WIPO Internet Domain Name Process

Table of Contents
Executive Summary
1: The Internet, Domain Names and the WIPO Process
2: Avoiding Disjunction Between Cyberspace and the Rest of the World
3: Resolving Conflicts in a Multijurisdictional World with a Global Medium
4: The Problem of Notoriety: Famous and Well-Known Marks
5: New Generic Top-Level Domains
A-I. Panel of Experts
A-II. Formal Comments
A-III. Statistical Information
A-IV. List of States Party to the Paris Convention
A-V. List of States Party to WTO and Bound by the TRIPS Agreement

The Internet

1.  The Internet can be very simply described as a, or the, network of networks. That simple technical description, however, lacks the eloquence to speak of the profound ways in which the Internet is affecting the way in which we communicate with each other, the way we express ourselves, the way we learn, the way we do business and the way in which we interact culturally. Given the profound changes that we sense are underway, we have difficulty in placing faith in the simple technical definition.

2.  We are not yet at the stage of being able to articulate adequately what exactly the Internet is as a social phenomenon and why it is changing us. We can, however, point to certain features of the Internet that indicate that it is a distinct and profound phenomenon. Six such features can be mentioned:

            (i) The Internet is something that increasingly large numbers of people throughout the world find an interest in being connected to. From 1990 to 1997, the estimated number of Internet users grew from around one million to around 70 million ¹. While the United States of America still accounts for the large majority of Internet users ², the rest of the world can hardly be described as disinterested. Between 1993 and 1996, the number of Internet hosts in Europe increased by about 600% ³. Over the same period, the growth in Internet hosts in Africa and Asia amounted to about 840% for each region. ⁴

            (ii) It is increasingly an affordable and relatively low-cost matter to become connected to the Internet and thus to be able to participate in the advantages that it offers. The telecommunications infrastructure is improving constantly and the cost of computer equipment continues to decrease. The estimated worldwide installed base of PCs in the home and in education increased from about 36 million units in 1992 to 118 million units in 1997.⁵ The Internet is a popular, rather than elitist, medium.

            (iii) Reflecting this popular character, the Internet is multifunctional. Digital technology permits all forms of expression—text, sound and images—to be expressed in binary notation. The World Wide Web, a key component of the Internet, has provided the graphical interface and hypertext linking protocols to enable all such expressions to be shared on the Internet. In consequence, the purposes for which the Internet is now used encompass the full range of human activity: research, education, social communication, politics, entertainment and commerce.

            (iv) The Internet does not have a central point of authority and control. Compared to other social institutions, it has developed in a spontaneous and autochthonous manner. Its technical development has been guided by protocols established through participatory decision-making processes by bodies such as the Internet Engineering Task Force (IETF) and its subcommittees and the Internet Assigned Numbers Authority (IANA). There has not been, however, a central rule-making entity that has exercised comprehensive legislative authority over the Internet.

            (v) The Internet is multijurisdictional. Users can access it from any place on earth. Because of packet-switching technology, information may travel through various countries or jurisdictions in order to reach its destination.⁶ It is a global medium transposed on the historical system of separate physical jurisdictions.

            (vi) The Internet is unspecifically regulated. It is affected by legislation and regulation that apply generally within the various jurisdictions of the world. But, for the most part, until now, there have been few exercises of national legislative authority specifically directed at the Internet and no international legislative instruments specifically designed to regulate the Internet.

3.  These special features of the Internet entail several consequences for the formulation of policy in relation to any facet of the Internet’s operation. The multijurisdictional and multifunctional nature of the Internet mean that, inevitably, many different interests in many different parts of the world will be concerned with any endeavor to formulate any specific policies. Special care needs to be exercised to ensure that any policy developed for one interest or function does not impact unduly on, or interfere unduly with, other interests or functions.

The Domain Name System

4.  The domain name system (DNS) serves the central function of facilitating users’ ability to navigate the Internet. It does so with the aid of two components: the domain name and its corresponding Internet Protocol (IP) number. A domain name is the human-friendly address of a computer that is usually in a form that is easy to remember or to identify, such as www.wipo.int. An IP number is the unique underlying numeric address, such as 192.91.247.53. Distributed databases contain the lists of domain names and their corresponding IP numeric addresses and perform the function of mapping the domain names to their IP numeric addresses for the purpose of directing requests to connect computers on the Internet. The DNS is structured in a hierarchical manner which allows for the decentralized administration of name-to-address mapping. This last new characteristic has provided the basis for the remarkable speed at which new computers can be added to the Internet, while ensuring their accurate name resolution.

5.  The DNS has been administered by IANA, pursuant to principles that were described in Request for Comments (RFC) 1591 of March 1994.⁷ The DNS operates on the basis of a hierarchy of names. At the top, are the top-level domains, which are usually divided into two categories: the generic top-level domains (gTLDs) and the country code top-level domains (ccTLDs).

6.  There are, at present, seven gTLDs. Three of these are open, in the sense that there are no restrictions on the persons or entities that may register names in them. These three gTLDs are .com, .net and .org. The other four gTLDs are restricted, in the sense that only certain entities meeting certain criteria may register names in them. They are .int, which is restricted to use by international organizations; .edu, which is restricted to use by four-year, degree-granting colleges and universities; .gov, which is restricted to use by agencies of the federal government of the United States of America; and .mil, which is restricted to use by the military of the United States of America.

7.  There are at present 249 ccTLDs. Each of these domains bears a two letter country code derived from Standard 3166 of the International Standardization Organization (IS0 3166),⁸ for example, .au (Australia), .br (Brazil), .ca (Canada), eg (Egypt), .fr (France), .jp (Japan) and .za (South Africa). Some of these domains are open, in the sense that there are no restrictions on the persons or entities who may register in them. Others are restricted, in that only persons or entities satisfying certain criteria (for example, domicile within the territory) may register names in them.

8.  Functionally, there is no distinction between the gTLDs and the ccTLDs. A domain name registered in a ccTLD provides exactly the same connectivity as a domain name registered in a gTLD. Nor can it be said that the gTLDs are open, whereas the ccTLDs are restricted. As mentioned, there are open gTLDs and ccTLDs, which contain no restrictions on use, and restricted gTLDs and ccTLDs, which restrict use to persons or entities responding to certain criteria.

9.  At the date of publication of this Interim Report, nearly 4.8 million domain names have been registered worldwide.⁹ Of these, approximately 1.4 million have been registered in the ccTLDs. The approximate weekly volume of new registrations is 70,000.

The Transmutation of Domain Names

10.  Domain names were intended to perform a technical function in a manner that was convenient to human users of the Internet. They were intended to provide addresses for computers that were easy to remember and to identify without the need to resort to the underlying IP numeric address. Precisely because they are easy to remember and to identify, however, domain names have come to acquire a supplementary existence as business or personal identifiers. As commercial activities have increased on the Internet, domain names have become part of the standard communication apparatus used by businesses to identify themselves, their products and their activities. Advertisements appearing in the media now routinely include a domain name address, along with other means of identification and communication, such as the corporate name, trademark and telephone and facsimile numbers. But, whereas the telephone and facsimile numbers consist of an anonymous string of numbers, without any other significance, the domain name, because of its purpose of being easy to remember and to identify, often carries an additional significance which is connected with the name or mark of a business or its product or services.

Intellectual Property

11.  Intellectual property consists in a series of rights in intellectual creations and in certain forms of identifiers. Generally speaking, there are two main policy bases that underlie intellectual property rights. The first is the policy of encouraging new intellectual creations. This is the main policy basis of patents, industrial designs and copyright. A patent, an industrial design or a copyright confers an exclusive right on the owner to prevent others from exploiting its subject matter—an invention, a design or a literary or artistic work. The exclusive right enables the owner to recover a reward for originality and investment in the creation of originality, and thus serves as an incentive to further investment in the development of new intellectual creations. The second main policy basis is the orderly functioning of the market through the avoidance of confusion and deception. This is the main policy basis of trademarks, rights in geographical indications and protection against unfair competition. A trademark enables consumers to identify the source of a product, to link the product with its manufacturer in widely distributed markets. The exclusive right to the use of the mark enables the owner to prevent others from misleading consumers into wrongly associating products with an enterprise from which they do not originate.

12.  Intellectual property has become a central element in economic and cultural policy in a world in which the source of wealth is increasingly intellectual, as opposed to physical, capital and in which markets are distributed across the globe. By becoming members of WIPO, 171 States have subscribed to the importance of promoting the protection of intellectual property. Many of these have also adhered to some or all of the 16 other multilateral treaties administered by WIPO, which establish international frameworks for each of the rights that make up intellectual property or systems for obtaining protection in multiple countries. In addition, the 133 States that are members of the World Trade Organization (WTO) have subscribed to a comprehensive, complementary code of intellectual property protection in the Agreement on the Trade Related Aspects of Intellectual Property (the TRIPS Agreement).

13.  The discipline of intellectual property is concerned not simply with the establishment of rights, but also with the definition of the proper scope of those rights and their relation with other areas of public policy. It is concerned thus, for example, with defining the boundary between unfair and unjustified misappropriation of another’s intellectual creations or business identifiers, on the one hand, and fair use or justified experimental and non-commercial use, on the other hand. It is equally concerned, for example, with regulating any areas of tension between competition policy and intellectual property policy. This definition of the proper scope of intellectual property rights and their relation with other areas of public policy is the subject of case law and legislation that has been developed over many decades throughout the world.

The Process for the Re-organization of the Management of the Domain Name System

14.  The organization and management of the DNS has been the subject of intensive discussions throughout the world over the past two and a half years. These discussions have been motivated by a desire to institutionalize the functions associated with the management of the DNS in a manner which will permit the system to accommodate the growing volume of traffic on the Internet and to be administered in a stable, reliable, competitive and open way, taking into account the interests of all Internet stakeholders.

15.  An early stage in the discussions was the work of the International Ad Hoc Committee (IAHC), which culminated in the publication on February 4, 1997, of a final report containing recommendations for the administration and management of gTLDs.¹⁰ The recommendations were directed at enhancing the administration and operation of the gTLDs and balancing concerns for stable operations, continued growth, business opportunities, and legal constraints.

16.  On July 1, 1997, as part of his Administration’s Framework for Global Electronic Commerce, the President of the United States of America, William Clinton, instructed the United States Secretary of Commerce to privatize the DNS in a manner that increased competition and facilitated international participation in its management. The United States Department of Commerce issued a Request for Comments on the administration of the DNS on July 2, 1997. In this document, public input was sought on issues relating to the overall framework of the DNS administration, the creation of new top-level domains, policies for domain name registrars, and trademark issues.

17.  On the basis of comments received, on January 30, 1998, the National Telecommunications and Information Administration (NTIA), an agency of the United States Department of Commerce, issued for comment, A Proposal to Improve the Technical Management of Internet Names and Addresses (the "Green Paper").¹¹ The Green Paper proposed for discussion a number of measures relating to the administration of the DNS, including the creation by the private sector of a new corporation located in the United States of America and managed by a globally and functionally representative Board of Directors.

18.  Following the closure of the comment period, NTIA issued, on June 5, 1998, its Statement of Policy on the Management of Internet Names and Addresses (the "White Paper").¹² The White Paper confirmed the call contained in the Green Paper for the creation of a new, private, not-for-profit corporation responsible for coordinating specific DNS functions for the benefit of the Internet as a whole. It noted:

19.  Following the publication of the White Paper, a process occurred which resulted in the formation of the Internet Corporation for Assigned Names and Numbers (ICANN). By-laws have been established for ICANN and an Interim Chairman, an Interim President and CEO and an Interim Board of Directors have been appointed as a result of the process and the international discussions that accompanied it. The by-laws, the composition of the Board of Directors and other pertinent documentation concerning ICANN can be found at ICANN’s web site, www.icann.org.¹³

The Interface Between the Domain Name System and Intellectual Property: The WIPO Process

20.  One consistent thread in the fabric of discussions and consultations concerning the management of the DNS has been the interface between domain names as addresses on the Internet and intellectual property or, more specifically, trademarks and other recognized rights of identity as they have existed in the world before the arrival of the Internet. It has become apparent to all that a considerable amount of tension has unwittingly been created between, on the one hand, addresses on the Internet in a human-friendly form which carry the power of connotation and identification and, on the other hand, the recognized rights of identification in the real world, consisting of trademarks and other rights of business identification, the developing field of personality rights, whether attaching to real or fictional characters, and geographical indications. One system—DNS—is largely privately administered and gives rise to registrations that result in a global presence, accessible from anywhere in the world. The other system—the intellectual property rights system—is publicly administered on a territorial basis and gives rise to rights that are exercisable only within the territory concerned. In this respect, the intersection of the DNS and the intellectual property system is but one example of a larger phenomenon: the intersection of a global medium in which traffic circulates without cognizance of borders with historical, territorially based systems that emanate from the sovereign authority of the territory.

21.  The tension that exists between the nature of the two systems has been exacerbated by a number of predatory and parasitical practices that have been adopted by some to exploit the lack of connection between the purposes for which the DNS was designed and those for which intellectual protection exists. These practices include the deliberate, bad faith registration as domain names of well-known and other trademarks in the hope of being able to sell the domain names to the owners of those marks, or simply to take unfair advantage of the reputation attached to those marks.

22.  The IAHC recommendations took note of the tension that existed between domain names and intellectual property rights and included specific procedures designed to resolve conflicts between the two. The White Paper of the United States Government confined its specific recommendations to the desirable features of the management of the DNS and to the transition of that management to the new corporation. In respect of intellectual property, the White Paper contained the following passage:

23.  Since the publication of the White Paper, WIPO has received the approval of its Member States¹⁴ to conduct, and has undertaken, the international process called for in the White Paper.

The Mechanics of the WIPO Process

24.  Stages. The WIPO Internet Domain Name Process comprises three stages.

25.  The first stage was concerned with obtaining consensus on the issues to be addressed in the WIPO Process, the procedures to be used and the timetable in which the Process would take place. To this end a Request for Comments (WIPO RFC-1) was issued on July 8, 1998, with a deadline for receipt of comments of August 24, 1998. WIPO RFC-1 detailed as the terms of reference for the Process the three issues mentioned in the White Paper, namely, uniform dispute resolution procedures, a mechanism for the protection of famous marks and the evaluation of the effects on intellectual property rights of adding new gTLDs. It added a further term of reference, which WIPO considered to be appropriate in the context, namely, dispute prevention or practices in the administration of the DNS that are designed to reduce the incidence of conflict between domain names and intellectual property rights. Sixty-six governments, intergovernmental organizations, professional associations, corporations and individuals provided comments in response to WIPO RFC-1.¹⁵

26.  The second stage of the WIPO Process consisted of seeking comments and consulting on the issues defined after consideration of the comments received on WIPO RFC-1. To this end, a second Request for Comments (WIPO RFC-2) was issued on September 16, 1998, with a deadline for receipt of comments on November 6, 1998. Seventy-two governments, intergovernmental organizations, professional associations, corporations and individuals provided comments in response to WIPO RFC-2.¹⁶ Another important part of the second stage was the holding of regional consultation meetings in order to discuss and to receive comments on the issues under consideration. A total of 848 persons attended those regional consultation meetings. Some 155 of them made presentations and interventions. The schedule of meetings held was as follows:

27.  The third stage of the WIPO Process consists of the publication of the present Interim Report and subjecting that report to comments, in response to a third Request for Comments (WIPO RFC-3), and a further round of regional consultation meetings. The proposed schedule for the next round of regional consultations is as follows:

Following the closure of the period for comments and the conclusion of the regional consultation meetings, it is intended to publish, at the end of March 1999, a final report, which will be transmitted to ICANN, as well as reported to the Member States of WIPO.

28.  Modalities. In conducting the Process, WIPO has used three modalities to solicit participation from the widest international range of interested parties:

            (i) WIPO has established a web site (http://wipo2.wipo.int) in English, French and Spanish as a primary vehicle for communication concerning the WIPO Process. In addition to the publication of information and documents concerning the WIPO Process, the web site contains a facility for interested persons to register in order to receive communications relating to developments in the WIPO Process. To date, some 1,007 persons or organizations from 70 countries have registered under the facility.¹⁷ The web site also contains the text of all comments received in response to the two Requests for Comments issued (WIPO RFC-1 and RFC-2). It further establishes an open listserver discussion forum. The list, which is not moderated, is intended to allow interested parties to discuss freely the widest possible range of questions arising in connection with the WIPO Process. Contributions to the listserver are not formally considered as comments in response to RFCs. The present number of subscribers to the listserver is 325.¹⁸

            (ii) Since the Internet is a global medium but access to the Internet is not universal, WIPO has also published in paper form each Request for Comments that it has issued and sent these to the governments and industrial property offices of each of its Member States, as well as to each non-governmental organization that is accredited as an observer with WIPO.

            (iii) As mentioned above, WIPO has also sought to complement the Internet- and paper-based consultations with meetings organized in various venues throughout the regions of the world.

29.  Panel of Experts. In order to assist it in the conduct of the Process, WIPO established a panel of experts to advise it in the formulation of recommendations. The composition of the panel was determined in an endeavor to achieve both a geographical balance of representation and a balance of sectoral interests in the Internet. The names and affiliations of the members of the panel are given in Annex I. WIPO wishes to place on record its deep gratitude to the members of the panel for their advice and untiring efforts to assist constructively in developing workable and acceptable recommendations on dealing with the interface between domain names and intellectual property. This Interim Report remains nevertheless the responsibility of WIPO and does not necessarily imply that each expert subscribes to every recommendation contained in it.

Guiding Principles in the Formulation of Recommendations in the WIPO Process

30.  Before moving, in the remainder of the Report, to the issues considered in the WIPO Process and to the interim recommendations made in relation to those issues, the methodological principles which have guided the formulation of the recommendations should be made explicit. There are six such principles.

31.  Recognizing the global nature of the Internet and the diverse range of purposes for which it is used, WIPO has endeavored to design a process which was international and which allowed for participation by all sectors interested in the use and future development of the Internet. While the mandate of WIPO relates to intellectual property protection, it is recognized that intellectual property cannot be considered in isolation in the context of a multifunctional global medium.

32.  It is further recognized that the goal of this WIPO Process is not to create new rights of intellectual property, nor to accord greater protection to intellectual property in cyberspace than that which exists elsewhere. Rather, the goal is to give proper and adequate expression to the existing, multilaterally agreed standards of intellectual property protection in the context of the new, multijurisdictional and vitally important medium of the Internet and the DNS that is responsible for directing traffic on the Internet.¹⁹ The WIPO Process seeks to find procedures that will avoid the unwitting diminution or frustration of agreed policies and rules for intellectual property protection.

33.  Conversely, it is not intended that the means of according proper and adequate protection to agreed standards of intellectual property should result in a diminution in, or otherwise adversely affect, the enjoyment of other agreed rights, such as the rights guaranteed in the Universal Declaration of Human Rights.²⁰

34.  The central importance of the Internet and its capacity to serve the diverse interests of a rapidly expanding body of users is fundamental. A constant consideration has therefore been to ensure that the recommendations of the WIPO Process are practical and do not interfere with the functionality of the Internet by imposing unreasonable constraints on the high-volume and automated operations of domain name registration authorities.

35.  The dynamic nature of the technologies that underlie the expansion and development of the Internet is also recognized. The WIPO Process also aims to ensure that its recommendations do not in any way condition or affect the future technological development of the Internet.

36.  The mandate conferred on WIPO was to make recommendations concerning certain intellectual property questions in the gTLDs. As stated above, there are no functional differences between the gTLDs and the ccTLDs. The essential difference between the two is the general recognition that authority over the use and management of ccTLDs falls within the sovereign competence of the States to which they relate. While respecting this fundamental difference and, consequently, recognizing the formal limitation of its recommendations, WIPO nevertheless believes that the recommendations contained in this Report are applicable to all "open" TLDs in which domain names may be registered without restriction and in which domain names are bought and sold.²¹ Given the global access to which the registration of a domain name in any TLD gives rise, WIPO believes that proper and adequate respect for existing intellectual property rights warrants that consideration be given to the application of the recommendations in this Report to all open TLDs.

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Footnotes

[1] David N. Townsend, "Regulatory Issues for Electronic Commerce: Briefing Report," Report to the International Telecommunication Union 8^th Regulatory Colloquium, 1998, page 8; Global Internet Project, Internet Foundations: Breaking Technology Bottelnecks, at http://www.gip.org,   page 4.

[2] See World Information Technology and Services Alliance (WITSA), Digital Planet—The Global Information Economy, (October, 1998), page 21, which reports that the United States of America accounted for 61.9% of Worldwide Internet Hosts.

[3] Global Internet Project, op.cit., page 1.

[4] Ibid.

[5] WITSA, op.cit. page 20.

[6] "Internet addresses have no fixed location. They are purely conceptual. There is no central office. The routers which direct packets to the packet address at rates between 100,000 and 500,000 a second can know only the next logical point in a routing table and which outbound circuit is available to carry the packet. Packets are free to traverse the globe on countless circuits to geographically indeterminate end points. The technology provides assurance that the packets are reassembled in the right order and are very likely not corrupted by data errors." John R. Mathiason and Charles C. Kuhlman, New York University, "International Public Regulation of the Internet: Who Will Give You Your Domain Name?," (March 1998) at http://www.intlmgt.com/domain.html.

[7] See http://wipo.isi.edu/.   A number of other RFCs have also provided guidance for the administration of the DNS.

[8] The attribution of a country code to a domain by IANA entailed no recognition of the status of the territory designated by the country code. As stated in RFC 1591, "The IANA is not in the business of deciding what is and what is not a country."

[9] Statistics from Netnames Ltd., http://www.domainstats.com.

[10] http://www.gtld-mou.org/draft-iahc-recommend-00.html.

[11] The RFC, the Green Paper and comments received in response to those documents are available at http://www.ntia.doc.gov.

[12] http://www.ntia.doc.gov/ntiahome/domainname/6_5_98dns.htm.

[13] The Department of Commerce of the United States of America and ICANN have recently entered into a Memorandum of Understanding with the intention of coordinating the on-going transition of the management of the DNS; see http://www.ntia.doc.gov/ntiahome/domainname/icann-memorandum.htm.

[14] At the meeting of the Assemblies of Member States in September 1998, see documents A/33/4 and A/33/8.

[15] See Annex II.

[16] See Annex II.

[17] See Annex III.

[18] See Annex III.

[19] See Comment of European Community and its Member States (November 3, 1998 – RFC-2); Comment of Mr. Philip Sheppard of European Brands Association (AIM) (Brussels Consultation); Comment of Ms. Sally Abel of International Trademark Association (San Francisco Consultation). These comments are available on the web site of the WIPO Process. References in the footnotes to comments are not intended to be exhaustive.

[20] See Comment of Domain Name Rights Coalition (November 6, 1998 - RFC-2); Comment of Electronic Frontier Foundation (November 6, 1998 - RFC-2); Comment of Mr. R.A. Reese (San Francisco consultation).

[21] See Comment of European Community and its Member States (November 3, 1998 - RFC-2); Comment of the Government of Japan, Japanese Patent Office, Mr. Hiromichi Aoki (Tokyo consultation); Comment of American Intellectual Property Law Association (November 6, 1998 - RFC-2); Comment of Fédération Internationale des Conseils en Propriété Industrielle (November 9, 1998 – RFC-2); Comment of International Trademark Association (November 6, 1998 - RFC-2); Comment of MARQUES (November 6, 1998 - RFC-2).