WIPO Internet Domain Name Process

Table of Contents
Executive Summary
1: The Internet, Domain Names and the WIPO Process
2: Avoiding Disjunction Between Cyberspace and the Rest of the World
3: Resolving Conflicts in a Multijurisdictional World with a Global Medium
4: The Problem of Notoriety: Famous and Well-Known Marks
5: New Generic Top-Level Domains
A-I. Panel of Experts
A-II. Formal Comments
A-III. Statistical Information
A-IV. List of States Party to the Paris Convention
A-V. List of States Party to WTO and Bound by the TRIPS Agreement

37.  It is a truism that things happen quickly on the Internet. The increase in the number of persons desiring to have a recognized and easily located presence on the Internet is but one example. The estimated number of domain name registrations has increased from approximately 100,000 at the start of 1995 to about 4,8 million at the present time.

38.  The DNS was designed for its own internal purposes: to ensure connectivity in a technically coherent manner and to do so in a way which was simple and easy for human users to understand and use. Over the same period as the DNS has demonstrated its outstanding success in achieving its design objectives, however, it has become a victim of its own success as the applications of the Internet have expanded into all spheres of activity and as enterprises and persons have commenced to include their domain names in the standard identification apparatus that they use for the purposes of social and business communication.

39.  In addressing the way in which to deal with the consequent conflicts that have arisen between domain names and other recognized forms of identifiers that are protected by intellectual property, the great majority of commentators in the WIPO Process have considered that the starting point should be the avoidance, rather that the resolution, of conflicts. Insofar as practical, an endeavor should be made to avoid having two autonomous systems that live in ignorance of each other––the DNS in cyberspace, and the intellectual property system of identifiers as developed before the arrival of the Internet.

40.  It seems clear that the two systems have hitherto operated without sufficient attention to each other. In certain top-level domains, users can be assured of a simple, fast and relatively inexpensive process for the registration of a domain name on a first-come, first-served basis. There is no requirement that the applicant justify use of a particular name; no verification process for any contact details provided; no provision for the settling of disputes when they arise; and no requirement that any payment be tendered and confirmed before the domain name holder begins to use the name. These registration practices have led to instances of registrations that may be considered to be abusive.²²

41.  On the other hand, the same practices have played a very positive role in establishing low entry barriers––making domain name registration fast and easy, thereby encouraging the rapid growth of the Internet,²³ new entrepreneurial uses of web sites, and fostering the acceptance by businesses and consumers of the Internet as a vital new medium for an expanding digital marketplace. In endeavoring to avoid disjunction between the DNS and existing intellectual property rights, therefore, care must be exercised not to impede unduly the functionality of a low cost and highly efficient system with proven successes.

42.  In WIPO RFC-2, interested parties were invited to propose measures to reduce the disjunction between the DNS and intellectual property rights and thus to minimize resulting conflicts. This Chapter contains the interim recommendations of WIPO after this process of consultation. They are proposed for further consultation, discussion and consideration before being finalized in the final report of the WIPO Process.

43.  The interim WIPO recommendations in this Chapter are divided into four parts:

– best practices for registration authorities;
– the availability of information relating to contact details;
– dealing with false or inadequate information;
– the problem of uniqueness: technical measures for co-existence of similar names.

Best Practices for Registration Authorities²⁴

44.  Formal Domain Name Registration Agreement. The domain name registration agreement defines the rights and responsibilities of the registration authority, on the one hand, and the domain name applicant, on the other hand. It is through the terms of this contract that certain practical measures could be introduced to alleviate the problems that have arisen from the interface between Internet domain names and intellectual property rights.

45.  Under current practices, domain names in some top-level domains are registered in circumstances in which the terms and conditions of the agreement between the applicant and the registration authority are not formalized. A contract exists between the registrant and the registration authority in such cases, some of its terms (such as cost) are explicit, some may be implied, but none is contained in an electronic or paper document purporting to define the relationship between the parties.

47.  Contents of the Registration Agreement: Contact Details. Many commentators considered that an important measure for reducing conflict between domain name registrations and intellectual property rights is the provision by the domain name holder of accurate and reliable contact details, which should be furnished as part of the domain name registration agreement. This view was advanced on the basis that the first step taken by the owner of an intellectual property right who believes that its right is being infringed by a domain name registration is to contact the domain name holder in order to set in motion a process for dealing with the alleged infringement. The absence of reliable and accurate contact details leads to a situation in which the intellectual property right can be infringed with impunity on a highly visible public medium.²⁵

48.  A number of commentators considered that the protection of privacy was an important principle that needed to be taken into account in relation to the provision of contact details. They pointed out that, where a domain name was used as the address of a web site that was maintained for non-commercial purposes, the need to provide contact details was less evident, since infringement of intellectual property rights usually involved commercial uses. In addition, if a domain name was used in connection with political activities, it was suggested that the provision of contact details might lead, in some cases, to threats of suppression of freedom of expression.²⁶

49.  WIPO considers that both the recognized right to intellectual property protection and the recognized right to privacy can be accommodated in relation to the provision of contact details if several measures are respected:

            (i) first, a distinction should be made between the provision or collection of information relating to contact details, on the one hand, and the making available of that information, on the other hand. The question of the collection of such information is addressed in the present section, whereas the question of the circumstances in which it may be made available is dealt with below;

            (ii) secondly, since the purpose of collecting information relating to contact details is to avoid the frustration of recognized rights by enabling contact to be established, rather than to identify publicly a domain name holder, consideration could be given to allowing a domain name applicant to designate an agent for the purpose of communications and to provide contact details of such an agent, while remaining anonymous;

            (iii) thirdly, in line with the dominant principles emerging in relation to data protection, the information collected on contact details should be limited to the transactional purpose of the domain name registration agreement. In addition, the minimum information needed to facilitate contact in the event of an allegation of an infringement of an intellectual property right should also be collected. The information should be held by registration authorities for the limited purpose for which it was collected; and

            (iv) fourthly, consideration could be given to the introduction of greater differentiation in the TLDs with a view to the creation of one or more non-commercial domains where the requirement of the provision of contact details might not have to be applied. This question is discussed in Chapter 5, below.

52.  Contents of the Registration Agreements: Representations. WIPO RFC-2 requested comment on whether certain representations and agreements should be included in the domain name registration agreement. The comments received reflect the general view that such representations are useful in alerting domain name applicants to the possibility of conflicting rights of intellectual property owners and in contributing to the reduction of tension between domain name registrations and intellectual property rights.²⁸ The representations serve the ancillary purposes of protecting the registration authority from liability for contributory infringement and, where furnished inaccurately and in deliberate bad faith with knowledge of their inaccuracy, of providing a basis of liability on the part of the domain name holder.

54.  Contents of the Registration Agreement: Agreement on Limited Purpose of the Collection and Making Available of Data. Akin to the role of representations in the registration agreement are certain agreed terms that can be useful in clearly defining the rights and obligations of the parties in relation to information disclosed in the registration agreement. It was suggested above that the right of privacy should be accommodated, inter alia, by making it clear that information relating to contact details should be collected for a limited purpose only. The circumstances in which it may be made available are discussed below. Both these matters should be made explicit by a term in the registration agreement.

56.  Contents of the Registration Agreement: Agreed Term on the Consequences of Inaccurate or Unreliable Information. The purpose of requiring the provision of contact details would be frustrated if no sanction existed for the provision of inaccurate or unreliable information which does not permit contact to be established with the domain name holder.²⁹ The type of sanction and the way in which it might be implemented is discussed below (see paragraphs 93 to 100). If such a sanction were adopted, the possibility of its imposition must be made explicit to the domain name applicant.

58.  Contents of the Registration Agreement: Submission to Jurisdiction and to Alternative Dispute Resolution Procedures. Chapter 3 discusses the question of litigation and dispute resolution and makes certain recommendations in relation to each. Since these recommendations, if adopted, require implementation by agreement at the stage of the conclusion of the registration agreement, their consequence for the content of the registration agreement is recorded here.

60.  Requirements of Use. A number of commentators expressed support for the inclusion in the registration agreement of a statement of a bona fide intention to "use" the domain name.³⁰ Some commentators added that actual use after registration (or within a certain period after registration) should be required and subject to verification. Other commentators supported a requirement of a statement of the intended purpose of use of the domain name in the registration agreement. These comments appear to have been motivated by concern at the practice of registering domain names corresponding to the trademarks of others or the titles of pending events with a high profile (such as "Sydney 2000") and of holding these names, without use, in a collection for eventual sale to the owners of the trademarks or the organizers of the events.

61.  On the other hand, several commentators had difficulty in seeing that any agreed standards existed as to what might constitute use in relation to a domain name and in seeing how any such standards might be applied to verify use. In addition, it was pointed out that non-use might be entirely innocent and legitimate, for example, where the domain name holder planned to establish a web site in the future to announce the introduction of a new product whose existence was being kept confidential.³¹

63.  Designation of Agent for Service of Process. A number of commentators agreed that it would be useful to require the designation in the domain name agreement of an agent that could be relied upon by third parties for serving process on (initiating litigation against) the domain name holder. The designated agent could be the domain name holder itself, an employee or an attorney. Another suggestion was that this role could be assumed by the relevant registration authority.

65.  Payment of Registration. Several vices are perceived as flowing from the lack of rigour in enforcing the requirement of payment of the registration fee for a domain name. Non-enforcement of the requirement can lead to the hoarding of names which, by virtue of the first-come, first-served principle of registration, places the registrant in a position to offer the names for sale to others who might have rights or interests in the names. Most commentators considered that the activation of a domain name registration should be made conditional upon the receipt by the registration authority of the registration fee.³² Others suggested that if payment was not received within a specified period of time, the registration authority should have contractual authority to cancel the domain name registration agreement.³³

66.  It is considered that the requirement of pre-payment before activation of the domain name is correct in principle. However, in practice, in a world of multiple registrars, the requirement may be more difficult to implement.³⁴ The service of domain name registration may be offered as part of a package of other services by an Internet Service Provider (ISP) in such a way that the amount due for the registration fee may not be separately discernible. This may be particularly so if the cost of domain name registrations falls considerably. It is also likely that the domain name applicant will, in many cases, be separated from the registration authority by one or several ISPs. These practical difficulties seem, however, to be a matter of commercial risk. If the registration authority is required not to activate a domain name until satisfied that the fee has been paid, it is likely that each link in the chain from the registration authority to the applicant will put in place its own arrangements to cover its commercial exposure for advancing the payment on behalf of another further down the chain.

68.  Re-Registration Fees. There was considerable support for the requirement that domain name registrations be for a limited period (typically one year) rather than in perpetuity and that a re-registration fee be required to be paid for the maintenance of the registration. Such requirements were perceived as useful measures to ensure that registrations are maintained by those with an interest in maintaining an active site and to avoid the hoarding of registrations for speculative purposes.

70.  Waiting Periods. Several commentators were in favor of imposing a waiting period prior to the activation of a domain name registration.³⁵ The purpose of such a waiting period would be to allow those who opposed the registration of a domain name on the basis that it constituted an infringement of their rights the opportunity to take measures to stop the activation of the domain name. There was not, however, broad support for a waiting period.³⁶ It was perceived as being at odds with one of the great strengths of the Internet, namely, the speed with which activity can occur. A number of commentators felt that a waiting period would not only cause delay, but could also drive up the cost of the registration of domain names.

71.  The concerns of the proponents of a waiting period to be able to act swiftly against an infringing domain name registration before too much damage is done might be addressed in an alternative way. There was broad support in the comments for a procedure for the suspension of a domain name registration under certain circumstances, within an initial period after the activation of the registration (e.g., 30 or 45 days from the date of activation of the domain name).³⁷ There appear to be two possible approaches to the procedure for suspension.

72.  The first would be to provide for the possibility of suspension through resort to the courts or an alternative dispute resolution procedure, in such a way that a determination could be made upon an expedited review of the relevant facts and circumstances. A suspension could be granted in this context upon a showing of some form of proof of illegitimate use and possibly the posting of a bond by the third party complainant.

73.  The second approach to suspension would be a form of automatic take-down, analogous to that developed for the take-down or de-activation of web sites with content that allegedly infringes copyright under the United States Digital Millennium Copyright Act of 1998.³⁸ Under such an approach, a registration authority would be obligated to suspend a domain name registration if, within an initial designated period after the activation of the registration, a third party serves a notification on the registration authority containing the following elements:

In addition, the posting of a bond by the third party complainant might be required.

74.  The principal perceived difficulty with the automatic take-down procedure described in the preceding paragraph is that it would involve registration authorities in disputes. While the procedure would be intended to operate automatically, the registration authority would nevertheless have to check notifications to ensure that they conform to the relevant requirements. This would add to the costs and the administration of the DNS. Furthermore, unlike the take-down procedure under the United States Digital Millennium Act, the procedure would have a contractual, rather than legislative basis, which might prompt disgruntled registrants to sue the registration authority if it acted on the basis of notifications that proved to be spurious, thus further complicating the administration of the DNS.

76.  Searches Prior to Registration. Almost unanimously, commentators agreed that no trademark or other searches should be required as a pre-condition to registration of a domain name, whether they are performed by the registration authorities or by the domain name applicants themselves. Particularly in an international context, the requirement of searches prior to the registration of a domain name was generally considered to be unrealistic and conducive of unnecessary delays in the registration process.³⁹

77.  At the same time, there was wide agreement that voluntary domain name and trademark searches, on the part of prospective domain name applicants, should be encouraged to verify whether the domain name that they intend to register is unencumbered and does not infringe upon the intellectual property rights of any third party.⁴⁰ It was noted that a range of commercial and public search services now exist for both domain names and trademarks.⁴¹

The Availability of Information Relating to Contact Details

79.  The distinction was made above between the collection of information relating to contact details of domain name holders and making available such information. The present section deals with the way in which such information might be made available.

80.  It is recalled that the purpose of the collection of contact details is to enable a third party which considers that its intellectual property rights have been infringed as a result of a domain name registration to be able to obtain reliable and accurate information concerning the domain name holder in order to establish contact with the holder.

81.  Commentators almost universally agreed that databases containing domain name registration details (e.g., "WhoIs" databases with contact details) were extremely helpful⁴² and should be made available as a service to allow domain name applicants, holders of intellectual property rights and other interested parties to search for and obtain information for purposes of evaluating domain names or protecting any potentially related intellectual property rights. Those in favor of securing reliable contact details from domain name applicants consider it to be fundamental that some or all of this information be made available in a publicly accessible database.⁴³

82.  In contrast to this call for the widespread availability of registration data, some other commentators were of the opinion that the extent to which, and the manner in which, any contact information is made available to third parties should be guided by privacy considerations.⁴⁴ To this point, still others responded that the public interest in deterring and remedying fraud and the infringement of the intellectual property rights outweighed any concerns about information privacy in this context, suggesting that the maintenance of a domain name registration carried with it the responsibility of being prepared to have one’s contact details made available to third parties.⁴⁵

83.  It is considered that either of two approaches could be adopted to making available information on contact details: (1) the approach of an unrestricted, publicly available, searchable database; or (2) the approach of imposing a form of filter between the interrogator of the database and full access to a searchable database.

84.  Alternative 1: Unrestricted Internet Domain Name Database. Under this alternative, contact information would be made available to third parties through a searchable domain name database. Whenever information is supplied to a third party, it could be accompanied by a notice explaining that the information is made available only for certain limited purposes.

85.  Those supporting the public accessibility of domain name registration data were in favor of making a variety of applicant data available. One way in which to structure a search request would be to allow queries on the following two variables: (1) domain name (or embedded part thereof), and (2) name of domain name holder. The result of a query on these items could be a browse list featuring any records corresponding to the search criteria. In relation to each record the following information could be displayed: (1) gTLD, (2) any sublevel domain(s), (3) name of domain name holder, (4) street address, (5) city, (6) state/province, (7) postal codes, (8) country, (9) e-mail address, (if available), (10) phone number, (11) fax number, (if applicable), (12) authorized contact person, (if applicable), (13) status of the domain name including whether it is in dispute (e.g., operational, pending, on hold, in dispute), (14) the registration authority for the domain name, (15) the date the domain name was registered, (16) primary and secondary servers hostnames and netaddresses, and (17) an indication of whether the domain name holder has opted for certain ADR procedures further discussed in Chapter 3, below. In addition, some commentators believe the user should be able to view the historical chain of title information for the domain name and any information that was provided about relevant intellectual property rights that may be held by the domain name holder.

86.  A number of commentators proposed, in addition, that searches on such domain name data should be made possible through an interface which is common to all gTLDs; that users should be able to search in multiple fields; that, if databases are maintained by different registration authorities, or at different levels in the chain of DNS authorities, they be functionally compatible and capable of being interlinked to permit comprehensive searches;⁴⁶ and that the information in such databases be subject to constant updating, with the posting of new information on a regular, scheduled basis.

87.  Alternative 2: Filtered Access to the Database. A second alternative would be to make publicly available only such data as would not be deemed private. Thus, a first-level access would only allow searching for the existence of a particular domain name (or an embedded part thereof). If the result of this search is a positive indication that one or more domain names corresponding to the search criteria are registered, then two alternative options remain for the third party to obtain further information. Under the first option, an on-line form would appear in which the interrogator could be required to specify its own contact details (including name, address, telephone and e-mail) and to provide a justification of its interest in obtaining the detailed contact information. Once this form is completed and submitted, the contact data would be supplied and the entire transaction could take place within a matter of minutes. It might also be considered whether the domain name holder should be sent, electronically, a copy, for information, of the form completed by the interrogator. Under the second option, in response to the first search (which yielded a positive indication that the domain name in question is registered), the contact details of the relevant registration authority would be provided. A third party would then be able to contact the registration authority in question, specifying its own contact details (including name, address, etc.) and providing a justification of its interest in obtaining the detailed contact information of the domain name holder. Upon receiving such a request for information, the registration authority would supply the information.

Dealing with False or Inadequate Information

90.  If the recommendations in the preceding part of this Chapter were adopted, domain name holders would be under a contractual obligation to supply minimum contact details and these would be available to third parties, under certain circumstances, in a searchable database. The question remains as to what consequences, if any, should follow if the information supplied by a domain name holder is false, inadequate or inaccurate such that, after receiving the information, it is not possible to establish contact with the holder by reason of the deficiency of the information. Several approaches to this question could be envisaged.

91.  Verification of Contact Details by the Registration Authority. The first possible check on the accuracy or reliability of information on contact details would logically be the registration authority. However, commentators generally agreed that registration authorities should not be burdened with the task of verifying in any comprehensive way the accuracy and reliability of the domain name applicant’s contact details, as this would be likely to lead to unnecessary additional time and cost in the registration process. Nevertheless, two simple devices to ensure improved reliability seem to warrant further attention. First, the use of on-line data validation mechanisms in real time would contribute to ensuring more complete details. The mandatory fields could be automatically verified for the presence of data upon submission. This measure would be helpful, but it would not act as a check against inaccurate or false data. Secondly, a procedure could be used for the automatic confirmation of the "existence" of the applicant upon submission of the domain name application either by sending an e-mail communication to the addresses given by the applicant, or by verifying the operational status of the hostname and netaddress of the primary and secondary servers. The automatic confirmation by way of e-mail communication would require that an e-mail address be supplied by the applicant (cf. paragraph 50, above).

93.  Requirement to Keep Contact Details Up-to-Date. Those commentators who were in favor of requiring contact details were also of the opinion that this information should be kept up to date.⁴⁷ The time of re-registration is the logical point at which the accuracy of contact details could be practically verified. Invoices for re-registration payments are, at this stage, sent to domain name holders using the contact details supplied. It is considered that the recommendation to require cancellation of the domain name registration if the re-registration fee is not paid after a second notice or reminder (paragraph 69, above) is a sufficient check on the currency of contact details.

94.  Consequences if the Domain Name Holder Cannot be Contacted. Despite improvements in procedures for ensuring complete contact details, the information supplied by an applicant may prove to be false or unreliable or otherwise insufficient to allow contact to be established with the domain name holder.

95.  It is noted that, as an existing practice in many domain name registration agreements, unreliable contact details may be a ground, as between the registration authority and the domain name holder, for the cancellation of a domain name registration. As such, a domain name holder’s failure to provide accurate contact details is often defined as a material breach of contract, which may result in cancellation of the registration.⁴⁸ In a number of instances, however, the provision of false or misleading contact details goes undetected unless a third party has sought unsuccessfully to contact a domain name holder and subsequently brings its inability to do so to the attention of the registration authority. The question thus arises whether a registration authority should be able to act in response to notice from a third party that the contact details are ineffective.

96.  An important issue that needs to be determined in this connection, however, is whether a registration authority itself, upon notification from a third party, should be allowed to take the decision to cancel the domain name registration, or whether such decision should be taken by an independent dispute resolution neutral, with the registration authority simply implementing the latter’s decision. The comments have expressed support for both approaches.⁴⁹

97.  Decision by an Independent Neutral. Under this option, an interested third party could seek an expedited decision to cancel the domain name registration on the ground of unreliable contact details by resorting to an alternative dispute resolution (ADR) procedure available for domain name disputes. The complaining party, to obtain a cancellation of the registration, could be required to allege that its intellectual property right has been infringed and to demonstrate that it has made reasonable efforts to contact the domain name holder while relying on the contact details that were provided in the registration agreement, and that the contact details appear to be ineffective and unreliable because no response from the domain name holder has been received. It would be left to the independent neutral to decide on the basis of all relevant facts and circumstances whether or not the domain name registration should be cancelled. If a decision to cancel were made, it would be notified to the registration authority for direct implementation. The entire procedure could be completed in a matter of days.

98.  This approach would have the benefit of a review of the request for cancellation by an independent neutral before a registration could be cancelled, thus offering a reasonable measure of protection to the domain name holder. A possible drawback, however, is that such a procedure still imposes what may be viewed as a significant burden on a complaining party, even in cases where the contact details are obviously false.

99.  Decision by the Registration Authority. An alternative to a decision pursuant to an ADR procedure would be a take-down procedure, whereby the registration authority itself would cancel a domain name registration, upon proper notification by a third party complainant in cases where; (i) the infringement of an intellectual property right is claimed; and (ii) contact details are alleged to be unreliable and ineffective.⁵⁰ The notification to the registration authority could include the following elements:

Once a registration authority had received such a notification, it too could attempt to contact the domain name holder. Following a reasonable period, if the domain name holder did not respond, the domain name registration would be automatically cancelled.

100.  It is believed that, in this context, the take-down procedure is the better of the two approaches. Whereas the use of a take-down procedure for suspension of a registration in the case of an alleged infringement (paragraph 72 and 73, above) may involve registration authorities unnecessarily in disputes between domain name holders and third parties (and in liability suits in the case of the wrongful suspension of a domain name), the accuracy and reliability of contact details is an objective matter that can be relatively easily verified upon service of a notification by a third party. It seems unnecessarily burdensome to encumber a relatively straightforward matter with a separate adversarial ADR procedure for this purpose.

The Problem of Uniqueness: Technical Measures for Co-existence of Similar Names

102.  For operational reasons, a domain name is a unique address. This characteristic creates the difficulty that common words that form part of marks can be coveted as domain names by a number of different persons or enterprises. The difficulty is exacerbated in undifferentiated domains, since similar marks with common elements can co-exist in relation to different classes of goods or services without confusion, whereas only one of the owners may use the mark or the common element alone as a domain name in a large undifferentiated domain. Examples of such common elements are "national," "united" or generic descriptions like "telecom."⁵¹

103.  There are several means that can be used to overcome the difficulty of uniqueness. Directory and listing services assist in ensuring that an interested person can locate the exact address that it is seeking and many commentators supported the further development of such services.⁵² The gateway or portal page is also a measure that finds widespread support.⁵³ Under such a gateway, a list of names using a common element is produced with links to the various addresses and information to distinguish the addresses and their owners from each other.⁵⁴ These measures are deployed under the INternet ONE system,⁵⁵ a directory service with a shared name depository, which enables entities sharing common elements in domain names to co-exist on the Internet.

104.  Measures which allow co-existence while providing users with the information to distinguish between the owners of the similar names represent a viable and useful way of reducing conflict. They are, however, voluntary measures that parties can choose as a means of resolving an intractable shared desire for the same name. They can also constitute a recommended solution for such parties within the context of litigation or an alternative dispute resolution procedure such as mediation.

105.  There is resistance, however, to making such measures compulsory.⁵⁶ Many owners of marks wish to preserve their unique identity and do not wish to countenance sharing it, even through a portal, with another.

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Footnotes

[22] See Comment of Government of India, Department of Industrial Development: Ministry of Industry (November 6, 1998 - RFC-2); Comment of International Intellectual Property Alliance (November 6, 1998 - RFC-2); Comment of Ms. Sally Abel of International Trademark Association (San Francisco consultation); Comment of MARQUES (November 6, 1998 - RFC-2); Comment of Motion Picture Association of America (November 6, 1998 - RFC-2); Comment of Mr. Krishna of Andhra Pradesh Technology Services (Hyderabad consultation); Comment of Ms. Shelley Hebert of Stanford University (San Francisco consultation); Comment of Ms. Marilyn Cade of AT&T (Washington consultation); Comment of Ms. Sarah Deutsch of Bell Atlantic (Washington consultation); Comment of The Chanel Company (November 4, 1998 - RFC-2); Comment of Ms. Anne Gundelfinger of Intel (San Francisco consultation); Comment of Mr. Neil Smith of Limbach & Limbach (San Francisco consultation); Comment of Ms. Susan Anthony of MCI Worldcom (Washington consultation); Comment of Viacom (October 1, 1998 - RFC-2). See also the discussion in Chapter 5.

[23] As of the date of this Report, there are more than 4,750,000 domain names registered, including approximately 2,850,000 in the top-level domain ".com" alone. New domain name registrations in all top-level domains are running at a rough average of over 70,000 per week. Further information and statistics about domain name registrations is available at the web site of NetNames Ltd., (see http://www.domainstats.com). 

[24] "Registration authority" is used to refer to those entities that are involved in the day-to-day administration and management of certain portions of the Domain Name System (DNS), and in particular are concerned with: (i) the delegation or assignment of portions of the name space commonly known as the second-level (or sub-) domains of top-level domains; or (ii) registering domain names and dealing directly with domain name applicants. The term registration authority as used in this Report may encompass in certain contexts the "registry" and the "registrar," as those terms are used in the White Paper. WIPO takes no position on the appropriate division of administrative and management responsibilities among the chain of authorities in the DNS, as this is a subject properly for ICANN’s consideration.

[25] In RFC 1591, Section 4(1), it is stated that in case of a dispute concerning rights to a particular name, the registration authority’s limited role is "to provide the contact information to both parties."

[26] See Comment of Electronic Frontier Foundation (November 6, 1998 - RFC-2); Comment of International Intellectual Property Alliance (November 6, 1998 - RFC-2); Comment of Prof. Joel E. Reidenberg of Fordham University (October 30, 1998 - RFC-2); Comment of Mr. R.A. Reese (San Francisco consultation).

[27] RFC 1591, Section 3(5), provides that there must be "a primary and a secondary nameserver that have [Internet Protocol] connectivity to the Internet and can be easily checked for operational status and database accuracy by the [Internet Registry] and the IANA." This information may often be supplied or require confirmation by the relevant Internet Service Provider or maintainer of the host machine.

[28] See, for example, Comment of MCI Worldcom (November 9, 1998 - RFC-2); Comment of Mr. Jonathan Moskin (November 6, 1998 - RFC-2).

[29] See Comment of International Intellectual Property Alliance (November 6, 1998 - RFC-2); Comment of Internet Industry Association of Australia (November 6, 1998 -RFC-2); Comment of MARQUES (November 6, 1998 - RFC-2); Comment of Motion Picture Association of America (November 6, 1998 – RFC-2); Comment of Ms. Shelley Hebert of Stanford University (San Francisco consultation); Comment of Dr. Willie Black of Nominet UK (Brussels consultation); Comment of Mr. Gregory Phillips of Johnson & Hatch for Porsche (San Francisco consultation); Comment of Mr. Pavan Duggal (Hyderabad consultation).

[30] See Comment of American Intellectual Property Law Association (November 6, 1998 - RFC-2); Comment of International Trademark Association (November 6, 1998 - RFC-2); Comment of MARQUES (November 6, 1998 - RFC-2); Comment of Dr. Willie Black of Nominet UK (Brussels consultation).

[31] See Comment of Electronic Frontier Foundation (November 6, 1998 - RFC-2); Comment of Singapore Network Information Centre (November 5, 1998 - RFC-2); Comment of Mr. Paul Kane of Internet Computer Bureau (Brussels consultation).

[32] See Comment of American Intellectual Property Law Association (November 6, 1998 - RFC-2); Comment of International Trademark Association (November 6, 1998 - RFC-2); Comment of MARQUES (November 6, 1998 - RFC-2); Comment of Motion Picture Association of America (November 6, 1998 – RFC-2); Comment of Bell Atlantic (October 1, 1998 - RFC-2); Comment of Mr. Keith Gymer (November 11, 1998 - RFC-2); Comment of Mr. Paul Kane of Internet Computer Bureau (Brussels consultation).

[33] Cf. Network Solutions Inc.’s (NSI’s) Domain Name Registration Agreement (Version Number 4.0): "payment is due to Network Solutions within thirty (30) days from the date of the invoice" (paragraph B). Failure to abide by this provision of the Agreement may be considered a material breach by the applicant which, following notice from NSI, could lead to deletion of the domain name registration (paragraph I).

[34] See Comment of European Communities Trademark Association (November 4, 1998 – RFC-2)

[35] See Comment of the Government of Belarus, Belarus Patent Office: The State Patent Committee, (November 4, 1998 – RFC-2); Comment of the Government of Sweden, Swedish Patent and Registration Office (November 4, 1998 - RFC-2); Comment of International Trademark Association (November 6, 1998 - RFC-2); Comment of Ms. Shelley Hebert of Stanford University (San Francisco consultation); Comment of Bell Atlantic (October 1, 1998 - RFC-2); Comment of Ford Global Technologies (November 14, 1998 - RFC-2); Comment of Ms. Susan Anthony of MCI Worldcom (Washington consultation).

[36] See Comment of European Community and its Member States (November 3, 1998 - RFC-2); Comment of the Government of the Republic of Korea, Korean Industrial Property Office: Ministry of Trade, Industry and Energy (November 16, 1998 - RFC-2); Comment of the Government of Sweden, National Post and Telecom Agency (November 6, 1998 - RFC -2); Comment of American Intellectual Property Law Association (November 6, 1998 - RFC-2); Comment of Domain Name Rights Coalition (November 6, 1998 - RFC-2); Comment of Fédération Internationale des Conseils en Propriété Industrielle (November 9, 1998 - RFC-2); Comment of Institute of Trade Mark Agents (November 3, 1998 - RFC-2); Comment of MARQUES (November 6, 1998 - RFC-2); Comment of Mr. Maruyama of Japan Information Network Center (Tokyo consultation); Comment of Mr. R.A. Reese of Stanford Law School (San Francisco consultation); Comment of Mr. Keith Gymer (November 11, 1998 - RFC-2); Comment of Mr. Axel Horns (September 18, 1998 - RFC-2).

[37] See, for example, Comment of MCI Worldcom (November 9, 1998 - RFC-2).

[38] §202, 17 USC §512(c)(3) (1998). The short title for the relevant part of this law is the Internet Copyright Infringement Liability Clarification Act of 1998; cf. Comment of International Intellectual Property Alliance (November 6, 1998) – RFC-2); Comment of Bell Atlantic (October 1, 1998 – RFC-2).

[39] See Comment of the Government of India, Department of Industrial Development: Ministry of Industry (November 6, 1998 – RFC-2); Comment of the Government of the Republic of Korea, Korean Industrial Property Office: Ministry of Trade, Industry and Energy (November 16, 1998 - RFC-2); Comment of American Intellectual Property Law Association (November 6, 1998 - RFC-2); Comment of International Trademark Association (November 6, 1998 - RFC-2); Comment of MARQUES (November 6, 1998 - RFC-2); Comment of Mr. Maruyama of Japan Information Network Center (Tokyo consultation); Comment of Mr. Axel Horns (September 18, 1998 - RFC-2).

[40] See, for example, Comment of the Government of Australia, IP Australia: Department of Industry, Science and Resources (August 21, 1998 - RFC-1); Comment of American Intellectual Property Law Association (November 6, 1998 - RFC-2); Comment of Ms. Shelley Hebert of Stanford University (San Francisco consultation).

[41] The database of trademark registrations under the Madrid system for the international registration of marks, administered by WIPO, is available in CD-ROM (ROMARIN) form, which is updated every four weeks. The database of United States trademark registrations is available at http://www.uspto.gov/tmdb/index.html.   A database of Australian trademark registrations is available at http://pericles.ipaustralia.gov.au/atmoss/falcon.application-stard. More readable databases of trademark registrations are becoming available on the Internet.

[42] The United States White Paper recommended that trademark holders, domain name registrants and others should have access to "up-to-date, readily searchable domain name databases that contain information necessary to locate the domain name holder."

[43] See Comment of European Communities Trademark Association (November 4, 1998 - RFC-2); Comment of Amerian Intellectual Property Law Association (November 6, 1998 – RFC-2); Comment of International Trademark Association (November 6, 1998 – RFC-2). Comment of MARQUES (November 6, 1998 - RFC-2); Comment of Motion Picture Association of America (November 6, 1998 – RFC-2).

[44] See Comment of Mr. R.A. Reese (San Francisco consultation); Comment of Prof. Joel R. Reidenberg of Fordham University (October 30, 1998 - RFC-2).

[45] Comment of International Intellectual Property Alliance (November 6, 1998 - RFC-2).

[46] If for certain commercial and operational reasons, the data in question is held by different registration authorities, or at different levels in the chain of DNS authorities, it will be important to understand how comprehensive searches covering all relevant databases can practically be achieved. It is noted, in this connection, that Amendment No.11 to the Cooperation Agreement (No.NCR-9218742) between NSI and the United States Department of Commerce provides that, within 60 days after publication of WIPO’s "recommended characteristics of an enhanced searchable database containing domain name registration data, NSI will provide a report to the USG regarding how and under what conditions such a database might be designed and implemented in the gTLDs for which NSI now acts as the registry."

[47] See, for example, Comment of MARQUES (November 6, 1998 - RFC-2); Comment of Motion Picture Association of America (November 6, 1998 - RFC-2).

[48] For example, in NSI’s "Domain Name Registration Agreement" (Version Number 4.0), an applicant must warrant that the information submitted is "true and correct," and a breach of this warranty is deemed to "constitute a material breach" (paragraph K). Moreover, the applicant agrees that NSI may delete the domain name registration if the registration agreement "contains false or misleading information, or conceals or omits any information NSI would likely consider material to its decision to approve [the agreement]" (paragraph L).

[49] In support of cancellation by the registration authority was: Comment of Recording Industry Association of America (November 6, 1998 - RFC-2); Comment of Bell Atlantic (October 1, 1998 - RFC-2); Comment of Ms. Carol Smith of Infoseek (San Francisco consultation); Cf. Comment of Mr. Martin Schwimmer (November 11, 1998 - RFC-2).

[50] See the discussion in paragraphs 72 and 73 above, concerning the origin of the take-down procedure and a possible other application of such a procedure.

[51] See, for example, Comment of American Intellectual Property Law Association (November 6, 1998 – RFC-2); Comment of Domain Name Rights Coalition (November 6, 1998 – RFC-2).

[52] See, e.g., Lockheed Martin Corporation v. Network Solutions, Inc., 985 F. Supp.949, 968 (C.D. Cal. 1997) (court commented favorably on the use of directories, stating "[t]he solution to the current difficulties faced by trademark owners on the Internet lies in this sort of technical innovation, not in attempts to assert trademark rights over legitimate non-trademark uses of this important new means of communication").

[53] See Comment of American Intellectual Property Law Association (November 6, 1998 - RFC-2); Comment of Mr. Robert Connelly of Council of Registrars (CORE) (San Francisco consultation); Comment of Institute of Trade Mark Agents (November 3, 1998 - RFC-2); Comment of Mr. Ole Jacobsen of Cisco Systems (San Francisco consultation); Comment of Mr. Keith Gymer (Brussels consultation); Comment of Ms. Carol Smith of Infoseek (San Francisco consultation); Comment of Mr. Jonathan Moskin (November 6, 1998 - RFC-2).

[54] See, for example, http://www.scrabble.com.

[55] http://www.io.io.

[56] Comment of the Government of Hungary, Hungarian Patent Office, Ms. Margit Sümeghy (Budapest consultation); Comment of Fédération Internationale des Conseils en Propriété Industrielle (November 9, 1998 – RFC-2).