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051040040 IGO Work Track Team Meeting
Paul McGrady
29:20
@Julie, I also don't see a mute and unmute button in this format. I want to be sure I am muted.
Chris Disspain
30:25
Paul, you show as muted
Julie Bisland - ICANN Org
31:33
Thanks all for your patience! Video is enabled, and Panelists all are muted but have the ability to unmute when needed.
Berry Cobb
34:53
Current Reservations per Registry Agreement: https://newgtlds.icann.org/sites/default/files/agreements/agreement-approved-31jul17-en.html#specification5.6
Paul McGrady, IPC
35:18
@Chris, that is the crux. 6ter does not = common law rights.
Paul McGrady, IPC
35:30
GAC lists also do not = common law rights
Berry Cobb
37:09
And at the very bottom of this list in section 5&6 are the lists of the full names and acronyms of IGOs that are currently reserved. https://www.icann.org/sites/default/files/packages/reserved-names/ReservedNames.xml#red-cross2
Berry Cobb
38:46
https://www.icann.org/sites/default/files/packages/reserved-names/ReservedNames.xml#red-cross2
Julie Bisland - ICANN Org
40:15
**Members: reminder, when using chat, please select all Panelists and Attendees in order for everyone to see chat.
Jay Chapman, BC
40:52
Wouldn
Paul McGrady, IPC
40:54
I don't think anyone is saying that no IGOs have any rights in their names. But, those rights would need to be proved up. They cannot be inferred or assumed from 6ter or GAC lists, unless ICANN wants to be in the business of creating "trademarkish rights".
Jeff Neuman, GNSO Council-GAC Liaison
41:23
The UDRP only applies to the language in which the trademark has been granted or common law trademark has been used in commerce.....
Jay Chapman, BC
41:32
Wouldn’t “use in commerce” confer some level of common law rights?
Berry Cobb
41:34
Just to note, that the consensus policy created was English + 2 other languages.
Paul McGrady, IPC
42:25
@Jay - if used in a common law country and if provable to exist within the UDRP process. Common law rights in UDRPs have to be evidenced, not just asserted and assumed.
Jeff Neuman, GNSO Council-GAC Liaison
44:46
We can word it as the first element of the prima facie case Complainant must prove to shift the burden to the respondent
Paul McGrady, IPC
48:00
@Jeff, understood and as I said if the IGOs want a higher standard, that is up to them. What the real issue is for me is "may assist IGOs who do not have trademark rights." That is fresh trademarkish rights.
Paul McGrady, IPC
49:42
@Yrjo - what are the checks and balances on who gets on the GAC list? At least 6ter has some sort of formal process associated with it.
Berry Cobb
49:48
Link to current policy: https://www.icann.org/resources/pages/igo-ingo-protection-policy-2020-02-18-en
Jeff Neuman, GNSO Council-GAC Liaison
50:00
Paul - I think IGOs want access to this even if they do have trademark rights because of the "Mutual Jurisdiction" clause. But whether this is a higher burden or not is up to the IGOs to weigh.
Berry Cobb
50:08
Section 4.4 contains a high-level procedure to update the list.
Jeff Neuman, GNSO Council-GAC Liaison
54:14
We are discussing that "Applicable Disputes" will be tweaked to add IGOs on this "list" whatever that list ends up being.
Paul McGrady, IPC
54:20
@Susan - I agree with that, unless of course the WG decides that it does. Like you, that is what I am worried about, because the current text says that 6ter "may assist IGOs who do not have trademark rights." As long as the working document says that, that is where we are heading no matter what we say on these calls, the documents always govern.
Berry Cobb
54:54
To be precise. 179 Member States and 38 IGOs are formal members of the GAC.
Susan Anthony, USPTO
55:55
@Paul McGrady - I agree that we need to get rid of "6ter may assist IGOs who do not have trademark rights." I do believe that IGOs could use the process with Jeff's proposed language, no?
John McElwaine, Council Liaison
56:15
I don't understand why the IGO's feel like they could not use the UDRP.
Susan Anthony, USPTO
56:18
6ter is not evidence of a common law TM right.
Paul McGrady, IPC
56:27
It sounds like Alexandra is calling for a way to prevail in the UDRP without having to have prove trademark rights. That is a major sea change to the UDRP which always requires proving actual trademark rights.
Jeff Neuman, GNSO Council-GAC Liaison
57:29
Yes Paul, that has always been the issue since day 1.
Susan Anthony, USPTO
57:34
@Alexandra, I think we are looking at a couple of ways for IGOs to use a DRP.
Jeff Neuman, GNSO Council-GAC Liaison
57:55
They would have to still show that the domain name was both registered AND used in Bad Faith
Jeff Neuman, GNSO Council-GAC Liaison
58:25
And of course the previous element which is that the registrant has no rights or legitimate interests in the name
Paul McGrady, IPC
58:32
@Jeff, well then that is ICANN creating trademarkish rights.
Jeff Neuman, GNSO Council-GAC Liaison
59:55
I disagree Paul. IGOs will not be able to use the fact that they have access to UDRP as a substitute for a trademark for anything other than the UDRP. They cant use it in a court of law in any jurisdiction.
Alexandra Excoffier (OECD)
01:00:37
Agree with Jeff, the list won't mean that we will mean, only that we can use some process UDRP or IGODRP without having a trademark (registered or common law)
Alexandra Excoffier (OECD)
01:01:06
won't mean that "we will prevail"
Jay Chapman, BC
01:03:02
IMO, that’s the solution - unregistered common law rights found from seeing “use in commerce”
Susan Anthony, USPTO
01:03:12
So, @Paul McGrady, the IGOs - at least those with a lot of press - should just "go for it" in terms of pursuing the UDRP. That is, they would argue that they have common law trademark rights in some sort of service mark?
Paul McGrady, IPC
01:04:08
@Jeff - our scope is only domain names, so I'm not sure your comment brings any comfort.
Jeff Neuman, GNSO Council-GAC Liaison
01:04:55
@Paul - because you said that we are creating trademark rights for IGOs and we are not even with respect to domain names.
Susan Anthony, USPTO
01:04:56
The Recommendations allow the panelist to make a finding that 6ter is equivalent to a common law trademark, which is simply wrong, whether or not you call it "standing."
Mary Wong
01:05:00
Rec #2
Paul McGrady, IPC
01:05:31
@Susan, yes. If an IGO can show common law rights they can prevail.
Susan Anthony, USPTO
01:06:02
Kavouss is right - many IGOs simply don't have trademark rights. And therein lies the rub.
Alexandra Excoffier (OECD)
01:06:23
Exactly!
Mary Wong
01:06:56
@Susan, and hence the UDRP/URS would not be available - to any potential Complainant (including an IGO) which does not have a trademark (whether registered or unregistered, including common law rights).
Jeff Neuman, GNSO Council-GAC Liaison
01:11:21
There are a number of UDRP decisions that address the factors used to determine whether an entity has "common law" rights in a trademark or service mark. It is not as easy as just showing that you have used a name. It must be used in commerce. It must have be distinctive and must distinguishing its goods/services from ottttthers.
Berry Cobb
01:11:50
Just to note, the Rec #1-4 are only with the Board and are only consensus recommendations from the GNSO, they are not yet consensus policies.
Jay Chapman, BC
01:12:59
+1 Paul
Paul McGrady, IPC
01:16:41
@Alexandra, but organizing a conference attended by others is a trademark use.
Mary Wong
01:18:05
@Yrjo, it was important that we left it to the panelists to determine whether, in any one case, the IGO had the necessary substantive rights to succeed - whether those be unregistered “common law rights” or other unregistered rights that the panelists consider legally sufficient to satisfy the first UDRP requirement.
Jeff Neuman, GNSO Council-GAC Liaison
01:22:15
@Paul - the UDRP Cases are all over on this.
Paul McGrady, IPC
01:22:39
https://www.un.org/en/68th-united-nations-civil-society-conference/page/registration International Class 41
Jeff Neuman, GNSO Council-GAC Liaison
01:25:44
I think Paul want to keep the UDRP just for trademark period.
Jeff Neuman, GNSO Council-GAC Liaison
01:26:24
I think Paul does not feel like we can add other types of disputes under the UDRP. It if it is not a trademark, you cannot use the UDRP
Jay Chapman, BC
01:27:32
+1 Paul. It certainly seems the easiest and least invasive way
Jeff Neuman, GNSO Council-GAC Liaison
01:27:49
So the question is whether this group believes that it is a major change to the UDRP to add an applicable dispute for IGOs
Jeff Neuman, GNSO Council-GAC Liaison
01:28:59
the redline is a position that being on the list (whatever that list is) now become an "applicable dispute"
Paul McGrady, IPC
01:31:10
I think that makes sense and I would be happy to participate on any drafting team.
Alexandra Excoffier (OECD)
01:32:19
@ Paul, that's not what I've been saying. What I said is that IGOs should not have to show registered or unregistered "trademark" rights, whatever that means, but can show rights otherwise, e.g. being well known by the acronym and using it widely
Paul McGrady, IPC
01:34:21
@Alexandra - thanks for this clarification. I think we may be saying the same thing since "being well known" equates to secondary meaning within a common law trademark analysis. I really think we are very close here and I would like us all to keep talking. If Council can give us more freedom, great, but I think even if they don't we should still keep talking because I really think we can get there.
Alexandra Excoffier (OECD)
01:35:41
Always ready to keep talking. We can also put this aside and concentrate on rec 5 and see whether we can get traction there
Paul McGrady, IPC
01:37:22
Thanks Chris!
Paul McGrady, IPC
01:38:10
@Chirs - will do.
Berry Cobb
01:40:58
All good
Steve Chan
01:41:01
Same
Paul McGrady, IPC
01:41:09
@All, I will put something out on the list tomorrow morning (my son has a concert tonight at his university, so the workday is short form me today).
Alexandra Excoffier (OECD)
01:41:56
And I'm supposed to be off today ;-)
Jeff Neuman, GNSO Council-GAC Liaison
01:42:01
Glad they are able to do concerts!
Paul McGrady, IPC
01:42:32
@Alexandra, thanks for being on the call!