Dear All, Please find the attendance and MP3 recording for the IGO-INGO Curative Rights Protection PDP WG Meeting held on Thursday, 28 May 2016 at 16:00 UTC at: http://audio.icann.org/gnso/gnso-igo-ingo-crp-access-28jul16-en.mp3 On page: http://gnso.icann.org/en/group-activities/calendar#july 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 Gary Campbell - GAC George Kirikos – Individual Holly Lance – IPC Jim Bikoff - IPC Lori Schulman - IPC Mason Cole - RySG Paul Tattersfield - Individual Petter Rindforth - IPC Phil Corwin - BC Apologies: None ICANN staff: Steve Chan Berry Cobb Mary Wong Emily Barabas Terri Agnew Michelle DeSmyter ** 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, Michelle DeSmyter ------------------------------- Adobe Connect chat transcript for Thursday, 28 July 2016 Michelle DeSmyter:Dear all, welcome to the IGO-INGO Curative Rights Protection PDP WG Meeting on the Thursday, 28 July 2016 Michelle DeSmyter:Agenda Wiki page: https://community.icann.org/x/dw2bAw George Kirikos:Hi folks. Petter Rindforth:Hi George George Kirikos:Hi Petter. How are you? Petter Rindforth:Fine - hoping for a productive meeting, and thanks for your comments after last week George Kirikos:I look forward to a productive meeting too. George Kirikos:Are you in Sweden, Petter? Petter Rindforth:yes, unusually nice and hot summer :-) George Kirikos:Must be really nice. I've been to Finland once in the summer, but not to Sweden. Those 20+ hours of sunlight are amazing in the summer (although scary in the winter!). George Kirikos:Sound is fine here. Philip Corwin:Hello. Waiting on operator George Kirikos:It took several minutes to get transferred into the telephone bridge. George Kirikos:There's always a spike at the top of each hour......maybe we should schedule our calls for 11:50 am. :-) Philip Corwin:Speant a long weekend in Stockholm after helsinki. Lovely city. Petter and I had dinner with the Prime Minister (well, he was in the same dining room ;-) Paul Tattersfield:Sorry I'm late George Kirikos:Welcome Paul. Philip Corwin:Finally on auduo George Kirikos:For suggestion #1 (which I don't favour; I'm in the "status quo + greater education + assignment camp), nullification should take place regardless when the court case is brough (since a court case can be brought at any time, even before the UDRP decision is rendered). George Kirikos:*brough = brought Mary Wong:Options A through D are more fully detailed in Prof Swaine's legal memo. Mary Wong:Option E brings us back to the standing issue - Phil provided a clarification last week that this, too, is an option to consider. Mary Wong:@George, but this would be a case filed by the losing respondent, right? Mary Wong:Against a UDRP decision in favor of the IGO. George Kirikos:Mary: it would be filed during the UDRP, before the panel has deemed the respondent a "loser" George Kirikos:A court case can be initiated at any time, even before the panel has made a decision. Mary Wong:Understood, but I had thought that the "nullification" point referred to vitiating the UDRP decision. George Kirikos:(that's how my company did it for the PUPA.com domain name dispute; Tucows has done the same several times, as have others) Mary Wong:Because, if there hasn't yet been a panel decision, there would not be a result to nullify. George Kirikos:Right, it would be nullified, even if the respondent didn't wait for the panel to reach a decision (i.e. they might make an adverse decision later, after the court case is brought). George Kirikos:Some panels will terminate, to defer to the courts. Some panels will still render a decision, though. George Kirikos:I didn't propose it -- Paul Keating did. George Kirikos:If common law rights have "standing" under the UDRP, I think most IGOs (if not all) would get standing for the first prong of the UDRP test. Paul Tattersfield:I do not believe 6ter (1)(a) grants exclusive use, rather, it grants the right to prevent the registration and use of trademarks which infringe a state’s mark, so if the UDRP panelist (has correctly) decided the domain should not be transferred they have probably done it with good reason and that should be the end of the matter as far as the UDRP case is concerned. Mary Wong:@Paul T, yes, 6ter does not grant exclusive use or, indeed, substantive legal rights George Kirikos:Right, not exclusive use. Philip Corwin:Mary, do you (or anyone else) believe that there was anything in the Swaine memo that compels us to believe that UN and its agencies have full soveriegn immunity and must have access to a separate DRP mechanism for appeal from a UDRP decision? Unless there is, and I don't believe there is, then my personal position is that the question of any IGO's immunity should be determined by the court of mutual jurisdiction if and when the IGO asserts it. George Kirikos:Even if they had full immunity, they have the ability to waive it (and they do). If waiving it is the "price" for access to the UDRP, that's the same "waiver" that essentially every other complainant makes, since every other complainant recognizes that UDRP isn't "final", but that the courts are, if a party wants to access the courts. George Kirikos:If the UDRP didn't exist at all, IGOs would have to waive their immunity to bring an action in court (e.g. the State Department letter). George Kirikos:Although, via assignment, there's a fantastic workaround for IGOs, to shield themselves. Mary Wong:There is a General Convention on Privileges and Immunities of the UN, and another relating to Privileges and Immunities of its Specialized Agencies. Mary Wong:However, these treaties are broader than just jurisdictional immunity. Philip Corwin:Supplementing what I just said -- if an IGO uses an agent to bring the UDRP, and the court of mutual jurisdiction permits the agent to participate in the appeal, then I would not see any need for availability of a DRP in that scenario as the IGO's immunity would not be at issue. George Kirikos:Trademark assignment and licensing are slightly different, see: http://piersonpatentlaw.com/what-is-the-difference-between-assignment-and-a-... Petter Rindforth:See Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756 ("The Panel finds that Complainant, through its affiliation with its grandparent corporation which owns the trade-mark registration, has rights in and duties concerning the mark MIELE").See also Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000-0993 ("In this Panel’s view the test under paragraph 4(a)(i) of the Policy, which makes no mention of "exclusive rights" is or ought to be a relatively easy test for a Complainant to satisfy, its purpose simply being to ensure that Complainant has a bona fide basis for making the Complaint in the first place" George Kirikos:However, I think both assignees and licensees would have standing to bring the UDRP. George Kirikos:With a license, one doesn't have to worry about assignment of goodwill that the professor was worried about. Mary Wong:@George, would a non-exclusive licensee (as opposd to an exclusive licensee) be able to bring a complaint? Paul Tattersfield: @ Mary If they are using the mark that should be sufficent for bringing a UDRP Mary Wong:@Paul, that's what I would think (per the UDRP "in which the complainant has rights") but didn't want to assume Philip Corwin:regardless of the current language of the UDRP, this WG has the authority to recommend that an agent/assignee/licensee (whichever we choose, and it can be more than one of thos ecategories) of an IGO be permitted to have standing to bring an action on its behalf (even if non-exclusive, so long as IGO authorized the acton). We have no control over whether a particular court would allow that entity to participate in an appeal. George Kirikos:I found a precedent! George Kirikos:http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-0672 George Kirikos:"Although a licensee of a trademark or a company related to the registered owner (e.g., a subsidiary) of a trademark may have rights in a trademark under the UDRP, evidence of such license and/or authorization should be submitted (see, e.g., Komatsu Deutschland GmbH v. Ali Osman / ANS, WIPO Case No. D2009-0107)." Mary Wong:@George, perhaps you can speak to this? George Kirikos:Sure, Mary. I raised my hand. Philip Corwin:Good find, George Mary Wong:Thanks, just so the transcript and recording will have the details. George Kirikos:Actually, WIPO has a view on this, too: http://www.wipo.int/amc/en/domains/search/overview2.0/ George Kirikos:1.8 http://www.wipo.int/amc/en/domains/search/overview2.0/#18 George Kirikos:IP Services Policy Cooperation Reference About IP Inside WIPO SearchSearch WIPO searchHomeIP ServicesAlternative Dispute ResolutionDomain Name DisputesSearchadrWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")© 2011 World Intellectual Property OrganizationDecision-making authority under the Uniform Domain Name Dispute Resolution Policy and Rules (UDRP) lies exclusively with the appointed panels. To assist awareness of their views on certain questions that commonly arise in proceedings under the UDRP, the WIPO Arbitration and Mediation Center has produced the following update and extension of its informal overview of panel positions on key procedural and substantial issues. This WIPO Overview 2.0 includes new decision references supporting each line of opinion, with over 380 decisions (formerly 100) from over 180 (formerly 80) different UDRP panelists now listed. Reflecting the evolution of the Domain Name System and UDRP jurisprudence, the number of issues inc George Kirikos:Oops, sorry about that. George Kirikos:1.8 in the WIPO says that they can. Mary Wong:Thanks, George - very helpful. George Kirikos:WIPO cited several decisions, in thair answer to 1.8. George Kirikos:(I won't cut/paste, lest the disaster of last time be repeated) :-) George Kirikos:7 cited cases. George Kirikos:+1 Phil. George Kirikos:Mary has her hand up too, before we go. Philip Corwin:FYI, I will be on next week's call but will be on vacation in a remote location and absent from the call of August 11. George Kirikos:Bye folks! Mary Wong:Thanks George, Petter, Phil, everyone! Paul Tattersfield:thanks bye Petter Rindforth:Thanks, All Of You