[Gnso-igo-ingo-crp] Response from the IGO "small group"

[George Kirikos]

In regards to this document from the IGOs:

1. The IGOs incorrectly believe that "IGOs would generally find
difficulty in meeting the UDRP and URS standing requirements of
holding a trademark registration." That's simply not correct -- a
trademark registration is NOT required. Common law marks are
recognized, as we've discussed previously. Standing is trivial to
obtain.

2. Their position on immunity is misleading and incorrect. Immunity
can be waived, and is routinely done in their contracts, not some
'exceptional' thing that rarely happens. It was waived in the World
Bank UDRP that we've previously discussed. Indeed, *every* domain name
registration contract entered into by IGOs specifies a jurisdiction
and availability for court proceedings! Immunity is a *shield* (to
defend against a process), never a *sword* used to assert "rights"
against others. Those rights *must* be asserted in a national court.
Now, the IGOs do go on to say:

"Similarly, the enforcement of misuse of IGO identifiers is the
responsibility of the State signatory of the Paris Convention and/or
WTO TRIPS."

which is consistent with one of the early proposals that I made,
namely that a simple modification of the UDRP would allow for a proxy
to bring forth the UDRP. i.e. in the words of the IGOs:

"IGOs may also seek the assistance of the relevant government
entities, in particular the ministries of justice or foreign affairs,
as well as the national representatives of the IGO."

That's entirely consistent with my proposal, i.e. allow the ministry
of justice, or district attorney, etc. for a given nation (i.e. the
same country as the domain name registrant) to bring forth a UDRP on
behalf of the IGO as a proxy. That proxy could *not* assert immunity,
and the domain name registrant could go to the national courts in the
usual manner. Indeed, the proxy might decide to do nothing at all, as
per the US State Department letter that we previously discussed in
this group

http://www.state.gov/s/l/38648.htm

in relation to the UNIFEM.com domain name (apparently).

Furthermore, we've previously discussed the workaround used in the
UNITAID UDRP, namely having the marks held by a law firm, who can then
assert the claim on behalf of the UDRP (and that law firm would not be
able to claim 'immunity'). This would not require any change in the
UDRP, since it's already been a tactic employed by them, successfully.

So, in conclusion, I think this letter was somewhat helpful, in that it:

(a) shows the gaps in the IGOs knowledge (thus allowing 'further
education' to help close the gap, and alleviate their concerns), and

(b) confirms to us that enforcement can be done through the "relevant
government entities" (which was consistent with my proposal on
allowing a 'proxy' complainant, to solve various issues)

I look forward to our telephone call later today.

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/


On Mon, Jan 19, 2015 at 1:30 PM, Mary Wong <mary.wong at icann.org> wrote:
> Dear WG members,
>
> Please find attached the IGOs’ response to the WG’s questions that had been
> sent to the small group of IGOs who have been engaged in discussing issues
> concerning IGO protections (including the recommendations from the GNSO’s
> previous PDP on the topic) with the Board’s New gTLD Program Committee, the
> GAC and the GNSO Council.
>
> You will note that the IGOs’ explanation of the level and nature of
> protection under Article 6ter of the Paris Convention comports with what was
> discussed on our last WG call, i.e. that protection under 6ter is more
> prohibitory in nature and does not necessarily depend on an IGO’s having
> acquired a national trademark registration in its name and/or acronym.
> Rather, as we have noted since, the implementation by states of Article 6ter
> means that third parties are prohibited from registering as trademarks (or
> elements thereof) IGO names, acronyms, flags, armorial bearings and so on,
> that suggest a connection between them and the IGO in question. While IGOs
> may go further and proceed to register its name and acronym as a trademark
> in various national jurisdictions, that would in many cases constitute
> additional protections beyond those conferred by Article 6ter.
>
> (To recap the last WG discussions, we have seen that countries such as the
> United States and Australia implement their 6ter obligations by treating IGO
> names and acronyms which have been properly notified to each state by WIPO
> as particular types of marks, e.g. by assigning specific serial/sequence
> numbers to them and by requiring that a trademark examiner refuse a third
> party registration on grounds within the scope of 6ter, such as falsely
> suggesting a connection with the IGO.)
>
> In light of the IGO response and the WG’s current discussions, staff will
> consult with Petter and Phil as to how best to approach our work in the
> lead-up to Singapore, where it is expected that the progress made by our WG
> may be on the agenda for discussions between the GNSO and the GAC.
>
> Thanks and cheers
> Mary
>
> Mary Wong
> Senior Policy Director
> Internet Corporation for Assigned Names & Numbers (ICANN)
> Telephone: +1 603 574 4892
> Email: mary.wong at icann.org
>
>
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