RE: [gnso-igo-ingo] Qualification Criteria

[<Sam.PALTRIDGE@xxxxxxxx>]

For OECD's part, we fully support the comments made by the Ricardo below.

Sam Paltridge
OECD


From: owner-gnso-igo-ingo@xxxxxxxxx [mailto:owner-gnso-igo-ingo@xxxxxxxxx] On 
Behalf Of GUILHERME ricardo
Sent: 06 March, 2013 5:59 PM
To: 'Shatan, Gregory S.'; 'Claudia MACMASTER TAMARIT'; Gomes, Chuck; Thomas 
Rickert; gnso-igo-ingo@xxxxxxxxx
Cc: Teng, Joanne (joanne.teng@xxxxxxxx)
Subject: RE: [gnso-igo-ingo] Qualification Criteria

Dear All,

Once more we must stress, from our perspective, the need for preventive 
protection against any inappropriate third party registration/use of IGO names 
or acronyms, as determined by international law and various domestic statutes - 
needless to say, this need has already been acknowledged and accepted by both 
the Board's New gTLD Program Committee and the GAC.

As a limited category of entities created by international law and with an 
intrinsic public policy/public good function, the names and acronyms of IGOs 
must be kept from potentially abusive registration at the top- and second 
levels. This very limited group of organizations enjoys protection under 
international and domestic laws in a way that differs in many key respects from 
the protections afforded to non-IGO trademark owners – in other words, the 
names and acronyms of IGOs benefit from certain forms of preventive protection 
under international law against unauthorized use and registration (i.e., 
non-registrability of their names and acronyms), which are then incorporated 
(either directly or through specific domestic statutes) into the national laws 
of countries.

Such a protection both recognizes the international intergovernmental nature of 
IGOs, and the fact that it is not practicable for such organizations to submit 
to the jurisdiction of any one national legal system for purposes of enforcing 
rights in IGO names and acronyms which may be subject to improper use or abuse 
- needless to say, cases of abuses of their names and acronyms on the Internet 
have already been widely reported and documented by IGOs.

Moreover, IGOs have a public mission and are funded by public money, which is 
ultimately derived from taxpayers.  Thus, any abuse of IGO names and acronyms 
within the domain name system which must be remedied via insufficient fee-based 
curative (as opposed to preventive) mechanisms comes at a cost to the public 
missions of IGOs, which is likely to be prohibitive in a vastly expanded domain 
name system. Let us be clear again: the protection of IGO names and acronyms is 
not related to ordinary trademark protection, but instead to a highly-limited 
category of public entities established and protected under international law; 
nor are IGOs to be considered the same as INGOs such as RC and the IOC or 
lumped together in the same legal basket.

Moreover, preventive protection against third-party registration for IGO names 
and acronyms (other than with the relevant IGO's permission, to manage any 
potential coexistence or legitimate uses) at the top and second levels in any 
future gTLD rounds is hardly likely to significantly impact the potentially 
limitless words or phrases which could otherwise be used by future 
applicants/registrants. There is no need to repeat here the clear indications 
of abuse of IGO names and acronyms in the DNS.

Additionally, as is currently the case for ICANN itself and for country and 
territory names, IGOs should not be required by ICANN to have to pay for 
uncertain curative redress against after-the-fact abuse of their names and 
acronyms in ICANN's vastly-expanded DNS. Incidentally, the mere idea of 
"simply" amending/establishing RPMs to provide curative redress for IGOs would 
in any event be problematic for that category of entities, because any 
amendment of existing mechanisms, including the UDRP as a Consensus Policy, is 
likely to be : (i) highly contentious and time consuming ; (ii) take place well 
after new gTLDs have launched (too late); and (iii) to the extent that these 
may require IGOs to submit for mutual jurisdiction purposes to national 
jurisdiction, infringe their privileges and immunities as accorded by 
international law.

Finally, in what pertains to INGOs and their trademark-based terms (apart 
perhaps from the RC case), the absence of the mandatory legal framework above 
(which is applicable exclusively to IGOs) provides this group with the 
necessary flexibility to come up with INGO-specific criteria which should, to 
the maximum possible extent, be objective and non-discriminatory as expressed 
in Claudia’s message below – so if there are to be special protections for 
INGOs, the relevant objective criteria can be worked on and defined by this WG 
on the basis or broader or narrower criteria as hinted below by Greg; but we 
would reiterate again that, for the purposes of this debate, the IOC’s name, 
acronym and the “olympic” term are NOT and have never been protected by treaty 
– so any protection granted to IOC or the “olympic” term should be equivalent 
to that received by other INGOs, as it is NOT to be equated with the framework 
applicable to IGOs or the RC and its associated terms.

Unfortunately I will have to apologize for not being able to join tonight’s 
call due to other professional commitments (document filing deadlines) – but I 
hope the considerations above are useful for the group’s discussions, at least 
as far as IGOs are concerned.

With kind regards,

Ricardo Guilherme

De : owner-gnso-igo-ingo@xxxxxxxxx [mailto:owner-gnso-igo-ingo@xxxxxxxxx] De la 
part de Shatan, Gregory S.
Envoyé : mercredi 6 mars 2013 17:28
À : 'Claudia MACMASTER TAMARIT'; Gomes, Chuck; Thomas Rickert; 
gnso-igo-ingo@xxxxxxxxx
Objet : RE: [gnso-igo-ingo] Qualification Criteria

I agree with Claudia that the proposed requirement that an organization receive 
“multilateral or multinational protection beyond ordinary trademark laws” be 
rejected.

I disagree for the most part with “extraordinary public service” as a criterion 
or even as an inspiration for objective criteria, although this gets to the 
“three dimensional” nature of the discussion.  In other words, if we are 
talking about extraordinary remedies and prophylactic measures, I am more 
inclined to support a higher bar.  However, if we are merely talking about 
making sure that IGOs/INGOs have full access to existing RPMs (or RPMs that 
track to existing RPMs), then  I think that “ordinary” reach and public service 
(i.e., being an IGO or INGO) should be sufficient; if we still need some 
threshold to distinguish INGOs from non-international NGOs, that threshold 
should be relatively low (and objective and fair (not tailored)).

Greg

Gregory S. Shatan
Partner
Reed Smith LLP
599 Lexington Avenue
New York, NY 10022
212.549.0275 (Phone)
917.816.6428 (Mobile)
212.521.5450 (Fax)
gshatan@xxxxxxxxxxxxx<mailto:gshatan@xxxxxxxxxxxxx>
www.reedsmith.com<http://www.reedsmith.com>



From: owner-gnso-igo-ingo@xxxxxxxxx<mailto:owner-gnso-igo-ingo@xxxxxxxxx> 
[mailto:owner-gnso-igo-ingo@xxxxxxxxx] On Behalf Of Claudia MACMASTER TAMARIT
Sent: Wednesday, March 06, 2013 8:40 AM
To: Gomes, Chuck; Thomas Rickert; 
gnso-igo-ingo@xxxxxxxxx<mailto:gnso-igo-ingo@xxxxxxxxx>
Subject: RE: [gnso-igo-ingo] Qualification Criteria

Chuck and all,

It’s not a broken record at all.  I think it’s at the very heart of the matter. 
 We’ve suggested criteria to try to get at that idea.  And we’ve seen evolution 
as the weeks go by and we struggle for some direction and agreement.

We might look to several benchmarks of international and national recognition 
of extraordinary reach and public service from an international organization.  
We have mentioned including room for evidencing it with organizational 
mandates, formal membership by governmental or public institutions and 
corresponding financing, etc.  And we’ve looked at the possibility of 
recognizing established lists where these kinds of criteria might have already 
been shown.

In any regard, I support your conclusion (which I pray I don’t mischaracterize) 
that any criteria should be reviewed in light of the public interest.

Sincerely,
Claudia

From: Gomes, Chuck [mailto:cgomes@xxxxxxxxxxxx]
Sent: 2013-03-06 14:23
To: Claudia MACMASTER TAMARIT; Thomas Rickert; 
gnso-igo-ingo@xxxxxxxxx<mailto:gnso-igo-ingo@xxxxxxxxx>
Subject: RE: [gnso-igo-ingo] Qualification Criteria

Claudia,

I apologise for what must sound like a broken record for me but I have some 
questions for you or others:

1.       How do we define ‘extraordinary public service’?

2.       How do we measure ‘extraordinary public service’?

3.       Who would evaluate whether or not ‘extraordinary public service’ 
applies?

Whatever criteria we ultimately agree on, each of these questions will need to 
be answered by this WG.

Chuck

From: owner-gnso-igo-ingo@xxxxxxxxx<mailto:owner-gnso-igo-ingo@xxxxxxxxx> 
[mailto:owner-gnso-igo-ingo@xxxxxxxxx]<mailto:[mailto:owner-gnso-igo-ingo@xxxxxxxxx]>
 On Behalf Of Claudia MACMASTER TAMARIT
Sent: Wednesday, March 06, 2013 5:46 AM
To: Thomas Rickert; gnso-igo-ingo@xxxxxxxxx<mailto:gnso-igo-ingo@xxxxxxxxx>
Subject: RE: [gnso-igo-ingo] Qualification Criteria

Dear colleagues,

As a very quick but strong objection, please note that the below added 
requirement that an organization receive “multilateral or multinational 
protection beyond ordinary trademark laws” is not only unsupported and 
ambiguously worded but is exceedingly discriminatory without any justification. 
 We therefore strongly object to its inclusion in any final recommendation.

This biased criteria could unjustifiably exclude established international 
non-profit organizations with (special national legislated recognition of its) 
broad geographic scope and exceptional international service simply because 
they can point to “only” multinational trademark protection of its name without 
any regard for the public interest.

The Unredacted version of the Board Workshop Paper from 28 August 2012 (which 
might not be binding but is certainly informative) stated that criteria “must 
be tailored so the reservation is limited to a few with extraordinary reach and 
public service.”  Short of where the law requires it, shouldn’t special 
protection be tailored to get at that kind of an idea – extraordinary reach and 
public service?  Criteria surely cannot be shaped to simply shut the door on 
other established non-profit INGOs with extraordinary public service simply 
because they rely different legal protections than the IOC.

The Internet spans national borders (wherein legislation may often require a 
showing of abuse) – granting special protection must clearly be hinged on the 
public interest.

Sincerely,
Claudia MacMaster Tamarit
(ISO) International Organization for Standardization

From: owner-gnso-igo-ingo@xxxxxxxxx<mailto:owner-gnso-igo-ingo@xxxxxxxxx> 
[mailto:owner-gnso-igo-ingo@xxxxxxxxx] On Behalf Of Thomas Rickert
Sent: 2013-03-01 20:29
To: gnso-igo-ingo@xxxxxxxxx<mailto:gnso-igo-ingo@xxxxxxxxx>
Subject: [gnso-igo-ingo] Qualification Criteria

All,
we have discussed the question of qualification criteria (again) during our 
last call, as you will recall.

What we have on the table at the moment are the two proposals below.

Do you think we can merge them or come up with a new set of criteria?

Following the last call, let me also remind you that these criteria are the 
first hurdle to be taken qualify for the protections. #

We discussed that there might be additional criteria (admission criteria) for 
the protection mechanism in question.

I guess Alan was the first to make the point during the call. Can I ask all of 
you (and Alan in particular :-)) to think of whether and what additional 
criteria you would like to set up as a second hurdle for admission to the 
protections?

Thanks,
Thomas

Here come the two sets of qualification criteria:

1. What I amalgamated from Mary's proposal and our previous discussions:


Organizations that serve the global public interest, that are international in 
scope and operations, and whose primary mission is of such public importance 
that some form of special protection for its name and acronym can be justified

Meeting two of the following criteria is deemed to be sufficient evidence of 
the above requirements for an organization to be eligible for protections. The 
protection encompasses the name and the acronym of the respective organization 
as well as designations that - as the case may be - are explicitly mentioned in 
a treaty as a protected designation.

- Protection by treaty
- Protection in multiple national jurisdictions (either by virtue of a specific 
law or treaty protection that is enforceable in a multiple jurisdictions 
without the requirement of a specific enactment
- Mission serving the global public interest
- inclusion in the Ecosoc list

1. What Mary/Jim have recently submitted:

“It seems to me that what we are striving to get to is a minimum standard to 
qualify for special protections (of whatever nature), and that many of those 
that have been suggested already, e.g. treaties, national laws, organizational 
mandates etc., are a form of proxy for the vague concept that:

  "an organization [must] be


• international in scope and operations, and


• its primary mission be of such public importance


• that it receives multilateral or multinational protection beyond ordinary 
trademark laws, and


• that some form of special protection for its name and acronym can be 
justified."








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