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

Mon Jul 3 12:59:48 UTC 2017

Perhaps a formal note from the Chair to Brian with a cc to his boss may
help.

From:  Phil Corwin <psc at vlaw-dc.com>
Date:  Monday, July 3, 2017 at 2:37 PM
To:  Paul Tattersfield <gpmgroup at gmail.com>, Paul Keating <paul at law.es>,
"Beckham, Brian" <brian.beckham at wipo.int>
Cc:  "gnso-igo-ingo-crp at icann.org" <gnso-igo-ingo-crp at icann.org>
Subject:  RE: [Gnso-igo-ingo-crp] Advice on IGOs from the GAC's Johannesburg
Communique

> 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 GAC¹s view.
> Therefore, WIPO has particular responsibility to provide accurate and balanced
> input to the GAC.
>  
> 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: 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 WIPO¹s advice which is causing much of the anxiety amongst the
> GAC and the other IGOs?
>  
> If we look at WIPO¹s comments to the working group¹s 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
>  
> ³Brian Beckham for the record. I wanted to just briefly follow up on (John)¹s
> 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.²
>  
> 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. 
>  
> Brian¹s 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 ³use in commerce² 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/msg
> 00038.html 
> <https://forum.icann.org/lists/comments-igo-ingo-crp-access-initial-20jan17/ms
> g00038.html> 
>  
> 2 
> http://schd.ws/hosted_files/icann59johannesburg2017/f8/Transcript%20INGO%20ING
> O%20CRP%2027%20June%20.pdf
> <http://schd.ws/hosted_files/icann59johannesburg2017/f8/Transcript%20INGO%20IN
> GO%20CRP%2027%20June%20.pdf>
> 
>  
> 
> On Thu, Jun 29, 2017 at 5:17 PM, Paul Keating <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> wrote:
>> 
>> Thanks Mary.
>> 
>>  
>> 
>> No surprises here, unfortunately.
>> 
>>  
>> 
>> Best, Philip
>> 
>>  
>> 
>> 
>> From:gnso-igo-ingo-crp-bounces at icann.org
>> <gnso-igo-ingo-crp-bounces at icann.org> on behalf of Mary Wong
>> <mary.wong at icann.org>
>> Sent: Thursday, June 29, 2017 11:30 AM
>> To: 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%20Commun
>> ique_Final.pdf?version=2&modificationDate=1498747877729&api=v2
>> <https://gacweb.icann.org/download/attachments/27132037/GAC%20ICANN59%20Commu
>> nique_Final.pdf?version=2&modificationDate=1498747877729&api=v2>
>> 
>>  
>> 
>> ³In 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 IGOs¹ status as public intergovernmental
>> institutions, and
>> 
>> III. respect IGOs¹ 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.²
>> 
>>  
>> 
>> Thanks and cheers
>> 
>> Mary
>> 
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>> Gnso-igo-ingo-crp at icann.org
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> 
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