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

[Phil Corwin <psc@xxxxxxxxxxx>]

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
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From: owner-council@xxxxxxxxxxxxxx [mailto:owner-council@xxxxxxxxxxxxxx] On 
Behalf Of Mary Wong
Sent: Monday, March 16, 2015 12:48 PM
To: council@xxxxxxxxxxxxxx
Subject: [council] Information for upcoming Council discussion on IGO Curative 
Rights WG

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 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.

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 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
Mary

Mary Wong
Senior Policy Director
Internet Corporation for Assigned Names & Numbers (ICANN)
Telephone: +1 603 574 4892
Email: mary.wong@xxxxxxxxx<mailto:mary.wong@xxxxxxxxx>