Dear All, Please find the MP3 recording for IGO-INGO Access to Curative Rights Protection Mechanisms Working Group call on Wednesday, 29TH October 2014 at 1600 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-20141029-en.mp3 On page: <http://gnso.icann.org/en/group-activities/calendar#oct> http://gnso.icann.org/en/group-activities/calendar#oct 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 Jay Chapman – Individual Jim Bikoff – IPC Paul Tattersfield – Individual Petter Rindforth – IPC Val Sherman – IPC Kristine Dorrain – Individual David Maher – RySG Phil Corwin – BC Osvaldo Novoa – ISPCP Mason Cole – RySG David Cake – GNSO Vice Chair Paul Raynor Keating – NCUC Kathy Kleiman – NCUC Lori Schulman - NPOC Apologies: none ICANN staff: Mary Wong 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, 29 October 2014: Terri Agnew:Dear all, welcome to the IGO-INGO Curative Rights Protection PDP WG Meeting on the 29th October 2014 George Kirikos:Hi folks. Are we going for 60 mins today, or 90? Steve Chan:@George, 60 minutes George Kirikos:Great. Thanks Steve. Terri Agnew:David Cake has joined Mary Wong:One IGO has asked to join the WG as an Observer Mary Wong:@Petter yes it will be Brian Beckham from WIPO Kristine Dorrain-NAF:I believe Brian has been discussing this WG with other IGOs too...so even though I am not sure he speaks for any other IGOs, he has good insight.... Mary Wong:@Kristine, yes - especially to/with the other IGOs that will be forming the small group that the Board and GNSO discussed in LA. Mary Wong:The document is unsync'd so you can scroll through it. Kristine Dorrain-NAF:Attorneys fees are usually the same or (in most cases) more than the filing fee aul Keating:Paul Keating here. Sorry but ICANN has blocked by PW for some reason. Terri Agnew:Welcome Paul Keating George Kirikos:The GAC also didn't reference the URS in their point. Terri Agnew:Kathy Kleiman has joined Kathy Kleiman:Hi All Terri Agnew:Lori Schulman has joined Lori Schulman:Thank you for sending the link. Kristine Dorrain-NAF:Changing the UDRP in this regard is likely to have a ripple effect. I agree with Brian (we've discussed it) Mary Wong:@Kristine, @Petter - this is something the WG can request that the GNSO Council have Mason transmit as a question to the GAC. Petter Rindforth:Yes, that's needed and rather quickly so that we know how to proceed George Kirikos:lol Kathy aul Keating:I have a serious concern that people are suggesting a new "system" instead of amending the UDRP in order to avoid the issues that would be raised in a discussion concerning amending the UDRP. George Kirikos:We don't want to lose the precedents and jurisprudence that exists from past UDRP rulings, either. David Cake:Mary - does this need to formally go via council, or can Mason just ask having been asked by this WG? Mary Wong:@David WG requests should go back to the Council. Lori Schulman:Not all trademark offices do a "likelihood of confusion" search Lori Schulman:IGOs and NGO's are responsible for policing their marks aul Keating:If the issue is pricing, we need only to obtain permission from ADR providers to waive the fees. OR ICANN's agreement to fund the fees directly. Kathy Kleiman:Why? aul Keating:If the issue is that they have problems establishing a "trademakr", I am sorry but I see no legal basis for suporting a "currative" rights mechanishm when there are no "rights" to protect. Kristine Dorrain-NAF:Providers already lose a lot of money on UDRP/URS. I suspect we're not about to start funding IGO disputes more than that :) Kathy Kleiman:Isn't it important to keep the IGO process consistent with the UDRP - and all of its subsquent procedural changes. If we create two separate processes, we risk going off in two separate directions. Kristine Dorrain-NAF:I agree Kathy....the UDRP is a great starting point Kathy Kleiman:@Kristine, so it's a funding issue? Kristine Dorrain-NAF:That's one issue. George Kirikos:Right, Kathy. If we have UDRP reform in 2016 or whatever, will they automatically change the IGO-UDRP (or whatever a tailored version is named)? Lori Schulman:If the rights are not based on trademark registrations but other legal mechanisms then logic would dictate that a separate mechansim is necessary Mary Wong:@Kathy, the cost issue is one issue that has been raised, including by the GAC in previous Communiques and indicated as such in the Issue Report for this PDP George Kirikos:Also, by creating a new DRP tailored to IGOs, every registrar agreement will require that registrants give notice of 2 separate documents. Kathy Kleiman:@Mary, but cost is hardly a rationale for an entirely different body/set of rules, etc. George Kirikos:(which might be confusing for registrants) George Kirikos:I meant "registrants be *given* notice.." Mary Wong:@Kathy, I don't believe that is being offered as a rationale, only as a concern such that any mechanism (existing, tweaked or new) should take into account (nominal for IGOs) Paul Tattersfield:There is a bit of IGO thinking here http://forum.icann.org/lists/comments-igo-ingo-crp-prelim-10mar14/msg00004.h... unfortunately the poster didn’t leave their name if it is possible to identify the sender it might be good point of contact perhaps? aul Keating:RE FUNDING. Someone has to pay for it. The likely candidates are ICANN and/or the complainant. Mary Wong:@Paul, that was sent on behalf of the IGO Coalition Mary Wong:They participated in the previous WG, and some of them will likely be part of the group formed to discuss the outstanding GNSO recommendations re TMCH etc. Paul Tattersfield:thanks Mary Kathy Kleiman:Hi All, I'll still send a formal email, but here is the CERN registration in the US Trademark Office -- http://tmsearch.uspto.gov/bin/showfield?f=doc <http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4805:rln7zr.2.7> &state=4805:rln7zr.2.7 George Kirikos:That link is session-specific, Kathy. Kathy Kleiman:Sorry all George Kirikos:Here's a better link: http://tsdr.uspto.gov/#caseNumber=89000193 <http://tsdr.uspto.gov/#caseNumber=89000193&caseType=SERIAL_NO&searchType=sta...> &caseType=SERIAL_NO&searchType=statusSearch George Kirikos:(although it's just a CERN logo mark) aul Keating:@PHIL, exactly what are the issues relative to this issue funding, standing (rights), etc.... we are getting off topic... Lori Schulman:The CERN listing is not technically a registration but a recognition of rights granted under the Paris Convention Lori Schulman:I could look into how the CERN info would be treated in the event that there were a conflicting filing. Lori Schulman:Never saw one when I was examining George Kirikos:A search for "6ter" at the USPTO under the field "ALL" shows many such registered marks. Kristine Dorrain-NAF:What is the difference between editing paragraph 4(a)(i) of the UDRP and duplicating the UDRP with an editing 4(a)(i) and calling it UDRP-IGO.? (as far as the "procedural nightmare"...I just dont' see how one is worse than the other. Kathy Kleiman:@Lori, yes, and according to US Trademark folks, the registration is important - so that Trademark Examining attorneys can ensure that new trademark applicants are not causing confusion. George Kirikos:Lots of 6ter marks registered are numbers, e.g. 950, 375, etc. Lori Schulman:Right, but do the IGO's go through the Opposition Procedure in the regular way? Kristine Dorrain-NAF:One doesn't affect other users of the UDRP, the other has the potential of farther-reaching effects Kathy Kleiman:@Mary, can Brian Beckham from WIPO join us? George Kirikos:There are 735 Article 6ter marks registered at the USPTO. Lori Schulman:If the IGO's are cited as blocks, I wonder how many actually ever oppose based on Art.6 rights George Kirikos:Actually, 735 isn't correct, as there are some matches for "6ter" that are not IGO related. Petter Rindforth:Kathy, Brian will join as observer on behalf of WIPO George Kirikos:Those Article 6ter marks aren't blocks in the USPTO. George Kirikos:Some marks co-exist. George Kirikos:Rodenbaugh's report. George Kirikos:A straw poll, perhaps? (we don't have every working group member on today's call, though) Kathy Kleiman:@George, right, IGO 6ter registrations don't block, but can (and are) considered for confusion purposes. I think it is really interesting that a US company can get a trademark on an IGO acronym in an entirely different category of goods and services George Kirikos:Yes. The thing about Article 6ter registrations is that they don't really disclose a class of goods/services. So, unless it's an egregious impersonation, the examiner is probably going to let it go through. Lori Schulman:If IGO records are not used as a basis of refusal then I am not sure what I considered. Lori Schulman:I mean I am not sure what "is" considered? George Kirikos:Although, some classes of goods/services can be presumed, e.g. an application for "WIPO" by a commercial firm for legal services would probably fail. George Kirikos:(examiners will often do Google searches, etc. to see how marks are being used) Kathy Kleiman:@Mary, but wasn't that early PDP voted down by the GNSO Council? Mary Wong:@Kathy, I meant the last IGO-INGO PDP WG chaired by Thomas Rickert Mary Wong:Our PDP scope was defined by the GNSO Council based on that WG's recommendations. Kathy Kleiman:+1 Jim Lori Schulman:Got it. If refused probably on a different statutory basis then likelihood of confusion. Got it. Kristine Dorrain-NAF:Agree with Jim Mary Wong:@Kathy, NCSG was one group in that last PDP that supported equivalent treatment for IGos and INGOs, hence my advice to this WG to consider the question more deliberately before making the decision. George Kirikos:Yes, access to Curative Rights. It's not about changing the rules to create a more favourable DRP for INGOs. George Kirikos:If there was a failure of having access, that'd show a necessity for a change. Lori Schulman:I had promised some data about INGO's and I will write it up. But here is an interesting factoid about domain name registration/usage. George Kirikos:Everyone has a "wish list." e.g. non-profits non-INGOs would also seek changes, if INGOs get it. Lori Schulman:Independent research showed that from the 3578 registered organizations (on UN ECOSOC list), only 1428 (40%) actually had an operational Website with their own domain name. Of the 2148 organizations,(60%) with no operational Websites, about 860,(40%) no longer existed as operational entities and about 215 (10%) did not want to have a Website. aul Keating:@Phil, The issue seems to be one of standing - what rights must be shown to have currative rights? aul Keating:can you raise thi spoint please.? Lori Schulman:of the remaining 1074 operational Civil Society organizations, the approximately 322 (30%) that had "lost" their originally registered domain name where not aware of the need to renew a domain, and give and maintain up to date contact and billing information. From the 1428 organizations with an operational Website only about 500 (35%) maintained up to date contact data, such as email or mailing address and phone number), and were aware of and met deadlines for renewal. Lori Schulman:Approximately 1400 (65 %) had moved their Internet presence to a social media site such as Facebook Civil Society is increasingly abandoning a propitiatory domain based presence for an exclusive social media based use of the Internet. Many NGO's new to the Internet do not register an owned domain name, and from the beginning use social media sites as their main Internet tool. George Kirikos:Can you send that report to the mailing list, Lori? (if we don't already have that info) Lori Schulman:Yes, I will. It is part of research that was done by NPOC. George Kirikos:Excellent, thanks Lori. Mary Wong:GAC London Communique on Red Cross: "• The Red Cross and Red Crescent terms and names should not be equated with trademarks or trade names and that their protection could not therefore be adequately treated or addressed under ICANN's curative mechanisms for trademark protection." George Kirikos:PIR is coming out with a NGO-specific new gTLD, namely .NGO Lori Schulman:The issues for INGO's go much deeper than curative rights. George Kirikos:(and I think another variation, .ONG or something, i.e. non-English version) Lori Schulman:I agree with Phil's point about bad actors and opportunities for confusion. Petter Rindforth:Mary - can you also say a few words on the proposed face-to-face meeting? Kathy Kleiman:@Mary, NCSG has raised very strong concerns about special and extra-legal protections for Red Cross Lori Schulman:I will for NPOC. George Kirikos:Or should it best be sent via the GNSO liaison? Lori Schulman:INGO curative rights is certianly an "operational concerns" George Kirikos:Will there still be remote access, to those not planning to go to the physical meeting? Mary Wong:@George, yes for sure George Kirikos:Great. Kathy Kleiman:All, we did a facilitated meeting with the Proxy/Privacy WG, and it worked well. Much better to do the Friday after than the Friday before! Kathy Kleiman:Tx Phil! George Kirikos:Bye folks! Jay Chapman:Goodbye! Paul Tattersfield:Bye Lori Schulman:Ciao