Thanks Mary,
I note that your text includes footnotes. Can you kindly provide the full text including any notes.
As for considering the point, even assuming there is substance to the possible amendment, it requires substantial background work (see belo) and I thus continue the suggestion that it be tabled until 2015. I think the discussion as to the Sov. Immunity issue will consume the time available during next call.
as to the amendment:
1. As to the 6ter reference, my initial comments are:
It is duplicative of any coverage under trademark laws.
It also precludes any analysis as to whether it is capable of TM protection under applicable law (the lack of vetting is oft cited as a reason for not allowing US state tms).
2. As for the treaty coverage, my initial comments are:
Any such treaty would be required to be either unanimous or agreed to by the states wherein the registrar, registrant and complainant reside. Otherwise there would be no basis in law to provide foundation. For example, would a reference in a treaty as between Mexico and Guatemala provide a sufficient basis?
What type of treaties would be included? Tax treaties, trade agreements, etc??
It would seriously expand the complexity of UDRP/URS as panels would need to be aware of all of the various treaties between the various member states AND the legal status of such treaties (e.g. Whether ratified, whether or not exceptions have been noted, etc).
Paul Keating
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 drafttext that was produced for the GNSO Council in 2007 for an alternativedispute resolution procedure (DRP) (attached). As you¹ll recall this waspart of the scoping that had been done at the time for an Issue Reportwhich, however, did not lead to any policy work for lack of requisitevotes on the GNSO Council.Of particular note is the modification of the UDRP requirements for acomplaint and thus a mandatory administrative proceeding under 4(a) of theUDRP to be as follows: "(i) the registration or use, as a domain name, of the name orabbreviation of the complainant that has been communicated under Article6ter of the ParisConvention is of a nature:(a) to suggest to the public that a connection exists between the domainnameholder and the complainant; or (b) to mislead the public as to the existence of a connection betweenthe domainname holder and the complainant; or(ii) on the ground that the registration or use, as a domain name, of aname orabbreviation of the complainant protected under an international treatyviolatesthe terms of that treaty.²The draft text therefore suggests two alternative grounds for standing inlieu of trademark rights.FWIW the draft text also deals with the sovereign immunity issue bydefining ³Mutual Jurisdiction² to be an arbitral tribunal constitutedunder the rules either of the AAA, ICDR, WIPO or the London Court ofInternational Arbitration (see Definitions under the Rules of Procedure,3.B.) I hope this is helpful.CheersMaryMary WongSenior Policy DirectorInternet Corporation for Assigned Names & Numbers (ICANN)Telephone: +1 603 574 4892Email: mary.wong@icann.org-----Original Message-----From: <Dorrain>, Kristine <kdorrain@adrforum.com>Date: Friday, 12 December 2014 10:09To: Jim Bikoff <jbikoff@sgbdc.com>Cc: "gnso-igo-ingo-crp@icann.org" <gnso-igo-ingo-crp@icann.org>Subject: Re: [Gnso-igo-ingo-crp] - Final SG/C Letter and Questions toConsiderAgree.
Sent from my iPhone
On Dec 11, 2014, at 5:45 PM, Jim Bikoff
<jbikoff@sgbdc.com<mailto:jbikoff@sgbdc.com>> wrote:
Agree.
Jim
James L. Bikoff
Silverberg, Goldman & Bikoff, LLP
1101 30th Street, NW
Suite 120
Washington, DC 20007
Tel: 202-944-3303
Fax: 202-944-3306
jbikoff@sgbdc.com<mailto:jbikoff@sgbdc.com>
Sent from my iPad
On Dec 11, 2014, at 7:34 PM, David W. Maher
<dmaher@pir.org<mailto:dmaher@pir.org>> wrote:
+1
David W. Maher
Senior Vice President Law & Policy
Public Interest Registry
312 375 4849
From: Mike Rodenbaugh <mike@rodenbaugh.com<mailto:mike@rodenbaugh.com>>
Date: Thursday, December 11, 2014 5:14 PM
To: Paul Keating <Paul@law.es<mailto:Paul@law.es>>
Cc: "gnso-igo-ingo-crp@icann.org<mailto:gnso-igo-ingo-crp@icann.org>"
<gnso-igo-ingo-crp@icann.org<mailto:gnso-igo-ingo-crp@icann.org>>
Subject: Re: [Gnso-igo-ingo-crp] - Final SG/C Letter and Questions to
Consider
Generally agree with Paul, and had the same basic feeling: "My reaction
to the standing issue is that there is absolutely no reason to even
consider it. The UDRP has always been founded on the pre-requisite of
a trademark. "
I am curious to hear if anyone could pose any other remotely justifiable
basis for standing, other than trademark rights.
Best,
Mike
Mike Rodenbaugh
RODENBAUGH LAW
tel/fax: +1.415.738.8087
http://rodenbaugh.com
On Thu, Dec 11, 2014 at 1:15 AM, Paul Keating
<Paul@law.es<mailto:Paul@law.es>> wrote:
Thank you Steve,
Regarding the questions noted below, I wanted to respond to a comment I
believe that Peder made during the call regarding the requirement that
trademarks were no longer the standing requirement they once were in the
UDRP. I believe he used the example of famous people's names. I have
not listened to the MP3 recording so, if I am mistaken in attributing the
comment to Peder, let me be the first to apologize for my error.
Peder, your comment was entirely incorrect. Those UDRPs involving famous
names have turned on whether the complainant's use of the name amounted
to a common law trademark right. In cases of mere fame without
commercialization, panels have found no t trademarks. In those in which
the names were clearly linked to commercial activities (music, books,
etc), the panels have found a common law trademark to exist. I know of
absolutely no UDRP decision in which the panel found a famous name
sufficient without also finding the requisite common law trademark right.
If you have one to mind, please share it and I will stand corrected.
My reaction to the standing issue is that there is absolutely no reason
to even consider it. The UDRP has always been founded on the
pre-requisite of a trademark. The WIPO White Paper was clear that the
UDRP should not be a vehicle for the creation or expansion of
intellectual proper rights in cyber-space beyond those existing in the
"real world". Notwithstanding the clear "identical and confusingly
similar" language, panels have watered down the 1st Element to one of
mere standing which as I have previously said, is such a low barrier
that a worm could easily cross. The panels did so by progressively
ignoring the clear language ("identical or confusingly similar") which is
a widely recognized and well-honed term of art in trademark infringement
to one which is merely a text vs t ext comparison. However, this is not
and can never, IMHO be, a reason to ignore the language entirely and
permit some other substitution to a registered or common law mark.
Further, to do so would require a wholesale amendment to the UDRP (and
URS). This would require an amendment to the ICANN/Registrar agreement
AND a change to the Registrar/Registrant agreement.
Finally, although it was within our initial charter to consider
amendments, I feel seriously doing so would be impractical. In addition
to the above reasons, given that it would require an amendment to the
UDRP, I believe that such a task is better left to a Working Group
assigned for such purpose because once the suggestion is made to open an
amendment process, it will quickly include other and competing views on a
variety of subjects.
It is for this reason I suggested our next session focus on the issue of
Sovereign Immunity and we leave the issue of rights expansion to January.
Finally, please allow me to apologize once again for not seeming to "get
it" with the audio portion of my participation. Someday I will be able
to arrange my black box to accurately interact with all of those
interconnected tubes in the "web"Š..:-)
Warmest regards,
Paul
From: Steve Chan <steve.chan@icann.org<mailto:steve.chan@icann.org>>
Date: Thursday, December 11, 2014 1:26 AM
To: "gnso-igo-ingo-crp@icann.org<mailto:gnso-igo-ingo-crp@icann.org>"
<gnso-igo-ingo-crp@icann.org<mailto:gnso-igo-ingo-crp@icann.org>>
Subject: [Gnso-igo-ingo-crp] - Final SG/C Letter and Questions to Consider
Dear WG Members,
Attached, please find the final version of the letter drafted to solicit
input from the stakeholder groups and constituencies; this letter was
sent to the chairs of each of the SG/Cs yesterday.
In addition, it was agreed on today¹s call that at least for the moment,
the group would not break up into sub groups and would instead work
together over the list to debate the following item from the group¹s work
plan: "Develop potential considerations (e.g. qualifying requirements,
authentication criteria and appeal processes) for IGOs and INGOs that
would be relevant to their use of dispute resolution proceedings
(existing or new)²
The WG may want to consider the following questions when thinking about
this item:
*
What might be a justifiable, principled basis for ³standing² other than
TM rights, whether under the UDRP, URS or a new dispute resolution
procedure?
*
Assuming for the moment that sovereign immunity is a problem for IGOs
(pending responses from the GAC and the IGOs), what type of appeal
process other than what is now in the UDRP and URS might be a solution
that would still offer adequate protection to registrants?
Best,
Steve
Steven Chan
Sr. Policy Manager
ICANN
12025 Waterfront Drive, Suite 300
Los Angeles, CA 90094-2536
steve.chan@icann.org
<mailto:steve.chan@icann.org>
direct: +1.310.301.3886<tel:%2B1.310.301.3886>
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<Staff Draft Text for IGO DRP & Rules - Sept 2007.pdf>