[Gnso-igo-ingo-crp] Draft for discussion/comparison (if UDRP is to be amended) - question

Wed Jan 28 18:49:28 UTC 2015

Hello Kathy, Petter and everyone,

Following up on Petter’s note, this note is to confirm that the WG is
currently discussing whether the fact that an IGO is protected by Article
6ter of the Paris Convention  in the sense that it is not just eligible for
such protection, but has in fact notified WIPO which has duly communicated
the fact to all Paris Union and WTO member states (per the requirements of
the Convention) - is therfore sufficient to equate standing under the
UDRP/URS to having a trademark right. The intention in Singapore is to
continue, and hopefully finalize, at least preliminarily, this issue 
noting also that even if the WG answers this question preliminarily as yes,
that in and of itself may not be sufficient to be successful under the
UDRP/URS. For example, the WG could require that it be further demonstrated
that the registration or use of the domain name in question by the third
party/respondent must be such as to imply a connection between it and the
relevant IGO (as provided for in the Paris Convention). Accordingly, the WG
has yet to discuss whether this type of [additional] criteria would equate
to, prove or replace the additional, cumulative UDRP/URS elements such as
bad faith or legitimate third party rights.

We look forward to a productive discussion on these and the other
agreed-upon agenda items in Singapore. As Nathalie noted on the call, we
will confirm the remote participation set up as soon as we can, and also
confirm whether it will be possible to start the meeting either a half or a
full hour earlier than originally proposed.

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

From:  Petter Rindforth <petter.rindforth at fenixlegal.eu>
Reply-To:  "petter.rindforth at fenixlegal.eu" <petter.rindforth at fenixlegal.eu>
Date:  Thursday, January 29, 2015 at 02:08
To:  Kathryn Kleiman <kleiman at fhhlaw.com>
Cc:  Mary Wong <mary.wong at icann.org>, "gnso-igo-ingo-crp at icann.org"
<gnso-igo-ingo-crp at icann.org>
Subject:  Re: [Gnso-igo-ingo-crp] Draft for discussion/comparison (if UDRP
is to be amended) - question

> Thanks Kathy, 
> 
> As to your Q2: I personally agree that we shall focus on the IGO's that are
> claerly protected by the 6ter of the Paris Convention.
> 
> See the proposed specification/additon of the WIPO Overview we discussed at
> our previous meeting:
> 
> 1.  First UDRP Element (UDRP paragraph 4(a)(i))
> 
> POSSIBLE SPECIFICATION OF THE ADDED 1.5:
> 
> Does the complainant have UDRP-relevant trademark rights in a name or
> abbreviation of the complainant that has been communicated under Article 6ter
> of the Paris Convention for the Protection of Industrial Property?
> 
> In the case the complainant is an International Intergovernmental Organization
> (IGO), meaning an organization with an international legal personality
> established by international agreement, the complainant may have trademark
> rights in the form of names and acronyms protected under Article 6ter of the
> Paris Convention for the Protection of Industrial Property, that have been
> duly communicated to the countries of the Union through the intermediary of
> the International Bureau.
> 
> 
> Best,
> Petter
> 
> -- 
> Petter Rindforth, LL M
> 
> Fenix Legal KB 
> Stureplan 4c, 4tr
> 114 35 Stockholm 
> Sweden 
> Fax: +46(0)8-4631010
> Direct phone: +46(0)702-369360
> E-mail: petter.rindforth at fenixlegal.eu
> www.fenixlegal.eu
> 
> 
> NOTICE 
> This e-mail message is intended solely for the individual or individuals to
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> the intended recipient, you are requested not to read, copy or distribute it
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> Fenix Legal KB, Sweden, www.fenixlegal.eu
> Thank you
> 
> 
> 28 januari 2015, Kathryn Kleiman <kleiman at fhhlaw.com> skrev:
>> 
>> Hi All,
>> 
>> Two questions:
>> a) Does anyone know how many IGOs are involved in the definition that Heather
>> and the GAC seek in their letter of 2013?
>> 
>> b) if we are not trying to create additional legal rights, and if these IGOs
>> have not invoked their rights under the treaties seeking to be recognized by
>> national trademark offices, might we be overstepping our bounds in giving
>> automatic UDRP protection to these IGOs (those who have not sought the
>> protection)? 
>> 
>> Best and tx,
>> Kathy
>> 
>> p.s. from Mary's email below and Heather Dryden's letter:
>> 
>> (b) an intergovernmental organization having received a standing invitation
>> to participate as observer in the sessions and the work of the United Nations
>> General Assembly.² (taken from the letter enclosing the list, sent by the GAC
>> Chair:
>> https://www.icann.org/en/system/files/correspondence/dryden-to-crocker-chal
>> aby-annex1-22mar13-en.pdf.)
>> 
>> -----Original Message-----
>> From: gnso-igo-ingo-crp-bounces at icann.org
>> [mailto:gnso-igo-ingo-crp-bounces at icann.org] On Behalf Of Mary Wong
>> Sent: Wednesday, January 21, 2015 3:55 PM
>> To: gnso-igo-ingo-crp at icann.org
>> Subject: Re: [Gnso-igo-ingo-crp] Draft for discussion/comparison (if UDRP is
>> to be amended)
>> 
>> Hello George and all,
>> 
>> As noted during the WG call today, WG members are kindly invited to continue
>> to provide their feedback on the ³thought experiment² draft text that was
>> circulated on 14 January, and again earlier today. This will enable the group
>> to continue its substantive deliberations on this mailing list, in lieu of an
>> agenda item on this topic at our meeting next week, and should hopefully
>> provide some good points to circle back to when we meet face to face
>> (including with our remote participants) in Singapore on
>> 13 February.
>> 
>> Thanks to George and Paul (in a separate email also sent to this list) for
>> kicking off the discussion on this issue. FWIW here are a few staff notes and
>> comments to George¹s feedback, numbered according to his comments.
>> 
>> 1. George¹s very helpful and detailed analysis for Sub-Group B was posted to
>> the WG wiki space upon receipt, and is available here:
>> https://community.icann.org/x/mxbxAg. Also, as noted in the Adobe chat during
>> the meeting, the GAC¹s criteria for including an IGO on their list, supplied
>> to ICANN in 2013, was that it be "(a) an international organization
>> established by a treaty and which possesses international legal personality;
>> or (b) an intergovernmental organization having received a standing
>> invitation to participate as observer in the sessions and the work of the
>> United Nations General Assembly.² (taken from the letter enclosing the list,
>> sent by the GAC Chair:
>> https://www.icann.org/en/system/files/correspondence/dryden-to-crocker-chal
>> aby-annex1-22mar13-en.pdf.)
>> 
>> WG members may wish to note that in this letter the GAC also suggests that
>> the list be reviewed prior to the delegation of any new gTLD in subsequent
>> rounds, or every three years, whichever first occurs. As Phil noted on the
>> call today, the WG will at some point need to discuss the differences between
>> those IGOs that may be protected under whatever mechanism the WG recommends
>> (should that be the case) and those listed by the GAC.
>> 
>> 3. On the addition of the ³For avoidance of doubt² paragraph, the intention
>> was to address the scope of a UDRP claim and the question of legitimate third
>> party rights, rather than bad faith. In other words, it would not be enough
>> for an IGO to simply show that the domain name complained of is identical or
>> substantially similar to its name or acronym. Rather - and matching the scope
>> of Article 6ter protections - the third party would not be permitted to
>> register or use the domain name only if this implies a connection between it
>> and the IGO. The language here is taken basically word for word from Article
>> 6ter, and as George noted, may need some further tweaking and change, but
>> that was the basic idea.
>> 
>> We hope the above is helpful in clarifying some of the ongoing discussions
>> within the WG. 
>> 
>> 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
>> 
>> 
>> 
>> 
>> 
>> -----Original Message-----
>> From: George Kirikos <icann at leap.com>
>> Date: Wednesday, January 21, 2015 at 09:45
>> To: "gnso-igo-ingo-crp at icann.org" <gnso-igo-ingo-crp at icann.org>
>> Subject: Re: [Gnso-igo-ingo-crp] Draft for discussion/comparison (if UDRP is
>> to be amended)
>> 
>>> With respect, this "thought experiment" is akin to my "Straw Poll"
>>> earlier (which was deemed 'too early'), in that's jumping ahead to a
>>> 'solution', without first considering all the data, identifying whether
>>> there's a real problem, etc.
>>> 
>>> That being said, here are my thoughts:
>>> 
>>> 1. On October 28, 2014, in subgroup B I sent a detailed analysis
>>> comparing the ICANN Reserved Names of IGOs list to the Article 6ter
>>> database. Less than half (271 of 549) of the currently 'protected' IGO
>>> reserved identifiers are even in the Article 6ter database! I'm not
>>> sure if the spreadsheets were ever posted on the Wiki, but attached is
>>> the analysis in HTML format (in the Subgroup, I also sent them in Excel
>>> and OpenOffice formats). Thus, if we limit things to Article 6ter
>>> marks, a lot of existing reserved names lose protection (perhaps
>>> rightly so) 2. The amendment for 4(a)(i) is not necessary, since the
>>> proposed change is already consistent with common law marks that IGOs
>>> can currently assert. Furthermore, the proposed language is awkward. I
>>> would rearrange it (if forced to -- I don't approve of any change) as:
>>> 
>>> 
>>> 4(a)(i): your domain name is identical or confusingly similar to a
>>> trademark or service mark in which the complainant has rights; or,
>>> where the complainant is an international intergovernmental
>>> organization whose name or abbreviation has been communicated, as
>>> prescribed by Article 6ter of the Paris Convention for the Protection
>>> of Industrial Property, to the countries constituting the Union to
>>> which the Convention applies (including Members of the World Trade
>>> Organization to whom the Convention applies in accordance with Articles
>>> 1.3 and 2.1 of the Agreement on Trade-Related Aspects of Intellectual
>>> Property Rights), your domain name is identical or confusingly similar
>>> to complainant's Article 6ter registered name or abbreviation; and
>>> 
>>> (the slight change placed a semi-colon directly after "rights" as per
>>> the existing UDRP language, and then added a fresh "or" directly after,
>>> but then specific at the beginning the entities that the "or"
>>> applied to, i.e. IGOs.
>>> 
>>> 3. In the language that begins with "For the avoidance of doubt"
>>> (below 4(a)(iii)), it seems illogical. By definition, the domain name
>>> is going to be "confusingly similar" if it's an identical match, so to
>>> that that "the domain name shall NOT be regarded as confusingly similar
>>> " (i.e. 4(a)(i))", the first prong of the UDRP 3-part test, doesn't
>>> make sense. Instead, I believe what the text is trying to say is that
>>> the domain name was not registered or being used "in bad faith" (the
>>> 3rd part of the 3-part test). So, the text would need to be rewritten
>>> to clarify that part (i.e. it's not the first test -- it's the 2nd
>>> and/or 3rd parts of the test).
>>> 
>>> Furthermore, the language is dangerously unclear with its use of "use
>>> or registration" .... "is not of such a nature". That can be
>>> interpreted several ways, e.g. it might be interpreted to mean that an
>>> IGO can pass the test if it shows just bad faith "use" OR
>>> "registration", instead of both. In other words, it's not "avoiding the
>>> doubt" enough!
>>> 
>>> Furthermore, this is *not* sufficient language to protect registrants.
>>> For example, the domain name might not yet be in use at all -- e.g. it
>>> might be under construction, not resolving, etc. Rather than saying "is
>>> probably not of such a nature as to mislead the public as to the
>>> existence of a connection.......", the "test" must be much stronger.
>>> TO avoid the doubt, the IGO must prove that the registration AND the
>>> use can only be of such a nature to actively impersonate the IGO in
>>> question. I'm not sure that the language is "bulletproof" yet.
>>> 
>>> 4. For the amendments under 3(b)(viii) (the draft says 3(b)(vii), but
>>> it is actually below 3(b)(viii)), there is no requirement that the IGO
>>> discuss how their Article 6ter names/abbreviations are used. This is
>>> something that would need to be communicated in a complaint, to allow
>>> the respondent to know who the IGO is, what they do, etc. Recall that
>>> these IGOs are generally obscure. Respondent needs to have enough
>>> information in the complaint to mount a defence. Indeed, IGOs should be
>>> compelled to include the full Article 6ter filing in their complaint
>>> (which includes the date of the registration), since those generally
>>> won't appear in national trademark databases.
>>> 
>>> 5. WIPO overview, draft 1.5. First, I would renumber it 1.12 (otherwise
>>> all the other UDRP element overviews would need to get renumbered).
>>> Also, I would instead suggest that WIPO overview 1.7
>>> *already* applies to IGOs (What needs to be shown for the complainant
>>> to successfully assert common law or unregistered trademark rights)
>>> 
>>> http://www.wipo.int/amc/en/domains/search/overview2.0/#17
>>> 
>>> "Consensus view: The complainant must show that the name has become a
>>> distinctive identifier associated with the complainant or its goods or
>>> services. "
>>> 
>>> If we wanted to be consistent, better language might be:
>>> 
>>> 1.12: Can a complainant show UDRP-relevant rights in a name or
>>> abbreviation that has been communicated under Article 6ter of the Paris
>>> Convention for the Protection of Industrial Property?
>>> 
>>> (notice I've changed the several words slightly, including 'Does' to
>>> "Can"). The "discussion section can be changed in a similar manner).
>>> 
>>> In conclusion, I don't think any changes are needed to the UDRP itself
>>> (perhaps at best just the "WIPO Overview", i.e. improving education).
>>> We need to step back and consider *why* we'd want to change the UDRP
>>> -- is this just a 'political' thing, to be "seen to be doing
>>> something", just for the sake of appeasing governments? If that's the
>>> case, I don't think that's very proper for a technical policymaking
>>> body. Instead, we should feel pressured to "do something" for "show",
>>> but instead should be able to conclude that no changes whatsoever are
>>> required, if that's where the *facts* lead us.
>>> 
>>> Sincerely,
>>> 
>>> George Kirikos
>>> 416-588-0269
>>> http://www.leap.com/
>>> 
>>> 
>>> On Wed, Jan 14, 2015 at 4:35 PM, Mary Wong <mary.wong at icann.org> wrote:
>>>> Dear WG members,
>>>> 
>>>> As a thought experiment, the WG co-chairs would like to offer the
>>>> attached draft document for review and discussion by the WG. Since we
>>>> have been looking at the 2007 draft text for a possible alternative
>>>> dispute resolution procedure as a potential starting point for such a
>>>> process (should the WG eventually decide on such a path), the
>>>> co-chairs thought it would be helpful also for the WG to consider
>>>> what might be a possible starting point for amending the UDRP (should
>>>> that be the preferred option).
>>>> 
>>>> The WG may wish to discuss this draft along with its further comments
>>>> on the
>>>> 2007 draft text.
>>>> 
>>>> 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
>>>> https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp
>> _______________________________________________
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