browse comments: WIPO RFC-2

WIPO RFC-2
Keith Gymer (Keith.Gymer@btinternet.com)
Wed, 11 Nov 1998 23:56:03 -0000

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I have been actively involved in a number of internet domain name disputes and have participated in the various process initiatives over the last two years.

1. WIPO is an appropriate organisation to provide definitive recommendations on the IPR issues associated with internet domain names. It is important that ICANN should be committed to act consistently with WIPO recomendations in this respect.

Dispute Prevention

13 - There is a clear need for alternative, convenient and expedited dispute resolution mechanisms.

14.1 - Contact details consistent with those required for registration of trade marks should be required as a minimum for registration of any domain name in a TLD with commercial application. The details must be accurate and kept up to date.

14.2 - False or incorrect information should be subject to penalty (suspension or cancellation according to degree).

14.3 - Waiting periods would unduly penalise the majority of legitimate registrants and are not justifiable in my view.

14.4 - Pre-payment should be required - it should be up to registries to operate effective checks on this (e.g. registrars having deposit accounts automatically deducted as is the case with many Patent and Trade Mark registries).

14.5 - Measures to outlaw or discourage warehousing would be desirable to reduce the potential for abuse. Structured addition of differentiated gTLDs (or SLDs under new gTLDs) would also potentially alleviate the problems.

14.6 - Would be registrants with commercial objectives should clearly be encouraged to do searches to avoid potential conflicts - more services are becoming available to allow this - however, it should be recommended rather than required by registries, just as searching is similarly recommended but not required before TM applications are filed. Registrants should also be warned of the potential consequences of not searching for conflicting rights!

14.7 - Databases should be readily accessible to permit comprehensive searches on the internet.

14.8 - Directory services and shared (non-exclusive) TLD operation (e.g. like www.io.io) could usefully reduce the potential for confusion and conflict and reduce the immediate pressure for many more (g)TLDs. However, such services would need to be universal, open and readily available for all types of user (e.g commercial and non-commercial etc.) It would be preferable if such services were operated under specific gTLD(s) (e.g say .dir).

14.9 - ccTLDs, particularly if they are to be permitted to take advantage of their privileged status to operate as pseudo-gTLDs and exploit (confusing) alternative meanings for their TLDs (e.g .tm, .tv , .as etc), should be required to adhere to consistent policies as for gTLDs in general.

14.10 - The marketing of ccTLDs expressly as pseudo-gTLDS so that their original geographic identity is effectively ignored or lost (e.g .to, .nu, .tv etc) is not in the spirit of what was intended by their privileged allocation. If they are to be operated in that way (which I believe is confusing and in some cases fraudulent - as others have also observed) then they should lose their privileged status and be treated as ordinary gTLDs - it is notable that some of these ccTLDs which have been misused have been operated as proprietary TLDS by businesses which have been vocal in demanding that existing gTLDS should be operated as shared registries (but who evidently aren't so keen on shared registry operation for the ccTLDs over which they have managed to obtain control).

Dispute Prevention

15 - Dispute resolution systems should most definitely be consistent in nature.

16.1 - ADR, administrative challenge systems and other options for resolving disputes more conveniently and cheaply for all parties are clearly desirable. The potential jurisdictional difficulties associated with court litigation make the adoption of effective administrative procedures for internet domain name disputes even more attractive as a solution.

16.2 - Consistency is highly desirable.

16.3 - Procedures should preferably be available for disputes of any nature. However, in the short term, it may obviously be more practicable to begin with procedures for cases of cyberpiracy, famous mark disputes and other evident abuses (including provision of false information).

16.4 - Unless a registry/registrar is itself recorded as a disputed domain name registrant it should not be directly involved in dispute resolution.

16.5 - If registries/registrars are recorded as addressees for service then they must comply and be responsible - but so long as full and accurate contact details are provided with someone else accepting service then the registry/registrar should not necessarily have any liability in this respect.

16.6 - An independent dispute resolution authority under ICANN auspices is likely to be most appropriate, but it could delegate its operational responsibilities to suitably qualified bodies (e.g WIPO, ICC and other recognised Arbitration services).

16.7 - National Courts cannot be excluded from seizing issues, but the dispute resolution systems adopted should be structured to facilitate court enforcement and encourage court support.

16.8 - Decisions should be based on consistent administrative approaches as far as possible so as to avoid potential conflicts with applicable law.

16.9 - Subject to provisions to prevent abuse, in the absence of a waiting period, then suspension must be available provided a substantiated challenge is made in a timely way. Challenger and registrant should be exposed to corresponding costs for i) requesting suspension and ii) seeking to oppose the challenge and lift suspension.

16.10 - It would be preferable to limit the potential remedies (e.g no suspension) for late challenges rather than to necessarily exclude the possibility of challenge altogether, particularly in cases of bad faith.

16.11 - At administrative level the extent of appeal and prolongation of the process should be limited.

16.12 - Costs should be in cause.

16.13 - On-line systems are desirable but should not be mandatory for disputants (at least initially).

Protection of Famous Marks

17 - Famous marks are especially prone to piracy and abuse, both where the marks are nationally or internationally famous. Additional protection is appropriate. To some extent we have already seen national courts endorsing this view in relation to nationally famous marks (e.g the Toeppen cases in the US and the One in a Million case in the UK). It would be helpful to find a way of implementing effective protection in the domain name registration process consistent with the philosophy behind these decisions.

18.1- Protection will reduce the potential for abuse and consumer confusion and fraud.

18.2 - Whilst ultimately it would be desirable to integrate the conclusions from existing WIPO work on famous marks, in the short term the only practical option may be to consider some objective criteria (e.g. number and extent of registrations) for qualifying "famous" (or perhaps "widely known/registered") marks for additional protection.

18.3 - The systems need to be consistent with Paris and TRIPS.

18.4 - Any lists of marks should be dependent on meeting objectively defined and measurable criteria.

18.5 - This is obviously essential.

18.6 - It should be extended to ccTLDs.

18.7 - Administrative procedures should provide for challenge to any special status subject again to objective criteria.

Addition of gTLDs

19 - NO NEW GTLDS SHOULD BE INTRODUCED UNTIL EFFECTIVE PROCEDURES FOR DISPUTE PREVENTION AND DISPUTE RESOLUTION AT LEAST ARE ADOPTED AND AGREED TO BE IMPLEMENTED BY ANY POTENTIAL REGISTRY/REGISTRAR.

As I have previously commented, the objective of any changes to the domain name system should be principally to enable those who are able to use names without conflict in the real world to have domain names including those names - this clearly demands separation and differentiation (just as trade mark rights are distinguished by geography and specialty in the real world.)

It should be abundantly clear that most of the conflicts over domain names have arisen because of the lack of adequate TLD (or SLD) differentiation and the failure to maintain an effective separation of commercial and non-commercial uses.

Consequently, I very strongly believe that:
i) commercial and other non-commercial (g)TLDs need to be strictly separated - this would go a long way to resolve the sort of concerns expressed by EFF and DNRC over pre-emption of domain names by commercial organisations allegedly restricting freedom for non-commerical uses. (In this respect, I do not think it is a free-speech issue, but rather one of avoiding the potential for unnecessary confusion - it was quite clear that People Eating Tasty Animals was deliberately intending to exploit confusion with the original PETA, when it first registered peta.org and it was right that such abuse should have been stopped - this wasn't a suppression of free speech - the anti-PETA arguments could still be made, but not under a misleading banner of the peta.org domain name. However, if a peta.sucks had been available there would perhaps have been no need for the conflict in the first place. Similarly, specific TLDs could be allocated to political groups etc. EFF's concern about persecution of registrants of such
domains (and it isn't necessary to register a domain name to have ones say anyway) if they are obliged ot provide contact details can perhaps be dealt with by EFF or other representative organisations (e.g Amnesty) registering in their names in the liberal democracies and taking responsiblity for them.

ii) Commercial (g)TLDs (or SLDs) must be adequately differentiated (consider e.g a Yellow Pages structure). Undiffentiated gTLDs like .web, .firm etc are just a recipe for multiplying the existing problems without resolving any of them.

I have submitted these comments personally as I have not had client instructions in time, but I will be happy to provide further more detailed comments and information to the group of experts if requested.

END

Sent 11/11/98 UK time