browse comments: WIPO RFC-2

WIPO RFC-2
hdroemer@ford.com
Fri, 6 Nov 1998 11:50:34 -0500

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Speaking only for myself and not in any other capacity.

General Comments

The conflicts which have arisen from unauthorized use of registered trade marks in domain names clearly show that the domain functions as a trade mark. Therefore domain names compete with other traditional forms of use of a name and at least in countries which provide common law protection of names by their intensive use, it is only a question of time that the use of a domain leads to a protection of a same effect as a registered trade mark.

However it must be kept in mind that trade marks only have a territorial effect and further are restricted to the goods and services for which they are registered and used. Therefore trade marks only came into conflict if the use took place in the trade mark´s territory and –apart from famous trade marks- in the same field of business. Similar rules apply for company names. Therefore the conflict potential for conventional use of names was by far lower than for domain names. As the domain can be accessed from computers worldwide and and is in principle accessible at any time.

Those domain names holders which intend to use the domain name commercially or actually do so, may have a legitimate interest to use their own trade mark for which they have built up a reputation in their field of business as domain name or as part thereof. Certainly -like anyone else- they have a legitimate interest to use the global forum which the internet provides for their business purposes.

In my view the situation is different for a non-commercial use. I do not see what justification can be found that the non-commercial user, which has not built up a reputation for a trade mark on a commercial level, should use someone elses trade mark. This is especially true as the domain-name can be freely chosen and the domain-name holder certainly has ample alternatives to avoid the use of third parties trade marks.

With that background any future process for the registration of domain names, dispute prevention, dispute resolution and the selection of new generic TLD´s should take into account that domain names which are used commercially are to be approached differently as the non-commercially used domains.

In the field of non-commercial use I don´t see any need to use trade marks at all. Therefore in this field the domain name applicant with request for registration should undertake to agree to suspension of his domain name registration in case a conflict with a trade mark arises.

In the field of commercial use clearly there is a dilemma of the requirement of a unique domain and of legitimate interests of different parties to use this domain corresponding to their existing trade mark or other name rights. The only way to solve this dilemma in my view is to let the domains coexist under the same criteria as for trade marks (different territories and business fields) and use other techniques to fulfill the uniqueness requirements.

Specific comments to measures mentioned by rfc-2

Ad 14.1
The request for registration must include contact details and a binding decision and undertaking as to commercial or non-commercial use of the domain.

In case no commercial use is to take place there must be an undertaking that the applicant agrees to suspension of the domain if a trade mark conflict arises in which the trade mark precedes the domain. No further formalities for non-commercial trade marks should be required and the registration fee should remain at the existing, relatively modest level.

In view of the basic trade mark function of the domain similar principles as for trade mark applications should apply for domain name registration if the domain is to be used commercially.

In this case details on goods and services for which the domain shall be used must be given. The registration fee should be partly calculated on the basis of the scope of goods and services.

The applicant shall be requested to select second level domain country codes and a fee per country should be required.

This is deemed necessary for an effective watch service for trademark owners and to mitigate the warehousing of domain names.

Ad 14.2
False or misleading information should lead to suspension of the domain.

Ad 14.3-14.5
There should be no waiting period however the activation should be suspended until payment of the applicable fees.

The registration should be subject to a renewal process. This is deemed to be necessary for making available domain names which are not used.

It is believed that economic considerations are the best process to prevent the warehousing of domain names.

Ad 14.6
The registrars/registries should not request any trade mark searches. It is solely the responsibility of the commercially operating domain holder to ensure that he does not infringe trade marks.

Ad 14.7
The domain name data base is an absolute must. It has to include the data given in the application, on goods and services, on countries, on renewals and on assignments. Optionally the domain holder may include information on his own trade marks. The database has to include all domains from the various registrars.

Ad 14.8
It is necessary that identical domains can coexist under the same criteria as trade marks (different territories/business areas).

Ad 14.9
All registrars should follow the same procedure.

Ad 14.10
It is understood that this would allow the coexistence of domains in various countries. Therefore this measure is needed.

Dispute Resolution

It is believed that the necessary dispute resolution procedure must only be applied to the non-commercial sector and thus becomes fairly easy and straightforward. All which is required is to identify whether the trade mark precedes the domain name. If this is so, the domain is to be suspended immediately. If not, no action should be taken.

If a conflict in the commercial sector arises this boils down to a regular trade mark conflict and the parties have full negotiating space to come to a coexistence by specifying countries of use and the relevant goods/services. Therefore the registrars/registries should not be involved at all.

Protection of well known marks

In principle here the same applies what has been said for the dispute resolution. In the commercial field again a trade mark dispute has to be resolved. In the non-commercial field no special protection of the well known trade marks seems to be necessary under the scheme proposed here.

New top level domains

My proposal is to use new generic TLD´s for the commercial field only. For a certain transition period the domain holder´s of the existing domains should be given the opportunity to decide whether they upgrade there domain to commercial use by filling up goods/services and territory fees in the new gTLD´s.

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