 <http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?navby=case&court=US&vol=4 25&invol=682&pageno=711#f12> On 12/12/14 12:06 PM, "George Kirikos" <icann(a)leap.com> wrote: > >4. One should not be creating new law. In particular, one must >consider how IGOs would enforce their rights in the offline world if >the UDRP never existed. Clearly, their recourse for enforcement would >be through the national courts of the alleged malfeasor/infringer. >They'd have no power whatsoever to compel a party to attend an >international tribunal, nor would that international tribunal have any >jurisdictional over the matter. This was a topic we discussed >previously (perhaps it was in a subgroup), namely questions we had for >the IGOs --- i.e. how are they enforcing their Article 6ter rights >offline, e.g. if a restaurants with the name "UNESCO" is opened up in >Toronto, Canada, how do they enforce their rights? So far, we have no >answer from the IGOs. > >5. Examples have been shown of IGOs waiving any such immunity >concerns, and actually utilizing the UDRP already (raising the >question of whether there's a serious issue at stake). See my prior >posts at: > >http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-December/000199.html >http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-December/000200.html >http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-December/000201.html > >The World Bank example is obvious. The UNITAID one is more subtle -- >it actually demonstrates a simple means for the IGOs to avoid the >immunity issue entirely, because the complaint was actually brought by >a **licensee** of Unitaid. The critical language is: > >http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2012-1922 > >"In 2009, a Fiduciary Agreement was made between the World Health >Organization/Unitaid and the Complainant to file and hold in its own >name, for the benefit of Unitaid, the necessary applications for the >protection of the “Unitaid” name, according to the instructions and >under the control of World Health Organization/Unitaid. > >In 2009, the Complainant thus registered, in its own name but for the >benefit of World Health Organization/Unitaid, UNITAID as a trademark >in numerous jurisdictions." > >In my opinion, those two paragraphs alone provide a perfect solution >for IGOs. Indeed, we could conceivably put an end to this workgroup, >by simply pointing to the above as a roadmap for IGOs to follow, to >work within an unamended UDRP. > >6. There are much better alternatives than that suggested by staff, >that are more tightly focused and preserve the rights of registrants. >In particular, I believe the following two have already been discussed >(perhaps in the subgroups, and not to to full list), > >(a) (my own idea, which I spent a lot of time thinking about before >this working group even started) Allow the national government in the >jurisdiction in the jurisdiction of the REGISTRANT to have standing as >the complainant on behalf of an IGO. Since the national government is >the signatory of the treaty, it makes sense that any enforcement >should fall upon them. Suppose a Canadian registered UNESCO.tld. >UNESCO could complain to the Federal government of Canada, and the >Federal government of Canada could file the UDRP. The Federal >government of Canada would have no problems with mutual jurisdiction >and immunity, because obviously a national of Canada can sue the >Federal government of Canada in their own national courts! > >(b) (I think was Paul Keating's suggestion) Limit the scope of an >IGO's potential liability from agreeing to the mutual jurisdiction to >that of the domain name itself. i.e. the purpose of IGO immunity is to >protect the IGO assets from being seized by 3rd parties. It's a >shield. If the IGOs provide a *limited waiver*, so that the only >downside for them involves the domain name itself (and thus no >incursion on their assets), then that should be sufficient. The court >action only takes place to block a transfer, so the domain name was >never in the IGO's possession (even if a UDRP decision favoured the >IGO). > >(c) the example in point #5 is a superior roadmap to follow than >either (a) or (b), because it wouldn't require any amendment to the >UDRP > >7. We haven't even begun to look at the costs/benefits.The Affirmation >of Commitments: > >https://www.icann.org/resources/pages/affirmation-of-commitments-2009-09-3 >0-en > >warns us about the "group of participants that engage in ICANN's >processes to a greater extent than Internet users generally." I would >suggest that the IGOs fall into this category. The AoC tells us that >we should be weighing the positive and negative effects. That requires >data. Where is the IGO data on the extent of cybersquatting, etc? What >are their "costs" from any waiver of immunity, beyond simply academic >and theoretical considerations? What are the costs of using >alternatives like in point #5, or 6(a) or 6(b)? > >I guess this is not as brief as I had hoped (but not yet 20 pages), so >I'll just summarize that it's great to be brainstorming, but hopefully >we'll not go down the dead-end of the rejected 2007 staff idea (which >really was not carefully thought out, in my opinion). Looking back, I >actually blogged about that 2007 report: > >http://www.circleid.com/posts/710118_short_domain_names_igo_udrp > >and others shared my concerns back then (and the proposal properly >went nowhere). As Esther Dyson says "Always make new mistakes!" :-) >There no need to recycle that old 2007 mistake. > >Sincerely, > >George Kirikos >416-588-0269 >http://www.leap.com/ > > > > >On Thu, Dec 11, 2014 at 11:07 PM, Mary Wong <mary.wong(a)icann.org> wrote: >> Dear all, >> >> This is not intended to take any position on the issue of standing; >> rather, we as support staff thought the WG might find useful the draft >> text that was produced for the GNSO Council in 2007 for an alternative >> dispute resolution procedure (DRP) (attached). As you¹ll recall this was >> part of the scoping that had been done at the time for an Issue Report >> which, however, did not lead to any policy work for lack of requisite >> votes on the GNSO Council. >> >> Of particular note is the modification of the UDRP requirements for a >> complaint and thus a mandatory administrative proceeding under 4(a) of >>the >> UDRP to be as follows: >> >> >> >> >> >> >> >> >> >> "(i) the registration or use, as a domain name, of the name or >> abbreviation of the complainant that has been communicated under Article >> 6ter of the Paris >> Convention is of a nature: >> >> (a) to suggest to the public that a connection exists between the domain >> nameholder and the complainant; or >> (b) to mislead the public as to >>the existence of a connection between >> the domain >> name holder and the complainant; or >> >> (ii) on the ground that the registration or use, as a domain name, of a >> name or >> abbreviation of the complainant protected under an international treaty >> violates >> the terms of that treaty.² >> >> The draft text therefore suggests two alternative grounds for standing >>in >> lieu of trademark rights. >> >> FWIW the draft text also deals with the sovereign immunity issue by >> defining ³Mutual Jurisdiction² to be an arbitral tribunal constituted >> under the rules either of the AAA, ICDR, WIPO or the London Court of >> International Arbitration (see Definitions under the Rules of Procedure, >> 3.B.) >> >> I hope this is helpful. >> >> Cheers >> Mary >> >> >> >> Mary Wong >> Senior Policy Director >> Internet Corporation for Assigned Names & Numbers (ICANN) >> Telephone: +1 603 574 4892 >> Email: mary.wong(a)icann.org >_______________________________________________ >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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