Logo

051040040 IGO Work Track Team Meeting
Brian Beckham (WIPO)
34:06
(I had an unexpected change in plans, so am working today)
Terri Agnew
35:13
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. Alternates not replacing members are not allowed to engage in the chat (apart from private chats) or use any of the other zoom room functionalities such as raising hands or agreeing/disagreeing.
Jeff Neuman
43:58
I think it should say is similar to the "name or the acronym"
Berry Cobb
44:12
https://docs.google.com/document/d/1DryYFUAat9uG5lmDGteWXz91Msa3BaHU1-vBFlfdnuQ/edit
Jay Chapman
51:04
+1 Paul
Jeff Neuman
53:40
I think we would need a formal independent legal opinion on what Paul is saying
Paul McGrady
55:31
@Jeff - throw out some IGOs and dare me not to be able to find a common law right for each of them.
Paul McGrady
55:55
@Jeff -no complainant ever had to evidence a "global right" to win a UDRP
Paul McGrady
56:56
@Jeff - exactly why the fix here is how we instruct the panelists, not creating a right wholesale out of 6ter
Paul McGrady
57:23
@Jeff - exactly why the fix here is how we instruct the panelists,
Paul McGrady
58:46
@Jeff - an independent legal opinion on which question? Whether or not a panelist can apply a lower evidentiary standard in private dispute process promulgated by a private company?
Jeff Neuman
58:46
"Independent Legal Opinion" to define for the group what it means to prove you have "common law rights"
John McElwaine
59:05
There is also a doctrine that when "a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) [this fact] may support the complainant’s assertion that its mark has achieved significance as a source identifier." Overview 3.0 at 1.3
Paul McGrady
59:07
@Jeff - the point is that we would lower the burden of proof.
Jeff Neuman
59:39
But Paul - if you are lowering the burden of proof, then you are creating "rights" aren't you
Paul McGrady
01:00:17
@Jeff - no, we would be acknowledging that the common law rights exist already and the barrier to assert them is lower.
Jeff Neuman
01:00:35
I am so confused right now. I thought the whole objection was not to create new "trademark rights" by lowering the burden.
Paul McGrady
01:01:08
@Jeff - lowering the evidentiary burden isn't the same thing as creating a fresh right based on 6ter.
Brian Beckham (WIPO)
01:03:03
In addition to the citation John has put in the chat, the WIPO Overview also states: "Also noting the availability of trademark-like protection under certain national legal doctrines (e.g., unfair competition or passing-off) and considerations of parity, where acquired distinctiveness/secondary meaning is demonstrated in a particular UDRP case, unregistered rights have been found to support standing to proceed with a UDRP case including where the complainant is based in a civil law jurisdiction."
Jeff Neuman
01:03:09
lowering the burden to show that you have trademark rights is something that I thought the USPTO and others were against. We are creating "rights" that don't exist under the current law.
Jeff Neuman
01:07:56
My concerns are:
Jeff Neuman
01:08:18
However, (a) not all jurisdictions recognize common law rights, so this is a concept that many IGOs may not be familiar with. (b) there are other elements you do have to prove, such as (i) the mark is distinctive (i.e., has secondary meaning), (ii) the mark is capable of distinguishing its "goods/services" from the "goods/services" of another (i.e., the primary significance of the mark in the minds of prospective consumers is not the services it provides, but the association of the services with a single source).Evidence to show this can include (i) the length of use of the mark, (ii) sales, advertising and promotional activitieis, (iii) expenditures relating to promotion and marketing, (iv) unsolicited media coverage, and (v) sales or admission figures (quoting San Diego Hydroponics & Organics v. Innovative Growing Solutions, Inc D2009-1545 (WIPO March 3, 2010). This has been cited in numerous UDRPs and actually comes from US Cts of Appeals.
Paul McGrady
01:08:44
Keep in mind that the WIPO panelists/providers already set the evidentiary standard themselves. The "prima facie" standard is not in the UDRP - it is made up by the providers/panelists.
John McElwaine
01:08:56
@Brian that sounds like there needs to be some Overview-like guidance on proving trademark rights that could give both sides comfort
Jeff Neuman
01:09:14
I have cited above the standards from previous cases
Paul McGrady
01:09:16
+1 John
John McElwaine
01:11:11
@Jeff there is also Overview 1.3 targeting. Furthermore, I have seen cases that remove the acquired distinctiveness requirements if the mark is fanciful or arbitrary
Jeff Neuman
01:12:46
@John - Understood, but good luck with showing that an acronym has "common law" trademark rights.
Jeff Neuman
01:13:25
Generally acronyms and abbreviations are much more difficult to establish common law trademark rights around
Paul McGrady
01:13:57
@Jeff - that, again, is the point of adjusting the evidentiary standard. In a world where UNICEF is mentioned in children's books, I don't think there is a real problem for acronyms.
Paul McGrady
01:16:48
@Susan - a good clarification.
Paul McGrady
01:17:34
@Jeff - that is not what I was meaning to convey.
Mary Wong
01:19:10
Yes - the Work Track needs to be clear that being on the list (whatever that ultimately is agreed to, if any) does not mean, or equate to, having trademark rights per se.
John McElwaine
01:21:29
@Jeff I think that most acronyms are considered strong (not descriptive).
Jeff Neuman
01:22:38
Many have passed the bar, but they are generally commercial in nature.
Brian Beckham (WIPO)
01:22:40
(The overwhelming majority of cases are based on registered rights)
John McElwaine
01:23:05
See Brian comments. I have filed and decided many
Paul McGrady
01:23:11
@Alexendra - that is exactly why I am suggesting tweaking the evidentiary standard.
Paul McGrady
01:24:04
@Alexandra - PS: no one has 100% certainty when they file a UDRP complaint, but adjusting the standard will help reduce the occasional oddball outcomes
Mary Wong
01:24:53
It may be more appropriate and perhaps clearer to use the term “unregistered rights” rather than “common law rights”.
Jeff Neuman
01:25:26
Paul, if you have a registered trademark, there is a rebuttable presumption that you have satisfied element 1
Jeff Neuman
01:27:15
There are cases that say that use of a "trade name" is not sufficient to show that you have acquired secondary meaning to establish a common law trademark rights
Paul McGrady
01:27:23
https://shop.un.org/
Jeff Neuman
01:28:37
Unregistered marks must be capable of distinguishing one merchant's goods/services from the goods/services of another.
Jeff Neuman
01:29:08
The Overview is not a binding legal document.
Jeff Neuman
01:29:13
It is a summary
Jeff Neuman
01:29:24
and should not be anything more. It should not be used to set policy
Jeff Neuman
01:31:31
Plus, there are other providers as well
Jeff Neuman
01:31:33
:)
Paul McGrady
01:31:33
So, if I were the UN, I produce this link: https://shop.un.org/ and this link: https://www.un.org/en/about-us/un-charter and that would trigger the lower evidentiary threshold.
Brian Beckham (WIPO)
01:33:42
I would refer us to the problem statement
Jeff Neuman
01:37:52
For the record, I don't disagree with Paul's substantive approach. But I do think that that is just as major of a change as having a new IGO DRP.
Jeff Neuman
01:38:01
And either approach would require going to the Council
Paul McGrady
01:39:00
@Brian - agree. We are so very close and we can find the right standard (not "on 6ter" as Susan reminds us, but something) to make this work. I will then just need to "sell" it to the IPC. :-).
Paul McGrady
01:39:07
+1 Agree we need Susan.
Paul McGrady
01:40:10
WIPO/UN, the United States government, and some random guy from Chicago. :-)
Mary Wong
01:40:17
@Susan, @Paul, @Brian - let us know if staff can assist.
Berry Cobb
01:42:24
Can we set a due date to allow enough time for the WT to review in prep for next week's meeting?
Brian Beckham (WIPO)
01:45:22
Unquestionably there are time and cost benefits (not to mention availability of subject matter experts) to appeal via arbitration.
Jeff Neuman
01:46:03
If the "Superpanel" is a substitute for a court, there should be the option for the presentation of evidence, cross examination of evidence, an actual hearing, etc.
Brian Beckham (WIPO)
01:47:04
The UDRP Rules already cover that Jeff (but I appreciate we are talking about appeals).
Jeff Neuman
01:47:25
@Brian - I am saying it has to be more than the UDRP
Jeff Neuman
01:47:52
A substitute for court proceedings must have proper due process for both sides.
Jeff Neuman
01:48:18
[this would be after the UDRP]
Paul McGrady
01:48:39
Thanks Chris!