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

202.  Fame brings with it attention in many forms, amongst them imitation, by those who wish to benefit from its perceived advantages; association, on the part of those who wish to share in its perceived benefits; and criticism, by those who wish to question the status given to the one who enjoys fame. Not surprisingly, therefore, on the open and efficient medium of communication that the Internet is, fame attracts attention and provokes various forms of reactions.

203.  In the commercial area, fame is most often manifested in reputation, and reputation is most often attached to the expression of identity of the enterprise: its trademarks. Famous and well-known marks have been the special target of a variety of predatory and parasitical practices on the Internet. Several terms have been coined to describe these practices: "cybersquatting," where a person registers as a domain name the mark, often famous or well-known, of another, taking advantage of the registration practice of first-come first-served, in the hope of either blocking the owner of the mark from using the mark as a domain name, or being able to sell the domain name registration to the owner in return for a healthy premium that is nevertheless less than the amount that the owner would need to spend in litigation to remove the cybersquatter; and "warehousing," where a person registers many such marks as domain names, thus hoarding up a digital collection of marks that can be offered for sale.

204.  Because of the special attention that fame attracts, famous and well-known marks have for a long time been considered in intellectual property laws to warrant special protection, over and above that accorded to other, ordinary marks. That special protection is so well established that it is the subject of international agreement on the multilateral level.

International Protection of Famous and Well-known Marks

205.  The special protection of famous and well-known marks is recognized in two multilateral treaties: the Paris Convention for the Protection of Industrial Property (the Paris Convention), to which 151 States are party,⁹⁹ and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), by which 133 States are bound.¹⁰⁰

206.  The protection of famous and well-known marks in the Paris Convention is provided for in Article 6bis, section (1) of which provides as follows:

207.  Four features of the protection provided for in Article 6bis of the Paris Convention may be noted:

        (i) The protection accorded to famous and well-known marks is a protection against the registration and use of a trademark that constitutes a reproduction, imitation or translation, liable to create confusion, of a well-known or famous mark or an essential part of such a mark.

        (ii) The protection in Article 6bis extends only to trademarks, that is marks that are used in respect of goods, and does not extend to service marks which are used in respect of services. By virtue of the Trademark Law Treaty (TLT), however, the provisions of the Paris Convention relating to trademarks are extended to service marks.¹⁰² The TLT was concluded only in 1994 and, while an increasing number of States are manifesting their interest in becoming party to the TLT,¹⁰³ at the present date only 21 States are party to the TLT.

        (iii) The protection extends to registration or use in respect of identical or similar goods. This feature is usually known as the "principle of specialty," a principle of trademark law under which protection for a trademark extends only to the same or similar goods as are covered by the registration or use of the trademark.

        (iv) Article 6bis is silent on what constitutes a well-known mark. The appreciation of whether a mark is well known is left to the "competent authority" of the country where the illegitimate registration or use occurs.

208.  The provisions of Article 6bis of the Paris Convention are confirmed and extended by the TRIPS Agreement. Article 16.2 and 16.3 contain the following provisions:

209.  Three features of Article 16.2 and 16.3 of the TRIPS Agreement may be noted:

        (i) Article 16.2 builds on the work of the TLT in extending the protection of Article 6bis of the Paris Convention to famous and well-known service marks.

        (ii) Article 16.2 of the TRIPS Agreement provides a non-exhaustive guide to the competent authorities of countries in appreciating whether a mark is well known. In this respect it provides that, in "determining whether a trademark is well known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark."

        (iii) Article 16.3 of the TRIPS Agreement provides for protection that extends beyond the normal protection under the principle of specialty. It provides for the protection under Article 6bis of the Paris Convention to apply to goods and services which are not similar to those in respect of which a trademark is registered on two conditions: first, that the use of the allegedly infringing mark in relation to those other goods or services would indicate a connection between those other goods or services and the owner of the famous mark, and, secondly, that the interests of the owner of the famous mark are likely to be damaged by such use. This extended protection reflects a distinction that is made in many national laws between, on the one hand, famous marks, which represent that class of well-known marks that are so famous that they require protection against infringing use in respect of any goods or services, and well-known marks, which require protection against infringing use in respect of the same or similar goods or services for which the well-known mark is registered or used. The terminology and practice relating to this distinction differs somewhat around the world.¹⁰⁴ For this reason, in this Chapter, except where a distinction is deliberately made, the collective term "famous and well-known marks" is used, since it is in any case agreed that well-known marks are the subject of a special form of international protection.

The Implementation of Protection for Famous and Well-known Marks in Cyberspace

210.  In considering how the international protection for famous and well-known marks can be given expression in respect of domain names, there are four areas of conceptual difficulty that need to be borne in mind.

211.  First, it is to be noted that the provisions of the Paris Conventions and the TRIPS Agreement are directed at the protection of famous or well-known marks against the registration or use of other infringing marks. Domain names, of course, are not the same thing as marks and are used for many purposes other than the identification of a producer or seller of goods or services. They are, however, also used as a means of identifying goods and services with the producer or seller of those goods and services.

212.  Secondly, the protection of famous and well-known marks under the Paris Convention and the TRIPS Agreement extends to those countries where the competent authority considers that the mark is famous or well-known. Where is where in a gTLD?

213.  Thirdly, while there is an international obligation to accord protection to famous and well-known marks, there is not an established treaty definition of what constitutes such a mark. It is left to the appreciation of the competent authority in the country where protection is asserted. As noted, however, Article 16.2 of the TRIPS Agreement provides some guidance as to the criteria that such a competent authority must take into account in forming its appreciation. In addition, such criteria have been developed in national case-law and regulatory practices and decisions around the world.

214.  Fourthly, while the protection of famous marks has increasingly been implemented at the national level by laws directed at prohibiting any use of famous marks by third parties that dilutes the integrity and reputation of such marks, the protection of well-known marks exists often only in respect of the registration or use of a confusingly similar mark in relation to the same goods or services as those for which the well-known mark is registered or used. At the present time, the gTLDs are largely undifferentiated. Insofar as some differentiation does exist, there is no enforcement mechanism to ensure that those who have registered domain names in open gTLDs confine their use of the domain name to the broad purposes of the gTLD.¹⁰⁵ Thus, one can have a domain name registered in .com without undertaking any commercial activity, or a domain name registered in .net, while undertaking commercial activity that is completely unrelated to the provision of Internet services. There is a lack of connection between the underlying theoretical foundations of differentiation in the registration and use of trademarks and differentiation in the registration and use of domain names, since differentiation is intended to serve a different purpose in each case.

215.  In considering how the foregoing problems may be tackled while giving expression to the international protection that already exists for famous and well-known marks, the ensuing part of this Chapter addresses three mechanisms which were discussed in the comments and consultations with respect to WIPO RFC-2:

        (i) a mechanism for obtaining and enforcing an exclusion of the use of a famous or well-known mark in open TLDs;

        (ii) an evidentiary device for ensuring that the protection afforded by an exclusion can be extended to confusingly similar, as well as the same, domain name registrations; and

        (iii) the recognition of the abusive registration of a domain name as a ground for the cancellation or transfer of such a registration.

Mechanism for Exclusion of Famous and Well-known Marks in Open TLDS

216.  WIPO RFC-2 requested comments on the desirability of implementing a mechanism whereby exclusions could be obtained and enforced for famous and well-known marks in open TLDs. Such a mechanism has been under discussion internationally for some time.¹⁰⁶ Certain trademark owners expressed themselves to be strongly in favor of the implementation of such a mechanism.¹⁰⁷ Some others expressed reservations about the extent to which the implementation of such a mechanism would encumber the domain name space¹⁰⁸ and grant preferential treatment to one class of user of the domain name space. In relation to the latter, very legitimate concerns, it should be remembered that a small number of names is involved in the protection of famous and well-known marks. Since no international list of famous and well-known marks exists, it is impossible to know the exact number of marks involved, but it is likely that famous and well-known marks that may qualify for an exclusion number in the hundreds, rather than thousands.

217.  In view of the considerable evidence that was produced in the WIPO Process concerning the extent to which famous and well-known marks are the target of predatory and parasitical practices in domain name registrations, in view of the existence of well-accepted international norms for the protection of famous and well-known marks, and in view of the relatively small number of names involved (probably a matter of hundreds compared to the approximate 4.8 million domain name registrations that exist throughout the world at the present time), it is considered that it is desirable to implement a mechanism providing for exclusions of famous and well-known marks in open TLDs.¹⁰⁹

219.  Brief Description of the Mechanism for Exclusions. It is suggested that the mechanism should function by way of administrative panels of experts, appointed from time to time, in response to applications from the owners of allegedly famous or well-known marks, to make determinations on whether an exclusion should be granted in respect of a particular mark in some or all open TLDs. As indicated below, it is suggested that the administration of the panels be centralized. An internationally representative list of persons who would serve on the panels would be drawn up and the names and qualifications of those persons would be published. In response to a particular application, an ad hoc panel of three persons from the list would be appointed to make the determination. The costs of the procedure, in both instances, would be borne by the applicant for the exclusion, since it is the applicant that stands to gain the benefit of an exclusion and, thus, the expression in the domain name space of the special protection afforded to the applicant’s famous or well-known mark. An exclusion would be granted in respect of either some or all open TLDs and would be granted indefinitely. However, third parties would be free to apply to have an exclusion removed or to obtain an exception from the operation of an exclusion (for example, if an exclusion were granted for all open TLDs, it is conceivable that a third party might prove a legitimate interest in being able to register a domain name, as an exception to the general exclusion, in one particular TLD). In the case of applications brought by third parties to remove or obtain an exception from an exclusion, it is suggested that the costs of the procedure be borne by that third party.

220.  Implementation of the Mechanism. In order to implement the mechanism for obtaining and enforcing exclusions, it would be necessary for a policy to be adopted by ICANN allowing for such exclusions and providing, through the chain of contractual authorities from ICANN to registration authorities, for the direct enforcement by registration authorities of any exclusion granted under the mechanism.

222.  Procedural Considerations. The mechanism for obtaining and enforcing exclusions for famous and well-known marks should have the same characteristics as the administrative dispute-resolution procedure in so far as the procedure should be expeditious, relatively cheap, conducted on-line and lead to determinations that are directly enforced within the DNS. There are, however, five differences from the administrative dispute-resolution procedure that should be adopted with respect to the mechanism for obtaining and enforcing exclusion for famous and well-known marks:

        (i) Since the potential result of the mechanism (an exclusion), as opposed to the result of the administration dispute-resolution procedure, affects third parties (indeed, all users of the domain name space), it is considered that notice of an application for an exclusion and the determination should be made publicly available by being posted on a web site.

        (ii) Again, since the potential result of the mechanism affects all users of the domain name space, provision should be made in the mechanism for the participation of any third party with a legitimate interest in the proceedings. Such participation could take the form of allowing an interested third party to file a submission in favour of or against the granting of an exclusion.

        (iii) In view of the important consequences arising from the granting of an exclusion, it is considered that it would be desirable to provide for three decision-makers, rather than one, as recommended in relation to the administrative dispute-resolution procedure.

        (iv) Since the determination requested by an applicant involves an evaluation of the status of the applicant’s mark, it is considered appropriate that, unlike the position in the administrative dispute-resolution procedure, there should be no party participation in the appointment of the decision-maker. The three members of the panel to make a determination would be appointed by the administering authority for the procedure.

        (v) In contrast to the recommendation concerning competition in dispute-resolution service providers for the administrative dispute-resolution procedure, it is considered that there are distinct advantages in centralization of the administration of the mechanism for obtaining and enforcing exclusions for famous and well-known marks. It would be of advantage to interested users of the domain name space to be able to access one web site where all actions concerning applications for exclusions and all information on exclusions granted or refused is available. Consistency in decision making will be of paramount importance and, in this respect, there seems to be an advantage in the maintenance of a published, centralized list of well-qualified decision-makers, as opposed to allowing different lists of decision-makers to determine whether exclusions should be granted. WIPO would, consistently with its mandate, be available to provide the centralized administration of the mechanism.

224.  Relationship of Determinations to the Status of Marks Outside Cyberspace. Similarly to the situation with respect to determinations made in the administrative dispute-resolution procedure, it is considered that determinations on granting or refusing exclusions of famous and well-known marks should be made only for the purposes of the efficient administration of the DNS. Any determination to grant or refuse an application for an exclusion, therefore, should carry no implication for the status of the mark that is the subject of the application as a famous or well-known mark more generally. Determinations would thus not be binding either on national or regional industrial property offices or on national courts.

226.  Criteria for Making Determinations. As mentioned above, international norms provide for the protection of famous and well-known marks, but leave the appreciation of what constitutes such a mark to the competent national authority. The TRIPS Agreement, in Article 16.2, advances this situation by requiring competent national authorities that are bound by the TRIPS Agreement to take into account, in the assessment of whether a mark is well-known, "the knowledge of the trademark in the relevant sector of the public, including knowledge in the [country] concerned which has been obtained as a result of the promotion of the trademark."

227.  Work on the determination of a list of factors that should be taken into account in determining whether a mark is well-known has been undertaken under the auspices of WIPO over the past several years in a Committee on Experts on Well-known Marks and, more recently, in the successor to that body, the Standing Committee on Trademarks, Industrial Designs and Geographical Indications (the WIPO SCT). At its last meeting, the WIPO SCT adopted the following list of factors as the recommended non-exhaustive criteria to be considered in determining whether a mark was well-known:

228.  The foregoing list of non-exhaustive factors was drawn up with reference to famous and well-known marks in general and without particular reference to problems encountered through domain name registrations. In order to accommodate the specificities of the protection of famous and well-known marks in relation to domain names, it is suggested that a further factor be added to the list given in the preceding paragraph:

        "7. Evidence of the mark being the subject of attempts by non-authorized third parties to register the same or confusingly similar names as domain names."

230.  Issues of Application to gTLDs and ccTLDs. As indicated above, international norms for the protection of famous and well-known marks are implemented on a national basis through an appreciation by the competent national authority of whether a mark is well known in that country. The problem thus arises as to how such a system designed for the physical, territorial world can be given expression in the domain name space of a global medium. Here, a distinction can be made between open gTLDs and open ccTLDs.

231.  In the case of open gTLDs, it has been suggested by some commentators that a quantitative measure should be devised as a means of establishing whether a mark warranted protection as a famous or well-known mark through an exclusion. Such quantitative measures as the existence of a designated number of registrations for the mark around the world have been proposed. It is considered, however, that a fixed quantitative measure can operate arbitrarily. One of the criteria that it is recommended, above, be taken into account, is the "duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark." It is considered that this broad criterion will allow sufficient flexibility for appropriate decisions to be taken, without resort to a precise quantitative measure. If, after the assessment of this criterion and the other criteria, it is considered that a mark is sufficiently famous or well-known to justify an exclusion, an exclusion should issue. In the gTLDs, given their undifferentiated territorial basis, the potential for use of the domain name in any country seems to justify such an approach for formulating the basis of an exclusion.

233.  In case of open ccTLDs, a different approach may be necessary (except where a ccTLD is being marketed as a generic space). It has been recognized above that the recommendations of this WIPO Process are directed primarily at the gTLDs, and that the ccTLDs lie within the sovereign competence of the countries to whose territories they relate. However, as also noted above, it would seem in the interests of the efficient administration of a domain name space and the promotion of the protection of intellectual property that the recommendations of the WIPO Process be considered carefully in respect of the administration of open ccTLDs because of the global presence to which a domain name registration in any such TLD gives rise. In relation to the mechanism for exclusions, it is suggested that, to the extent that the administrators of open ccTLDs adopt the recommendations of the WIPO Process, exclusions be made available by reference to an assessment of whether the mark that is the subject of an application for exclusion is famous or well-known within the territory to which the open ccTLD relates. Thus, the list of non-exhaustive criteria would, in respect of any participating ccTLDs, be applied in order to determine whether, within the territory to which the open ccTLD relates, the mark that is the subject of the application is famous or well-known.

235.  The Problem of Specialty. It was pointed out above that protection for well-known marks affixes, in the first place, to infringing marks that are used in respect of the same goods or services as those for which the well-known mark is registered or used. By virtue of Article 16.3 of the TRIPS Agreement, and corresponding provisions in national laws, it extends beyond similar goods or services to other goods or services provided that the use of the infringing mark in relation to those other goods or services would indicate a connection between those goods or services and the owner of the famous mark, and provided that the interests of the owner of the famous mark are likely to be damaged by such use. An exclusion for a famous or well-known mark would constitute a form of protection that applies more broadly than simply protection for the goods or services in relation to which a well-known mark is registered or used. This consequence seems unavoidable while the gTLDs are relatively undifferentiated, or, at least, for as long as any differentiation is not practically enforced (for example, by confining domain names used for commercial purposes to one or more commercial domains). In the next Chapter, the possibility of using differentiation in the introduction of new gTLDs as a means of circumscribing protection for intellectual property and balancing that protection against other interests is discussed.¹¹⁰ Pending the introduction of any system of differentiation with some practical means of enforcement, it is considered that the potential for exclusions to extend beyond the immediate goods and services in relation to which a well-known mark is registered or used is a consequence that, in the interests of suppressing abusive registrations of domain names and protecting famous and well-known marks, is acceptable. Furthermore, such an approach would be consistent with the policy reflected in anti-dilutions laws to prohibit any use of famous marks by unauthorized persons in connection with goods or services, whether similar or dissimilar to those in respect of the famous mark is used, which affects the integrity or reputation of the mark.

Evidentiary Presumption Resulting from an Exclusion

236.  As a means of giving expression to the protection of famous and well-known marks, exclusions suffer from an important limitation. They provide protection only for the exact name of the famous or well-known mark. They are thus not effective against close phonetic and spelling variations of the famous or well-known mark that are registered as domain names in bad faith in an endeavor to benefit from the reputation of the famous or well-known mark.¹¹¹ In respect of such close variations, the owner of the famous or well-known mark would be obliged, even after obtaining an exclusion, to resort to either litigation or the administrative dispute-resolution procedure in order to seek to cancel or otherwise remedy the damage being done by the close variation that is registered as a domain name.

237.  In order to reduce the impact of this limitation, consideration could be given to the introduction of an evidentiary presumption resulting from the granting of an exclusion which would operate in claims brought under the administrative dispute-resolution procedure by the holder of the exclusion against the holders of domain names that were allegedly identical or confusingly similar. The presumption would work in the following way. The holder of an exclusion for a famous or well-known mark would be required, in any administrative dispute-resolution procedure initiated by it, to show: (i) that a domain name was identical to, confusingly similar with, or dilutes the mark that is the subject of the exclusion; and (ii) that the domain name was being used in a way that was likely to damage the interests of the owner of the mark that was the subject of the exclusion. Upon such a showing, the burden of proof in the procedure would shift to the domain name registrant to justify the good faith registration of the domain name and to show why that registration should not be cancelled. If the domain name registrant were unable to make such a showing, the registration would be cancelled. The evidentiary presumption would be available in respect of any TLD in which an exclusion had been obtained.

Recognition of Abusive Registration of a Domain Name as a Ground of Cancellation or Transfer

239.  The exclusion mechanism was first considered and designed as a means to prohibit the various predatory and parasitical practices in domain name registrations whereby persons seek, in bad faith, to take advantage of the reputation of another. Famous and well-known marks are the frequent targets of such practices, but they are not the only targets. Also targeted by such practices are marks that have a certain notoriety, but whose notoriety falls below the standard required to be a famous or well-known mark; famous characters, whether real, such as political figures or sporting or film stars, or fictional, such as cartoon and other film characters or characters in novels; major international events, such as the Olympic games; and famous place names or other geographical indications.

240.  Various forms of protection for these other targets of predatory and parasitical practices exist in both national and international laws. Depending on the legal tradition, these other forms of protection are given by way of protection against unfair competition, privacy protection, rights in geographical indications and passing off. Often, the protection can be asserted only upon some form of showing of damage.

241.  The right to protection against certain of these predatory and parasitical practices is recognized internationally in Article 10bis of the Paris Convention, which requires States party to that Convention to assure to nationals of other States party to the Convention effective protection against unfair competition. Unfair competition is defined the following manner in Article 10bis (2) and (3):

242.  In addition, Article 10ter (1) of the Paris Convention requires States party to the Convention to assure to nationals of other contracting States "appropriate legal remedies effectively to repress all the acts referred to in Article … 10bis."

243.  Given the policy of prohibition of predatory and parasitical practices that underlies the exclusion mechanism, consideration could also be given, as mentioned in Chapter 3, to making "the abusive registration of a domain name" a ground for requesting and obtaining a cancellation or transfer of a domain name in the administrative dispute-resolution procedure.¹¹² The existence of such a ground would strike more broadly at predatory and parasitical practices and would respond to the concerns of those who have expressed the view that exclusions favour only one category of Internet user that is damaged by such practices.

244.  If such a ground for cancellation or transfer of a domain name registration would be made available, it would be necessary to define the constituent elements of "abusive registration of a domain name." The complainant would have to show that the registration or use of the domain name by the domain name holder is without relevant rights or interests and unfairly: (i) capitalizes on the goodwill associated with the complainant’s legitimate rights, whether by way of trademarks, personality rights, geographical indications or otherwise, or (ii) frustrates the complainant’s desire to reflect its rights in a domain name. Circumstances which may indicate the abusive registration a domain name include the following:

        (i) any offer to sell the domain name to the complainant or to any member of the public;

        (ii) the domain name prevents the complainant from registering a domain name corresponding to its rights;

        (iii) the domain name is identical or confusingly similar to the rights of the complainant and its use by the domain name holder causes confusion as to the source and origin of the goods or services;

        (iv) the domain name, which is identical or confusingly similar to the complainant’s right, was registered with a view to attracting increased traffic to the domain name holder’s site; or

        (v) any other domain name registrations held by the domain name holder which are identical or confusingly similar to intellectual property rights of the complainant or others, and the number of such registrations.

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Footnotes

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

[100] The list of States bound by the TRIPS Agreement is given in Annex V.

[101] Article 6bis also contains the following two provisions:

"(2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.

(3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith."

[102] See Article 16.

[103] In 1998, ten States became party to the TLT.

[104] See Frederick W. Mostert, Famous and Well-Known Marks (Butterworths, 1997), pages 19 to 21 and the authorities cited therein.

[105] See Network Solutions, Inc. Frequently Asked Questions: "Who can register a .com, .NET, .ORG domain name?" at http://www.internic.net/faq/tlds.html.

[106] Such a mechanism was part of the dispute-resolution policy under the gTLD-MoU; at http://gtld-mou.org/docs/tracps.htm.

[107] See Comment of the Government of Japan, Japanese Patent Office (November 6, 1998 - RFC-2); Comment of Mr. Robert Connelly of Council of Registrars (CORE) (Tokyo consultation); Comment of Fédération Internationale des Conseils en Propriété Industrielle (November 9, 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 Mr. Gregory Phillips of Johnson & Hatch for Porsche (San Francisco consultation).

[108] See Comment of the Government of Sweden, Swedish Patent and Registration Office (November 4, 1998 - RFC-2); Comment of the Government of Switzerland, Swiss Federal Institute of Intellectual Property, Switzerland (November 4, 1998 - RFC-2); Comment of Institute of Trade Mark Agents (November 3, 1998 - RFC-2); Comment of Mr. Verbatos (Brussels consultations).

[109] The White Paper of the United States Government also recommended that the new corporation adopt policies whereby:

"Domain name registrants would agree, at the same time of registration or renewal, to abide by processes adopted by the new corporation that exclude, either pro-actively or retroactively, certain famous trademarks from being used as domain names (in one or more TLDs) except by the designated trademark holder."

[110] See the discussion in Chapter 5.

[111] See Comment of International Intellectual Property Alliance (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 Ms. Marilyn Cade of AT&T (Washington consultation); Comment of The Chanel Company (November 4, 1998 - RFC-2); Comment of Ms. Anne Gundelfinger of Intel (San Francisco consultation).

[112] This policy seems to be reflected in national court decisions. See, for example, British Telecomunications Plc, Virgin Enterprises Ltd, J. Sainsbury Plc, Marks & Spencer Plc, Ladbroke Group Plc. v. One in a Million Ltd. and Ors (Court of Appeal, Civil Division, 23 July 1998) (see http://www.nic.uk/news/oiam-appeal-judgment.html)   (court affirmed granting of injunction on the basis that the registration by One in a Million, Ltd. of domain names including trade names of Marks & Spencer, Ladbrokes, J. Sainsbury and Virgin Enterprises, constituted passing-off and erosion of the goodwill in the names, and that injunctive relief was necessary to prevent use of the domain names for a fraudulent purpose and to prevent them from being tranferred to others); Panavision International, L.P. v. Toeppen, No. 97-55467 (9^th Cir. April 1998) (in action against cybersquatter, Ninth Circuit determined that registering trademarks as domain names and attempting to sell them constitutes "commercial use" and dilution under United States law); Avery Dennison Corporation v. Sumpton, 999 F.Supp.1337 (C.D Cal. 1998) (court granted summary judgment on the basis of trademark dilution against a person who had registered over 12,000 domain names in order to sell them to the owners of the various trademarks); Cardservice International, Inc. v. McGee, 950 F. Supp. 737 (E.D Va.1997) (court found trademark infringement to have occurred where one entity registered a domain name which was misleadingly similar to another trademark in order to trade off the goodwill in the trademarks); Citroen, District Court of Frankfurt, January 7, 1997 (2-06 O 711/96) (court granted a preliminary injunction against person who had registered "citröen.de" as a domain name); Honda, District Court of Frankfurt, April 4, 1997, (2/06 O 194/97) (court granted a preliminary injunction against person who had registered "honda.de" as a domain name); Oggi Advertising, Ltd. v. McKenzie and Ors, CP147/98 (unreported, Baragwanath J., High Court of Auckland, 5 June 1998) (see http://aardvark.co.nz/n357.htm)   (court ordered the reassignment of a domain name as a result of passing off, and found that the defendant had conspired to appropriate the plaintiff's reputation or prevent the plaintiff from exploiting its intellectual property).