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051040040 IGO Work Track Team Meeting
Terri Agnew
19:42
Please review ICANN Expected Standards of Behavior here: https://www.icann.org/resources/pages/expected-standards-2016-06-28-en**Members: reminder, when using chat, please select all panelists and attendees in order for everyone to see chat.
Mary Wong
29:53
@Jeff, the concern here is that 6ter provides protection against third party trademark registrations, it doesn’t confer substantive rights per se.
Susan Anthony
31:44
Restated, @Jeff, 6ter does not generate a trademark right. See, e.g., https://www.wipo.int/article6ter/en/
Susan Anthony
33:08
The panelist could not decide that 6ter gives the IGO a TM right.
John McElwaine
33:31
1.7 What is the test for identity or confusing similarity under the first element?It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.Issues such as the strength of the complainant’s mark or the respondent’s intent to provide its own legitimate offering of goods or services without trading off the complainant’s reputation, are decided under the second and third elements. Panels view the first element as a threshold test concerning a trademark owner’s standing to file a UDRP complaint, i.e., to ascertain whether there is a sufficient nexus to assess the principles captured in the second and third elements.
Mary Wong
34:06
@Susan, yes - and my understanding of your and Paul’s emails is that an IGO will still have to show some form of substantive legal right - if not a TM, but certainly not just b/c of 6ter.
Paul McGrady
34:53
@Jeff, perhaps, but there is no "not going forward" process in the UDRP review process. If a trademark is asserted, no matter how close or not it is to the domain name, the WIPO Case Managers will send it to the Panelist for a substantive decision.
Jeffrey Neuman
35:43
Having a trademark registration is prima facie evidence of the validity of a mark.
Jeffrey Neuman
36:16
Why can we not state that an IGO on the "list" is prima facie evidence of a right to use a mark
Paul McGrady
36:31
@Brian, but do you still have to prove trademark rights once you are in the funnel, or does 6Ter meet that element?
Mary Wong
36:33
@Jeff, because that is not what 6ter does.
Paul McGrady
36:59
@Briwn, Because that is creating trademark rights out of thin air.
Jeffrey Neuman
37:58
@Mary - correct. But just because that is not what 6ter does, does that mean we cant do it? At the end of the day the UDRP is meant to prevent registrants from registering and using a domain name in bad faith.
Susan Anthony
38:42
@Paul, I do not know what Brian would say, but once you are in the funnel you would not have to prove TM rights and 6ter would not meet that element, in any event.
Jeffrey Neuman
39:07
I think we are spending a lot of time on the concept of what 6ter does and doesn't do. But not as much time on looking at the behaviors we are trying to prevennnnnt
Jeffrey Neuman
39:12
prevent
Paul McGrady
39:23
@Chris - agree. I think it makes sense to look at Rec. 5 and then see if any tweaks are needed elsewhere to implement a fresh Rec. 5
Susan Anthony
40:01
@Jeff, and I agree, which is why I advocated on the listserv before this meeting that we move on at least for the time being.
Mary Wong
46:44
FYI, an “in rem” action was Option 6 that the previous Curative Rights PDP considered and did not accept.
Paul McGrady
47:48
If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel's decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel's decision
Jeffrey Neuman
52:11
@Paul - I don't think the Registrant could have standing to file a case if the name has already been transferred, can it?
Jeffrey Neuman
52:34
The only thing it could argue is a fraudulent transfer, but that wouldn't apply.
Jeffrey Neuman
56:46
@Paul - that is my point. I don't think eliminating the 10 days actually solves the issue in preserving a right for a registrant to use a judicial process
Jeffrey Neuman
58:20
And couldn't an IGO Claim that it is not bound by any court order to transfer back the name
Mary Wong
59:23
@Paul, that assumes that the IGO will have filed a UDRP/URS complaint, and agreed to Mutual Jurisdiction, though, no?
Jeffrey Neuman
01:00:05
Taking a domain name away from a registrant is always an extreme option. I don't think the burden should ever be switched from the party seeking the transfer as opposed to the party that then currently owns that domain.
Mary Wong
01:00:44
@Brian, exactly - and Prof Swaine recognized this potential consequence in his expert advice to the Curative Rights PDP.
Jeffrey Neuman
01:00:54
If you take away the "will submit" language, then why would we need to make the change you are asking for Paul?
Jay Chapman
01:03:49
The “nominee/agent” concept assists with jurisdiction concerns
Paul McGrady
01:05:34
Sending again to all: @Jeff - maybe we change it to just a 10 day hold for the losing Respondent to get an injunction that the registrar will recognize? I'm very open to tweaks. I'm just throwing ideas out there.From Jay Chapman to Everyone: 11:48 AMThe “nominee/agent” concept assists with jurisdiction concerns
Brian Beckham (WIPO)
01:05:41
OK thx
Brian Beckham (WIPO)
01:05:43
(new)
Paul McGrady
01:08:29
Not to be regressive, but the more beneficial we make Rec 5 for IGOs, the more important it is not to create trademark rights out of thin air for IGOs (e.g. assuming rights because of 6ter).
Paul McGrady
01:09:48
@Brian - fair enough. Maybe an appeals process combined with no longer having to consent to a jurisdiction? Frankly, the consenting to a particular jurisdiction seems very 1999 to me.
Paul McGrady
01:12:08
@Jay - no one thinks you are being a wall. I think your comments are thoughtful. It is pretty clear that you are going to be very important in this WT to keep us in balance.
Brian Beckham (WIPO)
01:12:30
Agreed Jay, that definition would help (and should be narrow).
Paul McGrady
01:13:20
I also like the idea of narrowing down the kinds of cases this would apply to. Can we pursue that in the next call and on the list?
Paul McGrady
01:14:51
Thanks Jeff. All very important thoughts.
Jeffrey Neuman
01:15:05
I don't want to mess with the 10 days issue. I am fine replacing the mutual jurisdiction with another process
Jeffrey Neuman
01:16:07
How do we narrow down the cases? It already is narrow. Its where an IGO wins a UDRP again AND the registrant within 10 days wants to have the case "reheard".
Jeffrey Neuman
01:16:30
UDRP Panels do not classify types of decisions. A Complainant either proves the 3 elements or it doesnt
Jeffrey Neuman
01:17:49
We are making a quasi-parallel process, but lets only make the minimal changes that we have to make.
Brian Beckham (WIPO)
01:18:27
agreed - makes no sense to limit ourselves
Jeffrey Neuman
01:19:15
I have a little different view. There is going to be a wholesale review of the UDRP. Let them review the 10 day period. Let them review the And vs. Or.
Mary Wong
01:19:47
The GNSO Council’s directions were to “develop an appropriate policy solution” that is “generally consistent” with Recs 1-4 (which the Council has already approved). As Chris notes, this Work Track could go ahead and consider the possibilities, see how far that can go within those boundaries or if that involves having to go beyond them, as an initial step.
Jeffrey Neuman
01:21:09
I agree Alexandra. An review process (trying not to use appeal) is a benefit for Registrants
Brian Beckham (WIPO)
01:21:24
@Jeff, you may recall the LA Communique in which it was said that addressing this IGO issue should be done without amending the UDRP so in my view we ought to try to keep these separate.
Brian Beckham (WIPO)
01:21:53
well said Alex
Jeffrey Neuman
01:23:03
@Brian - I understand that communique, but we have GNSO approved policy and instructions from the GNSO. And unless the GNSO Council changes its view, its their instructions that determines our mandate, not GAC Advice (no matter how good that advice may be )
Brian Beckham (WIPO)
01:25:09
I understand that Jeff, which is why I have been trying to explore the "generally consistent" room for modifications, so we can try to bridge the gap between these two things.
Mary Wong
01:26:01
The Google Doc has been updated with Paul’s two suggestions.
Paul McGrady
01:26:38
@Mary - let's downgrade them from "suggestions" to mere "ideas." :)
Steve Chan
01:27:06
Link here: https://docs.google.com/document/d/1BxGr2f1d5670Zgcr42a7grU-moa254la-_NdqA0EsN4/edit
Jeffrey Neuman
01:27:32
There are "tweaks" and then there are wholesale changes. There may be a grey area, but anything that fundamentally impacts the rights of Registrants would be more than a tweak. In my opinion, we should do only make the most minimal changes to address the IGOs issues with standing and jurisdiction issues. NO more, No less
Jeffrey Neuman
01:28:53
@Brian - can you send around those recommendations again? I think that would be useful
Jeffrey Neuman
01:29:26
We would need to decide whether it is an "appeal" or a "rehearing de novo"
Paul McGrady
01:30:01
@Brian - that is interesting. Maybe we make a "blank slate arbitration" giving the parties much more control over how the arbitration functions.
Brian Beckham (WIPO)
01:30:11
(They may have been in the call but I can write them up)
Mary Wong
01:30:32
@Jeff, wouldn’t a binding arbitration (whether as an internal appeal mechanism) or a de novo option, affect a registrant’s right to go to court - unless we build in something that the registrant consents to at some stage?
Paul McGrady
01:30:49
One person's tweak is another person's wholesale change.
Jeffrey Neuman
01:31:26
@Mary - yes. But that is one wholesale change that is likely in scope.
Jeffrey Neuman
01:31:39
and likely envisioned by the Council
Jeffrey Neuman
01:31:57
But of course we will have to let them know and get their view to see if it aligns with that
Paul McGrady
01:31:57
Chris - very interesting call! Thank you. Thank you everyone else as well. Enjoy ICANN 70!
Brian Beckham (WIPO)
01:33:13
Thx Chris, all
John McElwaine
01:33:25
Thanks, Bye