WIPO Internet Domain Name Process

Transcript - part 2: Brussels regional consultation

Swissôtel
September 29, 1998

Mr. John Wood (Consultant, Microsoft):

Good morning everybody. My name is John Wood. I am a consultant for Microsoft Inc., America Online Inc. I also do consultancy for British Telecom and a number of other key companies involved in this debate. I am member of the International Chamber of Commerce Task Force on Domain Names. I am also a member of the European Panel of Participants, and a member of the Private Sector Working Group, which is a group of between 30 and 40 companies in the United States that are key trademark brand holders, including such companies as Bell Atlantic, Walt Disney, Microsoft, Proctor & Gamble, American Express, Warner Lambert etc., etc., etc. We have been involved in this process for approximately two years, the private sector working group in the former process that WIPO was involved in provided comments to the substantive guidelines number one and number two. We also have thoroughly supported this process and welcome this development and have participated in San Francisco. We will also participate in Washington D.C. and feel that this is a very worthwhile exercise. Obviously, our perspective is one of emphasizing the need to protect trademarks and domain name holders’ rights in a fashion that enables both those rights be recognized and protected.

The first area that I would like to consider in response to the RFC-2, and I would like to pick up on several things that were mentioned by the Honorable Waterschoot, which was the idea of balanced representation within the Panel of Experts and the need for competition, and the need for transparency. We welcome completely the idea that there should be transparency and would ask that as much business participation occur as possible. In terms of the Panel, we welcome the fact there are some experts that are from the trademarks area, but we will also be submitting studies, because we feel this is an area which clearly needs information that would enable that to occur. In terms of representing their own constituency, we still feel that there is a need for greater participation by business and are trying to mobilize people both in the United States and here in terms of that goal.

I would basically like to go through the different areas of the RFC-2 and first of all begin with some observations and to essentially ask questions as well as also posit points. The first one was that we obviously welcome the idea that the prior work for clarification, done by the gTLD-MoU process would be imputed into this. We would obviously ask that (although that may be the case that this should be an open process, and there is still those that may believe that by linking it to the former process that was not completely a comprehensive and open dialogue, because that process was aborted towards the end) as to which parts would be imputed into this process and which parts would not be. There have been some of those that have been involved in this process that have indicated that they felt that it would be the second iteration and the second substantive guidelines proposal and not a third substantive guidelines proposal, which would be the area of greatest consideration, obviously those with a dramatical difference. The other issue is that clearly in the first substantive guidelines that were actually put out by the World Intellectual Property Organization, that the purpose will be some famous trademarks, but that in the process with which WIPO was involved that was withdrawn within the second substantive guidelines. So, if there is to be input from the prior process it would be a good area of clarification to say which parts will be included and which parts would not.

The second issue which concerns us is I am sure one that also concerns the World Intellectual Property Organization, is whether these actual proceedings will be actually mandated or in some way ensured that in part or in whole that they will be implemented by the interim board and the subsequent permanent board. Because, it seems to us that if this is a wonderful process, but if it is not in any way going to actually occur that, that would actually be in that process then I wonder what is really going on.

The third actual consideration is the scope of the work. In the sense that I know that members of the Commission have indicated and also we look at this in comparison with the White Paper itself, it has increased the scope of work beyond what the White Paper said was what they anticipated WIPO would concentrate on, namely dispute resolution policy and the general issues of collision between trademarks and domain names. Although, we welcome and in our comments, in the comments of the organizations that have been involved in the wider look at the impact, we would also ask that the World Intellectual Property Organization does also look at issues such as the harmonization of trademarks in the long run, and issue directories which are also very important to the long-term resolution and not many of the short-term issues that we currently have.

With specific consideration of the issue of prevention, we would recommend to WIPO the former work done by the International Trademark Association and also the Private Sector Working Group, with regard to the type of information that should be in the application and also in other documentation and in the good practices of the individual registrars, in terms of ensuring, for example, that the person that actually applies for a domain name gives a place where service may be processed. That the person that applies for it gives some kind of declaration that the application is a bona fide one, that they do not in any way know of a famous mark or any other form of mark that their application would in some way infringe. So, those are some of the things that we felt from a prevention point of view would be significant, but I do not want to go through the complete list. The submissions of both INTA and the submissions of the Private Sector Working Group enumerate all of those different areas that we feel are of great concern.

We move on to the area of famous trademarks, the thorny issue. My main question is would this be a parallel work to the work already initiated by the World Intellectual Property Organization on the issue of famous trademarks or would this be a complimentary work or a sub-set of that work? So, it would be very useful to have some form of clarification, because we do not need duplication here. One of the other suggestions that has been made is the fact that, with regard to famous trademarks, that perhaps a special classification purely for the Internet should be developed. With this, I go back to the first substantive guidelines. Within that first substantive guidelines there was a reference to this area of a regional basis and criterion. As you probably know, those in this audience and obviously those who would have seen the comments, were very concerned about the regionality and the criterion that was set. But quite clearly there may be a great deal of use in this process clearly defining a specific sub-set right for famous trademarks.

The third area which was enumerated this morning, was the area of the impact study. And what I would like to say about that is that the companies that I am involved with are most concerned that there are certain people that have put forward and posited studies which clearly seem to indicate that there isn't a problem. I can tell you standing here on behalf of 20 to 30 of the largest brand holders and trademark holder companies in America, the idea that there isn't a problem came to them as a great surprise, as increasing amounts of their resources, time and energy is spent on these and the number of cases that are reported and the number situations grows by leaps and bounds. Our basic principle on this is twofold. First and foremost we are not against the idea of having new gTLDs. We are against the idea of they are not being established in an effective legal and commercial framework. That does not in some way ensure that the situation is alleviated and ameliorated as opposed to exacerbated. And therefore, any dispute resolution policy, any forms and applications and any form of best practices and procedures must ensure that legal rights are protected, that consumers are not confused, but that consumers have confidence that when they click on the domain name it does relate to the source of origin to which they would believe in a reasonable sense, that it relates to. Therefore, we will be submitting to WIPO a group of cases. But obviously because of confidentialities and because some of them may be even related to ongoing litigation, we would want the liberty of obviously being somewhat discreet. But at least, indicating quite clearly to this body that there is absolutely a problem. The problem is not going away, it is getting worse and without an effective legal and commercial framework the situation would not be improved by merely creating a dispute resolution policy. That is an after-the-fact solution as opposed to dealing with it as it should be done. We also welcome the Leahey Bill and is passed through both the Senate and the House in the United States, and believe that it would be useful for other regions, for example, Europe, to conduct a specific study, so that whilst the WIPO process gives us a macro global view that regional studies may be able to deal with specific legal and commercial issues that pertain to specific regions.

With regard to the dispute resolution policy, it was suggested this morning that it should be uniform. We would suggest that uniform does not mean that there is merely one dispute resolution policy, but that there should be a uniform set of best standards and basic rules and requirements that would be practiced by all of those. And we would say that WIPO is in a perfect position in order to come to what may be the basic terms which could be included. Because we would obviously be against anything that may lead to forum shopping. And really at this point, a confirmation of my wacky software finishes my presentation. I am sorry if I spoke too fast.

(Mr. Francis Gurry):

I assure Mr. John Wood I know that I am always the subject of complaints from the interpreters for speaking far too quickly, so I wonder if I may ask everyone who intervenes to please have some indulgence for the interpreters and we that we ought to endeavor to speak a little more slowly. Thank you John, for those extremely comprehensive remarks. May I ask you to stay there. I know that you did address a number of questions to WIPO specifically, so perhaps if I may make some observations on those before asking whether anyone else would like to make any observations on the presentation of Mr. John Wood, or ask any questions of Mr. John Wood.

You asked for some clarification as to which parts would and would not be taken into account, which parts of the former process if I may so call it, and I think our attitude at this stage, subject to the control of our experts, is that we would take into account all parts of the former process. In the sense that the first set of substantive guidelines proposed one series of solutions and gave rise to one set of reactions. The second set of guidelines proposed another series of solutions and gave rise to another set of reactions. And I think that what we would like to do is to take account of all reactions that were expressed to the various different formulations of substantive guidelines that were articulated in the course of last year, and obviously the more recent review, as being those that have built on the experience of the previous reactions. Secondly, you asked whether the results of the WIPO process are guarantied of implementation by the new corporation. We think that really the answer will depend on the success of our process. If we do succeed in reaching some form of consensus (and that is our objective, and what we understand by consensus is that it is not a set of recommendations that are going to satisfy the interests and concerns of every sector, 100%, but such that every sector can live with them, that no particular sector will veto, will say this is impossible, for example that the technical community will say its impossible to implement or to live with such a mechanism. That is what we understand by consensus.) If we do succeed in that process, then we don't see that there is any obstacle to the acceptance of the recommendations. But obviously, we are not in a position to guarantee the actions of another party.

Concerning famous trademarks, it is perhaps the area in which frankly speaking there is the greatest tension between the traditional public law process of an intergovernmental organization, and this new process where we are dealing direct with interested parties in the private sector. It is not our intention to replicate here the work that is going on within the WIPO Standing Committee on Trademarks. And as you are well aware, within WIPO’s Standing Committee on Trademarks, there has been work now for a number of years on the definition of a well known mark since the now 150 contracting States of the Paris Convention are all obliged to protect famous marks or well known marks without any such definition having been elaborated on the international level. We see the question as it is put to us in this process as being, first of all, a procedure or mechanism for protecting famous marks within this environment of domain names. Now, assuming that we are able to develop a consensual recommendation as to an appropriate mechanism or procedure, then the question becomes what guidelines will be applied within that procedure. And there we would look first of all to the results of the work that is being carried out by our Member States. And secondly, to the substantive guidelines.

Finally, for my part one other comment only, and that is we are most grateful for your offer to submit some empirical evidence of the difficulties that are out there and we will of course respect the confidentiality of the details of the disputes that you do submit to us.

Are there other observations to Mr. John Wood. No observations or questions? Okay. Well thank you very much for the presentation. I suggest that we have time for one further presentation before we break for morning coffee, and I would ask Mr. Wolter Bettink from Houthoff law firm, welcome please.

Mr. Wolter Bettink (Attorney, Houthoff law firm): Thank you very much. Mr. Chairman thank you for this opportunity to present some views on the questions that have been raised in RFC-2. First, a little bit on my background. My name is Wolter Bettink. I am a Dutch lawyer from the firm of Houthoff, though that in itself is not a qualification to stand here. I am an intellectual property lawyer for some trademark matters that is some qualification. Perhaps I am also interested in all legal aspects of the Internet. We are getting towards the goal and I have been the advisor of the Dutch Domain Name Authorities since May 1996 and I have been involved in devising the registration rules for that domain name authority. So, basically is the reason that I am standing here is that I have been invited by the Dutch Domain Name Authority to present my views, which are not necessarily those of the Dutch Domain Name Authority.

I think that as a general statement, I would like to say that WIPO has taken a very important and also a very huge task in trying to devise rules in an area where already so many national and international rules exist. And if one goes out to do that, I think it is important to always ask the question is it worth the effort? And I know that in this forum there is already so much work that has been done before. Maybe it is as we say in Holland, cursing in the church. But nevertheless, as you know Dutchmen are very liberal as far as freedom of speech is concerned, I would like to make an effort in that direction but don't take me too literally in that respect.

I think that one of the things that struck me when I followed this process is that it seems that there is a conviction that it is possible to devise rules for a dispute resolution procedure which can exist in isolation of the rules that already exist. That of course is not the case when you devise a dispute resolution procedure like the one that we are discussing today. One of the most important things is to decide on the criteria to resolve the dispute. In other words, very simply put,. which rights will be taken into account in case of a domain name challenge? Who can challenge the domain name? I think that is a very principle question. If, you ask five trademark lawyers you will get five different answers. To give you an idea, in the United States you can get a trademark right merely through the use of trademark. In Benelux that is impossible, you have to register a trademark. The question therefore is, do you recognize, for instance, American trademark rights that were obtained by use or do you restrict yourself to trademarks that have been registered? That is one question.

Then the registration procedure, registration requirements are very different in different countries. And for instance in the Benelux we have a system as in many other countries where descriptive trademarks are refused and that is not the case in every country. In some jurisdictions you have the possibility to oppose a trademark when there is a conflict. But that is not a possibility in all jurisdictions. Then, in addition to trademarks, you may have other rights in particular corporate names which do not necessarily have to be registered as a trademark. Are these to be taken into account and how do they value on the scale of rights that maybe involved to challenge a domain name? Now, these are just some of the questions with respect to the substantive rules which should be involved in such a dispute resolution procedure. In addition, there will of course have to be devised many procedural rules and evidences that can be presented relating to the duration of the procedure, relating to the selection of the people who will decide and, of course, one important thing is that we have just served Mr. Jumborgen (?). I am very much a trademark lawyer in favor of trademark rights, but on the other hand one should acknowledge that trademark rights may also be owned by very small companies and that those small companies should also be protected. And procedural rules are also in principle there to protect the rights of small companies. I think that is important to keep in mind, especially when you are thinking of a procedure here which should be very speedy, which should perhaps have no appeal, no recourse to summary proceedings injuctive proceedings. That may all be very well if you are a big trademark owner and you have very clear trademark rights. But it may put the rights for small companies in jeopardy. To give you a very simple example, there may be a trade name owner in Italy who has a right to a trade name which is identical to a trademark which is owned by a company in the U.K. or in the Benelux. Now, who has the stronger right in a situation like that? That is a question, of course, you cannot answer without the facts. But it is a situation you have to take into account and keep in mind when devising, in particular, also procedural rules. They have to be very careful. So, I said it is an important task that WIPO has undertaken. It is a huge task and it is also a task which raises the preliminary question, is it necessary to be fulfilled, do we need a new alternative dispute resolution procedure? Or should we just take recourse to the courts? I have heard Mr. John Wood say that there are great difficulties out there and he gave examples. I don't know whether I would have the privilege to look at his examples, but to my admittedly not all encompassing knowledge on the cases that have been reported, the outcome of 99 out of a 100 cases is very satisfactory, although the legal reasoning may not always be what it needs to be. I personally, would favor just continuing on with the current situation and because I think the results right now are not all that bad, and because I think drafting new rules will involve many difficulties which will appear to be insurmountable.

Well, that was my opening statement. But of course I have also looked at the questions that have been posed, because I would like to offer some thoughts for I think the many people in the audience who just want to get on with the job, and would like to have answers to the questions. And what I have done is put down a number of notes. What I plan to do is also put it down in writing, so I could just pick out a few points now and then send you the document afterwards, so that you can look at it more precisely and look at all the details. I think that one of the important things which I already mentioned is the question, should appeal be excluded? Because that is important to safeguard the rights of all those concerned. And personally, I think that in order to preserve those rights an appeal should not be excluded. At the same time, if you go for an alternative dispute resolution procedure, the question is whether you should exclude summary proceedings, injunction proceedings, a very quick form of proceedings which gives you a preliminary right? In view of the fact that it here concerns the question yes or no, will you get the domain name or not, will you keep the domain name or not. I don't think that you should use such summary proceedings. It takes time to warrant and protect the rights of all concerned. Everything should be looked at very carefully. Everybody should have the opportunity to provide as and extensive as possible evidence to have its claims looked at. And, so I don't think there should be a form of summary proceedings.