browse comments: ICC comments on rfc-2

ICC comments on rfc-2
YONG D'HERVE Daphne (daphne.yongdherve@iccwbo.org)
Fri, 6 Nov 1998 14:47:19 +0100

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______________________________________________________________________
Comments of the International Chamber of Commerce on WIPO rfc-2
("Request for Comments on Issues Addressed in the WIPO Internet Domain
Name Process"), http://arbiter.wipo.int/processes/process2/index.html

A. Dispute Prevention

The International Chamber of Commerce ("ICC") believes it is essential
that effective procedures be developed to minimize the number and extent
of domain name disputes. The number of such disputes is increasing
rapidly worldwide, and the resulting legal uncertainty represents a
considerable problem both for business and Internet users.

ICC therefore welcomes the list of considerations for dispute prevention
in rfc-2, and believes that they are all factors which would
legitimately have to be considered in the context of a mechanism to
prevent domain name disputes. ICC would, however, like to point out that
the extent to which many of the factors would have to be taken into
consideration would obviously depend heavily on methods chosen to
allocate domain names, so that the list should be continuously
reevaluated as such allocation procedures are refined.

The types of measures that can be taken to prevent disputes concerning
domain names should ensure that on the one hand, the legitimate rights
of domain name holders and intellectual property rights owners are
sufficiently protected, and on the other hand, that Internet trade and
commerce are not unnecessarily restricted.

A great deal of disputes concerning domain names arise - and will arise
- because of the difference between the functions of domain names and
trade marks. The (principal) function of a trade mark is to distinguish
the origin of the marked goods. In this function, the principle of
speciality applies, that is, the same trademark can be owned by
different parties if it is used with different goods or services.
Furthermore, trade marks are, like any other intellectual property
right, territorially restricted.

Domain names, however, defy these principles. The problem of lack of
territoriality is partially solved by the ccTLDs. However, ccTLDs can
still be accessed from over the whole world and still - in principle -
infringe national intellectual property rights. As yet, the problem of
the lack of speciality in domain names is still unsolved. It could
therefore be investigated - both legally and technically - if and how
the principle of speciality could be applied to domain names, and if it
would be possible to categorize domain names in relation to different
products and services.

In addition, formal measures could be taken. However, as indicated
above, these measures should not be so strict that they unnecessarily
hinder trade and commerce on the Internet. Some of the measures as
suggested under § 14 of rfc-2 could be too strict, such as the
requirement to perform certain trade mark, or similar searches. This is
not even required for registration of trademarks in most countries and
could substantially slow down the registration process.

Measures that could be considered should be aimed at a proper and
accountable registration of domain names, such as proper identification
at registration, prevention of false and misleading information from
being included in the registration, etc. Reference could be made to
existing registration systems for intellectual property rights.
Furthermore, rules to prevent abuse of domain name registrations, such
as the loss of registration because lack of use - e.g. because no
working web-site was ever established - could be considered. Again,
existing rules of intellectual property law could be taken as examples.
To enable future registrants to investigate if their name is available,
domain name databases as suggested in 14.7 could be created.

Many abuses under the present system have exploited the fact that domain
names can be delegated and put into operation without the registrant
ever paying. ICC has no objections to requiring pre-payment if this is
effective in reducing the levels of abuse. 

Preferably, there should be a standard for measures of dispute
prevention to be taken by the new corporation which will be
administering the domain name system as well as by the registries of
ccTLDs.

B. Dispute Resolution

ICC believes that existing dispute resolution procedures can largely
cope with domain name disputes. However, the near-universal
jurisdictional reach of the Internet may make it necessary in some cases
to rethink existing dispute resolution procedures and develop new ones,
such as online procedures, in order to meet new expectations of users in
terms of speed and cost.

In general, ICC welcomes the list of considerations in section 16, and
finds that they are all matters which should be taken into account when
considering dispute resolution in domain name disputes. However, ICC
would like to note that it is vital that a variety of dispute resolution
procedures be developed to cope with domain name disputes. The needs of
parties involved in such disputes will likely vary, so that, in some
disputes, parties may be willing to make use of more extensive and
expensive procedures, while in others time may be of the essence, and in
still others the parties may not wish to invest much time and money into
dispute resolution. As is the case in the "real world", dispute
resolution in the "virtual world" regarding such matters as domain name
disputes must thus provide parties with a variety of procedures to suit
their needs and the nature of the case.

Type of dispute resolution

To alleviate the burdens on the national Courts and the resulting
burdens of time and expense on litigants, approaches other than Court
litigation (hereafter referred to as alternative dispute resolution
(ADR) - taken as including arbitration) are desirable. This could create
faster and more efficient dispute resolution procedures than would be
possible through (national) Court litigation.

There are a number of international dispute resolution institutions
already in existence on which parties can call to consider domain name
disputes. The ICC International Court of Arbitration has handled
hundreds of international disputes over many decades involving
intellectual property rights, and parties may want to consider using
such procedures for domain name disputes as well, either in their
existing form, or on a fast-track basis as permitted under the 1998 ICC
Arbitration Rules. Procedures such as ICC arbitration hold particular
advantages for domain name disputes, since they are well-established in
the commercial world, internationally respected, and can call on a
secretariat with vast experience in dispute resolution and computerized
case management. The WIPO Arbitration Centre can draw upon WIPO's
extensive expertise in intellectual property matters. The WIPO
Arbitration Centre has also already examined possibilities for handling
domain name disputes.

ICC thus urges, particularly regarding considerations 16.1 and 16.13,
that domain name disputes not be considered in a vacuum, and that
existing dispute resolution mechanisms be evaluated in the context of
domain name disputes as well. With respect to point 16.2, ICC believes
that considerations of consistency in dispute resolution approaches
should be balanced with the principles of open market which allow
dispute resolution institutions freely to offer their services.

Type of cases subject to ADR

The function of a domain name is to identify and permit access to
resources available on the Internet. In addition to this basic function,
the use of a domain name, under certain circumstances, can also be
qualified as use of a trade mark and/or trade name. However, a domain
name functioning as a trade mark and/or trade name defies the principles
of territoriality and speciality, since it can be viewed all over the
world and may not be restricted to any specific goods or services.
Moreover, it also defies the principle of prevention of confusion, since
it can fulfil its address function while coexisting with nearly
identical domain names.

This implies that conflicts between bona fide parties with legitimate
competing rights, such as trade mark or trade name holders, cannot be
solved by one international system of ADR. The principle of
territoriality means that a trade mark can legitimately be owned by two
separate parties in two different countries ; the principle of
speciality means that a trade mark can be owned by two different
parties, albeit each in relation to different goods. None of those
parties necessarily has a better right to the trade mark as domain name.
In these cases, the solution of 'first come, first serve' is presently
the only practical solution. However, this effectively prevents
legitimate users of the same name in the real world (differentiated by
territory or speciality) from using the same name as a domain name on
the internet. The first domain name registrant can avoid the real world
limitations of territoriality and speciality thereby obtaining an
undifferentiated global exclusivity which could not be achieved for a
trade mark in the real world. This may have undesirable
anti-competitive consequences. To reduce the potential for such
problems, as noted above, ICC believes it would be desirable to
investigate in detail how the principle of speciality might be applied
to domain names, for example, to categorize generic domain names in
relation to different products and services.

We believe that ADR would be unlikely to be appropriate for resolving
conflicts between two potentially legitimate users of the same name.
Dispute resolution other than Court litigation, should be focussed
principally on cases involving cyber piracy and other evident abuses
(e.g. false or misleading registrant information). An appropriate
definition of cyber piracy should be formulated. Alternative dispute
resolution might also be considered in certain other exceptional
circumstances, such as in the case of conflicts involving recognized
famous trade marks. ICC supports measures to provide effective
protection of famous marks but recognizes that this will obviously
require agreement on what defines a "famous" mark in the context of the
Internet.

Applicable criteria

The decisions resulting from ADR should be based on special criteria of
an administrative nature. To emphasize the international nature of the
new corporation which will be administering the domain name system, no
special national law should be made applicable. However, the validity
and applicability of these criteria in national states are, of course,
always subject to national law.

Acquiescence

In principle it is desirable that, where domain names have remained
unchallenged during a certain period of time, to bar claims against such
domain names or allow such claims only on a narrow basis. Clear rules,
however, would have to govern such a procedure to allow companies to
rationalize surveillance costs. To determine the period after which a
domain name can no longer be challenged, reference could be made to
already existing regulations with regard to trade mark, such as e.g.
article 9 of the European Trade Marks Directive (OJ 1 February 1989, L
440/1), which mentions a period of 5 years of use of a registration.

6 November 1998
Daphne Yong-d'Hervé
Policy Manager
Intellectual Property, Competition and Taxation
ICC (International Chamber of Commerce)
Tel: (33-1) 49 53 28 27
Fax: (33 -1) 49 53 28 59
E-mail: daphne.yongdherve@iccwbo.org
ICC web site: http://www.iccwbo.org