[Gnso-igo-ingo-crp] Advice on IGOs from the GAC's Johannesburg Communique

Mon Jul 3 12:37:20 UTC 2017

Paul:

Thank you for this helpful input.

Brian made a similar statement during the F2F meeting of the WG in Johannesburg, and it struck me as odd because we have of course found instances of IGOs using the UDRP, and standing for the UDRP is based upon trademark rights.

I believe you are also correct in your perception that the GAC relies upon IGO input to inform its view on IGO CRP and the initial recommendations of our WG, and that WIPO has the most influence on the shaping of the GAC’s view. Therefore, WIPO has particular responsibility to provide accurate and balanced input to the GAC.

Best, Philip

Philip S. Corwin, Founding Principal
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From: Paul Tattersfield [mailto:gpmgroup at gmail.com]
Sent: Sunday, July 02, 2017 6:42 PM
To: Paul Keating; Beckham, Brian
Cc: Phil Corwin; gnso-igo-ingo-crp at icann.org
Subject: Re: [Gnso-igo-ingo-crp] Advice on IGOs from the GAC's Johannesburg Communique

I wonder if it WIPO’s advice which is causing much of the anxiety amongst the GAC and the other IGOs?

If we look at WIPO’s comments to the working group’s initial report they were very troubling.1 and we had a similar issue in the Johannesburg working group session earlier in the week.

From the transcript:2

“Brian Beckham for the record. I wanted to just briefly follow up on (John)’s intervention and recall that for example, an IGO that would be potentially invoking this mechanism is the UNHCR. So when they go and undertake humanitarian efforts for asylum seekers, for example, they're not undertaking commercial activities that we think of which ground common law or unregistered trademark rights.”

Here Brian is again presenting a misleading narrative, Brian is, or should be, as head of the Internet dispute resolution section at WIPO an informed advisor. Other IGOs, the GAC and the Internet community as whole rely on the advice they receive from WIPO, it therefore needs to be considered, unbiased and informed.

Brian’s latest statement shows a fundamental misunderstanding of trademark law and results in unwarranted concerns.

For the avoidance of doubt:

1.)        The only requirement for the acquisition of trademark rights is to be the first user of the mark in commerce somewhere, for a particular good or service.

2.)        Registration provides benefits for mark holders but is not relevant here.

3.)        Trademark laws do not distinguish between the goods or services that are provided for revenue generation or not.

4.)        The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.

5.)        Under US law for example, a service mark shall be deemed to be in use in commerce on services, when it is used or displayed in the sale or advertising of services and the services are rendered in commerce.

6.)        UNHCR is a well known organization providing a service to refugees.

We can therefore safely say UNHCR have defensible rights in their acronym and these rights are sufficient for standing under UDRP.

Whilst not necessary, but often helpful, we can also safely say where their UNHCR mark does not already enjoy protection from an Article 6 ter listing it would also be perfectly capabable of registration.

I trust this will be the end of misleading statements on these matters.

Best regards,

Paul.

1 https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/msg00038.html

2 http://schd.ws/hosted_files/icann59johannesburg2017/f8/Transcript%20INGO%20INGO%20CRP%2027%20June%20.pdf

On Thu, Jun 29, 2017 at 5:17 PM, Paul Keating <paul at law.es<mailto:paul at law.es>> wrote:
So we are a bottoms up structure until the bottom has an idea the top does not like??

Sincerely,
Paul Keating, Esq.

On Jun 29, 2017, at 6:08 PM, Phil Corwin <psc at vlaw-dc.com<mailto:psc at vlaw-dc.com>> wrote:

Thanks Mary.

No surprises here, unfortunately.

Best, Philip

________________________________
From: gnso-igo-ingo-crp-bounces at icann.org<mailto:gnso-igo-ingo-crp-bounces at icann.org> <gnso-igo-ingo-crp-bounces at icann.org<mailto:gnso-igo-ingo-crp-bounces at icann.org>> on behalf of Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>>
Sent: Thursday, June 29, 2017 11:30 AM
To: gnso-igo-ingo-crp at icann.org<mailto:gnso-igo-ingo-crp at icann.org>
Subject: [Gnso-igo-ingo-crp] Advice on IGOs from the GAC's Johannesburg Communique

Dear Working Group members,

You may be interested to know that the GAC Communique from this meeting in Johannesburg (ICANN59) has been released: https://gacweb.icann.org/download/attachments/27132037/GAC%20ICANN59%20Communique_Final.pdf?version=2&modificationDate=1498747877729&api=v2

“In respect of IGOs, the GAC advice to the Board is:

The GAC reiterates its Advice that IGO access to curative dispute resolution mechanism should:

I. be modeled on, but separate from, the existing Uniform Dispute Resolution Policy (UDRP)

II. provide standing based on IGOs’ status as public intergovernmental institutions, and

III. respect IGOs’ jurisdictional status by facilitating appeals exclusively through arbitration.

The GAC expresses concern that a GNSO working group has indicated that it may deliver recommendations which substantially differ from GAC Advice, and calls on the ICANN Board to ensure that such recommendations adequately reflect input and expertise provided by IGOs.

RATIONALE

This Advice aligns with the view of governments that IGOs perform important public functions for citizens worldwide, and that protecting their identities in the DNS serves to minimize the potential for consumer harm.”

Thanks and cheers

Mary
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