[gnso-rpm-wg] Directly from INTA's website: What the TTAB has to say about sample size

Phil Corwin psc at vlaw-dc.com
Mon Sep 4 19:19:19 UTC 2017

Chiming in as the other co-chair of the IGO CRP WG, we are indeed in the final stages of our process after more than three years of work. and hope to deliver a Final Report prior to ICANN 60 in Abu Dhabi.

For the record, much of the WG’s deliberation depended upon on a clear understanding of the generally recognized contours of IGO immunity from judicial process and to that end we halted our work for a considerable time to secure funding for an independent expert to be retained and develop an extensive and well-documented legal memo on that subject (that topic, unlike RPMs, did not lend itself to extensive data gathering). That expert essentially told us that the answer was “it depends”, depending upon the fact situation, and the national laws and analytical approach utilized by a court assessing an IGO’s immunity claim.

Our Initial Report, and likely our Final one, did not take a position on the scope of IGO immunity because WG members did not feel it was appropriate for ICANN to have registrants renounce their ability to access a court under relevant national law where an IGO acted as Complainant, as RPMs are meant to supplement existing legal rights and not be a fully preemptive substitute. We also doubted that any court could be relied upon to respect such an attempt by a California non-profit corporation to compel a registrant to renounce its legal rights.

Likewise, we have not taken a position as to whether an IGO acting as compliant in a UDRP or URS action has lost its ability to raise an immunity defense as a result of the mutual jurisdiction clause in the RPMs; indeed, the final issue we are grappling with is what should occur if an IGO successfully asserts that defense and the registrant’s litigation is consequently dismissed.

So far as the composition of the WG, we have no ability to compel the involvement of any party, and IGOs (and GAC members) chose not to join as members despite repeated requests to do so. Nonetheless, IGOs did at time submit input to, and exchange in dialogue with, the WG, and all of that was given full and attentive consideration. Further, both co-chairs, along with GNSO leadership and GAC members, engaged in informal extended dialogue with members of ICANN’s Board on relevant IGO issues.

As Petter indicated, additional discussion of this matter is best undertaken on the email list of the IGO WG.

Best regards to all

Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004

Twitter: @VlawDC

"Luck is the residue of design" -- Branch Rickey

From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of claudio di gangi
Sent: Monday, September 04, 2017 12:43 PM
To: Beckham, Brian; petter.rindforth at fenixlegal.eu
Cc: gnso-rpm-wg
Subject: Re: [gnso-rpm-wg] Directly from INTA's website: What the TTAB has to say about sample size


Very helpful, thanks for providing this perspective!


On Mon, Sep 4, 2017 at 4:31 AM Petter Rindforth <petter.rindforth at fenixlegal.eu<mailto:petter.rindforth at fenixlegal.eu>> wrote:
Hi Brian, George & All,
I definitely don’t want to start a discussion here on what’s going on in another WG (everybody that are interested in that topic are welcome to join that WG).
Just wanted to clarify that the IGO-INGO Access to Curative Rights Protection Mechanisms WG is in the final stage of working with a solution that hopefully will solve the immunity question and still offering both parties involved a clear and neutral dispute resolution process, without the need to change (or at least with no significant changes) of the current UDRP/URS.

Our first WG meeting was for more than three years ago, so make sure that we have deeply considered all aspects, comments and proposals from all groups of interest, with a special view on how IGO’s can use URS/UDRP.

As said, this topic is worked with in another WG and I gladly discuss it further in that WG. Hopefully, our solution will not mean that we give this WG a number of additional topics/open questions once it is time to work generally with the URS and in Step2 the UDRP.

Co-Chair IGO-INGO Access to Curative Rights Protection Mechanisms WG

Petter Rindforth, LL M

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Thank you

2 september 2017 12:43:44 +02:00, skrev Beckham, Brian <brian.beckham at wipo.int<mailto:brian.beckham at wipo.int>>:

I am not seeking a reaction, but would like to nevertheless clarify/respond to an assertion you make in the context of the IGO curative rights WG, namely:

"In another PDP (the IGO one), I didn't need to "take a survey" to debunk the position that some IGOs were taking, that they were unable to use the UDRP (because of the mutual jurisdiction clause, which could affect their claimed immunity). Do you know what won the day? Going out and doing research, and actually finding examples of UDRPs where IGOs expressly participated! Same for their claimed "inability to waive immunity" -- it's kind of funny how that argument was debunked, after a little bit of research brought to light examples of the World Bank (an IGO) filing lawsuits in US court. I could go on, and on, but if you want other examples, feel free to email me outside this list."

You have not debunked anything.

Indeed, IGOs, in responding to a request from the WG on which only you and a mere handful of others have participated (whether such participation by a few individuals with clear agendas represents a sound multistakeholder model is an altogether separate question) stated:

"Submission to the UDRP and URS as currently drafted would necessitate waiving IGOs’ immunity from legal process, which would involve a specific decision taken at the highest levels of our governance structures."

In other words, IGOs have not said they are categorically unable to use the UDRP, but that there are serious legal and institutional hurdles to doing so (at the least, sign off by the Office of Legal Counsel and Director General).

Moreover, your research unearthing one or two instances in almost 20 years of the UDRP where one or two IGOs have opted to face those legal and institutional hurdles does not "debunk" the clear and unchanged position of IGOs.

In that WG, when presented with evidence of abuse of IGO identities (there: on the heels of the Ebola crisis), rather than positively look for a solution that met the expressed needs of IGOs (not to mention GAC Advice), your WG has instead opted to "know better" and disregard legitimate concerns raised by IGOs -- there is nothing "funny" about this.

Thank you for noting, and again, I am not looking for a reaction.


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