browse comments: WIPO RFC-2

WIPO RFC-2
magnus.ahlgren@prv.se
Wed, 4 Nov 1998 15:31:14 -0500

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Attachment: http://arbiter.wipo.int/processes/process1/rfc/dns_attachments/rfc2/attach910211474.doc

Swedish Patent Office 1998-10-31 VAD405-03233/98
Trademark Division

WIPO
attn Francis Gurry

process@wipo2.wipo.int

Dear Mr Gurry,

Re: C.INT.7/ RFC-2

The Trademark Department of the Swedish Patent and Registration Office (SPRO)
hereby sends its comments on the issues of the document stated above.

A) Dispute prevention

A domain name registration contract should at least contain the proposed
elements (i) and (iii-iv). The significance of certification with respect to
the use of the domain name is likely to vary between different jurisdictions
depending on whether the assessment of intended use is relevant for the
outcome of a process. Certification of "any related intellectual property
right" could create difficulty when it comes to copyright, but this is
probably not a real problem in practice.

Statement of false or misleading information could be discouraged by a clause
which would impose liability for the domain name holder and give the registrar
the right of immediate suspension of such a domain name. The domain name
contract could also contain a reference clause as to jurisdiction for any
process between the domain name holder and the registrar/registry.

Waiting periods of two months should be compulsory before the activation of a
domain name. The development of new domain name databases could be combined
with a compulsory publication prior to the activation of a new domain name.
Reception of the registration fee should be a necessary condition for the
activation of a domain name.

Registrars should be compelled to co-operate in order to mitigate warehousing
of domain names. This calls for the development of superordinate rules
concerning exchange of registers or mutual access to registers between
registrars.

Trademark- or similar searches should be optional. Thus a domain name
applicant would be free to take the precaution measures deemed necessary for
the particular situation. In this context it would be suitable to promote the
establishment of a database with reference links to various trademark and
other databases world-wide. The rapid development of powerful search-engines
makes this an advantageous solution.

The measures suggested under 14.8 should be promoted for at least two reasons.
Firstly, the whole idea of establishing new gTLD:s is to allow identical names
to co-exist. Secondly, any measure that reduces the significance of a domain
name as business identifier is a positive measure for trademark holders
world-wide.

B Dispute resolution

Generally, the suggested measures for dispute resolution should be applicable
between domain name holders only. For holders of IP rights it is hard to see
that dispute resolution would be an appropriate remedy against an evident
infringement. It could be argued that dispute resolution would still be better
than no solution at all, as is often the case with cross-border piracy. But
that only stresses the fact that harmonisation of national IP legislation is
needed. Counterfeiting and piracy are omnipresent problems which require
international co-operation in the fields of legislation and administration of
justice. The Internet is just another object for piracy. Dispute resolution as
a single remedy against piracy leaves the field open for infringement and
blackmailing against holders of established Intellectual Property Rights.

C Protection for Well-Known Marks.

The question is understood as imposing that certain marks could be excluded
from multiple registration under the gTLD:s. Generally, any measure taken that
equalises a domain name with a business identifier, should be discouraged.
Should the new organisation still try this path, it will face enormous
difficulty in assessing the criteria for a Well-Known Mark. Not to mention the
well-known fact that several identical or similar marks would be likely to
qualify as Well-Known Marks in their part of the world. One particular case
that has been brought to discussion is "UNITED". (UNITED COLORS OF BENETTON;
MANCHESTER UNITED; UNITED AIRLINES etc.). The risk for arbitrary judgements is
obvious.

As pointed out in the WIPO paper, a process has just started under the
Standing Committee on the Law of Trademarks, Industrial Designs and
Geographical Indications, with the aim of assessing the scope of protection of
Well-Known Marks. Setting up special rules for marks on the Internet would
certainly be putting the cart before the horse.

D Addition of New Generic Top-Level Domains and Related Intellectual Property
Rights

The SPRO will only comment the anticipated effects of adding new gTLD:s and
new structures to the existing TLD:s. Such measures should be encouraged. The
ultimate effect on domain names as such, will be that they lose some of their
function as business identifiers. Consequently, the address function of the
domain names will increase.

Magnus Ahlgren, Head of Trademark Division

The annexed document contains the text above.

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