[council] RE: Information for upcoming Council discussion on IGO Curative Rights WG
psc at vlaw-dc.com
Mon Mar 16 20:09:42 UTC 2015
Excellent summation, Mary.
In short, an IGO's seeking of protection under the Paris Convention confers defensive rights in the national trademark systems of signatories to the Convention as well as members of the WTO. The mere registration of a .Int domain does not.
As Co-Chair of this WG I'd be happy to provide any further explanation that might be helpful on Thursday's call.
Best to all, Philip
Philip S. Corwin, Founding Principal
1155 F Street, NW
Washington, DC 20004
"Luck is the residue of design" -- Branch Rickey
From: owner-council at gnso.icann.org [mailto:owner-council at gnso.icann.org] On Behalf Of Mary Wong
Sent: Monday, March 16, 2015 12:48 PM
To: council at gnso.icann.org
Subject: [council] Information for upcoming Council discussion on IGO Curative Rights WG
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 Council's 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 "standing" 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 Council's guidance as to whether or not proceeding on this basis, despite the language of its Charter, is appropriate and approved.
* 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 GNSO's PDP WG on the Protection of International Organization Identifiers in All gTLDs as protected by their consensus recommendations": http://gnso.icann.org/en/drafts/igo-ingo-crp-access-charter-24jun14-en.pdf
* 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): http://www.wipo.int/article6ter/en/legal_texts/article_6ter.html
* 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
Senior Policy Director
Internet Corporation for Assigned Names & Numbers (ICANN)
Telephone: +1 603 574 4892
Email: mary.wong at icann.org<mailto:mary.wong at icann.org>
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