Dear All, Please find the attendance and MP3 recording for the IGO-INGO Curative Rights Protection PDP WG Meeting held on Thursday, 01 September 2016 at 16:00 UTC at: http://audio.icann.org/gnso/gnso-igo-ingo-crp-access-01sep16-en.mp3 On page: https://gnso.icann.org/en/group-activities/calendar#sep The recordings and transcriptions of the calls are posted on the GNSO Master Calendar page: http://gnso.icann.org/en/group-activities/calendar<http://gnso.icann.org/en/group-activities/calendar#nov> Attendees: David Maher - PIR George Kirikos - Individual Petter Rindforth - IPC Phil Corwin - BC Jay Chapman - Individual Paul Tattersfiled - Individual Mason Cole - RySG Lori Schulman - IPC Jim Bikoff - IPC Holly Lance - IPC Apologies: Osvaldo Novoa Kathy Kleiman Steve Chan (Staff) ICANN staff: Mary Wong Glen de Saint Gery Terri Agnew ** Please let me know if your name has been left off the list ** Mailing list archives: http://mm.icann.org/pipermail/gnso-ppsai-pdp-wg/ Wiki page: https://community.icann.org/x/9iCfAg Thank you. Kind regards, Terri Agnew ------------------------------- Adobe Connect chat transcript for Thursday, 01 September 2016 Terri Agnew:Dear all, welcome to the IGO-INGO Curative Rights Protection PDP WG Meeting on the Thursday, 01 September 2016 Terri Agnew:agenda wiki page: https://community.icann.org/x/fxisAw George Kirikos:Hi folks. Petter Rindforth:Hi there! George Kirikos:Hi Petter. Jay Chapman:Hello, everyone George Kirikos:Hi Jay. Paul Tattersfield:Hi All George Kirikos:Hi Paul. George Kirikos:Some folks might be trying for a 5-day long weekend. :-) Lori Schulman:Hi Terri Agnew:Welcome Lori Schulman Lori Schulman:I am in favor of 5 day weekend. Lori Schulman:Mary, you sound like Lauren Bacall Mary Wong:@Lori, haha - thanks! Terri Agnew:Welcome Phil Corwin Mary Wong:@Petter, yes that is correct Philip Corwin 2:Hello all George Kirikos:Welcome clone of Phil. :-) Philip Corwin:Have no idea how that happened, as I only logged in once Mary Wong:Phil has a doppelganger Philip Corwin:But my alter ego has been sent back to the attic ;-) George Kirikos:I wish I had a clone -- it could do all my work, so I could relax. :-) George Kirikos:lol Phil George Kirikos:Is anyone here against the emerging consensus? (i.e. like the movie "12 Angry Men", perhaps they should have the floor, if they exist) George Kirikos:Article 6ter is more about blocking rights. Paul Tattersfield:but that doen't matter for UDRP does it Mary? George Kirikos:But, the blocking right doesn't make it a total blocking, if the proposed TM application isn't going to cause confusion, etc. George Kirikos:So, in a sense, it implies that Article 6ter registration is akin to (unregistered) TM rights, for the goods/services the IGO provides. Mary Wong:@Paul, that's part of our question. It seems that the first ground under the UDRP depends on having substantive trademark rights. That isn't the same protection as what Article 6ter provides. George Kirikos:Of course, the IGOs can/do register those TM rights in some nations, too, to be more direct than their unregistered marks. Mary Wong:And our concern here is the risk of expanding legal rights in the DNS where there isn't a substantive equivalent in the TM realm. Mary Wong:@George, blocking a third party from registering a TM isnt the same as having substantive ritghts you can enforce. Paul Tattersfield:the registration of trademarks don't confer the rights just evidence them George Kirikos:True, Mary, although it's somewhat implied that the IGO must have TM rights, otherwise why would they register in the Article 6ter DB in the first place? Mary Wong:@Paul, yes, but the fact remains (doesn't it?) that there must be a substantive legal right. So the question is, does 6ter confer that on IGO names and acronyms? George Kirikos:+1 Paul. Mary Wong:6ter language - countries must "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" George Kirikos:If one consults with the USPTO TM database, and searches for "Article 6ter", there are 704 marks under the 8900xxxxx series, that are in the database. George Kirikos:Under "Refine Search", I use: (article 6ter)[ALL] Paul Tattersfield:exactly 6ter allows those entries Philip Corwin:Thanks Mary. So that language clearly goes beyond just blocking -- allows for subsequent invalidation or prohibitions on use. Mary Wong:Text of 6ter (see (1)(a)) - http://www.wipo.int/article6ter/en/legal_texts/article_6ter.html Paul Tattersfield:@ phil in all classes or conflicting classes Philip Corwin:When I say "standing" I mean the qualification to initiate a UDRP or URS due to rights in a name or acronym that is identical or confusingly similar to the allegedly infringing domain(s). Mary Wong:ok thanks Phil Mary Wong:So basically Policy Guidance (authoritative) that says "TM rights" under the UDRP and URS includes, for IGOs only, the protections under 6ter (if they fulfill the filing and notification requirements). Philip Corwin:Article 6ter clearly creates certain rights in signatory and WTO nations George Kirikos:WIPO Views, #1.7, is also very broad, making standing fairly easy for IGOs. http://www.wipo.int/amc/en/domains/search/overview2.0/#17 Paul Tattersfield:(1)(a) should be sufficient to prevent a claimant trying to take away domain from a state or an IGO since (1)(b) extends a subset of a state's rights found in (1)(a) to IGOs. but (1)(a) can not be used to secure the property and rights of others who are not infringing a state's (or IGO's) marks. Philip Corwin:@Paul--I believe the question of classes in addressed when an examiner looks at the actual use of the domain -- e.g., where an apple-related domain has content related to electronics or to fruits or something else unrelated to the famous California company Mary Wong:We just wanted to raise our concern over the possible distinction between a "right to prevent third party registrations" and a "substantive legal right that can be enforced". Paul Tattersfield:This is reinforced in (1)(c) which goes on to mention cases where (1)(a) shall not apply are where "it is not" and "is probably not" of such a nature as to mislead the public as to the existence of a connection between the user and the organisation Paul Tattersfield:This is very important because a more broad interpretation risks creating a false sense of entitlement, in the same way some companies (and even certain panellists) when presented with a newly registered trademark feel UDRP gives them an explicit right to have a domain transferred even when there is no infringement whatsoever of underlying goods or services. George Kirikos:Right, Paul. Philip Corwin:@Mary--the quoted language from A6ter appears to confer substantive legal rights in signatory nations Lori Schulman:To my recollection from my examiner days there absolutely are substantive legal rights Lori Schulman:Mary is first Mary Wong:@Lori, the recommendation under consideration here is whether an IGO that just has an Article 6ter notification - without any national TM registrations - can file a UDRP or URS complaint. Sounds like the WG is inclined to say yes. Paul Tattersfield:the existing rrights are already protected under udrp whether or whether there is not a newly minted trademark Lori Schulman:Yes, I am inclined to say yes Lori Schulman:I may have confused the question. Lori Schulman:My apologies. The broad statements about new TM registrations is what raised an issue for me Lori Schulman:Thanks, Paul. George Kirikos:Tarnishing. Lori Schulman:Yes, but they have uses in commerce Lori Schulman:performing public services, publishing content, etc George Kirikos:Even non-profits have services, e.g. "fundraising" or "promotion of XXXXXX" or .... Lori Schulman:There is a duality with IGOs and INGOs Lori Schulman:It's the duality that is prompting this WG Mary Wong:THanks, all - this has been very helpful and instructive for staff as we try to put "meat on the bones" of the outline report. Philip Corwin:IMHO if an IGO is eligible to assert A6ter protections it can assert UDRP or URS standing, regardless of whether it is on the GAC's list Lori Schulman:I agree with Phil George Kirikos:Article 6ter database seems to have some State Emblems (registered by countries, not IGOs), so we should be careful to state that Article 6ter registration in itself is just for IGOs. George Kirikos:(otherwise countries could try to "expand" rights, to claim their country names, etc., if they get rid of the figurative elements of those emblems) Mary Wong:@Petter, do we have a conclusion(s) from the WG about the policy options for immunity? Philip Corwin:@george--we can make clear in our standing recommendations that they apply only to IGOs that have registered under A6ter George Kirikos:e.g. search for "Canada" or "Iceland" in the Article 6ter online database. George Kirikos:Thanks Phil. George Kirikos:No change in the policy for immunity, but greater education for IGOs. Mary Wong:I ask b/c we didnt get any responses or much discussion about the UNCITRAL rules as I recall. George Kirikos:(e.g. assignment, licensing, etc.) Mary Wong:More broadly, the pros and cons about either using them as an arbitral appeal option, or amending the Mutual Jurisdiction clause wording (per Prof Swaine). George Kirikos:I wouldn't add the UNICTRAL section to the UDRP. Paul Tattersfield:Should we suggest that the RPM WG look at a voluntary internal appeals process for UDRPs the IGO's raised the issue of outlier decisions by panels? George Kirikos:(i.e. wouldn't change the UDRP at all, but suggest greater education) Mary Wong:Thanks Phil. George Kirikos:The IGO would have waived immunity, though, and IGOs are perfectly capable of waiving that immunity, as per the report. George Kirikos:(by Swaine) Lori Schulman: I have asked Brian Beckham for any data INCITRAL rules favoring UN agencies as a data point Lori Schulman:I can't type. My apologies. George Kirikos:Bye everyone. Have a nice long weekend. Lori Schulman:Data about decisions for or against UN agencies under UNCITRAL Lori Schulman:Ciao George Kirikos:That'd be 1 pm Eastern time, then? Fine for me. Paul Tattersfield:thanks all , bye Mary Wong:@George, yup Philip Corwin:Yes 1 pm ET Mary Wong:And 1 a.m. for me in Asia :) George Kirikos:Bye folks. Philip Corwin:Bye all