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

107.  As indicated in the previous Chapter, there is widespread support for the adoption of a number of practices in the administration of domain name registrations as a means of reducing friction between such registrations and intellectual property rights. There also appears to be widespread support, however, for the view that those practices should not interfere with the functionality of the DNS as a cheap, high-speed, high-volume system of obtaining an Internet address. For this reason, as mentioned previously, such measures as requiring registration authorities to search applications against previously registered trademarks, which might reduce friction even further, attracted little or no support.

108.  While the vast majority of domain names are registered in good faith for legitimate reasons, even with enhanced practices designed to reduce tension, disputes are inevitable. Not more than five years ago, before graphical Internet browsers became popular⁵⁷ and there was little or no commercial activity on the Internet, a trademark infringement stemming from the registration and use of a domain name was not regarded as a serious issue. As long as no significant business activity was taking place on the Internet, any potential for harm was offset by the near invisibility of the network – at least when compared to infringements in mainstream media such as television, the press and billboards. This changed, however, when business investments, advertising and other activities increased on the Internet, and companies began to realize the problems that may occur when a web site using their trademark as a domain name was operated without permission. Disputes now have become numerous, while mechanisms for their settlement, outside of litigation, are neither satisfactory nor sufficiently available.⁵⁸

109.  Intellectual property right owners have made it clear in their comments that they are incurring significant expenditures to protect and enforce their rights in relation to domain names.⁵⁹ Existing mechanisms for resolving conflicts between trademark owners and domain name holders are often viewed as expensive, cumbersome and ineffective. The sheer number of instances precludes many trademark owners from filing multiple suits in one or more national courts. Moreover, registration authorities have frequently been named as parties to the dispute in litigation, exposing them to potential liability and further complicating their task of running the domain name registration process.

110.  Disputes over domain name registrations and intellectual property rights present a number of special characteristics:

        (i) Because a domain name gives rise to a global presence, the dispute may be multijurisdictional in several senses. The global presence may give rise to alleged infringements in several jurisdictions, with the consequence that several different national courts may assert jurisdiction, or that several independent actions must be brought because separate intellectual property titles in different jurisdictions are concerned.

        (ii) Because of the number of gTLDs and ccTLDs and because each gives the same access to global presence, essentially the same dispute may manifest itself in many TLDs. This would be the case, for example, if a person sought and obtained abusive registrations in many TLDs of the same name which was the subject of corresponding trademark registrations held throughout the world by a third party. In order to deal with the problem, the intellectual property owner may need to undertake multiple court actions throughout the world.⁶⁰

        (iii) In view of the ease and speed with which a domain name registration may be obtained, and in view of the speed of communication on the Internet and the global access to the Internet that is possible, the need to resolve a domain name dispute may often be urgent.⁶¹

        (iv) A considerable disjunction exists between, on the one hand, the cost of obtaining a domain name registration, which is relatively cheap, and, on the other hand, the economic value of the damage that can be done as a result of such a registration and the cost to the intellectual property owner of remedying the situation through litigation, which may be slow and very expensive in some countries.

        (v) The registration authority has in many instances been joined in domain name disputes because of its role in the technical management of the domain name.⁶²

111.  Because of the special features of domain name disputes, considerable support has been expressed for the development of expeditious and inexpensive dispute-resolution procedures, which are comprehensive in the sense of providing a single means of resolving a dispute with multiple jurisdictional manifestations.⁶³ At the same time, discussions and consultations have revealed a natural level of discomfort in placing complete trust in a system which is new and which has the capacity to affect valued rights.⁶⁴ There has been, in consequence, in some quarters, a reluctance to abandon all possibilities of resort to litigation as a result of the adoption of new procedures, at least in the first stage before experience of a new system.

112.  In considering options for dispute resolution, therefore, the recommendations of the WIPO Process have been guided by the overall consideration of finding a balance between, on the one hand, the preservation of the long-tried right to seek redress through litigation, and, on the other hand, the desire to proceed to develop a workable system that can fairly, expeditiously and cheaply resolve the new type of disputes that arise as a consequence of the arrival of the Internet. Most specifically, the recommendations in this Chapter focus on the following areas:

Court Litigation

113.  Court litigation is governed by the civil law of sovereign States. The WIPO Process, which will result in recommendations to the private, not-for-profit corporation that will manage the DNS (ICANN), is not properly concerned with matters that fall within the purview of those civil laws, except in so far as those laws, in accordance with recognized international principles, leave open areas of choice.

114.  Preservation of the Right to Litigate. The first area of such choice, where the recommendations of the Process might have an influence, is the abandonment of the right to litigation in respect of a dispute, which is recognized in the majority of countries as the effect of agreeing to submit a dispute to arbitration. That effect of an arbitration agreement is recognized in the arbitration laws of countries and in the obligations assumed by more than one hundred countries by becoming party to the New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards of 1958 (the New York Convention).⁶⁵ If submission to arbitration by domain name applicants in respect of any dispute relating to the domain name registration were, for example, to be a requirement of the domain name registration agreement, the effect would be to require the domain name applicant to abandon the right to litigate such a dispute if called to arbitration by the other party to the dispute. As mentioned above, however, the discussions and consultations in the WIPO Process indicated considerable reluctance to subscribe to such a solution, at least in the initial stage of the new management of the DNS.⁶⁶

116.  Submission to Jurisdiction. A second area of choice, based on widely accepted principles, is the choice of submission to the jurisdiction of the courts in one or more locations for the resolution of a dispute. There was broad support amongst commentators for requiring the domain name applicant to exercise such a choice in the domain name registration agreement in order to create greater certainty in relation to the venue in which litigation can be brought, and in order to ensure a venue in a country in which intellectual property rights are respected.⁶⁷

117.  While a submission to jurisdiction can create greater certainty, it should not have the effect of imposing the exclusive possibility of litigation in venues that are perhaps remotely connected to the allegedly infringing activity that is taking place through a domain name or the location of the domain name applicant. Furthermore, a submission to jurisdiction by the domain name applicant should not inhibit a third party’s freedom to seek to obtain jurisdiction over a domain name holder in any location where there may be an independent and sufficient nexus to support local jurisdictional requirements. On this basis, an agreement to submit to jurisdiction in a domain registration agreement should be without prejudice to the possibility of establishing jurisdiction under normally applicable law and should not exclude that possibility. The effect of an agreement to submit to particular jurisdictions in the domain name registration agreement would thus be to forego the possibility of contesting the jurisdiction of courts in those locations over a dispute arising out of the domain name registration.

118.  The question arises as to which locations ought to be designated in the submission to jurisdiction by the domain name applicant in the domain name registration. Several possibilities have been mentioned in this respect, namely, the location of the registry, the location of the domain name database, the location of the registrar and the location of the "A" root server.⁶⁸ It is considered that the choice of appropriate venue should, on the one hand, strike the right balance between the interests of the domain name holder and any potential third party complainant, and, on the other hand, be consistent with fundamental concerns of fairness, which provide the foundation for existing jurisdictional principles. The venues that appear to satisfy best these considerations are: (i) the country of domicile of the domain name applicant; and (ii) the country where the registration authority is located, provided that these countries are either party to the Paris Convention for the Protection of Industrial Property (the Paris Convention)⁶⁹ or bound by the Agreement on the Trade-Related Aspects of Intellectual Property (the TRIPS Agreement).⁷⁰

Guiding Principles for the Design of an Alternative Dispute-Resolution (ADR) Policy

120.  While, as mentioned above, there appears to be a desire to preserve the right to litigate a domain name dispute, court litigation may have several limitations as a means of dealing with such disputes. In particular, because of the multijurisdictional character of many such disputes, court actions in several countries may be necessary in order to obtain an effective solution.⁷¹ In addition, in some countries, the court system suffers from disfunction, with the consequence that decisions cannot be obtained within a period of time which is commensurate with the speed with which damage can be done by virtue of an infringing domain name. As indicated above, the cost of litigation stands in stark contrast to the cost of obtaining a domain name registration. Finally, there is a possibility that, with a number of different courts in several countries being involved with domain name disputes, inconsistent decisions may be given or inconsistent principles concerning the relationship between domain names and intellectual property rights may emerge from such decisions.

121.  In addition to the perceived limitations of litigation, a number of commentators have expressed dissatisfaction with current dispute-resolution policies in the gTLDs. One of their important deficiencies results from their reliance on the ability of the parties to produce certain trademark certificates, without any review of the question of use of the domain name and alleged infringement. These policies are seen as not sufficiently allowing for the consideration of all legitimate rights and interests of the parties (which are not necessarily reflected in a trademark certificate), opening the door to unjust results, including for those who are not trademark owners.⁷² In light of these difficulties, commentators favor the adoption of ADR procedures more suited to the proper review and consideration of the rights and interests of all parties involved in a dispute.

122.  Taking into account these perceived limitations of litigation and current dispute-resolution policies, as well as the comments expressed in the WIPO Process concerning the desirable features of any ADR procedure, the recommendations that follow in the remaining part of this Chapter concerning ADR procedures have been based upon the following principles:

        (i) Any ADR procedure should permit the parties to resolve a dispute expeditiously and at a low cost, but should contain sufficient flexibility to enable the parties to make use of more extensive proceedings should they jointly agree to do so.

        (ii) ADR procedures should allow all relevant rights and interest of the parties to be considered and ensure due process or procedural fairness for all concerned parties.

        (iii) ADR procedures should be uniform or consistent across all open TLDs. If different procedures were available in different domains, there may be a danger of some domains, where procedures are weaker or do not lead to binding, enforceable decisions, becoming havens for abusive registrations. Uniform or consistent procedures, however, do not necessarily mean that the dispute-resolution service provider must be the same for all procedures.

        (iv) As indicated above, the availability of ADR procedures should not preclude resort to court litigation by a party. In particular, a party should be free to initiate litigation by filing a claim in a competent national court instead of initiating an ADR procedure, if this is the preferred course of action, and should be able to seek a de novo review of a dispute that has been the subject of an ADR procedure.

        (v) While it is desirable that the use of ADR procedures may lead to the construction of a body of consistent principles that may provide guidance for the future, the determinations of ADR procedures should not have (and cannot have) the effect of binding precedent in national courts. It would be up to the courts of each country to determine what weight they wish to attach to determinations made under the ADR procedures.

        (vi) In order to ensure the speedy resolution of disputes, the remedies available in an ADR procedure should be restricted to the status of the domain name registration itself and should not, thus, include monetary damages or rulings concerning the validity of trademarks.⁷³

        (vii) The determination resulting from an ADR procedure should, upon notification, be directly enforced by the relevant registration authority by making, if necessary, appropriate changes to the domain name database.

        (viii) Registration authorities should not be involved in the administration of ADR procedures,⁷⁴ other than by implementing determinations made in such procedures (and, perhaps, by supplying any requested factual information about the domain name registration to the dispute-resolution neutral or tribunal).⁷⁵

        (ix) A decision by a court of competent jurisdiction that is at variance with a determination resulting from an ADR procedure should prevail over the ADR determination.

123.  Based on these principles, the remaining part of this Chapter recommends that:

        (i) Mediation and arbitration, each of which is described and discussed, have a role and should be considered as valuable procedures for the resolution of domain name disputes. However, for different reasons in respect of each procedure, it is recommended that neither should be a mandatory part of a dispute-resolution policy for registration authorities. Rather, they should be available for parties to choose on an optional basis, where they consider the circumstances of a dispute appropriate for the use of such procedures.

        (ii) An administrative dispute-resolution procedure, modelled on the procedure of arbitration, but not having those features of arbitration that are perceived as being inappropriate in the context of a mandatory dispute-resolution policy, should be available in all open TLDs.

The Role of Mediation

124.  Mediation is an extension of direct negotiations between parties to a dispute in which a neutral third party acts as intermediary to facilitate those negotiations and assists in finding a solution that is satisfactory to both parties. It is a non-binding procedure in two senses: (i)  the parties are not obliged to remain engaged in the procedure, but may leave it at any stage; and (ii)  the mediator, as a facilitator, has no decision-making power and, thus, cannot impose a decision on the parties. Since mediation is not an adjudicative procedure, but a process for obtaining a negotiated settlement acceptable to both parties, there is no applicable law in accordance with which the dispute is decided. The parties are free to choose their own reference points for reaching a mutually acceptable solution, which, typically, will include their commercial interests, the legal merits of the case, and the cost of resort to other means of resolving the dispute.

125.  Mediation has undoubtedly some potential applications and advantages in the context of domain name disputes.⁷⁶ It is especially well-suited to domain name disputes which involve intractable legal issues. For example, there might be a domain name registration held by a person who owns an identical trademark in one country, while there is another party with an identical trademark registered in another country. Similarly, there might be a domain name consisting of the initials of the name of a corporation that is well-known in one country, while there is another corporation with the same initials to its name that is well-known in another country. In each of the foregoing situations, it is envisageable that each of the parties might bring a successful action in its own jurisdiction (that is, the jurisdiction in which it has a trademark registration or in which its business operations are located). The procedure of mediation may, in these circumstances, be an attractive way of resolving the dispute, since the process of facilitating negotiations can give rise to a creative solution which satisfies the commercial interests of both parties, but which cannot necessarily be imposed by law (for example, a gateway page shared by the parties could be agreed upon).

126.  There is a significant disadvantage, however, to mediation in the context of domain name disputes. It is a procedure that relies upon the good faith engagement of both parties for success. Since it is non-binding and either party can abandon the procedure at any stage, it is of little or no value in disputes concerning bad faith abusive registrations where it is unlikely that the holder of the abusive registration will cooperate.

127.  Given that the utility of mediation may be limited to good faith disputes where there are serious interests on each side, it is believed it would not be desirable to incorporate mediation as part of a mandatory dispute-resolution policy for domain name disputes. Mediation is always available for parties to choose, in the same way that they might choose to negotiate directly, without the assistance of a mediator, in order to find a solution to a dispute.

The Role of Arbitration

129.  Arbitration is a private adjudicatory procedure, modeled on court litigation, in which the arbitrator has the power to impose a binding decision on the parties in respect of the dispute submitted to arbitration. The procedure is conducted in accordance with procedural rules established by the dispute-resolution service provider (the arbitration center) and under the supervisory guidance of the courts in respect of the arbitration procedure and its relationship to the law.

130.  Arbitration takes place within a well-established international legal framework. Under that framework, the law recognizes the choice of parties to submit a dispute to arbitration as excluding the jurisdiction of the court in respect of the dispute. The arbitral award (the decision of the arbitrator) is not just binding, but also final, in the sense that the courts will not entertain an appeal on the merits of the dispute. Arbitral awards are enforceable relatively easily internationally by virtue of the New York Convention.

131.  In arbitration, the parties may choose the applicable law pursuant to which the merits of the dispute will be decided. Their freedom of choice may be limited by certain mandatory laws that cannot be excluded (for example, parties cannot exclude the application of criminal law that might be applicable). If the parties fail themselves to choose the applicable law, the arbitrator will designate and apply the appropriate applicable law. It is possible, even common, for several applicable laws to be applied depending on the circumstances of the dispute (for example, where several different national trademarks are in question, questions relating to those trademarks will be assessed in accordance with the respective national laws under which the trademarks have been registered).

132.  Arbitration has a number of distinct advantages in the context of domain name disputes. It provides a single procedure for resolving multijurisdictional disputes (as opposed to recourse to several different national court actions). It is a procedure that has been developed to be international, taking into account the various legal traditions around the world. It is also a procedure which offers the parties the choice of a neutral venue, language and law, so that neither is necessarily favored by familiarity with its own local laws, institutions and customs, as may be the case in national litigation involving a foreigner. Arbitration offers the parties more autonomy in the choice of procedures and laws, as well as in their choice of the arbitrator or decision-maker, than litigation. It also offers a comprehensive solution, in that the arbitrator is typically empowered to grant the interim and final remedies that are available under the law.

133.  In WIPO RFC-2, comments were requested on the desirability of making arbitration a mandatory feature of a dispute-resolution policy in the sense that domain name applicants would be required, in the domain name registration agreement, to submit to arbitration in respect of any disputes concerning the domain name if called upon to do so by a third party complainant. Commentators expressed three reservations concerning arbitration as a mandatory procedure.⁷⁷ First, the effect of arbitration in excluding resort to the courts was, as mentioned above, not generally favored. Secondly, the finality of the arbitration award caused hesitance. And thirdly, the normal feature of arbitration as a confidential procedure between the parties to a dispute in which the award is not published, unless the parties agree to such publication, was considered disadvantageous in the present context. It was felt that consistency in decision-making and the development of appropriate principles for the resolution of domain name disputes was of great importance and militated in favor of the publication of ADR decisions wherever possible.

135.  It is necessary, in a clause submitting to arbitration, to designate the procedural rules in accordance with which the arbitration will be conducted. The designation of such rules also determines who the administering authority or dispute-resolution service provider will be. In this respect, commentators expressed the view that, since one of the advantages of arbitration is the choice that it allows to parties, there should not be one exclusive dispute-resolution service provider. On the other hand, it is to be noted that there are well over one hundred arbitration centers around the world and, for the sake of providing some guidance to applicants, as well as for consistency in decision-making, it might be desirable to limit the available range of arbitration centers that may be designated in the domain name registration agreement to a selected list of dispute-resolution service providers. The choice of the institutions that would feature on that list is properly a subject for ICANN to decide. It is suggested that ICANN do so taking into account: (i)  the international character of the arbitration center, that is, whether it offers services for international or purely local disputes; (ii)  the rules of the arbitration center; (iii)  the quality of the list of neutrals or arbitrators maintained by the arbitration center and, in particular, whether it contains persons with appropriate experience in respect of domain names and intellectual property; and (iv)  the continuity of the arbitration center, in the sense that the center must be in existence at a later date when called upon to administer a dispute.

136.  Many domain name disputes may be capable of being resolved by reference only to documents, that is, it may often not be necessary to hear witnesses or to receive oral arguments in a physical hearing. This feature, coupled with the fact that domain name disputes arise out of the use of the Internet, make it appropriate to consider the possibility of conducting an arbitration procedure on-line. The features of an on-line system for dispute-resolution, and its advantages, are discussed below, where a positive recommendation is made for the consideration of the use of on-line facilities for the administrative dispute-resolution procedure.

137.  The same considerations concerning the possibilities of conducting an on-line procedure apply to arbitration. In particular, given that parties to a dispute may be located in different parts of the world, it is considered that an on-line procedure should also be particularly advantageous as a means of containing the costs of the dispute-resolution procedure in the context of arbitration.⁷⁸

A Recommended Administrative Dispute-Resolution Procedure

139.  The present section proposes that an administrative dispute-resolution procedure, which would include the advantages of arbitration while accommodating the reservations expressed about it, be adopted uniformly across open TLDs. It discusses the means of implementing such a procedure, its desirable features and the administration of the procedure.

140.  The administrative dispute-resolution procedure would be modeled on arbitration, in the sense that it would be an adjudicatory procedure where the neutral decision-maker appointed for the dispute would have the power to impose a binding decision on the parties. The procedure would allow for a neutral venue in the context of disputes that are often international in nature, and would be conducted in accordance with procedural rules laws which take account of the various legal procedural traditions around the world. It would allow for party participation in the selection of the neutral decision-maker. On the other hand, in contrast to arbitration, the procedure would not exclude the jurisdiction of the courts. A party would be able to pursue a claim in a national court, or seek the ruling of a national court on a dispute that had already been submitted to the administrative dispute-resolution procedure. It is to be hoped, however, that with experience and time, confidence will be built up in the credibility and consistency of decisions made under the procedure, so the parties would resort less and less to litigation. In contrast also to arbitration, the decisions taken under the procedure would be made available publicly.

141.  Uniform Availability of the Procedure. In order to be effective, it is believed that the procedure should be made available in respect of domain name disputes in all open TLDs.⁷⁹ In order to achieve that result, a policy to that effect would need to be adopted within the DNS. The means of implementation of such a policy would be the domain name registration agreement, which would contain a clause requiring the domain name applicant to submit to the administrative dispute-resolution procedure in respect of any dispute concerning the domain name. A third party complainant seeking to bring a claim against the domain name holder would have the choice of initiating national court litigation, calling the domain name holder to arbitration (if the domain name holder has chosen to submit to arbitration at its option in the domain name registration), or requiring the domain name holder to submit to the administrative dispute-resolution procedure.

143.  Mandatory Nature of the Procedure. In order for the procedure to be effective, it is believed that it must be mandatory in the sense that each domain name applicant would, in the domain name registration agreement, be required to submit to the procedure if a claim is initiated against it by a third party. If submission to the procedure were to be optional for applicants, it is doubtful that the adoption of the procedure would result in significant improvement on the present situation, since those persons who register domain names in bad faith in abuse of the intellectual property rights of others would be unlikely to choose to submit to a procedure that was cheaper and faster than litigation, but would instead prefer to leave the legitimate owners of intellectual property rights with the possibility only of initiating court litigation, with its attendant costs and delays. Unlike in the case of arbitration, however, parties dissatisfied with the results of the administrative procedure, including the domain name holder, would be free to seek a contrary decision from a court.

144.  It is recognized that, as has been observed by several commentators, questions may be raised in certain jurisdictions regarding the validity and enforceability of such a mandatory procedure, particularly in light of consumer protection laws, due process considerations and the fact that it purports to create rights for a party who is not privy to the domain name registration agreement. There are, however, sound public policies in favor of the administrative procedure. In the absence of enabling legislation, the most effective means to enhance the validity of the domain name holder’s submission to the procedure is to ensure that the legitimate interests of all parties are safeguarded, both in conclusion of the agreement and in the course of the proceedings. Primary responsibility in this respect would lie with the institution administering the procedure (the dispute-resolution service provider) and the neutral decision-maker called upon to decide the case.

146.  The Choice Between Restricted Competence or Competence for All Intellectual Property Disputes. Since the purpose of the procedure is to enable the efficient resolution of disputes arising out of the intersection of the domain name system and the intellectual property system, it seems clear that the procedure should be limited to disputes in which it is claimed that a domain name violates an intellectual property right.⁸⁰

147.  There is a division of opinion, however, on whether the procedure should, within the field of intellectual property, be restricted to cases of the abusive registration of domain names, such as "cyberpiracy" or "cybersquatting".⁸¹ Those commentators in support of such a restriction argued that an initial "go slow" approach would have the benefit of allowing the system to develop and mature over time.⁸² Other commentators, however, considered that any type of domain name dispute involving intellectual property rights, even one involving parties with legitimate competing interests, should fall within the scope of the procedure.⁸³ They suggested that any attempts to restrict the scope of claims in the administrative procedure and to distinguish between cases involving abuse and other cases would necessarily be artificial and would ultimately prove to be impractical and unworkable.

148.  Each approach has its advantages and disadvantages and it is unlikely that either will meet the demands of all. The advantages of the restrictive approach, limiting the procedure to claims involving alleged cases of the abusive registration of domain names, may be summarized as follows:

        (i) Developing standards to determine whether certain activity constitutes abusive registration of a domain name may be less onerous than devising standards to determine which party should prevail in cases where both parties have legitimate competing rights and interests.

        (ii) The determinations resulting from a procedure restricted to cases of abuse would be likely to have a considerable level of predictability, particularly in view of the trend in the case law in many jurisdictions regarding such cases.

        (iii) Cases involving instances of alleged abusive registration of domain names would not be likely to involve burdensome and complex factual and evidentiary investigations.

        (iv) If the procedures were restricted to cases of abusive registration of domain names, the chances may be improved that the administrative procedure would be truly swift, efficient, and inexpensive.

        (v) It is less likely that a losing party, in cases involving instances of abusive registration, would seek afterwards to initiate national court litigation in an attempt to obtain a judgement that would be contrary to, and overrule, the administrative decision. Minimizing the potential for court rulings that would effectively reverse determinations under the administrative procedure would enhance the credibility of the system.

149.  The advantages of allowing any claim of a violation of an intellectual property right in the administrative procedure may be summarized as follows:

        (i) Creating a forum providing quick and inexpensive procedures to be applied only in cases of abusive registration of domain names would, unfairly, leave all other disputes to the more expensive, often cumbersome and possibly remote fora of the national courts.

        (ii) The policy of the protection of intellectual property rights, which always involves questions of judgement about limits, would be better promoted under the broader approach as more cases could be handled through an administrative procedure that is simpler and more cost-effective than litigation, particularly in view of its built-in enforcement mechanism through the registration authorities.

        (iii) Restricting the scope of the procedure to cases of abusive registration of domain names would be likely to provoke argument and posturing regarding competence in the opening stages of each procedure that might compromise the efficiency of the entire process.

        (iv) If a party were of the view that its claim was not suited for the administrative procedure, the system in any event would permit that party to resort to litigation instead.

        (v) A losing party, even after the conclusion of the administrative procedure, would be free to initiate litigation in a national court. Moreover, should that party prevail in the courts, the ruling would override the administrative determination.

150.  While it is considered that both approaches should be the subject of further consultations and comments in the WIPO Process before a recommendation is made in the final report, the inclination, at this stage, is to recommend that the administrative dispute-resolution procedure should be available for resolving any disputes concerning the alleged violation of intellectual property rights through a domain name registration. This provisional position is founded on the basis that such an approach includes a solution for abusive registration of domain names while, at the same time, recognizing that the special features of domain name disputes—their multijurisdictional nature, their potentially disproportionate cost implications and the speed and efficiency with which they can inflict damage––are new problems arising out of the intersection of a global medium with a territorially based system that require a suitable solution.

152.  Procedural Rules. Court litigation and ADR procedures are conducted in accordance with procedural rules. The aim of such rules is twofold: (i)  to ensure due process or fairness in the conduct in the procedure so that each party has an equal and adequate opportunity to present its case; and (ii)  to inform the parties how the procedure will be conducted, what they will be required to do, when they will be required to do it and what the powers of the decision-maker are. Thus, procedural rules will deal typically with the documentation that the parties are expected to produce, the time limits within which they must produce it, who the decision-maker will be and how he or she will be appointed, what remedies may be granted by the decision-maker and who will supervise the administration of the procedures.

153.  The procedural rules for the recommended administrative dispute-resolution procedure should be international, in the sense that they take account of differing legal procedural traditions; simple to follow, since domain name applicants will be required to submit to them; and uniformly applicable, regardless of the dispute-resolution service provider that administers the procedure. A set of procedural rules has not, at this stage, been drafted, since it is necessary first of all to have agreement on the main features that the administrative dispute-resolution procedure should have. Thereafter, the procedural rules merely reflect those agreed features. In the ensuing section of this Chapter, therefore, the main features of the administrative dispute-resolution procedure are discussed and interim recommendations are made on those features, with a view to their eventual reflection in a set of procedural rules in an annex to the final report.

154.  Remedies Available under the Procedure. It is recognized that there is a general desire to have a simple and efficient procedure. Moreover, the mandatory requirement that applicants submit to the procedure demands that domain name applicants should be able to understand easily the potential consequences of their submission to the procedure.

155.  For these reasons, it seems appropriate that the remedies that could be awarded by the neutral decision-maker be limited to the status of the domain name registration itself and actions in respect of that registration.⁸⁴ In other words, monetary damages to compensate for any loss or injury incurred by the owner of an intellectual property as a result of a domain name registration should not be available under the procedure. Such a restrictive approach to remedies would underline the nature of the procedure as an administrative one, directed at the efficient administration of the DNS, which is intended to be complementary to other existing mechanisms, whether arbitration or court procedures. The approach would also accommodate the preferences of a number of commentators for an ADR procedure that was compatible with available judicial remedies.

156.  An approach in which remedies were limited to that status of the domain name registration would mean that the remedies available under the procedure would be the suspension of the domain name registration (as an interim measure pending the final determination), its cancellation and its transfer to the third party complainant. In addition, it would need to be decided whether remedies relating to the status of the domain name registration should extend to other measures that might remove the grounds of the dispute, such as an order that the domain name be modified, re-assigned to a different TLD or maintained with a gateway page or indexing mechanism.⁸⁵ Such other measures might affect the broader business interests and strategies of the parties involved in the dispute, and require careful consideration.

157.  The question of the initial payment of the costs of the proceedings is discussed below. The ultimate responsibility for the payment of costs is an important control mechanism in relation to the procedure. If the procedure were available at no cost, frivolous and groundless actions, or actions designed to harass a party, would be encouraged. Similarly, if responsibility for the payment of costs always rested with the complaining party, there would be no disincentive for a bad faith applicant to proceed to try its luck with an abusive registration of a domain name. It is considered, therefore, that the decision-maker should have the discretion, in the decision, to allocate responsibility for payment of the costs of the procedure (which are detailed below) to the winning party, after consideration of all the circumstances of the case. (This discretion would also allow the decision-maker to allocate the costs among the parties in accordance with some other appropriate apportionment.)⁸⁶

160.  Consolidation of Different Claims. A number of commentators indicated that one of the difficulties in dealing with domain name disputes was the sheer number of instances in which intellectual property rights may be allegedly violated. For example, the trademark "INTEL" might be the subject of an allegedly infringing registration of the domain name "INTLE," or "INTTEL," or any number of other minor variations producing the same phonetic result. The consequence is that, in order to protect effectively the mark, the owner is obliged to undertake a multiplicity of actions.⁸⁷

161.  One legal method for dealing with a multiplicity of similar actions is to permit the consolidation of such actions into one procedure. The question arises, however, as to the extent to which such consolidation should be permitted. Here, several points of reference could be considered in determining the scope of possible consolidation:

        (i) the consolidation of all actions brought by the same complainant in respect of domain name registrations held by the same holder in the same TLD that are alleged to infringe the same or different intellectual property rights;

        (ii) the consolidation of all actions brought by the same complainant in respect of domain name registrations held by the same holder in different TLDs that are alleged to infringe the same or different intellectual property rights; and

        (iii) the consolidation of all actions brought by the same complainant in respect of domain name registrations held by different holders in the same or different TLDs that are alleged to infringe the same or different intellectual property rights.

162.  It is considered that the administrative dispute-resolution procedure, should, in the interest of efficiency, permit consolidation to the extent of allowing claims in respect of the alleged infringement of the same or different intellectual property rights through different domain name registrations held by the same person in the same or different TLDs. However, it is not recommended that consolidation should be permitted in respect of claims against different holders of domain name registrations, even if it is alleged that the domain name registrations violate the same intellectual property right. Consolidation in this last sense could unduly complicate the administrative dispute-resolution proceedings by having multiple respondents, with different interests and different cases to present.

164.  Relationship with National Courts. The relationship between the proposed administrative procedure and the jurisdiction of the courts has been discussed in the previous sections of this Interim Report. The recommendations in this regard, reflecting widely held views among the commentators, are, for convenience, summarized in the next paragraph.

166.  Time Limitation for Bringing Claims. WIPO RFC-2 raised the question of whether it would be desirable, in cases where domain names have been registered and remained unchallenged for a certain period of time (e.g., five years), to bar completely the bringing of claims in respect of such domain names or to allow such claims to be brought only on narrow grounds. Some commentators are in favor of such measures, while others are not.⁸⁸

167.  It is considered that, while a time bar for claims may be a superficially attractive proposal, any implementation of such a measure would need to take into account that the underlying use of a domain name may evolve over time (with the consequence that the use of a domain name may become infringing through, for example, the offering of sale of goods of a different sort to those previously offered on the web site); that any related intellectual property rights held by the domain name holder may lapse; and that a time bar would in any event be undesirable in cases of bad faith.

169.  Length of Proceedings. Commentators universally viewed it as important that any ADR procedure for domain name disputes be capable of resolving disputes with speed and efficiency.⁸⁹ The nature of the Internet demands such characteristics of dispute resolution procedures. For example, an abusive registration of a domain name may block another, with the legitimate right, to presence on the Internet under that domain name in respect of a product that is about to be launched or an international event that is about to occur.⁹⁰ Similarly, the damage that is being done by an abusive registration of a domain name may be extensive by virtue of global access to which the registration gives rise, so that it becomes urgent to limit that damage.

170.  It is imperative, therefore, that the procedural rules for the administrative dispute-resolution procedure be designed so as to ensure that decisions are taken in a timely manner. Indeed, typical cases of clear abuse should be resolved within a matter of days or weeks. The next paragraph sets out for further comments interim recommendations of indicative time limits for such decisions.

172.  Appointment of Decision-Maker. The quality of decisions emerging from the administrative dispute-resolution procedure will depend in large part on the quality of the decision-makers appointed for cases. In this respect, the panel of neutral decision-makers maintained by dispute-resolution service providers will be an important reference point for the selection of those service providers that may be authorized by ICANN to administer the procedure. The panel should include persons having appropriate experience in domain names, intellectual property rights, litigation and ADR.

173.  It will need to be decided whether cases should be handled by a single decision-maker, or a panel of three persons. The advantage of a single decision-maker is the increased speed and efficiency with which the procedure can be conducted. The advantage of a panel of three decision-makers is the greater range of skill and experience that can be brought to bear on the issues in dispute. In view of the safeguards that are proposed in relation to the administrative dispute-resolution policy, particularly the possibility of recourse to court litigation, it is considered that the use of a single decision-maker would be more appropriate for this procedure.

175.  One of the advantages of ADR, as against court litigation, is the possibility of party participation in the choice of the decision-maker. The alternative to such party participation is that the decision-maker be appointed directly by the dispute-resolution service provider.

176.  It is believed that the interest of increasing confidence in the administrative dispute-resolution procedure militates in favor of designing an appointment procedure in which the parties to the dispute have the maximum possibility of participation. Where, as would normally be the case, a single decision-maker is to be appointed, the procedural rules could allow for such participation by providing for the decision-maker to be appointed:

177.  In the case where the parties agree on a three-person panel of decision-makers, party participation in the appointment of the panel could be provided for by allowing each party to nominate one decision-maker and by providing for those two decision-makers to appoint the third, presiding decision-maker. In the event that the two party-appointed decision-makers fail to agree on the appointment of the presiding decision-maker within a designated period of time, the presiding decision-maker would be appointed by use of the list procedure or, failing a result in this way, directly by the dispute-resolution service provider.⁹¹

179.  The Use of On-Line Facilities to Conduct the Procedure. The use of on-line facilities to conduct dispute-resolution procedures has been mentioned above in connection with arbitration. Most commentators expressed interest or enthusiasm in the use of such a system.⁹²

180.  The use of on-line facilities in the context of domain name disputes seems particularly appropriate for the following reasons:

        (i) The Internet has created new opportunities for parties to communicate and to engage in transactions at great distance. At the same time, the potential for disputes arising out of such communications or transactions between parties that are physically remote from each other has been increased. On-line facilities can eliminate the barrier of distance.

        (ii) Speed is equal to distance divided by time. The elimination of the barrier of distance by the Internet and the use of the Internet as the medium for resolving disputes will increase the speed with which the dispute-resolution process can be conducted.

        (iii) Since the dispute concerns domain names, assumptions can be made about the parties to the dispute having the requisite technical facilities to participate in the on-line resolution of the dispute.

        (iv) Some parties involved in domain name disputes may not have had significant exposure to legal proceedings and their attendant formalities. Enabling parties to initiate a claim (or to respond thereto) by accessing a web site and completing electronic forms which guide them through the various stages of the process may be expected to reduce entry barriers to the administrative dispute-resolution procedure and make that procedure more accessible.

181.  Several dispute-resolution service providers are working on the development of on-line systems for administering dispute resolution, as well as courts in a number of countries. The WIPO Arbitration and Mediation Center has developed such an on-line system, which is Internet-based. Digital communications tools have been designed to allow the parties to file requests by completing electronic forms and to exchange information on-line through secure channels. The parties and the decision-maker are able to communicate electronically also through audio and video facilities, where these are available to them. The system also includes such functions as automatic notifications, an electronic fee system, secure facilities for the on-line exchange and reading of documents, and back-end databases to support the logging and archiving of submissions.

183.  Enforcement and Publication of Determinations. Commentators in favor of an ADR policy for the resolution of domain name disputes universally supported the need for the determinations of the dispute-resolution procedure to be directly enforced.⁹³ The possibility of such direct enforcement exists through the registration authorities and, indeed, constitutes one of the major reasons why an administrative dispute-resolution procedure could be made workable and efficient in respect of domain name disputes.

184.  In order to implement the direct enforcement of determinations by registration authorities, it would be necessary to ensure that registration authorities agree to do so in the chain of contractual authorities from ICANN. In addition, it would be desirable to make explicit in the domain name registration agreement that the domain name applicant agrees, in submitting to the administrative dispute-resolution procedure, to the direct enforcement by registration authorities of any determination made in the procedure.

185.  Direct enforcement of determinations by registration authorities would, however, be subject to a contrary order from a court of competent jurisdiction. It is suggested that the determinations made under the administrative dispute-resolution procedure should take immediate effect and continue to have such effect, unless and until a contrary order is given to the registration authority by such a court of competent jurisdiction.

186.  Several commentators were of the view that efforts should be made to promote the development of a body of persuasive precedents concerning domain name disputes through the administrative dispute-resolution procedure. It was considered that such a body of precedents would enhance the predictability of the dispute-resolution system and contribute to the development of a coherent framework for domain names.⁹⁴ To this end, it would be desirable that all determinations resulting from the administrative dispute-resolution process be made publicly available by being posted on a web site.

188.  Appeals. A number of commentators were in favor of incorporating appeal procedures in the administrative mechanism, while others were not. As the administrative system in any event would allow the parties to resort to the national courts after the issuance of a determination, an appeal procedure might be viewed as redundant and unnecessarily complicated for a procedure that is meant to be as streamlined and efficient as possible. On the other hand, to the extent that more than one dispute-resolution service provider might be administering domain name disputes under the administrative procedure, and in view of the related risk of inconsistent determinations, the adoption of a centralized appeal process whereby the appeals would be heard by a single designated service provider might be a useful model.

190.  Costs. The administrative dispute-resolution procedure will entail the payment of the following costs: (i) an administration fee to be paid to the institution administering the process (the dispute-resolution service provider); (ii)  the fee to be paid to the decision-maker; and (iii)  the expenses that may be incurred in relation to the proceedings (e.g., telecommunication charges, etc.).

191.  The decision-maker’s fee will be the most significant cost component. It is imperative for the quality of the determinations resulting from the process that the decision-makers have the required degree of expertise and experience. Furthermore, it is important to engage the decision-maker’s professional responsibility as he or she will be taking important decisions affecting the rights and interests of the parties.

192.  It is suggested that the administration and decision-maker’s fees should be set freely by the dispute-resolution service providers that may be mandated to administer the procedure. Allowing the institutions to set their own rates should stimulate competition and ultimately benefit the public.

193.  In general, in ADR proceedings, parties are normally expected to advance an equal share of the anticipated costs of the proceedings. This practice may not be the most appropriate approach, however, for the administrative dispute-resolution procedure. Under this procedure, the domain name holder would submit to the procedure through a standard clause in the domain name registration agreement. It may be difficult in these circumstances to require the holder to advance, at the outset of the procedure, what may be viewed as a substantial sum of money. It is, therefore, proposed that the third party complainant should be required to pay the initial administration fee, as well as the full advance payment of the fees of the decision-maker and any anticipated expenses. However, as recommended above, the decision-maker would have discretion, in the determination, to decide on the allocation of these costs of the procedure among the parties in the light of all the circumstances of the dispute and the result.

195.  Dispute-Resolution Service Providers. Similarly to arbitration, it would be necessary to designate, in the clause providing for submission to the administrative dispute-resolution procedure in the domain name registration agreement, the administering authority or dispute-resolution service provider. Consistently with the recommendation made in this respect in relation to arbitration, it is suggested that a selected list of dispute-resolution service providers be designated in the domain name registration agreement for the applicant to choose from. The institutions to feature on such a list could be chosen by ICANN on the basis of: (i)  the international character of the institution; (ii)  the quality of the list of neutrals or decision-makers maintained by the institution and, in particular, whether it contains persons with appropriate experience in respect of domain names, intellectual property and technical matters concerning the Internet; (iii)  the likelihood that the institution will continue to be available to offer its services; and (iv)  the facilities that the institution provides for the on-line administration of disputes.

196.  Applicable Law or Rules Governing the Merits of the Dispute. It will be necessary to decide the substantive applicable law on the basis of which any disputes submitted to the administrative dispute-resolution procedure will be decided. Here, two approaches seem possible. First, it could be left to the decision-maker in any particular case to decide, on the basis of the circumstances of the case, which law or laws should be applied in determining the result. Thus, for example, if the allegedly infringing activity was taking place in one particular jurisdiction and the complainant held a trademark registration in that jurisdiction, the decision-maker would apply the law of that jurisdiction in determining the result. In many cases, however, because of the global nature of the Internet, it may be expected that infringing activity may take place in several jurisdictions, and that several laws will be potentially applicable. Accordingly, a second approach to the question would be to develop a set of principles which represented a distillation of the dominant approaches that have been adopted by national courts, and which could be used by a decision-maker as guidance for determining the result. Such a set of principles would also have the advantage of setting out relatively clearly and simply for domain name applicants the main considerations that govern the use of domain names in relation to intellectual property.

197.  It is believed that a combination of the two approaches is the most appropriate. In other words, a decision-maker will, in the light of the circumstances of a particular case, make reference to the applicable laws that those circumstances indicate need to be considered, and will also refer, for guidance, to a set of principles that summarize the main considerations that national courts have taken into account. In this way, the administrative dispute-resolution procedure may develop in a way that accommodates both developments in case law in national courts and the principles being applied within the administrative dispute-resolution system.

199.  Guiding Principles. Review of the cases which have been decided in national courts concerning domain names and intellectual property rights indicates that seven principles can be identified which could serve as a basis of reference for decision-makers in reaching decisions. These principles are:

        (i) The rights and interests of the parties. These would include not only intellectual property rights that the parties may have in, or in relation to, the name, but also any other rights and interests.⁹⁵

        (ii) The use of the domain name. Relevant questions here are whether the holder is actually using the domain name, and, if so, any goods, services or purposes in connection with which the domain name is being used; whether such use is commercial or non-commercial, or relates to public service; the extent of public recognition of the domain name; and the contents of the web pages or e-mail messages associated with the domain name. The intended use of the domain name by the third party complainant would also be taken into consideration and balanced against the interests of the domain name holder.⁹⁶

        (iii) The length of time of registration. If the domain name has been registered and used by the domain name holder for a considerable period, and the third party complainant has waited for a long time before disputing the domain name, this could affect the outcome of the case.

        (iv) The nature of the top-level domain in which the domain name is registered. This factor could have a bearing on the resolution of the dispute, although the gTLDs as they currently exist are not sufficiently differentiated (nor in practice are registrations differentially made by users) for this to become an important factor in the immediate future.

        (v) Abusive Registration of the Domain Name. The definition of what might constitute an abusive registration of a domain name is discussed in the next Chapter. The issues identified in that discussion would be taken into account here and any indications that the domain name was registered abusively would be a ground for decision.

        (vi) Identical or confusingly similar. It should be considered whether the domain name is identical or confusingly similar to the intellectual property right asserted in the claim, or whether any use of the domain name either avoids or compounds any such confusion.⁹⁷

        (vii) First-come, first-served principle. This principle reflects the accepted current practice for registering domain names and would remain an important factor to be weighed, of particular relevance in cases where no clear outcome is likely to follow from an application of the previous factors.⁹⁸

200.  The foregoing principles could be left as such or further elaborated into a set of more detailed guidelines for decision-makers. It is clear that, in either case, they would need to be subject to regular review and appropriate adjustment over time, on the basis of experience gained in the administrative dispute-resolution system.

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Footnotes

[57] Netscape Communications Corporation, which provided the first widely used commercial Internet browser, was founded in April 1994 by Dr. James H. Clark and Marc Andreessen, who created the NCSA Mosaic software whose graphical user interface simplified Internet navigation (see http://home.netscape.com/company/about/backgrounder.html#market).

[58] See the discussion in Chapter 5.

[59] See 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 Ms. Anne Gundelfinger of Intel (San Francisco consultation); Comment of Ms. Susan Anthony of MCI Worldcom (Washington consultation); Comment of Mr. Gregory Phillips of Johnson & Hatch for Porsche (San Francisco consultation); Comment of Viacom (October 1, 1998 - RFC-2); Comment of Mr. Nils Montan of Warner Bros. (San Francisco consultation).

[60] In order to avoid this possibility, a number of significant trademark owners have registered their mark as a domain name in many TLDs around the world. The cost of so doing is relatively inexpensive (under 10,000 US$) but the practice has been criticized by some commentators in the WIPO Process as unnecessarily clogging the name space.

[61] This may be particularly true in view of the possible increased popularity of the connected web site and the tendency of users to cache, bookmark and hypertextlink frequently used Internet addresses.

[62] Cf. Lockheed Martin, 985 F. Supp.at 967 (Network Solutions, Inc. (NSI) was joined as defendant because it had registered the domain names in question. The court found that NSI was not liable, inter alia, because its acceptance of domain name registrations "is connected with their technical function to designate computers on the Internet, not with their trademark function to identify the source or goods and services").

[63] See Comment of American Intellectual Property Law Association (November 6, 1998 - RFC-2); Comment of International Intellectual Property Alliance (November 6, 1998 - RFC-2).

[64] See Comment of the Government of Hungary, Hungarian Patent Office, Ms. Margit Sümeghy (Budapest consultation); Comment of Mr. Griffith Price of American Intellectual Property Law Association (Washington consultation); Comment of Ms. Anne Gundelfinger of Intel (San Francisco consultation).

[65] This list of contracting States to the New York Convention is available on the website of the United Nations, http://www.un.org.

[66] See Comment of European Community and its Member States (November 3, 1998 - RFC-2); Comment of the Government of Hungary, Hungarian Patent Office, Ms. Margit Sümeghy (Budapest consultation); Comment of American Intellectual Property Law Association (November 6, 1998 - RFC-2); Comment of Ms. Anne Gundelfinger of Intel (San Francisco consultation).

[67] See, for example, Comment of Mr. Gregory Phillips of Johnson & Hatch for Porsche (San Francisco consultation).

[68] Cf. the United States White Paper, which recommended that domain name holders should "agree to submit infringing domain names to the jurisdiction of a court where the "A" root server is maintained, where the registry is domiciled, where the registry database is maintained, or where the registrar is domiciled."

[69] The list of States party to the Paris Convention is given in Annex IV.

[70] The list of States party to the World Trade Organization (WTO) and bound by the TRIPS Agreement is given in Annex V.

[71] See Comment of Fédération Internationale des Conseils en Propriété Industrielle (November 9, 1998 - RFC-2); Comment of Mr. Griffith Price of American Intellectual Property Law Association (Washington consultation); Comment of Mr. Gregory Phillips of Johnson & Hatch for Porsche (San Francisco consultation).

[72] See Comment of MARQUES (November 6, 1998 - RFC-2); Comment of Domain Name Rights Coalition (November 6, 1998 - RFC-2); Comment of Electronic Frontier Foundation (November 6, 1998 – RFC-2); Comment of Mr. Scott Evans of International Trademark Association (Washington consultation).

[73] See Comment of the Government of Sweden, National Post and Telecom Agency (November 6, 1998 - RFC-2); Comment of Mr. Nils Montan of Warner Bros. (San Francisco consultation).

[74] See Comment of European Community and its Member States (November 3, 1998 - RFC-2); Comment of American Intellectual Property Law Association (November 6, 1998 - RFC-2); Comment of Fédération Internationale des Conseils en Propriété Industrielle (November 9, 1998 - RFC-2); Comment of Mr. Abril I. Abril (Brussels consultation); Comment of Dr. Willie Black of Nominet UK (Brussels consultation); Comment of Mr. Pavan Duggal (Hyderabad consultation); Comment of Ms. Ellen Rony (San Francisco consultation).

[75] RFC 1591, Section 4 (1), provides that in "case of dispute between domain name registrants as to the rights to a particular name, the registration authority shall have no role or responsibility other than to provide the contact information to both parties."

[76] See, for example, Comment of Ms. Susan Anthony of MCI Worldcom (Washington consultation).

[77] See Comment of the Government of Switzerland, Swiss Federal Institute of Intellectual Property (November 4, 1998 – RFC-2); Comment of Mr. Griffith Price of American Intellectual Property Law Association (Washington consultation); Comment of The New Zealand Internet Registry (Domainz) (November 18, 1998 - RFC-2).

[78] See Comment of Fédération Internationale des Conseils en Propriété Industrielle (November 9, 1998 – RFC-2); Comment of Mr. Pavan Duggal (Hyderabad consultation).

[79] See Comment of the Government of the Russian Federation, Russian Agency for Patents and Trademarks (Rospatent) (November 2, 1998 - RFC-2); Comment of the Government of Sweden, Swedish Patent Office (November 6, 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 Bell Atlantic (October 1, 1998 - RFC-2).

[80] Article 2(viii) of the Convention Establishing the World Intellectual Property Organization, to which 171 States are party, contains the following definition of intellectual property:

        "(viii) ‘intellectual property’ shall include the rights relating to:
                – literary, artistic and scientific works,
                – performances of performing artists, phonograms and broadcasts,
                – inventions in all fields of human endeavor,
                – scientific discoveries,
                – industrial designs,
                – trademarks, service marks, and commercial names and designations,
                – protection against unfair competition,

and all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields."

[81] The United States Government in the White Paper (section 8) contained the following passage:

"whatever dispute resolution mechanism is put in place by the new corporation, that mechanism should be directed toward disputes about cybersquatting and cyberpiracy and not to settling the disputes between two parties with legitimate competing interests in a particular mark. Where legitimate competing rights are concerned, disputes are rightly settled in an appropriate court."

[82] See Comment of Domain Name Rights Coalition (November 6, 1998 - RFC-2); Comment of International Trademark Association (November 6, 1998 - RFC-2).

[83] 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 of the Government of the Russian Federation, Russian Agency for Patents and Trademarks (Rospatent) (November 2, 1998 - RFC-2); Comment of American Intellectual Property Law Association (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 Internet Industry Association of Australia (November 6, 1998 - RFC-2); Comment of MARQUES (November 6, 1998 - RFC-2).

[84] See Comment of the Government of Sweden, National Post and Telecom Agency (November 6, 1998 – RFC 2); Comment of Mr. Nils Montan of Warner Bros. (San Francisco consultation)

[85] Cf., Conseil d’Etat, Section du rapport et des études, Internet et les Réseaux Numériques, study adopted by l’Assemblée Générale du Conseil d’Etat on July 2, 1998, p.11, para. 2.4, in which the French Conseil d’État suggested that a decision-maker should have the power to impose a solution that might make use of such measures.

[86] It is a standard feature in the rules of international dispute-resolution service providers that the decision-maker is vested with discretion to apportion costs between the parties in the light of the circumstances and the outcome of the dispute.

[87] See Comment of Ms. Anne Gundelfinger of Intel (San Francisco consultation); Comment of International Intellectual Property Alliance (November 6, 1998 - RFC-2); Comment of Ms. Shelley Hebert of Stanford University (San Francisco consultation); Comment of Ms. Sarah Deutsch of Bell Atlantic (Washington consultation); Comment of Mr. Abril I. Abril (Brussels consultation); Comment of Ms. Ellen Rony (San Francisco consultation).

[88] See Comment of European Community and its Member States (November 3, 1998 - RFC-2); Comment of the Government of Singapore, Ministry of Law (August 20, 1998 - RFC-1).

[89] See Comment of Ms. Sarah Deutsch of Bell Atlantic (Washington consultation); Comment of Mr. Neil Smith of Limbach & Limbach (San Francisco consultation).

[90] See Comment of Motion Picture Association of America (November 6, 1998 - RFC-2); Comment of Viacom (October 1, 1998 - RFC-2).

[91] These proposed procedures reflect well-established methods of appointment reflected in the rules of numerous ADR dispute-resolution service providers.

[92] See, for example, Comment of European Community and its Member States (November 3, 1998 – RFC-2); Comment of the Government of Switzerland, Swiss Federal Institute of Intellectual Property, Switzerland (November 4, 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 Mr. Pavan Duggal (Hyderabad consultation). In the United States White Paper (Section 8), it was also noted that most commentators in that process "favored creation of an on-line dispute resolution mechanism to provide inexpensive and efficient alternatives to litigation for resolving disputes between trademark owners and domain name registrants."

[93] See, for example, Comment of Institute of Trade Mark Agents (November 3, 1998 - RFC-2).

[94] See Comment of American Intellectual Property Law Association (November 6, 1998 - RFC-2); Comment of Mr. Gregory Phillips of Johnson & Hatch for Porsche (San Francisco consultation).

[95] See e.g.,Pitman Training, Ltd.v. Nominet UK, [1997] F.S.R. 797 (see http://www.open.gov.uk/lcd/scott.htm) (court weighed the competing interests of two companies legitimately trading under the name "Pitman" in a dispute over the rights to the domain name pitman.co.uk. The domain name was reassigned to the original owner in view of the "first-come, first-served" principle); Alice c/Alice, (TGI de Paris, Ord. Référé, March 12, 1998) (see http://www.legalis.net/legalnet/judiciaire/decisions/ord_120398.htm)
(in a conflict between the holder of a domain name who also had an independent right in the name and the owner of a trademark registered at an earlier time, the tribunal decided in favor of the trademark owner, thus not following the first-come, first-served principle); Planned Parenthood Federation of America, Inc., v. Richard Bucci, d/b/a Catholic Radio, 1997 U.S. Dist.LEXIS 3338 (1997) (where defendant registered a domain name very similar to the trademark of Planned Parenthood and used the site primarily to criticize or make political statements, the court balanced the interests in protection of free speech against the likelihood of confusion arising from the use of the domain name, before granting an injunction to enjoin use of the domain name).

[96] Panavision International, L.P. v. Toeppen, No. 97-55467 (9^th Cir. April 1998) (Court of Appeals determined that registering trademarks as domain names and attempting to sell them constitutes `commercial use’ under United States law); Pitman Training, Ltd. v. Nominet UK. [1997] F.S.R. 797 (see http://www.open.gov.uk/lcd/scott.htm) (court found that, in light of the facts in that case, use of the domain name was insufficient to establish a passing off action); Interstellar Starship Services, Ltd. v. Epix, Inc., Civ. No. 97-107-FR (D.Or.1997) (see http://www.bna.com/e-law/cases/epix.html) (court found that in the absence of a risk of confusion, use of the domain name "epix.com" did not infringe the registered trademark "EPIX") ; Toy R’Us, Inc. v. Eli Abir and Web Site Management,1997 U.S.Dist. LEXIS 22431 (1997) (court granted an injunction to prevent the defendant's use of the domain name toysareus.com, including to solicit international business or seeking to sell the domain name to foreign purchasers for use in foreign markets, on the grounds of infringement of a famous trademark); Epson, District Court of Dusseldorf (34 191/96, April 4, 1997) (court held that even though the person had not used the domain name "epson.de" for e-mail or web page, there was a concrete threat that he would do so later, and stated that to establish a likelihood of confusion it was irrelevant what kind of products or services were offered on the web site; the products to be compared were the web sites as such, regardless of the content of the web site).

[97] Sté Coopérative Agricole Champagne Céréales c/ J.G, (TGI de Versailles, Ord. Référé., April 14, 1998) (see http://www.legalis.net/legalnet/judiciaire/tgi_versailles_0498.htm)   (Tribunal Found that the use of the dénomination sociale of a company by another individual working in the same area created a risk of confusion); Commune d’Elancourt c/ Loic L.,TGI de Versailles, Ord.Référé, October 22, 1998, (see http://www.legalis.net/legalnet/judiciaire/decisions/ord_221098.htm) (Tribunal found that a site named "Elancourt Bienvenue à Elancourt" created confusion with the site of the city of Elancourt "Ville d’Elancourt", and ordered the individual to stop using the former denomination); Heidelberg, Munich District Court, 1996 CR 353 (court, in a conflict concerning the domain name "heidelberg.de" between the City of Heidelberg and a computer company providing a web site containing information on the City of Heidelberg, stated that the computer company ’use of the name would harm the interest of the city of Heidelberg because most Internet users would associate the site with the city; the fact that the city of Heidelberg could use a different domain name was considered irrelevant since the computer company has no right to the name "Heidelberg" in a first place); Tractebel, T.Co de Bruxelles, June 6, 1997, (where the domain name coincided with the name of the company "Tractebel," the Tribunal ruled that it would not deprive the domain name holder of his rights in the domain name) (decision on appeal).

[98] Pitman Training, Ltd. v. Nominet UK, [1997] F.S.R. 797 (see http://www.open.gov.uk/lcd/scott.htm)   (two companies trading under the name 'Pitman' disputed rights to the domain name pitman.co.uk, which had been originally assigned to Pitman Publishing, but erroneously reassigned to Pitman Training/PTC. The domain name was reassigned to the original owners in view of the 'first-come, first-served' principle).