[Gnso-igo-ingo-crp] Apologies

Wed Jan 28 16:58:56 UTC 2015

Hi All, 
With apologies I will be unable to attend the call today.
Best,
Kathy

-----Original Message-----
From: gnso-igo-ingo-crp-bounces at icann.org [mailto:gnso-igo-ingo-crp-bounces at icann.org] On Behalf Of Phil Corwin
Sent: Wednesday, January 21, 2015 9:56 AM
To: George Kirikos; gnso-igo-ingo-crp at icann.org
Subject: Re: [Gnso-igo-ingo-crp] Response from the IGO "small group"

Thanks for the always useful feedback,  George. Talk to you soon.

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

-----Original Message-----
From: gnso-igo-ingo-crp-bounces at icann.org [mailto:gnso-igo-ingo-crp-bounces at icann.org] On Behalf Of George Kirikos
Sent: Wednesday, January 21, 2015 8:39 AM
To: gnso-igo-ingo-crp at icann.org
Subject: Re: [Gnso-igo-ingo-crp] Response from the IGO "small group"

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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> Gnso-igo-ingo-crp at icann.org
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