[Gnso-igo-ingo-crp] GAC LA Communique on IGO-INGO Curative Rights WG
Paul Keating
paul at law.es
Thu Oct 23 07:23:32 UTC 2014
Phil and all,
I think the two are not so far off. I would think that our assessment as to whether there are already sufficient protections in place or whether new curative rules should be considered begs the question of whether the UDRP/URS or some other mechanism is appropriate, if so why and if not why not. The issue of costs would also seem to be closely connected as suggesting a curative remedy without addressing costs would risk completing the work only to find it not practical from a cost basis.
Regards,
Paul Keating
> On 22 Oct 2014, at 10:26 pm, Phil Corwin <psc at vlaw-dc.com> wrote:
>
> Good to see you in LA, Mason, and happy to have you chime in on this – and for pointing out that GAC advice contained in the Communique is to the Board, not to this WG.
>
> However, this WG must take note of the fact that the GAC has now advised the Board that it expects this WG to refrain from recommending amendments to the UDRP (which implies the creation of a new curative rights process) and that at least for some IGOs access to the new DRP must be free, and that for all it must be “nominal” whatever that means. But our Charter requires us to consider amendment of the UDRP as a possible solution, and only requires us to consider the issue of cost without mandating free access for any IGO. If we are to factor the GAC advice in our thinking it will bias our future work, but if we ignore it we may labor for many months to produce a report that creates a new impasse between the Board and GAC.
>
> Your proposal on next steps vis-à-vis the GAC is welcome and we can discuss it on our next call. The GAC Communique has certainly created a very challenging situation for you in your new role as GNSO liaison, and we shall do all we can to assist you in this baptism by fire.
>
> Best, Philip
>
>
>
> 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: Mason Cole [mailto:mason at donuts.co]
> Sent: Wednesday, October 22, 2014 3:44 PM
> To: Phil Corwin
> Cc: Kathryn Kleiman; gnso-igo-ingo-crp at icann.org
> Subject: Re: [Gnso-igo-ingo-crp] GAC LA Communique on IGO-INGO Curative Rights WG
>
> All --
>
> First, many thanks for the input from all members of this WG.
>
> Part of my role as the new liaison from the GNSO to the GAC is to notify the GAC regarding opportunities for early engagement in GNSO policy development. While I believe Mary is right that the WG should take into account the GAC's Los Angeles advice regarding curative rights, I respectfully point out that is advice to the Board. I believe this is a good opportunity to invite the GAC to do what it professes it would like to do -- engage earlier in the policy process on the GNSO side and have a healthy give and take, not simply to rely on interpretation of previously issued advice.
>
> Accordingly, I propose the following, and seek the WG's approval: Outline the issues under consideration by the WG, acknowledge the GAC's communique language from Los Angeles, notify the GAC that the WG is under way and that there's still time to join the WG or otherwise contribute thoughts at a level deeper than their Board advice, and invite them to do so. If there are clarifying questions the WG would like me to pose, I'm happy to do so in that communication as well.
>
> This is the first issue presented via the liaison for GAC participation, so I don't necessarily anticipate a process as smooth as others that are well established. But you have to start somewhere. Preferably an informal group of GAC members can indeed be gathered for this engagement.
>
> I look forward to hearing back from WG members, either on the list or during the upcoming WG meeting.
>
> Mason
>
> On Oct 22, 2014, at 11:47 AM, Phil Corwin wrote:
>
>
> Thanks for weighing in, Kathy.
>
> In determining the proper scope of this WG’s work we have to look back at the Charter created pursuant to the GNSO Council Resolution and approved by the Council on 6/25.14. I have posted the relevant excerpt below at the end of this message and highlighted those provisions that are relevant to the GAC’s LA Communique.
>
> As can be seen, in the opening paragraph of the Mission and Scope section we are specifically directed to consider “whether to amend the UDRP and URS to allow access to and use of these mechanisms by IGOs and INGOs and, if so in what respects” and that directive is fundamentally incompatible with a GAC communique stating that “the UDRP should not be amended” which, if followed, would leave only the option of a new curative rights process for IGOs (and perhaps INGOs). Later on, the Charter states that we should “Examine whether or not similar justifications and amendments should apply to both the UDRP and URS”, which further emphasizes that potential UDRP amendments cannot be ruled out as a possible outcome for this WG, especially at this early stage of our work.
>
> The Charter also states that this WG should “address the issue of cost to IGOs and INGOs to use curative processes”. That may or may not be compatible with the Communique statement that “any such mechanism should be at no or nominal cost to IGOs”. While we have not surveyed the WG, I would venture that most of us would view the costs of a URS or UDRP filing as “nominal”, especially in comparison to litigation. As for providing a DRP that is at no cost to IGOs, it is unlikely that any URS or UDRP provider would undertake to provide its services at no cost (unless WIPO, as an IGO itself, wants to volunteer – but that could raise questions of provider bias) so the “no cost” statement may inevitably lead to issues of monetary subsidies and that may well be beyond the remit of this WG.
>
> In an email sent to all of us on Monday, Mary Wong stated:
> While the WG should certainly take into consideration the GAC’s advice from the LA Communique in its deliberations, do note that any responses, queries or communications to and with the GAC should be done through the GNSO Council, as it is the manager of every policy development process initiated within the GNSO. We therefore recommend that any clarifying questions that this WG may wish to ask the GAC first be discussed at an upcoming WG meeting and then (if applicable) transmitted on to the Council for its review and communication to the GAC – which the Council may choose to do through Mason Cole, the newly-appointed GNSO liaison to the GAC.
>
> In Los Angeles, the Board and the GAC discussed the formation of a small informal group of GAC members (including IGOs who are official Observers to the GAC), to serve as a contact point and resource for our WG and the GNSO Council. This will not of course replace the possibility of IGOs or GAC members joining our WG directly as a member or observer (and staff has received a few queries on that as a result of the Los Angeles meetings), but may well be a more direct way for the GNSO as a body to interact with the GAC on this particular issue, via each of its appointed representatives.
>
> WG members should note also that individual GAC members cannot speak on behalf of the GAC, whether informally via conversation or more formally via joining a WG. GAC Communiques therefore remain the primary tool for the dissemination of GAC consensus positions. In this regard, Mason has sent a note to the GNSO Council following the GAC’s LA Communique noting that the GAC’s mention of our PDP should be viewed as a positive step in the GAC’s attempts at early engagement in a GNSO PDP. As this is the first GAC comment on our PDP, the trend of GAC Communiques would indicate that such early statements tend to be statements of positions, with rationales and details developed subsequently via further debate and discussion.
>
> Staff therefore recommends that the WG directs any follow up questions or actions in relation to the GAC advice to the GNSO Council for its consideration.
>
> That is very helpful information and advice and can help inform our discussion on and any decisions relating to the Communique during our next call on Wednesday, October 29th.
>
> Best to all, Philip
>
>
>
> WG Charter:
> http://gnso.icann.org/en/drafts/igo-ingo-crp-access-charter-24jun14-en.pdf
>
> Mission and Scope
> This Curative Rights Protection for IGOs and INGOs PDP Working Group (WG) is tasked to provide the GNSO Council with policy recommendations regarding whether to amend the UDRP and URS to allow access to and use of these mechanisms by IGOs and INGOs and, if so in what respects or whether a separate, narrowly-tailored dispute resolution procedure at the second level modeled on the UDRP and URS that takes into account the particular needs and specific circumstances of IGOs and INGOs should be developed. In commencing its deliberations, the WG should at an early stage gather data and research concerning the specific topics listed in Section X of the Final Issue Report as meriting such further documentation.
> As part of its deliberations, the CRP PDP WG should, at a minimum, consider the following issues detailed in Section IX of the Final Issue Report. These are:
> · The differences between the UDRP and the URS;
> · The relevance of existing protection mechanisms in the Applicant Guidebook for the New gTLD Program;
> · The interplay between the topic under consideration in this PDP and the forthcoming GNSO review of the UDRP, URS and other rights-protection mechanisms;
> · The distinctions (if any) between IGOs and INGOs for purposes of this PDP;
> · The potential need to distinguish between a legacy gTLD and a new gTLD launched under the New gTLD Program;
> · The potential need to clarify whether the URS is a Consensus Policy binding on ICANN’s contracted parties;
> · The need to address the issue of cost to IGOs and INGOs to use curative processes; and
> · The relevance of specific legal protections under international legal instruments and various national laws for IGOs and certain INGOs (namely, the Red Cross movement and the International Olympic Committee)
>
> The WG should also include the following additional topics in its deliberations:
> · Review the deliberations of the 2003 President’s Joint Working Group on the 2001 WIPO report as a possible starting point for the PDP WG’s work and consider whether subsequent developments such as the introduction of the New gTLD Program and the URS may mean that prior ICANN community recommendations on IGO dispute resolution are no longer applicable;
> · Examine whether or not similar justifications and amendments should apply to both the UDRP and URS, or if each procedure should be treated independently and/or differently;
> · Reach out to existing ICANN dispute resolution service providers for the UDRP and URS as well as experienced UDRP panelists, to seek input as to how the UDRP and/or URS might be amended to accommodate considerations particular to IGOs and INGOs;
> · Determine what (if any) are the specific different considerations (including without limitation qualifying requirements, authentication criteria and appeal processes) that should apply to IGOs and INGOs;
> · Conduct research on applicable international law regarding special privileges and immunities for IGOs
> · Conduct research on the extent to which IGOs and INGOs already have trademarks and might be covered, in whole or in part, by existing UDRP and URS proceedings;
> · Conduct research on the number and list of IGOs currently protected under Article 6ter of the Paris Convention on Intellectual Property;
> · Conduct research on the number and list of INGOs included on the United Nations list of non-governmental organizations in consultative status with the Economic and Social Council. ;
> · Consider whether or not there may be practicable alternatives, other than amending the UDRP and URS, that can nonetheless provide adequate curative rights protections for IGOs and INGOs, such as the development of a specific, narrowly-tailored dispute resolution procedure modeled on the UDRP and URS, and applicable only to IGOs and/or INGOs;
> · Consider mechanisms that would require a very clear definition of the mission of the IGOs, its scope of operations and the regions and countries in which it operates; the goal here being to provide a context for the IGO or INGO similar to the scope and terms of a trademark with its International Class and clear description of goods and services;
> · Consider recommendations that incorporate fundamental principles of fair use, acknowledge free speech and freedom of expression, and balance the rights of all to use generic words and other terms and acronyms in non-confusing ways; and
> · Bear in mind that any recommendations relating to the UDRP and URS that are developed by this PDP WG may be subject to further review under the GNSO’s forthcoming PDP to review the UDRP and all the rights protection mechanisms that were developed for the New gTLD Program.
> The WG should invite participation from other ICANN Supporting Organizations and Advisory Committees, including the GAC, and from interested IGOs and INGOs. It should track any ongoing discussions between the GAC and GNSO on resolving remaining differences between GAC advice and the GNSO recommendations on RCRC and IGO acronym protection. It may also wish to consider forming sub-groups to work on particular issues or sub-topics in order to streamline its work and discussions.
> For purposes of this PDP, the scope of IGO and INGO identifiers is to be limited to those identifiers previously listed by the GNSO’s PDP WG on the Protection of International Organization Identifiers in All gTLDs as protected by their consensus recommendations (designated by that WG as Scope 1 and Scope 2 identifiers, and listed in Annex 2 of the Final Issue Report).
>
> 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: Kathryn Kleiman [mailto:kleiman at fhhlaw.com]
> Sent: Wednesday, October 22, 2014 1:17 PM
> To: Phil Corwin; gnso-igo-ingo-crp at icann.org
> Subject: RE: GAC LA Communique on IGO-INGO Curative Rights WG
>
> All,
> I agree with Phil’s message below, and think the GAC has strayed into the details of policy-making rather than the high level input of policy advice it normally gives. While the GAC may prefer a new dispute resolution mechanism, the fact is that creating one is a very difficult task, and probably unnecessary. As the US Trademark Office and other trademark offices have methods for reviewing IGO Certifications alongside pending trademark registrations (to evaluate overlap of services and confusion of names), so too could such a process, if appropriate, be fairly straightforward to adopt into the UDRP. But to create a standalone new process – yikes!
>
> As many of you know, I served on the final drafting team of the UDRP – and would not like to repeat the experience.
> Best,
> Kathy (Kleiman)
>
> From: gnso-igo-ingo-crp-bounces at icann.org [mailto:gnso-igo-ingo-crp-bounces at icann.org] On Behalf Of Phil Corwin
> Sent: Sunday, October 19, 2014 2:25 PM
> To: gnso-igo-ingo-crp at icann.org
> Subject: [Gnso-igo-ingo-crp] GAC LA Communique on IGO-INGO Curative Rights WG
> Importance: High
>
> WG members:
>
> On October 16th the GAC issued a Communique that is available athttps://gacweb.icann.org/download/attachments/27132037/Los%20Angeles_GAC%20Communique_Final.pdf?version=1&modificationDate=1413479079702&api=v2
>
> On pp.6-7 of the Communique the following language relevant to the task of our WG appears:
>
> 3. Protection of Inter-‐Governmental Organisation (IGO) Names and Acronyms
> a. The GAC reaffirms its advice from the Toronto, Beijing, Durban, Buenos Aires, Singaporeand London Communiqués regarding protection of IGO names and acronyms at the top andsecond levels, as implementation of such protection is in the public interest given thatIGOs, as created by governments under international law, are objectively different rightholders; namely,
> i. Concerning preventative protection at the second level, the GAC reminds the ICANNBoard that notice of a match to an IGO name or acronym to prospective registrants,as well as to the concerned IGO, should apply in perpetuity for the concerned nameand acronym in two languages, and at no cost to IGOs;
> ii. Concerning curative protection at the second level, and noting the ongoingGNSO PDP on access to curative Rights Protection Mechanisms, the GAC remindsthe ICANN Board that any such mechanism should be at no or nominal cost toIGOs; and further, in implementing any such curative mechanism,
>
>
> b. The GAC advises the ICANN Board:
>
> i. That the UDRP should not be amended; welcomes the NGPC's continued assurancethat interim protections remain in place pending the resolution of discussionsconcerning preventative protection of IGO names and acronyms; and supportscontinued dialogue between the GAC (including IGOs), the ICANN Board (NGPC) andthe GNSO to develop concrete solutions to implement long-‐standing GAC advice.(Emphasis added)
>
> 4. Protection of Red Cross/Red Crescent Names
> The GAC welcomes the decision of the New gTLD Program Committee (Resolution 2014.10.12.NG05) to providetemporary protections for the names of the International Committee of the Red Cross and InternationalFederation of Red Cross and Red Crescent Societies, and the 189 National Red Cross and Red Crescent Societies.The GAC requests the ICANN Board and all relevant parties to work quickly to resolve the longer term issues still outstanding.
>
> In regard to the highlighted portions of the communique, the GAC makes clear that it wants any new curative RPM to be available to IGOs at “no or nominal cost”. This leaves open the question, should our WG choose to recommend the creation of a new DRP, of whether the current costs of the URS and UDRP are viewed as falling within the “nominal” range – and, if deemed by the GAC to exceed such range, what party should assume the financial cost of subsidizing access to any new DRP by IGOs.
>
> In regard to the GAC’s statement that “the UDRP should not be amended”, in my personal opinion this appears to be an overreaching attempt to foreclose the possibility that this WG will determine that the UDRP should in fact be amended to better accommodate the legitimate rights of IGOs, and that a new curative rights process is not advisable, and as such should be rejected at this time -- as it would only leave the option of creating a new curative RPM. ICANN and the GNSO have responded to the GAC’s concerns in regard to IGOs by establishing this WG, but we should be free to pursue its work as its members deem best without intervening attempts by the GAC to direct us to a predetermined outcome.
>
> Such intervention is manifestly different from the type of participation that would be welcome from IGOs and GAC members, which is contributing to our factual database and interaction in our ongoing and open dialogue. In this regard, when the Board met with the GNSO Council in Sunday, October 12th the activities of this WG were highlighted and there was dialogue concerning the intervention of Board members to encourage GAC and IGO participation. The transcript of that session is not yet available athttp://la51.icann.org/en/schedule/sun-gnso-working and I would therefore solicit the assistance of ICANN staff in securing it so that we can review that discussion and follow up on it.
>
> In conclusion, it would be useful to have feedback from WG members in regard to the relevant portions of the GAC Communique and in particular as to whether we should prepare any reply in regard to its substance as well as to solicit the participation of IGOs and GAC members in our work.
>
> Thanks and best regards,
> Philip Corwin, Co-Chair
>
>
>
>
>
>
>
> 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
>
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> ………………………………
> ……
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