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

Re: [Gnso-igo-ingo-crp] On creating a UDRP-like procedure for IGOs, and on 6ter processes
by Mary Wong Nov. 6, 2014

Nov. 6, 2014

Hello again everybody, I just wanted to follow up on Paul¹s, Petter¹s and George¹s recent emails with a few additional clarifications. APPLICABILITY TO EXISTING (LEGACY) DOMAINS * Our WG charter (based on the scoping done in the Preliminary and Final Issue Reports) acknowledges that the URS is not currently a Consensus Policy. As such, it only applies to new gTLDs. The UDRP (as a Consensus Policy) is binding on all ICANN Contracted Parties via the incorporation clause found in all registry and registrar agreements (new and existing). In considering a dispute resolution procedure (DRP) whether a ³modified UDRP/URS² or a ³new² DRP our WG will therefore have to bear in mind that if this is in fact the final recommendation(s), it may be in the form of a Consensus Policy binding on all contracted parties. UDRP vs URS vs New DRP * Our Charter also contemplates that we may distinguish between a UDRP and URS, so for instance the WG could decide to only amend one but not the other (among other options). This is a topic we will need to put on the WG agenda at a future meeting. * In the previous GNSO scoping effort (2007), draft language was in fact prepared for a possible separate DRP. We have included this document on the WG wiki: * Our WG Charter also contemplates that should a separate DRP be recommended, it must be narrowly tailored and applicable only to the protected organizations. ARTICLE 6ter PROCESS * As George and Paul have noted previously, protection under 6ter is not automatic, and even after the notification is filed a country/government can object to it. My understanding is that in many jurisdictions, 6ter protection is effective only if there is national law effectuating 6ter protection in that jurisdiction (e.g. by requiring a trademark registration or other form of statutory protection). The WG will likely want to address this as part of its discussion on standing in relation to any form of amended or new DRP. CREATING NEW LEGAL RIGHTS * This problem was acknowledged early on in the WIPO-2 Process (2001-2). However, do note that 6ter itself contains limitations in that: (1) protection of the IGO name/acronym is against use without authorization as a trademark or as elements of trademarks; AND (2) the use is of such a nature as to either suggest to or mislead the public as to a possible connection between the user and the organization concerned. In considering whether or not to amend the UDRP/URS or develop a new DRP, these limitations may be of assistance to our WG. * It is also open to the WG to develop specific and additional express defenses for any DRP (as was spelled out in the URS, for example). I realize these do not answer the many excellent questions that have been raised (nor are they supposed to), and do not address the tricky issues of immunity/appeal or costs, but I hope they are helpful as background nonetheless. 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: Paul Keating <paul(a)law.es> Date: Thursday, November 6, 2014 at 8:47 AM To: "petter.rindforth(a)fenixlegal.eu" <petter.rindforth(a)fenixlegal.eu> Cc: "gnso-igo-ingo-crp(a)icann.org" <gnso-igo-ingo-crp(a)icann.org> Subject: Re: [Gnso-igo-ingo-crp] PLEASE RESPOND ASAP -- Revised Draft of Letter to Council regarding GAC Communique > Petter, > > Creating some UDRP-like CRP for the domains at issue would create huge issues. > In addition to issues noted by others: > > 1. It would apply on a domain level basis crossing all extensions. > > 2. It would require a change to the RAA and RA for each extension. > > 3. All of these Curative Rights mechanisms exist ONLY as a matter of contract > (ICANN - Registrar (RAA) and Registrar - Registrant (RA)). Thus, any new > system could not, as a matter of contract law, apply to existing domains until > a new RAA is signed with every registrar and a new RA is signed with each > registrant. Thus, a current registration for 10 years would mean the domain > was exempt from the new CRP for 10 years until the domain was renewed. > > 4. The protection here exists ONLY as between members of the Paris > Convention and/or WTO. > > How would it apply to a registrant holding a registration per an > agreement subject to the laws of a non-PC or non-WTO member state? > > How would it apply to a registrant holding a registration per an > agreement subject to the laws of a country who had objected to the particular > name/symbol being included under 6ter? > > 5. Because the UDRP (and other CRPs) already apply "as to all" domains > covered there under (e.g UDRP applies to ALL .COM domains), an amendment to > the UDRP (and other CRPs) is required to exclude its application to domains > falling under 6ter. > > 6. How is the registrar or,registrant to know that the new CRP is to apply to > any particular domain? E.g. Is "expletive+IOC" included? What about > "olympicburgers.com <http://olympicburgers.com> " or > "OlympicPeninsulaCampingSites.com <http://OlympicPeninsulaCampingSites.com> "? > It becomes even worse with acronyms. > > I revert to something George K said in a prior email. ICANN has neither the > right nor the obligation to create new legal rights. This was true during the > heady drafting days of the UDRP and remains the case today IMHO. > > The more I look the more I feel that neither the GAC nor the IGOs have really > thought this through. I fully understand that many of the IGOs both do great > things and unlike the RC or IOC have very little money. However, and at the > risk of sounding crass, it seems more of a case of late-comers to the party > wanting to be relieved of consequences of their tardiness. > > This begs us to consider other alternatives such as informing them of the > existence of .INT or even the possible creation of .IGO and advising that any > new CRP be limited to those extensions. > > Regards, > > Paul Keating > > On 06 Nov 2014, at 10:11 am, Petter Rindforth <petter.rindforth(a)fenixlegal.eu> > wrote: > >> I am not sure if GAC as such has considered this to 100%, but I am sure that >> IGO¹s wants to avoid any changes of the UDRP. >> But, to refer to our previous discussion of ³new CRP vs modified version of >> the UDRP², what we talk about (if not add/change to the current UDRP) is not >> to create a completely new dispute resolution procedure for IGO¹s, but rather >> ³a modified version of UDRP² that will get a separate name and Regulation. >> Our ³IGOUDRP² can therefore well be the existing UDRP with some minor changes >> related to IGO¹s, and perhaps formally limited to IGO complainants if they >> are officially listed as IGO¹s - to avoid other organizations/companies to >> claim that they can use this ³new² system. >> >> / Petter >> >> >> -- >> Petter Rindforth, LL M >> >> Fenix Legal KB >> Stureplan 4c, 4tr >> 114 35 Stockholm >> Sweden >> Fax: +46(0)8-4631010 >> Direct phone: +46(0)702-369360 >> E-mail: petter.rindforth(a)fenixlegal.eu >> www.fenixlegal.eu <http://www.fenixlegal.eu> >> >> >> NOTICE >> This e-mail message is intended solely for the individual or individuals to >> whom it is addressed. It may contain confidential attorney-client privileged >> information and attorney work product. If the reader of this message is not >> the intended recipient, you are requested not to read, copy or distribute it >> or any of the information it contains. Please delete it immediately and >> notify us by return e-mail. >> Fenix Legal KB, Sweden, www.fenixlegal.eu <http://www.fenixlegal.eu> >> Thank you >> >> >> 5 november 2014, Phil Corwin <psc(a)vlaw-dc.com> skrev: >>> >>> I guess we could drill down a bit on the substance/procedures matter >>> although my guess is that they haven¹t even thought about it, and were >>> meaning to say that they want a new CRP for IGOs rather than any modified >>> version of the UDRP. >>> >>> >>> >>> What do others think? >>> >>> >>> >>> 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 >>> >>> >>> >>> From: Paul Tattersfield [mailto:gpmgroup@gmail.com] >>> Sent: Wednesday, November 05, 2014 5:13 PM >>> To: Phil Corwin >>> Cc: Mason Cole; gnso-igo-ingo-crp(a)icann.org >>> Subject: Re: [Gnso-igo-ingo-crp] PLEASE RESPOND ASAP -- Revised Draft of >>> Letter to Council regarding GAC Communique >>> >>> >>> >>> Mason's wording is very good. Do you guys think it would be worth building >>> on Mason¹s wording to try and ascertain if the GAC's proposed prohibition on >>> UDRP changes is for substantive changes only or if they are seeking to >>> prohibit procedural changes too? >>> >>> >>> >>> Yours sincerely, >>> >>> >>> >>> >>> >>> Paul >>> >>> >>> >>> On Wed, Nov 5, 2014 at 9:49 PM, Phil Corwin <psc(a)vlaw-dc.com> wrote: >>> >>> Mason: >>> >>> >>> >>> Given that you have the delicate task of interfacing with the GAC, I think >>> your proposed minor modifications are fine. >>> >>> >>> >>> Best, Philip >>> >>> >>> >>> Philip S. Corwin, Founding Principal >>> >>> Virtualaw LLC >>> >>> 1155 F Street, NW >>> >>> Suite 1050 >>> >>> Washington, DC 20004 >>> >>> 202-559-8597 <tel:202-559-8597> /Direct >>> >>> 202-559-8750 <tel:202-559-8750> /Fax >>> >>> 202-255-6172 <tel:202-255-6172> /cell >>> >>> >>> >>> Twitter: @VlawDC >>> >>> >>> >>> "Luck is the residue of design" -- Branch Rickey >>> >>> >>> >>> From: Mason Cole [mailto:mason@donuts.co] >>> Sent: Wednesday, November 05, 2014 3:50 PM >>> To: Phil Corwin >>> Cc: gnso-igo-ingo-crp(a)icann.org >>> Subject: Re: [Gnso-igo-ingo-crp] PLEASE RESPOND ASAP -- Revised Draft of >>> Letter to Council regarding GAC Communique >>> Importance: High >>> >>> >>> >>> Phil -- >>> >>> >>> >>> In my capacity as liaison, let me suggest an edit or two in the bullet point >>> in question that might give us better luck in getting some useful >>> information from the GAC: >>> >>> >>> >>> In regard to the issue of potential amendment of the UDRP It would be >>> instructive to know the GAC¹s rationale for opposing any UDRP amendments as >>> a means of providing IGOs with access to curative rights. Further, in >>> opposing such amendments, does the GAC thus advise the GNSO to preclude any >>> possible change to its "Mutual Jurisdiction" provisions to address specific >>> sovereign immunity concerns of IGOs? Finally, if it is the GAC¹s position >>> that an entirely new curative rights mechanism must be created, is it the >>> GAC's understanding that the protections afforded to qualifying IGOs under >>> Article 6ter of the Paris Convention would be the criteria for establishing >>> standing under any dispute resolution procedure that may apply to IGOs? >>> >>> >>> >>> On Nov 5, 2014, at 11:56 AM, Phil Corwin wrote: >>> >>> >>> >>> WG members: >>> >>> >>> >>> Please find attached a revised draft letter to the GNSO Council regarding >>> the LA GAC Communique that reflects our discussion earlier today. >>> >>> >>> >>> The only changes are to the second bullet point on page 3. >>> >>> >>> >>> PLEASE LET US KNOW IF THESE CHANGES ARE ACCEPTABLE WITHIN THE NEXT 24 HOURS. >>> WE WANT TO FORARD THIS LETTER TO THE COUNCILL ASAP TO MAXIMIZE THE >>> POSSIBILITY THAT IT WILL BE ADDED TO THE AGENDA FOR ITS MEETING NEXT >>> THURSDAY. >>> >>> >>> >>> Thanks in advance. >>> >>> >>> >>> Best, Philip >>> >>> >>> >>> Philip S. Corwin, Founding Principal >>> >>> Virtualaw LLC >>> >>> 1155 F Street, NW >>> >>> Suite 1050 >>> >>> Washington, DC 20004 >>> >>> 202-559-8597 <tel:202-559-8597> /Direct >>> >>> 202-559-8750 <tel:202-559-8750> /Fax >>> >>> 202-255-6172 <tel:202-255-6172> /cell >>> >>> >>> >>> Twitter: @VlawDC >>> >>> >>> >>> "Luck is the residue of design" -- Branch Rickey >>> >>> >>> >>> <ICANN-IGO_INGO_CRWG-Letter to GNSO >>> Council-LA_GAC_Advice-draft#2.docx>_________________________________________ >>> ______ >>> Gnso-igo-ingo-crp mailing list >>> Gnso-igo-ingo-crp(a)icann.org >>> https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp >>> >>> >>> >>> Mason Cole >>> >>> VP Communications & Industry Relations >>> >>> Donuts Inc. >>> >>> >>> >>> >>> >>> >>> >>> mason(a)donuts.co >>> >>> Ofc +1 503 908 7623 <tel:%2B1%20503%20908%207623> >>> >>> Cell +1 503 407 2555 <tel:%2B1%20503%20407%202555> >>> >>> >>> >>> >>> >>> >>> >>> >>> >>> >>> No virus found in this message. >>> Checked by AVG - www.avg.com <http://www.avg.com> >>> Version: 2015.0.5315 / Virus Database: 4189/8462 - Release Date: 10/27/14 >>> Internal Virus Database is out of date. >>> >>> >>> _______________________________________________ >>> Gnso-igo-ingo-crp mailing list >>> Gnso-igo-ingo-crp(a)icann.org >>> https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp >>> >>> >>> >>> >>> No virus found in this message. >>> Checked by AVG - www.avg.com <http://www.avg.com> >>> Version: 2015.0.5315 / Virus Database: 4189/8462 - Release Date: 10/27/14 >>> Internal Virus Database is out of date. >>> >>> _______________________________________________ >>> Gnso-igo-ingo-crp mailing list >>> Gnso-igo-ingo-crp(a)icann.org >>> https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp >> _______________________________________________ >> 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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IGOs
by Paul Keating Nov. 6, 2014

Nov. 6, 2014

Phil, I want to add something to George's recent email regarding the need to privately enforce. I believe there may be a common misconception in the WG that the names etc of IGOS are trademarks just because they are referenced in the Paris Convention. This is not the case. 6ter of the Convention does not create TM rights. Rather the Paris Convention merely provides that members will not allow registration or use of identical symbols by others for use AS TRADEMARKS. Art 6ter was subsequently expanded to apply to and benefit all WTO members. This means several things. 1. Use for non-trademark purposes is not prohibited, 2. Registration or use of the trademark is prohibited only if it "suggest[s] to the public that a connection exists between the organization concerned and the armorial bearings, flags, emblems, abbreviations, and names"; 3. Registration or use of the trademark is allowed if it "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." 4. "Prohibition of the use of official signs and hallmarks indicating control and warranty shall apply solely in cases where the marks in which they are incorporated are intended to be used on goods of the same or a similar kind." 5. The requirement is "heraldic". As State emblems frequently comprise common symbols, such as a lion, an eagle or the sun, imitations are forbidden only if they reproduce the heraldic characteristics of the State sign concerned. In consequence, the symbol as such remains free and may be used in the composition of trademarks. So, the convention neither creates a right nor precludes registration in absolute terms. The operative language is as follows: > “(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. > > (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. > > (c) No country of the Union shall be required to apply the provisions of subparagraph (b), above, to the prejudice of the owners of rights acquired in good faith before the entry into force, in that country, of this Convention. The countries of the Union shall not be required to apply the said provisions 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. > > (2) Prohibition of the use of official signs and hallmarks indicating control and warranty shall apply solely in cases where the marks in which they are incorporated are intended to be used on goods of the same or a similar kind. " > In looking at the language (and the relevant language of 15 USC 1152), it thus does not appear that IGO names, etc are in fact provided the status of trademarks. Rather, any "right" is limited to a right to prevent any person from registering a Heraldically identical sign for use AS A TRADEMARK. And, even this blocking right is further limited as noted above (items listed 2-4). IMPACT ON ANALYSIS. This impacts,our analysis in several important aspects. Standing. For those IGOs that have no trademark registration (in any country), the absence of registration rights means that standing under current CRPs requires establishment of common law trademark rights. Although the Paris Convention established a centralized Database of covered symbols etc, (http://www.wipo.int/article6ter/en) It is clear that registration with the "international bureau" does not create rights. This is evident in the objection process which allows any state to simply object to a proposed name/symbol but does not require resolution of the objection. There have in fact been objections in the past to both state and IGO communications. If the common law approach is felt to be insufficient, the only way I see around the issue would be to either amend the UDRP (and each NewgTLD policy) to include State and IGO names/symbols appearing in the WIPO database as "trademarks" under the 1st Element f the Policy, or create an entirely new CRP system. Additional changes to the UDRP may be required as a result of: (a) The absolute limitation of any right when complained of use is not as a trademark; (b) Limitations on the blocking right which go beyond or are arguably different from the language of the Policy relative to legitimate rights and bad faith (non TM use and no confusion); (c) The Convention' somewhat inconsistent reference to registration OR use as a trademark; (d) The absolute limitation of any restriction to prospective application only (meaning no enforcement as against marks that pre-dated the particular State or IGO name or symbol). And, of course the above does not address the issues of costs and/or immunity. :( I attach a link to a very good review of the 6ter issue published in 2005 by the STANDING COMMITTEE ON THE LAW OF TRADEMARKS. It includes the actual text of the Paris Convention AND the explanatory notes published there with. See:http://www.wipo.int/edocs/mdocs/sct/en/sct_15/sct_15_3.pdf Also, I note two added references which I have not been able to obtain thus far (Mary could you assist please). These are, 1. Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property, WIPO Publication No. 611, WIPO, Geneva, 2004, pp. 94-103 - a detailed legal analysis to Article 6ter. 2. Document P/A/XIX/4, Report adopted by the Assembly of the Paris Union which appears to be a 1992 memorandum outlining the basic requirements that each 6ter symbol/name must meet to qualify. Please ignore any typos etc. I find it difficult to produce anything serious on an IPad. Regards, Paul Keating

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Re: [Gnso-igo-ingo-crp] PLEASE RESPOND ASAP -- Revised Draft of Letter to Council regarding GAC Communique
by George Kirikos Nov. 6, 2014

Nov. 6, 2014

Hello, The revised draft letter looks fine to me. On another note, I noticed that the GAC website lists all the "observers": https://gacweb.icann.org/display/gacweb/GAC+Observers with most of their contact information. To disintermediate, perhaps we should extend an invitation to the IGO observers (there are a few non-IGOs, e.g. Red Cross) to see whether they'd join our working group? Sincerely, George Kirikos 416-588-0269 http://www.leap.com/

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Re: [Gnso-igo-ingo-crp] Agenda and document for review, for WG call on Wednesday 5 November
by Paul Keating Nov. 5, 2014

Nov. 5, 2014

Hello all, I wanted to provide the following prior to the upcoming call. I am still bothered by the apparent desire to treat organizations differently and to limit the work of the WG artificially (IMO). I am concerned doing so will lead to (a) further work, (b) inconsistent conclusions and treatment, and (c) an eventual watering down of the dispute process and the rights of registrants.. In reviewing the following please remember that the value of domain names is continuing to increase and they will become more prominently used by serious businesses. In other words, we are no longer in the days of presuming the problem is squatters and the like. I see three (3) issues here: 1. Standing (what it takes to participate in the curative process) 2. Immunity issues (the apparent waiver caused by the complainant's selection pif the Mutual Jurisdiction) 3. Costs STANDING: It seems to me that there is a single standing threshold to be met here for any curative rights namely a trademark. Whether that mark exists as a function of registration under national law or under some vague concept of common law (which the UDRP panels have applied even as to complainants in civil law jurisdictions with no "common law" trademark jurisprudence) makes little or no difference be cause the existence of the trademark is the most basic of standing requirements. Treaties are not a separate form of law as treaties only have meaning as adopted by the national laws of those States who are signatories to the treaty. In short there is no "international executive or legislative branch". Thus, any protection granted by treaty must be in turn founded in the national laws of the signing states. Thus, bits of the Paris Convention is included as part of the Lanham Act. If a complainant (whether an IGO, INGO, or any other person or entity) cannot establish this threshold then there should be no further discussion. To hold otherwise means that we are now embarking on creating a new curative rights mechanism with a new standing criteria. This would be highly problematic for the reasons we have all discussed and I do not believe doing so would be consistent with any mandate received. So, it seems to me we can logically deal with each type of person/entity under the same standing requirement. We have no need to discriminate here. This leaves us with two subsequent issues to face immunity and costs. IMMUNITY. As I noted in an earlier email, immunity is not absolute and a waiver in one instance is not a waiver for all instances. Thus, a State is immune unless it is engaging in activities not relevant to governance (e.g. Airlines). The government loses its immunity as to matters concerning the operation of the airline but not otherwise. In this case, the issue is registration of the domain name. The question is by whom. Registration by INGO/IGO, etc. In this case the complainant has already agreed to the traditional RA which incorporates the UDRP and other provisions. I would argue that the act of registration already waived immunity issues at least to the extent concerning the contractual relationship (with the registrar). As far as any curative rights proceeding, that would automatically occur as a matter of law when the IGO/INGO filed a complaint and selected the Mutual Jurisdiction. However, that wavier occurred ONLY with respect to the nature of the action a dispute over a domain. Courts are intelligent enough to see through an attempt to expand liability beyond that point. So, I really do not see this as a huge issue warranting a separate process. And, if it were, it could be aided by either amending the RULES of procedure clarifying that by consenting the the MJ, the consent is only as to the issues pertaining to domain name registration. In other words, the MJ provision could limit any potential exposure of the IGO/INGO. This could be done without requiring changes to the the UDRP itself. Registration by third party (protective rights of IGO/INGO). In the case in which a third party registers a domain the IGO/INGO believes to be infringing, existing mechanisms are sufficient. The IGO/INGO can participate with TMCH to the extent it otherwise qualifies. Again, if it holds no trademark rights, it has no standing any any curative rights mechanism. I see no reason to allow them special treatment to receive notice when they cannot do anything about the registration. Thus, if they qualify they can have appropriate notice and determine whether or not to file a claim using existing curative rights mechanisms. COSTS. Someone has to pay for the process. Just because entities do good things does not remove them from economic reality. Nor does it give us the right to impose a "tax" on someone else to cover the costs that the IGO/INGO does not want to (or perhaps even cannot) pay. I am not expecting any of the ADR providers to jump up an volunteer even WIPO which itself is an IGO who one would think should assist its "brethren". This leaves ICANN or the respondent. ICANN is a doubtful funding agent as it sets a very dangerous precedent for them. Again, the respondent should not be made to pay this amount and even if we attempted to impose it upon registrants they could easily escape it by registering their domains for 10 years prior to the effective date of any change (remember we are able only to impose this "new" system as a matter of contract via the RAA and the RA. So this returns us to the point that regardless of their good deeds, unless an IGO or INGO can get the law firm to donate time and filing fees, it simply cannot afford to take advantage of the process. This is nothing new and both claimants and defendants (even those with VERY good claims) are regularly denied access to the wheels of justice. Erosion of Standards: I remain concerned as well that by separating out various entities we run the risk of treating them inconsistently. The tendency here may be to have the rules for each entity group be slightly different. This will lead to confusion and conflict. The UDRP has already become so watered down that the language of the 1st element (which is a standard term of art for trademark disputes) has become nothing more than a "standing" hurdle that a worm could cross without much trouble. So, I return again to my original point which is why distinguish? It makes no sense unless we are embarking on the establishment of a new standing requirement. I have not heard any consensus views in favor of such a process. Hence the "consensus" to differentiate makes little sense from a logical perspective and will only make further work for someone down the road, potentially leading to inconsistencies that we will all regret. Sincerely, Paul Raynor Keating, Esq. Law.es <http://law.es/> Tel. +34 93 368 0247 (Spain) Tel. +44.7531.400.177 (UK) Tel. +1.415.937.0846 (US) Fax. (Europe) +34 93 396 0810 Fax. (US)(415) 358.4450 Skype: Prk-Spain email: Paul(a)law.es THE INFORMATION CONTAINED IN THIS E-MAIL IS CONFIDENTIAL AND MAY CONTAIN INFORMATION SUBJECT TO THE ATTORNEY/CLIENT OR WORK-PRODUCT PRIVILEGE. THE INFORMATION IS INTENDED ONLY FOR THE USE OF THE INDIVIDUAL OR ENTITY TO WHOM IT IS ADDRESSED. IF YOU ARE NOT THE INTENDED RECIPIENT, NO WAIVER OF PRIVILEGE IS MADE OR INTENDED AND YOU ARE REQUESTED TO PLEASE DELETE THE EMAIL AND ANY ATTACHMENTS. Circular 230 Disclosure: To assure compliance with Treasury Department rules governing tax practice, we hereby inform you that any advice contained herein (including in any attachment) (1) was not written or intended to be used, and cannot be used, by you or any taxpayer for the purpose of avoiding any penalties that may be imposed on you or any taxpayer and (2) may not be used or referred to by you or any other person in connection with promoting, marketing or recommending to another person any transaction or matter addressed herein. NOTHING CONTAINED IN THIS EMAIL SHALL CONSTITUTE THE FORMATION OF AN ATTORNEY/CLIENT RELATIONSHIP; SUCH A RELATIONSHIP MAY BE FORMED WITH THIS FIRM AND ATTORNEY ONLY BY SEPARATE FORMAL WRITTEN ENGAGEMENT AGREEMENT, WHICH THIS IS NOT. IN THE ABSENCE OF SUCH AN AGREEMENT, NOTHING CONTAINED HEREIN SHALL CONSTITUTE LEGAL ADVICE From: Mary Wong <mary.wong(a)icann.org> Date: Wednesday, November 5, 2014 12:45 AM To: "gnso-igo-ingo-crp(a)icann.org" <gnso-igo-ingo-crp(a)icann.org> Subject: [Gnso-igo-ingo-crp] Agenda and document for review, for WG call on Wednesday 5 November > Dear WG members, > > The agenda for our next meeting, on Wednesday 5 November, is as follows: > 1. Roll Call/Updates to SOI > 2. Discussion of questions to be sent to the GNSO Council/GAC-GNSO Liaison for > follow up on the GAC¹s Los Angeles Communique (see attached draft document > from the WG Co-Chairs) > 3. Discussion of possible distinction between: (a) IGOs & INGOs; (b) the Red > Cross and IOC compared to other INGOs > 4. Next steps > WG Co-Chair Petter Rindforth will chair the meeting. > > 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 > > > > _______________________________________________ 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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Follow up from the WG call earlier today
by Mary Wong Nov. 5, 2014

Nov. 5, 2014

Dear WG members, Please find attached: (1) the March 2014 letter sent by Cherine Chelaby, Chair of the Board¹s New gTLD Program Committee (NGPC), to GNSO Chair Jonathan Robinson informing the GNSO of the NGPC¹s proposal to the GAC concerning IGO protections; (2) the NGPC proposal; and (3) the subsequent Briefing Note (August 2014) sent by the GNSO Council to the NGPC regarding the initiation and chartering of our current Working Group. The Board¹s February 2014 resolution that led to the NGPC developing its March proposal can be found here: https://features.icann.org/protection-igo-ingo-identifiers-all-gtlds-pdp As mentioned on our call, these communications as well as the ongoing Board-GNSO discussions and GAC advice from Los Angeles show that the Board and the GAC are fully aware of the existence and work of our group. The pending WG letter that is to be sent to the GNSO Council for review and transmission to the GAC should serve as another update to and reminder of our ongoing work. 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, 05 November 2014 at 1700 UTC
by Terri Agnew Nov. 5, 2014

Nov. 5, 2014

Dear All, Please find the MP3 recording for IGO-INGO Access to Curative Rights Protection Mechanisms Working Group call on Wednesday, 05 November 2014 at 1700 UTC at: <http://audio.icann.org/gnso/gnso-igo-ingo-crp-access-20141029-en.mp3> http://audio.icann.org/gnso/gnso-igo-ingo-crp-access-20141105-en.mp3 On page: <http://gnso.icann.org/en/group-activities/calendar#nov> http://gnso.icann.org/en/group-activities/calendar#nov The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page: <http://gnso.icann.org/calendar/> http://gnso.icann.org/calendar/ Attendees: George Kirikos - Individual Jim Bikoff – IPC Paul Tattersfield – Individual Petter Rindforth – IPC Val Sherman – IPC Phil Corwin – BC Osvaldo Novoa – ISPCP Mason Cole – RySG Lori Schulman – NPOC Gary Campbell – GAC Alexander Lerman – no SOI David Healsley - IPC Nat Cohen – BC Paul Raynor Keating – NCUC Imran Ahmed Shah – NCUC Kathy Kleiman – NCUC Apologies: Jay Chapman – Individual Kristine Dorrain- Individual 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/> http://mm.icann.org/pipermail/gnso-igo-ingo-crp/ Wiki page: <https://community.icann.org/x/97rhAg> https://community.icann.org/x/97rhAg Thank you. Kind regards, Terri Agnew ------------------------------- Adobe Connect chat transcript for Wednesday, 05 November 2014: Nathalie Peregrine:Dear all, welcome to the IGO-INGO Curative Rights Protection PDP WG Meeting on the 5th November 2014 George Kirikos:Hi folks. Gary Campbell:Hi guys Osvaldo Novoa:Hi all Mason Cole:greetings George Kirikos:Paul Keating likely won't be able to make it (I had encouraged him to email his thoughts to the mailing list, so they could be considered during today's call) Mary Wong:@George, thanks for the head's up. I've prepared a document with Paul's notes that we can display on the screen when the topic comes up. Dietmar Lenden - Valideus Ltd:I'm sorry I'm not able to speak in the session today. Some issues in my side and not with the system at all. Mary Wong:@Dietmar, thanks - we'll be watching the chat so feel free to post your questions/comments, if any! Philip Corwin:Good day to all Mary Wong:The document is unsync'ed so everyone should be able to scroll through it. Terri Agnew:Nat Cohen has joined audio George Kirikos:Letter looks good to me. We need more 'colour' from them, rather than just a conclusion. George Kirikos:(conclusion = directive) Lori Schulman:Agree with George's comments. George Kirikos:Rationale is good language. If they come back with no rationale, then that is informative -- little weight should be given to input that has no rationale. George Kirikos:But, as we studied in subgroup B, half of the IGO reserved names aren't even registered in Article 6ter's database. Mary Wong:Will do, thanks, Phil George Kirikos:(I'm not sure if the spreadsheet was posted to the Wiki yet) Mason Cole:Very short proposal from me: In the second question, it would read, "What is the GAC's rationale for opposing..." Terri Agnew:Paul Keating has joined Paul Keating:Hello all. Sorry I am late George Kirikos:My question on the GAC leadership vacuuum was based on the article at: George Kirikos:http://www.theregister.co.uk/Print/2014/11/03/icann_icant_iwont_lifting_the_lid_on_the_net_lord_and_master/ Mary Wong:And from me: "is it the GAC's understanding that the protections afforded to qualifying IGOs under Article 6ter of the Paris Convention would be the criteria for establishing standing under any dispute resolution procedure that may apply to IGOs?" George Kirikos:"Unfortunately, the eventual winner of an election for the seat, Swiss civil servant Thomas Schneider, noted in his acceptance speech that it would take some time for him to reduce his current workload and suggested that Dryden stay on until the next ICANN meeting. Dryden was having none of it, leading to busy discussions about who would actually be in charge of representing the world's governments for the next four months." Terri Agnew:Imran Ahmed Shah has joined George Kirikos:(is everyone not talking on "mute"?) Terri Agnew:we are finding the line George Kirikos:The "active speakers" at the top of the attendees list can show 'noisy' lines) Paul Keating:Phil/Peder, On the last item on the letter, I suggest you also reference the possibility of amending the Mutual Jurisdiction language to allow IGOs to limit immunity wavier issue. Mary Wong:@Mason, that's true Mary Wong:@Paul, noted - thanks and I'll try to draft something Paul Keating:having problems with microphone. George Kirikos:Perhaps he forgot to unmute? Paul Keating:Can you see my chat above? George Kirikos:We can see the chat. Paul Keating:yes George Kirikos:From Spain, you can dial in by voice at 34-91-414-25-33 or 800-300-053 (code = IGO). Paul Keating:@George thanks. Paul Keating:OK George Kirikos:The risk of doing that is that they come up with a solid position that won't consider our own research. Terri Agnew:@Paul Keating, I sent you a private chat George Kirikos:Turn off speakerphone or computer audio, if you're on the phone. Paul Tattersfield:I agree George, there are other similar issues such as changes to process etc. George Kirikos:Rationale should be for "causes of problems". George Kirikos:Not for "rationales for their solutions." George Kirikos:i.e. we want rationale for inputs, not rationale for "outputs", if that makes sense. Terri Agnew:Kathy Kleiman has joined Lori Schulman:Thre is an echo on the audio Mary Wong:@Paul, please mute your computer to avoid echo with your phone line Kathy:Hi All, sorry to be late. George Kirikos:Paul probably has speaker phone or computer speakers on. George Kirikos:(Paul Keating, rather, since we have multiple Pauls) Paul Keating:actually it was all muted. just using the screen Mary Wong:@Petter, sorry, you're right - we did discuss all three issues for GAC response! Kathy:I don't normally quote Wikipedia, but here is a part of the INSO discussion: "Both terms, NGO and INGO, should be differentiated from intergovernmental organizations (IGOs), which describes groups such as the United Nations or the International Labour Organization. An INGO may be founded by private philanthropy, such as the Carnegie, Rockefeller, Gates and Ford Foundations, or as an adjunct to existing international organizations, such as the Catholic or Lutheran churches. A surge in the founding of development INGOs occurred during World War II, some of which would later become the large development INGOs like Oxfam, Catholic Relief Services, CARE International, and Lutheran World Relief." George Kirikos:Right, Kathy. As in the original email I sent to the list, it seemed like a single member of the prior working group thought that being on the UNESCO list made that subset of INGOs comparable to Article 6ter. George Kirikos:Which didn't make much sense, but that was the 'rationale' (or 'original sin', so to speak!). George Kirikos:The ECOSOC list, to be exact. Mary Wong:@George, @Kathy - right. The prior WG went through a lot of discussions in trying to figure out which INGOs to include. Paul Keating:how are the issues different? Kathy:@Mary, what proposal? Paul Keating:Phils ref to IGOs and Red Cross Paul Keating:They are no different from the other issues in my email. IMHO Kathy:@Mary, then isn't everything we are doing a waste of time - if the Board's New gTLD Committee is already proposing the answers? George Kirikos:That proposal wouldn't be a "Consensus Policy", though (whereas our work would). George Kirikos:Any policy we come up with would apply to all gTLDs (whereas the NGPC doesn't appear to have the abillity to touch .com/net/org, etc.) Paul Tattersfield:Dr Crocker replied to the GAC Communique on item 6 (the item after Protection of IGO Names & Acronyms) Paul Tattersfield:https://www.icann.org/en/system/files/correspondence/gac-to-bo… Mary Wong:@George, yes - our work would include legacy and new gTLDs, and could result in a Consensus Policy (or an amendment thereto) Lori Schulman:My understanding is that Lori Schulman:ROC and IOC have lobbied the GAC directly. Paul Tattersfield:Wrong link sorry - https://www.icann.org/en/system/files/correspondence/crocker-to-schneider-0… Lori Schulman:As an operational concern, NPOC supports RPMs for INGO's in general but whether they should be different for different orgs is the bigger question Mary Wong:@Paul, sorry - I put up the wrong document :( I put up my own summary and notes on what would need to be modified based on the NGPC's proposal. Mary Wong:I'll find the original document and send it to the WG mailing list ASAP. George Kirikos:Paul Keating's point is a good one, that there be underlying principles or a framework. If it's a "shortcut" to not consider all INGOs, there should be some principle behind it (i.e. there's no special circumstances for them). Lori Schulman:Do we know of any similiarly situated INGO's that have expressed concern about cost? George Kirikos:If we look at the ECOSOC list, it seems obvious that many INGOs on that list do have registered TMs. George Kirikos:e.g. AARP. George Kirikos:http://csonet.org/content/documents/e2013inf6.pdf Lori Schulman:I need to leave the call but I support submitting the letter as per the earlier discussion. George Kirikos:Covenant House has a US TM, see http://tsdr.uspto.gov/#caseNumber=73294464 <http://tsdr.uspto.gov/#caseNumber=73294464&caseType=SERIAL_NO&searchType=st…> &caseType=SERIAL_NO&searchType=statusSearch George Kirikos:So, they *already* have access. Nothing prevents them from obtaining marks, Lori Schulman:The standing issue re: who uses the RPM's makes the most sense to level the playing field. Lori Schulman:Ciao Kathy:@Paul, while I agree, I think we are being asked to consider whether a "6ter" notification is equivalent to a federal trademark - or one we (WG) are willing to recognize Kathy:? Mary Wong:@Kathy, I can't speak for the GAC but I would think that's the GAC/IGO position George Kirikos:Red Cross and IOC already have many registrations, and they've used the UDRP. Mary Wong:For IGOs anyway George Kirikos:(not sure if they used the URS yet) Paul Keating:@Kathy, That is a decision not up to us. The panelists can make that decision. The language exists in the Lanham Act and other national laws. Whether that is acceptable as a tm registration is up to the panels. Mary Wong:@Paul, the difference may be that while it may make sense to "sub" a TM registration with international legal rights, that would apply to IGOs (and presumably also the RC and IOC) but it would bar INGOs. Kathy:@All, I think we are being asked whether the "6ter" is something we want to expressly embrace in the UDRP George Kirikos:That was Paul Keating. George Kirikos:Before we go, should the subgroups continue meeting before the next call? Mary Wong:@George, we'll follow up with email and ntoes Paul Keating:yes pls Kathy:Is Singapore definite? Mary Wong:Yes Kathy Kathy:Tx Mary ... .and All! George Kirikos:Bye everyone. Kathy:Tx Chairs! Paul Tattersfield:Bye everyone Mason Cole:thanks!! Paul Keating:Kathy, I woiuld like to continue the conversation Paul(a)law.es <mailto:Paul@law.es> . Gary Campbell:Bye all

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Agenda and document for review, for WG call on Wednesday 5 November
by Mary Wong Nov. 4, 2014

Nov. 4, 2014

Dear WG members, The agenda for our next meeting, on Wednesday 5 November, is as follows: 1. Roll Call/Updates to SOI 2. Discussion of questions to be sent to the GNSO Council/GAC-GNSO Liaison for follow up on the GAC¹s Los Angeles Communique (see attached draft document from the WG Co-Chairs) 3. Discussion of possible distinction between: (a) IGOs & INGOs; (b) the Red Cross and IOC compared to other INGOs 4. Next steps WG Co-Chair Petter Rindforth will chair the meeting. 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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REMINDER: PLEASE RSVP Monthly GNSO WG Newcomer Open House Session
by Terri Agnew Nov. 4, 2014

Nov. 4, 2014

Reminder: Monthly GNSO WG Newcomer Open House Session These ongoing monthly sessions are for new GNSO WG participants to come together and discuss any questions they may have about GNSO Working Groups, procedures and/or processes. We know there is a lot of information to digest when you join a GNSO Working Group and these monthly meetings are an opportunity for newcomers and more experienced participants to meet in an informal setting without the pressure of "real work" that needs be done. The agenda is flexible. The presenters will be ready with a standard set of materials if people would like to discuss them. Feel free to submit questions, either in advance or at the beginning of the meeting, if there is a topic that you would like to explore in more depth . Providing useful answers to a wide range of questions is part of the reason why these meetings are Thursday 6 November at 20.00 UTC Thursday 4 December at 12.00 UTC To convert to your local time zone, please see http://www.timeanddate.com/worldclock/converter.html If you are interested to join the next meeting on 06 November or any of the future meetings, please let the GNSO Secretariat know ( <mailto:gnso-secs@icann.org> gnso-secs(a)icann.org) and we will send you the call details. If there are any specific questions you already have, or any overviews or introductions you think would be helpful (e.g. GNSO Policy Development Process or GNSO Working Group guidelines), please let us know in advance and we will prepare materials accordingly. Feel free to share this invitation with others that you think may be interested. We look forward to welcoming you at the next meeting! Nathalie Peregrine GNSO Secretariat

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Face to face facilitated Working Group session at ICANN52 in February 2015
by Mary Wong Nov. 4, 2014

Nov. 4, 2014

Dear WG members, At the GNSO Council¹s wrap up meeting in Los Angeles earlier this month, the Council discussed the selection of the next Working Group that it thought would be at a stage to benefit from the pilot project it is testing in this financial year (FY15). The pilot project is basically a one-day face to face meeting of a selected Working Group at an ICANN Public Meeting, with the objective of assisting that selected WG to complete its work effectively and efficiently through a full-day session run by a professional as well as a community-based facilitator. As our WG is making good progress such as to be on track for completing many of our chartered tasks by the ICANN53 Public Meeting in June 2015, the Council has selected our WG for the one-day facilitated session at ICANN52 in February 2015. This will be the second group selected for this one-year pilot project, the first having been the Privacy & Proxy Services Accreditation Issues PDP Working Group in Los Angeles. Feedback given by that WG following their one-day session indicates that they found it extremely helpful in working through some difficult questions and in further making progress toward completion of their work. Please note that funding for the one-day session is provided only for one or two nights¹ hotel accommodation; it does not cover airfare or other travel costs. In order to ensure sufficient representation at the meeting by the broad diversity of interests represented in the GNSO and other ICANN groups, each GNSO Stakeholder Group/Constituency and all other participating Supporting Organization/Advisory Committees will each be assigned 6 hotel nights (so that each group can nominate between 3 to 6 members to attend, for 1 to 2 nights each.) With this in mind, staff therefore proposes that the one-day session take place on the Friday immediately following the official end of the ICANN meeting, i.e. Friday 13 February 2015. Some of you may have heard that ICANN is currently considering postponing the February 2015 meeting due to the possibility of travel restrictions to Marrakech being placed on ICANN community members: https://www.icann.org/news/announcement-2014-10-26-en. I do not at this time have any updated information or confirmation of either a continuation, postponement or cancellation of the Marrakech meeting; however, should the meeting go ahead as planned, staff wanted you to have as much notice as possible of the additional meeting day for our WG. You may wish to note also that if your travel to ICANN52 will be covered at least in part by ICANN Constituency Travel, I am informed that the names and travel dates of ICANN-sponsored travelers will need to be submitted by 10 November 2014. Please look out for further notices about this and the fate of the Marrakech meeting from my colleagues who are involved in meeting and travel planning. I¹d be happy to provide more information about the one-day facilitated session on our call tomorrow. 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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FW: Letter from Steve Crocker to GAC Chair regarding GNSO/GAC role in gTLD policy development
by Mary Wong Nov. 4, 2014

Nov. 4, 2014

Dear WG members, Staff supporting this WG thought that you may be interested in the letter recently sent by Board Chair Dr Steve Crocker to Thomas Schneider, new GAC Chair (see message and link below). Although the activities referred to in Dr Crocker¹s letter do not have a direct bearing on our WG¹s activities, in light of the WG¹s discussion regarding questions to be sent back to the GAC via the GNSO Council and the GAC-GNSO liaison Mason Cole, we thought this might be helpful to your deliberations. 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 > Dear Council members, > > You and your communities will likely be interested in the latest letter sent > by Board Chair Steve Crocker to new GAC Chair Thomas Schneider, responding to > that part of the GAC advice in its London Communique in which the GAC > commented that protections for Red Cross designations ought not to be > conditioned on a PDP: > https://www.icann.org/en/system/files/correspondence/crocker-to-schneider-0… > v14-en.pdf > > Pertinent parts of Dr Crocker¹s letter include the following excerpt: "While > the GAC may participate in the policy development process, and has a role to > ³provide advice on the activities of ICANN as they relate to concerns of > governments, particularly matters where there may be an interaction between > ICANN¹s policies and various laws and international agreements or where they > may affect public policy issues,² the GNSO has the authority to recommend > substantive policies on topics that are within the scope of ICANN¹s mission > statement, has potentially broad applicability to multiple situations or > organizations, is likely to have lasting value or applicability, and will > establish a guide or framework for future decision-making. The Board has > concerns about the advice in the London Communiqué because it appears to be > inconsistent with the framework established in the Bylaws granting the GNSO > authority to recommend consensus policies to the Board, and the Board to > appropriately act upon policies developed through the bottom-up consensus > policy developed by the GNSO.² > > Dr Crocker¹s letter also serves to ³kick off² the prescribed Board-GAC > consultation process envisaged in the ICANN Bylaws in instances where the > Board disagrees with GAC advice. > > 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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