browse comments: WIPO RFC-2

WIPO RFC-2
Swiss Federal Institute of Intellectual Property (ueli.buri@ipi.ch)
Wed, 4 Nov 1998 23:15:41 -0500

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It's with high interest that the Swiss Federal Institute of Intellectual Property is following the WIPO Internet Domain Name Process and has taken note of WIPO RFC-2. We appreciate the opportunity to submit comments on said document and would like to present the following con-tribution (as long as there's no comment to a specific item we agree with the proposed measure resp. have no special remarks):

14.1 It's important to be aware of the fact that an agreement in a domain name registration contract does not bind any third party holding a protected sign (trademark, trade name, etc.) to submit the defence of its rights to a particular jurisdiction or dispute resolution procedure. There-fore many domain name conflicts (with an easy-to-search domain name database according to 14.7 even most of them) may be submitted to an alternative dispute resolution procedure only on a voluntary basis.

14.2 It seems quite impossible to take measures to prevent false information from being in-cluded in the domain name registration contract, since registries will barely have the resources to control all the informations given by registrants. For this it seems more appropriate to focus on the consequences in cases where it turns out later that the registrant has given false infor-mation to the registry: cancellation of the contract, damages, ...

14.3 We propose to combine the waiting period prior to the activation of a new domain name registration with the publication of the new domain name in an appropriate way and the possi-bility of third persons to object to that activation (consequences according to 14.8 or 16.9, de-pending on the circumstances of the case).

14.5 Such measure can be the certification with respect to the use of the domain name ac-cording to 14.1 (ii), if it's combined with the same consequences as giving other false informa-tion by the registrant (see 14.2).

14.6 It should be possible to do trademark or similar searches online; therefore it's necessary that most databases are available on Internet as IPDLs (see WIPO SCIT/1/3). Searches should primary be done by the registrant himself, but there's also the possibility of a (second) search by the registry who may speak out a warning in cases of possible conflicts (see ciph. 22 of the Do-main Name Policy for CH [Switzerland] and LI [Principality of Liechtenstein]). Searches in public IPDL-Databases on the Internet are supposed to be free of charge.
We see problems in defining the required result of such searches in order to register the desired domain name: The mere existence of a similar sign anywhere in the world can't be an obstacle to the registration of the domain name, since a violation of the rights of the sign-holder generally requires activities in the same territory and the same branch. Therefore differentiated rules must be found.

14.7 We consider efficient and easy-to-search domain name databases as highly desirable. In addition we recommend to establish a connection between domain name databases and trade-mark or similar databases.

14.8 Directory or listing services linking to websites of different holders of an identical sign are highly recommended; it would be appropriate to offer that service just under the domain name in question. Such service could be provided by the registry after the holder of a protected sign ob-jected successfully to the (bona fide!) registration of the domain name during the waiting period (see 14.3). The services could also be provided by a neutral third party (for example www.io.io).

16.1 We indicate that there are legal systems which are not familiar with mediation or arbitra-tion.

16.2 See 14.1

16.3 While there should be as many instruments as possible to fight cyberpiracy, conflicts between bona fides parties may be resolved according to 14.8 (or by mediation only).

16.4 While we don't see any problem in conducting dispute resolution procedures by the reg-istry, there should be also a neutral instance (for example WIPO) to appeal to.

16.7 We point to our remarks at 14.1: Since there is no obligation for the holder of a protected sign to submit the conflict to a particular dispute resolution procedure, he can as well submit the conflict to the jurisdiction of a national court.

16.8 It is desirable that there are uniform and therefore special criteria for deciding disputes in a dispute resolution approach. Considering the voluntariness of such procedure there's no legal obstacle as well.

16.9 Suspension of an existing - or desired (see 14.3) - domain name registration should not be implemented automatically but only after the objecting party made plausible a violation of its rights. For in most cases registration of a domain name does not cause any irreparable damage to the third party, the domain name holder should be given the opportunity to comment on the objection prior to the suspension of the registration.

16.10 There should be no limitation to claims in cases of bad faith. Bona fides parties disputes can be resolved according to 14.3. and 14.8: Objections within the waiting period lead to using the desired domain name for a directory service, after that period a bona fide registration can no longer be challenged (exception for owners of marks that are already famous or well-known at this moment).

16.12 According to the usual rules costs should be paid by the unsuccessful party. In cases of 14.3 and 14.8 costs should be shared by both of the bona fide parties.

16.13 Considering the worldwide dimension of many domain name conflicts it's highly desir-able to offer on-line dispute resolution systems.

18.2 By developing the criteria for the protection of famous and well-known marks in context of internet domain names there must be paid attention to the fact that many marks are famous or well-known only in a certain territory and not worldwide. Therefore there must be found con-ditions for a worldwide protection (geographical expansion of the notoriety of the mark) and measures to limit the protection of the other famous or well-known marks to their territory.

18.4 In the scope of the discussions of the committee of experts of well-known marks the WIPO member countries did not want to create a register of famous and well-known marks; we don't suppose that the relevant problems are solved now.

18.5 We think that the procedure proposed in 14.3 will do as measure of prevention. Accord-ing to 16.10 it's not excluded that the owner of a famous or well-known mark can challenge a domain name after the waiting period as well.

18.6 Extending the protection to any ccTLD is only appropriate for marks that are considered to be protected worldwide (see 18.2). For marks with geographically limited notoriety there is no reason to extend the protection to every ccTLD but only to the ccTLD of the countries where the mark is famous or well-known.

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