Comments on WIPO RFC3
Dave Garland (dave.garland@wizinfo.com)
Sat, 27 Feb 1999 15:46:19 -0600
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It is important to remember that a domain name is not a trademark, but a
means of contacting its owner. A domain name is often a contraction,
acronym, descriptive word or phrase. It is not in the public interest
to equate a domain name with a trademark.
Report
..."a mechanism be introduced whereby the owner of a famous or
well-known mark could obtain an exclusion, the
effect of which would be to prohibit any third party from registering
the mark as a domain name. Since the exclusion would cover only the
exact mark that is famous or well-known, it is also recommended that
such an exclusion give rise to an evidentiary presumption in the
administrative dispute-resolution procedure in cases where the
beneficiary of the exclusion initiates proceedings against the holder of
a confusingly similar domain name registration. "
Comment
Such a right should only apply in cases where the trademark holder can
demonstrate that without exception the rights to the word they hold are
unique, exclusive and worldwide. (For example, the word "coke" applies
not only to soft drinks but to coal products and drugs, and it is not
reasonable to expect that the rights of a soft-drink bottler would be
held above the rights of a coal-products distributor or a
drug-rehabilitation facility. On the other hand, "kleenex" probably is
only known as a product trademark.) To do otherwise is to give to the
holder rights above and beyond those conferred by simple possession of a
trademark, or to give them rights in a part of the world where they are
in fact not entitled to those rights.
In the case of the "confusingly similar domain name", the trademark
holder should bear the burden of proof that the confusion is
intentional, and that public confusion does in fact exist.
It is not reasonable to accord the trademark holder special rights for
being "famous or well-known" in the absence of a generally accepted
worldwide list of such marks.
Report
"These practices include the deliberate, bad faith registration as
domain names of well-known and other
trademarks in the hope of being able to sell the domain names to the
owners of those marks, or simply to take
unfair advantage of the reputation attached to those marks."
Comment
In all cases, the burden of proof that the registration is deliberate
and in bad faith should rest upon the
challenger. Anything else will create the probability that large,
well-financed owners will bully less well-heeled domains into
submission.
Report
"32. It is further recognized that the goal of this WIPO Process is not
to create new rights of intellectual
property, nor to accord greater protection to intellectual property in
cyberspace than that which exists elsewhere. "
Comment
This proposal in its present form does exactly that.
Report
"40.... There is no requirement that the applicant justify use of a
particular name; no verification process for any contact details
provided; no provision for the settling of disputes when they arise; and
no requirement that any payment be tendered and confirmed before the
domain name holder begins to use the name. These registration practices
have led to instances of registrations that may be considered to be
abusive."
Comment
It is reasonable to require that valid contact details be provided,
maintained, and available. Indeed, it would be a benefit to the
Internet in general, and not just to IP owners, providing, for example,
a way to better track spammers. It is not unreasonable to require
payment before use of a domain name, though with the introduction of
more top-level domains and organizations to administer them, the value
of this is uncertain (there is no requirement that the registering
organization actually charge a fee).
It is not in the public interest to require that an applicant "justify"
the use of any particular name, unless the intent to mislead or defraud
is clear and demonstrable.
Report
73. The second approach to suspension would be a form of automatic
take-down, analogous to that developed for the take-down or
de-activation of web sites... In addition, the posting of a bond by the
third party
complainant might be required.
Comment
To prevent abuse, the posting of a bond by the complaintant should be
mandatory. In the event that the complaintant is unsuccessful in
prevailing, the bond should be forfeit to the domain holder. The amount
of the bond should be at a minimum high enough to cover all reasonable
legal fees that might be sustained by the defendant, and to compensate
them for any real or consequential loss they may suffer due to
suspension of the domain during the dispute process.
In fact, requiring such a bond would be desirable for whatever dispute
resolution process is ultimately arrived
at.
Report
157... 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.
Comment
The case of a bad-faith complaintant is at least as much a matter of
concern as that of a bad-faith applicant. In cases where the
complaintant cannot demonstrate unique, exclusive, and worldwide rights
to the name, or fraudulent intent or bad faith on the part of the
applicant, the complaintant should be liable for the costs, even if the
complaintant prevails. This should be mandatory, and not at the
discretion of the decision-maker. If the complaintant does not prevail,
they should in addition be levied for any losses by the applicant due to
the existance of the dispute. Such awards should be final and not
subject to recourse in courts or other bodies.
Thank you for the opportunity to comment.
David Garland
3529 17th Ave. S.
Minneapolis MN 55407 USA
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