[council] Information for upcoming Council discussion on IGO Curative Rights WG

Mary Wong mary.wong at icann.org
Mon Mar 16 16:48:06 UTC 2015

Dear Councilors,

Here is some information that I hope will assist with your deliberations
this Thursday regarding the guidance that the IGO-INGO Curative Rights
Protection Working Group will be seeking from the Council.

Essentially the WG will be seeking the Council¹s guidance on the scope of
its Charter on a specific point, viz. the limitation of its work to
considering only those IGOs that were on the GAC-approved list of IGOs. This
is the IGO list which the original PDP Working Group on protecting IGOs and
INGOs had based their recommendations, one of which was the exploration of a
PDP to analyze curative rights protections for these organizations (which
led to the initiation of this current PDP). The current WG is now at a point
where it believes that it may need to diverge from that Charter limitation,
for the following reason.

To the extent that a dispute resolution procedure addressing specific IGO
needs is to be based on legal rights other than owning a trademark, the WG
is inclined to think that this should be based on international law as
stated in the treaty known as the Paris Convention for the Protection of
Industrial Property. Under Article 6ter of the Paris Convention, IGO names
and acronyms can be protected in member states against third party
registrations which are likely to mislead the public as to the existence of
a connection with the IGO. Protection is based on a system of notification
and communication to all the countries that are bound to observe the
obligations imposed by the Convention. Thus, an IGO which seeks protection
for its name and/or acronym must first notify WIPO (acting as an
intermediary), who then communicates this to all the States to which the
Convention would apply. Each State has 12 months to object, but otherwise is
then obliged to protect that IGO name and/or acronym in accordance with its
national law.

The WG has considered the scope, requirements and effect of the Paris
Convention in terms of providing an IGO with the necessary ³standing² to
file a complaint in the absence of national trademark rights. In contrast,
the GAC list of IGOs is not comprised of those IGOs that have sought
protection under the Paris Convention, but rather was generated based on
criteria corresponding to eligibility for a .int domain (i.e. the
organization must be established by an international treaty and be generally
considered to possess an international legal personality of its own). While
some IGOs on the GAC list have sought Paris Convention protections for
either their names, acronyms or both, many have not.

As standing to file a complaint under the UDRP and URS corresponds to owning
one or more trademark rights, the WG believes that approximating this
requirement to specific protection conferred by the Paris Convention is a
more substantive basis than using the .int criteria. The WG is therefore
seeking the Council¹s guidance as to whether or not proceeding on this
basis, despite the language of its Charter, is appropriate and approved.

Further information:
* Here is the link to the WG Charter, which states in part that "For
purposes of this PDP, the scope of IGO and INGO identifiers is to be limited
to those identifiers previously listed by the GNSO¹s PDP WG on the
Protection of International Organization Identifiers in All gTLDs as
protected by their consensus recommendations²:
* Here is the relevant language of the Paris Convention (see 6(1)(b),
6(1)(c) and 6(3)(b) for the IGO-specific protections):
* Here is the .int criteria: https://www.iana.org/domains/int/policy

Please feel free to direct any questions you may have to me and Steve Chan
(WG staff support), Mason Cole (GAC-GNSO liaison who has been participating
in this WG), Phil Corwin (WG co-chair and Council member) or Susan Kawaguchi
(Council liaison to this WG).

Thanks and cheers

Mary Wong
Senior Policy Director
Internet Corporation for Assigned Names & Numbers (ICANN)
Telephone: +1 603 574 4892
Email: mary.wong at icann.org

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/council/attachments/20150316/fdee9d41/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: smime.p7s
Type: application/pkcs7-signature
Size: 5044 bytes
Desc: not available
URL: <http://mm.icann.org/pipermail/council/attachments/20150316/fdee9d41/smime.p7s>

More information about the council mailing list