WIPO Internet Domain Name Process

Transcript: Tokyo regional consultation

Benrishi-Kaikan
October 19, 1998

Well today we are having a seminar with the cooperation of the JPAA, sponsored by WIPO as well as the JPO and JPNIC. We have a whole day ahead of us to exchange views with you, we are pleased to declare the opening of the session from now on.

First of all, we would like to introduce to you the members who are seated at the main table, Mr. Wilder from WIPO. Ms. Lucinda Jones, Mr. Uemura, Deputy Director General. As a panelist we have Mr. Norichika and Dr. Kane. Thank you.

First of all, from the Japanese Patent Attorney’s Association, the Chairman on the Committee on Trademarks, Mr. Oshima would like to say a few words to greet you.

Mr. Oshima: Good morning everyone. I am Mr. Oshima, Chairman of the Committee on Trademarks at the JPAA. Today we are going to deal with an issue of intellectual property, particularly domain names. WIPO has been making many efforts on this line and first of all, I would like to pay respect to the efforts of WIPO in this area and we are pleased that the JPAA is involved in this joint important undertaking. I hope the one-day session today will be a productive one. Thank you.

Mr. Maruyama: Good morning. I will speak in English to allow the people to put on the receiver (translation). My name is Naomasa Maruyama, I am with JPNIC. This time we decided to cooperate with this WIPO process. I am very happy to see a lot of people today which I did not expect, this number. It was a little bit of a delicate decision for us whether to co-host this meeting, or only cooperate, and there is a little bit of difference in meaning I think. So, as you know. this is the process by WIPO, but this is very much related to the White Paper process by the United States Government and, as you know, recently we have lots of law suits in the United States, especially in the United States about the conflicts domain names and trademarks and probably the people in the field of intellectual property and people in the Internet field, there is some difference between these two parties I think, about this kind of complex. So, we thought it is better not to co-host only cooperate so, this means that we have a little bit of a different position to the people in the field of intellectual property. Anyway, it is very important to have this kind of meeting and give these suggestions to the new organization, as you know the new organization means the organization which takes the place of the role of the IANA and this is very important for us, not only for the people in the field of the Internet but also to all people in the world, I think. It is because the Internet gives lots of impact to the system of democracy in the world recently, not to speak of the love-affair scandal of the president, but there are lots of problems you can see, there are lots of examples, the Internet is changing the system or the way of democracy. To speak of the IANA, there is very shocking news the day before yesterday. The person who is in charge of IANA, Dr. Jon Postel, passed away two days ago. This is very amazing news and I was informed by Bob Connelly by the Internet mail. He posted the message that Jon Postel passed away on Friday evening and the White Paper process aims to avoid the personal dependency of the system of the Internet. As you know, IANA played a central function for many years in the Internet, and it was heavily dependent on Dr. Jon Postel and the process aims to change the system to work the organization without this kind of personal dependency. But the process is not started yet, the time limit set by the U.S. Government was September 30th and from October 1st the new organization should be started but it has not started yet. So the death of Jon Postel is very shocking news for us. Also I read an article on the Internet by Mr. Dave Crocker, he said that Jon Postel has been in hospital from 1st October and he has some chronic heart problems for many years and this time he has passed away. This is very sad news. Anyway, it is very important to continue our process including this WIPO Process to introduce stability in the Internet system. I hope for a hot discussion today and I would like to stop here. Thank you.

Mr. Hashimoto: My name is Hashimoto from the Japanese Patent Office, the First Examination Department. Trademarks are a very important issue. Ensuring appropriate use and appropriate protection of trademarks will lead to enhancement or improvement of people’s life in general. Under these circumstances, based on the development of Internet, a communication means, there has been a problem with domain names and adjustment or balancing with trademarks and further issues are evolving, involving trademarks. Now, as to the first issue, the issue between domain names and trademarks: if people think that a domain name is a name and it will not infringe on trademarks, that will not be appropriate because domain names could be used in the same way as trade names and depending on the use it will constitute an infringement of trademarks and therefore, in that sense, dispute prevention and dispute resolution of famous and well-known trademarks are the issues that will be discussed today. However, in the case of well-known and famous trademarks, just protecting these is not enough, we should expand the discussion to include all the trademarks in order to deal with this issue and therefore against this background it is very timely that WIPO is sponsoring this forum to hear the views of the people concerned. Thank you very much.

Mr. Uemura: My name is Uemura, I am Deputy Director General of the World Intellectual Property Organization. Please allow me to address you while seated. I would like to welcome you to Tokyo’s Regional Consultation on the WIPO Internet Domain Names Process. Thank you to the Japanese Patent Attorney Association and the Japan Network Information Center for having provided such valuable assistance to WIPO in making the arrangements for this consultation. Without their systems, our work today would not have been possible. I also thank the Japanese Patent Office for having cooperated so closely with WIPO and the JPAA and JPNIC in the organization of this consultation. Before I go any further, I would like to take a few moments to pay tribute to Dr. Jon Postel, the Director of the Internet Assign Numbers Authority who died this last Friday as Mr. Maruyama referred to a moment ago. Dr. Postel was a remarkable man and a giant in the Internet community. For thirty years he was at the center of the work that became what we now call the Internet. Beginning with the Arpanet, an endless stream of networks evolved and ultimately were inter-linked to become the Internet. Dr. Postel kept track of all the protocols, the identifiers, networks and addresses and ultimately, the names of all the things in the networked universe. He was truly a person who kept his head when all others were losing theirs and amidst the intense technical and political debate that followed the founding and the evolution of the Internet, perhaps his great contribution was his steadfast devotion to public service, service to us the users of the Internet, Dr. Postel will be missed. Could I now ask you for a moment of silence.

Thank you. Now, I would like to take this opportunity to briefly describe the activities of WIPO in the field of electronic commerce. These activities, of course, include the WIPO Internet Domain Names Process, but in electronic commerce, WIPO’s activities in that field are, of course, much broader. Electronic commerce is evolving very rapidly both in its nature, as well as its size. Perhaps the most important aspect of electronic commerce and that which distinguishes it from commerce in the physical world, is its global reach. Now, for the first time, businesses no matter how small, can reach out to customers throughout the world, and customers, no matter where they are located, have access to the global market. Governments in developing and developed countries alike are helping people to take advantage of electronic commerce as a tool for economic growth. Moreover, they are using the Internet as a tool to develop services and information to the people. Individuals, companies, governments and inter-governmental organizations are reacting to these opportunities. Individuals are changing the face of information dissemination and retailing. More and more people are seeking news and financial information through the Internet. People are better informed, not only about how their favorite baseball team is doing, but also how their government works and the services it has to offer. Retailers, like the book-seller in the United States, Amazon.com, have not only taken business from rivals in the traditional store-based retail trade but have created whole new models for doing business. And this is just the beginning. In the near future, the way in which we work and entertain ourselves will undergo fundamental change. Of course fundamental change brings challenges and new ways of looking at the world. Governments, like those of Japan and the United States, are reacting. In May of this year, Japan and the United States entered into a joint statement on electronic commerce. That joint statement called for "cooperation and harmonization among all countries from all regions of the world and all levels of development to assist in the construction of a seamless environment for electronic commerce," the joint statement also identified a number of policy issues in the field of electronic commerce, among them are electronic authentication, electronic signatures, electronic intellectual property rights and the Domain Names Systems. All of these are issues in which WIPO is involved.

If we could just now turn to the activities of WIPO. WIPO is addressing the emergence and growth of electronic commerce. Indeed, there are a number of intellectual property issues involving electronic commerce in which WIPO has been active for years. For example, in December of 1996, after several years of negotiations, the WIPO Copyright and Performances and Phonograms Treaties were concluded. These treaties’ essential elements form essential parts of the international infrastructure to protect works available or broadcast through the Internet. We are pleased with the work being done at a national level to implement these treaties. Indeed, the United States of America just this month passed implementing registration, and it is a major initiative of WIPO to work with all countries to achieve the implementation of and the adherence to these treaties. We are also working towards the adoption of new norms concerning the rights of performers in respect of audiovisual performances which were not included in the WIPO performances and phonograms treaty. Moreover, we have a program to look more closely at the need for and the nature of the protection of databases on the international level beyond protection afforded to compilations or information right copyright. We are also looking at updating international norms relating to the rights of broadcasting organizations. Much needs to be done in the field of electronic rights management systems and the management of copyright and the related rights in the digital environment. WIPO is involved there too. Copyright issues predominate in the discussions of the protection of content on the Internet, nevertheless, we are also active in matters concerning industrial property; patents, trademarks and industrial designs. For example, we are looking at the disclosure of technical information on the Internet and its impact on patentability and the use of trademarks on the Internet. More broadly, we are looking at the development of principles and rules for the effective protection of industrial property rights in electronic commerce. We are also doing work that cuts across the boundaries of copyright and industrial property, for example, an important feature of the Internet is its global reach, as I said before. Accordingly, it challenges traditional notions of territoriality that apply to all fields of intellectual property. That is, the rights granted have effect only within the territory of the granting state or regional organization. The implications of territoriality are easy to see in the field of trademarks, which we are studying today. A domain name may draw customers to a site on the Internet throughout the world, the territory of a trademark registration is much more limited however. Such registrations have effect only in the countries or regions in which protection is sought. Patent infringement presents some interesting challenges, especially when the infringing activities, such as provision of finance services, takes place wholly in an electronic space without any connection to the physical world. It is because of the largely unsettled nature of some of these issues that the Member Sates of WIPO asked us at the September session of the Assemblies of the Member States to undertake several initiatives in the field of electronic commerce. The broadest initiative is the focus on the topic of electronic commerce and its implications for intellectual property protection. This focus will involve three elements. First, there will be regional consultations much like the on being conducted today, to generate greater awareness of the ways in which electronic commerce is affecting intellectual property and to assist in formulating timely and swift responses. Second, there will be a major international conference on the topic of electronic commerce in Geneva in 1999. Third, there will be an Issues Paper prepared and published to define more clearly the impact of electronic commerce on the intellectual property system. Thus we are embarking on a broad study of the intellectual property implications of electronic commerce.

The aspect of electronic commerce we are studying today is more limited however, the impact of the Domain Name System on the system for the protection of trademarks. Before I introduce a topic for consultation today, I would like to turn and introduce two experts for the Panel of Experts convened by WIPO for this process. They are Dr. Ousmane Kane and Dr. Kensuke Norichika. Dr. Kane is Executive Director of the African Regional Center for Technology and a national of Senegal. Mr. Norichika is Executive Director of the Software Information Center of Japan and he is a national of Japan. They both bring to this consultation their long-standing experience and technological knowledge of this area and will assist in progressing the discussions today. Now, I would like to turn to my colleagues, Mr. Richard Wilder and Ms. Lucinda Jones, sitting next to me, to introduce today’s discussion, but before I do, however, I want to leave you with one thought. Electronic commerce is a term often used but seldom defined, it has no generally accepted meaning. For us, in the field of intellectual property, electronic commerce is a term that has come to stand for certain challenges. Challenges to territoriality, to definition and scope of rights granted and to enforcement as well. I am fully confident that, working together, we can understand these challenges, define this scope with specific questions or issues and then set ourselves to the task of, one by one, coming up with answers or solutions. This series of consultations on the WIPO Domain Names Process, of which the consultation today is a part, is a way of fulfilling part of this task. This consultation and the other consultations and projects I have mentioned will be conducted in a very open and transparent manner. I invite your full and active participation today and in the future so that together we can arrive at the answers or solutions that work well for us. Thank you. I now ask Mr. Richard Wilder to introduce and motivate the regional consultation of WIPO Domain Names Process.

Mr. Wilder: Thank you, Mr. Uemura and thank you for coming here today and participating in this event, the Tokyo WIPO Internet Domain Names Process consultation. Let me just give you a brief overview of my presentation here this morning, I am going to be talking a little bit about the Internet and its relation to intellectual property rights. The Domain Name System introducing the process that we are involved in here today which is the WIPO Internet Domain Name Process and then drawing some conclusions. But before I begin, I just wanted to explain a couple of general points: one, the process that we are conducting here today is one that we are conducting in a number of locations around the world and it is an opportunity for you to offer your insight and your guidance in respect of the questions that are being raised. As Mr. Uemura indicated, in broad terms, the questions relate to the relationship between the Domain Names System and trademark protection. And so, rather than viewing this as a session in which either I or the other people from WIPO or the Panel of Experts is going to offer guidance, it is an opportunity for you to give us some guidance as to how these issues should be addressed.

I am not going to go into a lot of background on the Internet for a couple of reasons: one, I think it is a matter that is quite well understood by most of the people here in the room, at least to the extent that it is relevant to today’s talk. Also I am by no means an expert on the development of the Internet and how it actually functions today. As has been discussed earlier, in reference to the late Dr. Jon Postel and also some of the opening remarks, the Internet had its origins in the United States, although it is not exclusively a function of technology developed there, but rather there were significant contributions from the world over. As you know, and as I will be discussing in a moment, there is work being done now to devolve the governance of the Internet out from the control of governments, including the government of the United States into an international organization that is being developed. Its early history goes back many years. It started out with military applications in mind and then migrated to academic application and now today is growing very rapidly in commercial applications. We are quite familiar with e-mail, we are all very familiar with the worldwide web and I am sure that we use these elements on a daily basis. Just to give you a short overview anyway of the use of the Internet or the worldwide web as a commercial medium, there are passive websites, those that simply provide information, interactive websites are becoming more and more prevalent these days, Mr. Uemura made reference to one that sells books through the Internet, through which you can have access to information about the products and then also place orders. This is obviously a mechanism that is widely used today and, as indicated, is going to increase in the future.

We, at WIPO are involved in a number of aspects involving intellectual property on the Internet. As Mr. Uemura indicated, a couple of years ago in December 1996, there were concluded, under the auspices of WIPO, a couple of treaties in the field of intellectual property dealing with, primarily, copyright issues. This is becoming increasingly important primarily because more and more works are being transmitted through the Internet, not only text but also sound and video works and the authors of those works are requiring protection that is commensurate with the technology that is being used. Here in Japan at the JPO, patent applications are received in electronic form, that is obviously going to be growing in importance. We, at WIPO, are developing mechanisms for receiving patent applications on-line as well as applications for international trademark protection through the Madrid System. As Mr. Uemura indicated, in the future the field of patents is going to become even more interesting as more and more applications that are conducted wholly on-line are the subject of patent protection. Trademarks and the domain name question is something that we are exploring here today. Also, as I indicated, we are going to be progressing in future to having more and more applications for trademark protection conducted on-line. Also the nature of trademarks is changing to accommodate signs beyond just visual symbols, to sound and other types of marks. The principle problem associated with intellectual property protection through the Internet is its global reach and the conflict that inevitably arises between the global reach of the Internet and the fact that intellectual property protection is for the most part national in scope. One applies for trademark protection, for example in Japan, through the JPO, that has effect here, within Japan and not effect outside of the borders. Whereas the Internet, being a global medium, has global reach, people have access to markets throughout the world and this inevitably presents conflicts.

You are all familiar with domain names, I do not think that I have to go over this in any great detail, I put one up on the screen, www.wipo.int. The domain names, as I indicated up here, are structured as a hierarchy, we have the top level domains - in the case of WIPO this is .int - there are also country code top level domain names such as .jp for Japan, .US and .UK and then there are generic top level domain names that have international scope, such as .com, .org, .net and .int.