Thanks for raising that, George, We can get into those details on today’s call.

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: gnso-igo-ingo-crp-bounces@icann.org [mailto:gnso-igo-ingo-crp-bounces@icann.org] On Behalf Of George Kirikos
Sent: Monday, September 15, 2014 6:49 AM
To: gnso-igo-ingo-crp@icann.org
Subject: Re: [Gnso-igo-ingo-crp] Attachments (Re: Agenda and documents for WG meeting on Monday 15 September)

It's unclear to me how General Counsel arrived at some of his conclusions. e.g for the United States and IGO Protections, (right-most column), it was stated (with no reference/authority) that:

"The US Patent and Trademark Office is required to refuse registrations of marks that conflict with registered marks of IGOs, so no registration is possible (once the marks are identified to the USPTO by a member country of the Paris Convention). No special protection seems to exist to bar the delegation of top- or registration of second-level domains containing the IGO names or acronyms by ICANN, a registry or registrar."

Yet, consider the example of the mark "IEA". It's registered by the International Energy Association, an IGO according to:

http://en.wikipedia.org/wiki/List_of_intergovernmental_organizations

via the Article 6ter convention:

http://tsdr.uspto.gov/#caseNumber=89001408&caseType=SERIAL_NO&searchType=statusSearch

with a filing on March 20, 2002. Yet, the identical mark "IEA" was registered 2 years later (on May 4, 2004):

http://tsdr.uspto.gov/#caseNumber=76518784&caseType=SERIAL_NO&searchType=statusSearch

by a different entity, for "arranging and providing for the return of mortal remains to designated locations". Reviewing the documents for that application, it appears that markholder sought no special permission from the International Energy Association, yet was not refused the mark.

I think this hinges on the meaning of "conflict", perhaps -- i.e there's no conflict if the goods and services are unrelated. So, General Counsel's analysis might be correct if it permits concurrent registrations of unrelated goods/services for the same mark. Does that make sense? Thoughts?

I'm sure there are other examples out there (it took me 5 mins to find that one).

Sincerely,

George Kirikos
416-588-0269

http://www.leap.com/

On Mon, Sep 15, 2014 at 6:23 AM, George Kirikos <icann@leap.com> wrote:

This was a considerable amount of material to send just 1 business day before a call. I hope everyone had sufficient time to review. This is why I asked during the chat:

http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2014-September/000041.html

"George Kirikos:Can we have the draft work plan well in advance of the next meeting?"
George Kirikos:(if we're just seeing it for the first time next Monday, we won't be able to put forth meaningful comments/analysis)

Sincerely,

George Kirikos
416-588-0269

http://www.leap.com/

On Fri, Sep 12, 2014 at 5:08 PM, Mary Wong <mary.wong@icann.org> wrote:

Apologies for forgetting the Work Plan attachments the first time!

Cheers
Mary

From: Mary Wong <mary.wong@icann.org>
Date: Friday, September 12, 2014 at 5:01 PM
To: "gnso-igo-ingo-crp@icann.org" <gnso-igo-ingo-crp@icann.org>
Subject: [Gnso-igo-ingo-crp] Agenda and documents for WG meeting on Monday 15 September

Dear WG members,

Please find below a proposed agenda for the upcoming WG call on Monday 15 September, which staff have suggested to our Co-Chairs but have not yet had a chance to discuss more fully. As such, it is subject to any changes that they may wish to make between now and our call:
Roll Call/Updates to SOIs
Review Work Plan (see attached Work Plan Extract and full Work Plan Chart on which the Extract is based; we will use the Extract to walk the WG through each proposed phase on Monday)
Discuss outcomes of prior research (see the list on the WG wiki space at https://community.icann.org/x/DrvhAg, as further explained below)
Next steps
For agenda item #3, we have added some documents comprising research, findings and other reports used by the original IGO-INGO PDP WG for its Final Report that was issued in November 2013. Among the documents added, WG members may wish to note in particular:

(1) the ICANN General Counsel’s research report to that WG from May 2013 (https://community.icann.org/download/attachments/48347918/ICANN%20GCO%20Report%20to%20IGO%20INGO%20PDP%20WG%20May%202013.doc?version=1&modificationDate=1410554576915&api=v2);
(2) Annex 4 of the Final Issue Report that led to the initiation of that WG from October 2012 (https://community.icann.org/download/attachments/48347918/Final%20GNSO%20Issue%20Report%20on%20the%20Protection%20of%20International%20Organization%20Names%20in%20New%20gTLDs.pdf?version=1&modificationDate=1410554706870&api=v2);
(3) The OECD’s report on cybersquatting to WIPO’s Standing Committee on Trademarks (SCT) from 2002 (https://community.icann.org/download/attachments/48347918/OECD%20Report%20on%20Cybersquatting%20to%20WIPO%20SCT%202002.pdf?version=1&modificationDate=1410554353329&api=v2);
(4) The Red Cross movement’s report on special protections to WIPO’s SCT from 2002 (https://community.icann.org/download/attachments/48347918/IFRC%20Report%20to%20WIPO%20SCT%20on%20Special%20Protections%202002.pdf?version=1&modificationDate=1410554389301&api=v2); and
(5) The WIPO Secretariat’s report on IGO protections, also from 2002 (https://community.icann.org/download/attachments/48347918/WIPO%20Secretariat%20Report%20on%20IGO%20Protections%202002.pdf?version=1&modificationDate=1410554411330&api=v2).

ICANN staff will summarize some of the key findings from these documents for further WG review and discussion under agenda item #3. We hope that this will provide a useful basis for WG members to decide on next steps in accordance with the proposed Work Plan (agenda item #4).

Thanks and cheers
Mary

Mary Wong
Senior Policy Director
Internet Corporation for Assigned Names & Numbers (ICANN)
Telephone: +1 603 574 4892
Email: mary.wong@icann.org

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