RE: [gnso-igo-ingo] Topic #2 - IGO Acronyms in the TMCH

[GUILHERME ricardo <ricardo.GUILHERME@xxxxxxx>]

Dear Berry and All,

Please find our answers (marked in yellow) to each of the questions below.

With kind regards,

Ricardo (UPU) and David (WIPO)

De : owner-gnso-igo-ingo@xxxxxxxxx [mailto:owner-gnso-igo-ingo@xxxxxxxxx] De la 
part de Berry Cobb
Envoyé : vendredi 3 mai 2013 00:58
À : gnso-igo-ingo@xxxxxxxxx
Objet : [gnso-igo-ingo] Topic #2 - IGO Acronyms in the TMCH

Hi All,

Judging by the responses and the Chair’s assessment thus far, it appears the 
best possible protections for IGO acronyms will be to have IGOs register their 
identifiers within the TMCH.  If the WG can respond to the list for the 
following questions:


1.       Is there broad support by WG members for the registration of IGO 
acronyms into the TMCH?

While welcoming the pragmatic spirit in which this proposal based on existing 
RPM infrastructure contemplated for trademarks has been made, it would be 
problematic for IGOs to support registration of IGO acronyms in the TMCH, 
especially to the extent that this would be envisaged as an alternative to 
providing suitable preventive protection of IGO acronyms against inappropriate 
third party registration. Reasons for this include the following.
•          The TMCH is designed for Trademarks, and registration in it requires 
the registrant to be a “Trademark Holder”. However, as explained on several 
past occasions, IGO names and acronyms are NOT the same as trademarks, and are 
NOT generally subject to registration in national trademark offices (this basic 
fact should be properly understood by the group before such a proposal can be 
floated). Rather, duly communicated IGO names and acronyms are identifiers for 
which third-party trademark registration is widely precluded under 
international law (c.f. Article 6ter of the Paris Convention), other than in 
certain cases which would not suggest a connection between the trademark 
containing the relevant sign and the IGO concerned. Consequently, it would be 
problematic, both in principle and practice, to qualify IGOs as “Trademark 
Holders” for the purposes of registering their names and acronyms in the TMCH.

•          The “protection” provided by the TMCH is temporary (both Sunrise and 
Claims being time-limited), while the protection enjoyed by duly communicated 
IGO names and acronyms under international law is not.

•          The “protection” provided by the TMCH is fee-based (both for 
registration, for any defensive registrations under Sunrise), while the 
protection enjoyed by duly communicated IGO names and acronyms under 
international law is not.

•          The functional utility of the TMCH Claims service assumes in part 
that the TMCH registrant would have access to certain curative mechanisms which 
ICANN makes available to trademark holders, such as the UDRP. But for IGOs this 
is not the case, despite recommendations and IGO requests which have been 
outstanding at ICANN for years. In addition to the difficulty of assuming such 
access could now be either easily or timely provided for IGO’s to a customized 
UDRP-like system, ICANN’s new gTLD expansion has further changed the equation. 
There are of course reasons why the GAC recommended that preventive rather than 
curative protection for IGO names and acronyms be in place before any new gTLDs 
would launch.

We must also state the fact that participation in the TMCH may infringe on the 
immunities and privileges enjoyed by IGOs under international law and the 
various protections that they enjoy under international law. The time-limited 
scope of protection also goes against the essential principle that 
properly-notified names and acronyms of IGOs are NOT subject to temporal 
constraints or registration periods/mandatory renewals. On the other hand, 
support for registration of names and acronyms in the TMCH may, however, be 
admitted in the case of certain Trademark-Holder INGOs which DO NOT enjoy 
specific non-trademark protection under international law, such as the IOC 
(since ONLY its Olympic symbol is protected by treaty) and other 
non-governmental organizations.

2. Do WG members agree that if access to the TMCH were made possible, that this 
should be initiated by the IGOs seeking protection?
Not applicable, since IGO names and acronyms are NOT trademarks for the 
purposes of the TMCH. If it would somehow be possible to provide access to IGO 
names and acronyms via a Clearinghouse-type system, there is already the GAC 
list of IGO names and acronyms by which protected IGO names and acronyms should 
be identified.

3. Per the thread below, what other operational issues should be considered or 
discussed to enhance this possible recommendation?
Not applicable, since IGO names and acronyms are NOT trademarks for the 
purposes of the TMCH. This mechanism may, however, be applied to trademarks of 
INGOs such as the IOC and other non-governmental organizations.

IGOs continue to support the advice provided by the GAC as the appropriate 
basis for finding a way forward on preventive protection of IGO names and 
acronyms against inappropriate registration in an expanded DNS, including the 
importance of appropriate interim protection for both names and acronyms being 
in place before any new gLTDs would launch. Given the inevitable complexity of 
adapting both the TMCH and curative mechanisms such as the UDRP to enable any 
workable IGO access, it is difficult to see how the latter in particular could 
be realistically achievable in the time available other than via the expedient 
of direct incorporation of the existing IGO list into the registry agreement, 
as has apparently already occurred in the latest published redline of the RA in 
the case of certain specified terms for the ICRC and IOC (even though, it must 
be reiterated, the “Olympic” term is not subject to any protection under 
international law). Certainly there is no doubt, in our view, that the legal 
and public policy basis for preventive protection of IGO names and acronyms is 
at least as compelling, and that the provided list of IGO names and acronyms, 
and its reasonably limited length, should provide a ready foundation for this.

To the extent that there are identified concerns about a small number of IGO 
acronyms being possibly subject to legitimate third-party use (as would 
presumably also be the case for terms such as “Olympic”), IGOs continue to 
believe that a simple, cost-neutral, and consent-based mechanism to enable IGO 
authorizations to be given to legitimate third-party registrations (if any), 
based on certain objective criteria under which IGOs would be asked to reply 
within a reasonable period of time, copying both the applicant and relevant 
registry, would be the preferable way to manage any such “co-existence” issues. 
The terms of consent could be scalable in appropriate cases to avoid, for 
example, any unnecessary need for repeat applications for legitimate 
third-party users which may wish to register multiple domains.


I invite all stakeholders to respond with their position.  We will discuss this 
topic at our 8 May 2013 conference call.

Thank you.  B

Berry Cobb
Internet Corporation for Assigned Names & Numbers (ICANN)
720.839.5735
mail@xxxxxxxxxxxxx<mailto:mail@xxxxxxxxxxxxx>
@berrycobb


From: owner-gnso-igo-ingo@xxxxxxxxx<mailto:owner-gnso-igo-ingo@xxxxxxxxx> 
[mailto:owner-gnso-igo-ingo@xxxxxxxxx] On Behalf Of Thomas Rickert
Sent: Thursday, April 25, 2013 23:49
To: Mason Cole
Cc: Lanre Ajayi; David W. Maher; Stephane Hankins; 
<gnso-igo-ingo@xxxxxxxxx<mailto:gnso-igo-ingo@xxxxxxxxx>>; Christopher RASSI; 
<Debra.Hughes@xxxxxxxxxxxx<mailto:Debra.Hughes@xxxxxxxxxxxx>>; Catherine Gribbin
Subject: Re: [gnso-igo-ingo] Protection of the RCRC designations - RCRC comments

Mason,
couldn't the operational issues be resolved by requiring the listed 
organizations to apply with the TMCH?

Thomas

=============
thomas-rickert.tel
+49.228.74.898.0

Am 25.04.2013 um 22:53 schrieb Mason Cole 
<mcole@xxxxxxxxxx<mailto:mcole@xxxxxxxxxx>>:
All --

After further discussion with the RrSG on the issue of adding acronyms to the 
TMCH, I'm obliged to report the RrSG currently is in opposition.  The rationale 
is twofold:  First, there are some valid operational questions raised, which I 
detail in the following bullets (to use a favorite phrase of the moment, a 
non-exhaustive list); and second, the RrSG believes acronyms are broadly 
applicable and should be made available to customers of all kinds.

Operational issues:


  *   How would the TMCH distribute the signed mark data (SMD) file to an IGO?
  *   How would someone from the IGO provide credentials to the TMCH?
  *   How would the TMCH validate the IGO representative as an authority for 
the IGO?

I'm sure there are other technical considerations that have yet to be discussed 
as well, but these are good examples of the operation matters that need to be 
discussed before policy can be fully settled.

The RrSG continues to support the addition of full IGO names to the reserve 
list.

I'm very appreciative of the RySG bringing its plan to the attention of the WG 
and believe we're getting closer to consensus.  I'll continue to work with the 
WG and the RrSG on these concerns.

Thanks --

Mason

On Apr 24, 2013, at 8:55 AM, Mason Cole wrote:

All --

The RrSG has not yet fully formed its position but overall finds consensus with 
the RySG approach and believes this is a very good step toward consensus.

To the points in Chuck's document:

- RrSG agrees of course with protecting Olympic and Red Cross names at the top 
and second levels.
- RrSG supports protecting fully spelled out names of IGOs at the second level 
(as documented on the GAC's 
list<http://www.icann.org/en/news/correspondence/dryden-to-crocker-chalaby-annex2-22mar13-en.pdf>
- RrSg finds no internal support for adding IGO acronyms to the protected list; 
there is ongoing discussion now about modification of RPMs and sunrise 
eligibility, but I believe registrars will support this step.
- Discussions in the RrSG also continue on expansion of the current GAC list by 
IGO application to the GAC for inclusion
- Discussion also continues on an exception procedure; the RrSG preliminarily 
believes a) protection of fully spelled out names, and b) making acronyms 
sunrise eligible would mostly obviate the need for exceptions.  However, the 
RrSG believes any considered exception procedure would need to be very simple 
and straightforward, as this is a matter that directly impacts our customers' 
registration experiences and (as the board pointed out to the GAC) could be far 
more complicated than one would assume.

I look forward to discussions on today's call.

Mason




On Apr 23, 2013, at 4:31 PM, Lanre Ajayi wrote:


All,

The RySG approach looks a good balance between the divergent views and seems to 
be bringing us close consensus. I found the approach appropriate.

I also have concern about given the organizations seeking additional 
protections the power to determine who gets exceptions. I think demonstrating 
the right to an acronym through the use of TMCH should be adequate in granting 
exemptions to the applying organization.

Thanks

--Lanre

-----Original Message-----
From: owner-gnso-igo-ingo@xxxxxxxxx<mailto:owner-gnso-igo-ingo@xxxxxxxxx> 
[mailto:owner-gnso-igo-ingo@xxxxxxxxx] On Behalf Of Thomas Rickert
Sent: Monday, April 22, 2013 10:01 PM
To: David W. Maher
Cc: Stephane Hankins; gnso-igo-ingo@xxxxxxxxx<mailto:gnso-igo-ingo@xxxxxxxxx>; 
Christopher RASSI 
(christopher.rassi@xxxxxxxx<mailto:christopher.rassi@xxxxxxxx>); 
Debra.Hughes@xxxxxxxxxxxx<mailto:Debra.Hughes@xxxxxxxxxxxx>; Catherine Gribbin
Subject: Re: [gnso-igo-ingo] Protection of the RCRC designations - RCRC comments


Thanks, David!

Thomas

=============
thomas-rickert.tel
+49.228.74.898.0

Am 22.04.2013 um 22:41 schrieb "David W. Maher" 
<dmaher@xxxxxxx<mailto:dmaher@xxxxxxx>>:

I agree with Chuck and Robin.
David W. Maher
Senior Vice President – Law & Policy
Public Interest Registry
312 375 4849

From: THOMAS RICKERT 
<rickert@xxxxxxxxxxx<mailto:rickert@xxxxxxxxxxx><mailto:rickert@xxxxxxxxxxx>>
Date: Monday, April 22, 2013 3:26 PM
To: Stephane Hankins 
<shankins@xxxxxxxx<mailto:shankins@xxxxxxxx><mailto:shankins@xxxxxxxx>>
Cc: 
"gnso-igo-ingo@xxxxxxxxx<mailto:gnso-igo-ingo@xxxxxxxxx><mailto:gnso-igo-ingo@xxxxxxxxx>"
 
<gnso-igo-ingo@xxxxxxxxx<mailto:gnso-igo-ingo@xxxxxxxxx><mailto:gnso-igo-ingo@xxxxxxxxx>>,
 "Christopher RASSI 
(christopher.rassi@xxxxxxxx<mailto:christopher.rassi@xxxxxxxx><mailto:christopher.rassi@xxxxxxxx>)"
 
<christopher.rassi@xxxxxxxx<mailto:christopher.rassi@xxxxxxxx><mailto:christopher.rassi@xxxxxxxx>>,
 
"Debra.Hughes@xxxxxxxxxxxx<mailto:Debra.Hughes@xxxxxxxxxxxx><mailto:Debra.Hughes@xxxxxxxxxxxx>"
 
<Debra.Hughes@xxxxxxxxxxxx<mailto:Debra.Hughes@xxxxxxxxxxxx><mailto:Debra.Hughes@xxxxxxxxxxxx>>,
 Catherine Gribbin 
<Catherine.Gribbin@xxxxxxxxxxx<mailto:Catherine.Gribbin@xxxxxxxxxxx><mailto:Catherine.Gribbin@xxxxxxxxxxx>>
Subject: Re: [gnso-igo-ingo] Protection of the RCRC designations - RCRC comments

Dear Stéphane, all,
thank you for your e-mail and thanks to Chuck and Robin for responding. Can I 
ask more WG members to respond to this, please?

Thanks,
Thomas

=============
thomas-rickert.tel
+49.228.74.898.0

Am 19.04.2013 um 14:58 schrieb Stephane Hankins 
<shankins@xxxxxxxx<mailto:shankins@xxxxxxxx><mailto:shankins@xxxxxxxx>>:

Dear Thomas, dear all,

Further to last Wednesday’s Conference call, we would like to share with you 
below some of our thoughts and positions on the various proposals now under 
consideration by the Working Group.

(1) We appreciate firstly that the Group appears to be in agreement on a 
differentiated approach and consideration of the respective cases for 
protection under its consideration, namely IGO’s, the IOC, the Red Cross and 
Red Crescent, and INGO’s. As you will recall, it has been a consistent concern 
from our side that the sui generis case for protection and reservation of the 
Red Cross and Red Crescent designations and names be distinguished and examined 
in their own right, and thus considering the particular protection of these 
designations and names under universally agreed international humanitarian law 
treaties and the legislation in force in multiple jurisdictions.

(2) At the top and second level, we ask that:

-        the current moratorium on the Red Cross, Red Crescent and Red Crystal 
designations be made permanent in all new gTLD’s and for all future rounds, as 
recently confirmed by the GAC in its advice to ICANN’s Board on the occasion of 
the recent Beijing Meeting;

-        it be confirmed, consistent with our recent submissions, that the 
protections already recognized to the Red Cross and Red Crescent designations 
extend not only to the 29 designations expressly listed in the Applicant 
Guidebook and revised Registry Agreement, but also to the full names of the 
respective Red Cross and Red Crescent organizations (such as the names “British 
Red Cross”, “Afghan Red Crescent”, “International Committee of the Red Cross” 
or “International Federation of Red Cross and Red Crescent Societies”). A full 
list of names of the respective Red Cross and Red Crescent organizations can be 
made available;

-        the designations and names of the Red Cross and Red Crescent remain 
available for registration as domain names for the respective Red Cross or Red 
Crescent organizations (e.g. through inclusion on a Modified Reserved List). As 
noted in our past communications to the Group, the risk of claims or contests 
emanating from organizations outside of the International Red Cross and Red 
Crescent Movement would be virtually null, as the number of organizations duly 
authorized under international law (and domestic laws) to make use of the Red 
Cross or Red Crescent designations for indicative purposes is finite and 
specified under relevant international treaties (the instance of grand-fathered 
use is strictly constrained under relevant international treaties; the 
respective Red Cross or Red Crescent organizations are not entitled to 
"licence" the designations or their names);

-        should the need be felt, we would not oppose the notion of safeguards 
or of a consent based exception procedure for demonstrated rights holders, as 
has been proposed within the Group, and thus in particular with regard to the 
acronyms of Red Cross or Red Crescent organizations.

As noted in past exchanges with the Group, the acronyms of the two 
international organizations within the International Red Cross and Red Crescent 
Movement, namely those of the International Committee of the Red Cross 
(ICRC/CICR) and of the International Federation of Red Cross and Red Crescent 
Societies (IFRC), are today well established and their association with both 
organizations widely recognized, including in the context of Resolutions 
adopted by States at the International Conferences of the Red Cross and Red 
Crescent. We would agree that the registration of the said acronyms into the 
TMCH could offer a viable option, subject however to the confirmation that
§        the said acronyms are eligible to be registered under the TMCH; and 
that
§        the respective Red Cross or Red Crescent organizations enjoy standing 
to activate subsequent objection mechanisms and enjoy a waiver of fees in 
registering under the TMCH and in resorting, as may be required, to objection 
procedures.

 With best regards,

Stéphane J. Hankins
Legal adviser
Cooperation and coordination within the Movement
International Committee of the Red Cross
Tel (direct line): ++0041 22 730 24 19

Christopher M. Rassi
Senior Legal Officer
International Federation of Red Cross and Red Crescent Societies
Chemin des Crêts, 17|1209 Petit Saconnex |Geneva|Switzerland
Tel. +41 (0)22 730 4536 | Fax +41 (0)22 733 0395
Email 
christopher.rassi@xxxxxxxx<mailto:christopher.rassi@xxxxxxxx><mailto:christophe.lanord@xxxxxxxx>


----- Forwarded by Stephane Hankins/DC_MOUV_CHF/GVA/ICRC on 19.04.2013 13:20 
-----

From:        Stephane Hankins/DC_MOUV_CHF/GVA/ICRC
To:        
gnso-igo-ingo@xxxxxxxxx<mailto:gnso-igo-ingo@xxxxxxxxx><mailto:gnso-igo-ingo@xxxxxxxxx>,
 Thomas Rickert 
<rickert@xxxxxxxxxxx<mailto:rickert@xxxxxxxxxxx><mailto:rickert@xxxxxxxxxxx>>
Cc:        "Christopher RASSI 
(christopher.rassi@xxxxxxxx<mailto:christopher.rassi@xxxxxxxx><mailto:christopher.rassi@xxxxxxxx>)"
 <