WIPO Internet Domain Name Process

TESTIMONY

Before the Subcommittee on Courts and Intellectual Property of the
Committee on the Judiciary
U.S. House of Representatives
Congress of the United States

July 28, 1999

Francis Gurry

Deputy Director General
and Legal Counsel

World Intellectual Property Organization (WIPO)

Telephone: (41 22) 338 94 28
Fax: (41 22) 733 31 68
e-mail: francis.gurry@wipo.int

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World Intellectual Property Organization (WIPO)

34, chemin des Colombettes
P.O. Box 18
1211 Geneva 20
Switzerland
Telephone: (41 22) 338 91 11
Fax: (41 22) 733 54 28
Internet: https://www.wipo.int
e-mail: wipo.mail@wipo.int

Mr. Chairman and Members of the Committee,

Thank you for this opportunity to present the results of the WIPO Internet Domain Name Process and some observations on the current situation with regard to the implementation of those results.

Mandate

The mandate for the involvement of the World Intellectual Property Organization (WIPO) in the process of the transition of the technical management of the domain name system (DNS) to a private corporation came originally from the USG White Paper of June 5, 1998, which contained the following passage:

"The U.S. Government will seek international support to call upon the World Intellectual Property Organization (WIPO) to initiate a balanced and transparent process, which includes the participation of trademark holders and members of the Internet community who are not trademark holders, to (1) develop recommendations for a uniform approach to resolving trademark/domain name disputes involving cyberpiracy (as opposed to conflicts between trademark holders with legitimate competing rights), (2) recommend a process for protecting famous trademarks in the generic top level domains, and (3) evaluate the effects, based on studies conducted by independent organizations, such as the National Research Council of the National Academy of Sciences, of adding new gTLDs and related dispute resolution procedures on trademark and intellectual property holders. These findings and recommendations could be submitted to the board of the new corporation for its consideration in conjunction with its development of registry and registrar policy and the creation and introduction of new gTLDs."

(Emphasis added)

The international support which the White Paper indicated that the U.S. Government would seek for the role of WIPO was manifested at the annual meeting of the Member States of WIPO, of which there are 171, in September 1998. At that meeting, the WIPO General Assembly endorsed the mandate and approved the undertaking of an international process designed to make the recommendations and to establish the findings called for in the White Paper.

The Process Undertaken by WIPO

The Process that WIPO conducted in response to the mandate conferred upon it was both intensive and extensive.

It was intensive insofar as an endeavor was made to undertake and complete the Process within a very short timeframe. The Process was completed within nine months, the final report being published on April 30, 1999. This timeframe, it was considered, was necessitated both by the urgency of the problems being addressed, which were leading to a wasteful diversion of resources on the part of owners of intellectual property rights, and by the need to have available the results of the Process in time for the proposed introduction of competition in the provision of registration services in the generic top-level domains, .com, .net and .org.

The Process was extensive insofar as an endeavor was made to involve the widest cross-section of persons and entities interested in the administration of the DNS across the widest geographical area. To this end:

a website (http://wipo2.wipo.int) was established for the Process and made available in three languages (English, French and Spanish); a total of 1,358 persons and organizations from 74 countries registered on the website to receive communications concerning developments in the Process;
17 open meetings were held in 15 countries and five continents, which were attended by 1,264 participants; three of those meetings were held in the U.S.A., two in Washington D.C. and one in San Francisco; the full audio and text records of all of the meetings were published and made available on the Process website;
an unmoderated listserver, to which 420 persons subscribed, was established to facilitate the free discussion of the issues under consideration in the Process;
three Requests for Comments (RFCs) were issued in three languages, the first directed at the further definition of the issues specified in the original mandate, the second seeking substantive comments on those issues, and the third consisting of an interim report;
in all, comments on the RFCs and formal presentations at the open meetings were made by
40 governments
4 international organizations
74 professional, industrial and academic organizations
181 corporations and law firms
183 individuals.

The General Approach Adopted in the Report of the Process

In making the recommendations contained in the Report of the WIPO Process, three factors, in particular, were borne in mind as indispensable guides to the acceptability of the recommendations:

First, it was considered essential that the recommendations be technology neutral, that is, that the recommendations should in no way condition the future development possibilities of the technology underlying the Internet.
Secondly, it was considered equally essential that the recommendations should, insofar as possible, respect the current strengths of the DNS as a robust, efficient, cheap and easy means of obtaining a presence on the Internet.
Thirdly, it was considered to be of great importance that the recommendations be sensitive to the general policy aim of restricting any regulation of activity on the Internet to those areas where regulation is necessary in the interests of vindicating public policies that are well established and unquestioned on the national and international level.

Because of these factors, in particular, the WIPO Report adopts a minimalist approach to the issues that were addressed in the WIPO Process. The recommendations of the Report deal only with the most urgent and most obvious problems, while recognizing that other problems and issues exist that might usefully, in the course of time and with the benefit of experience gained form the implementation of the recommendations of the Report, also be addressed.

The Main Recommendations and Findings of the WIPO Report

The WIPO Report found ample evidence that a significant problem exists as a result of the intersection of, on the one hand, the largely privately administered and globally accessible domain name system and, on the other hand, the publicly administered and territorially based intellectual property rights system. The most egregious manifestation of this problem is the exploitation in bad faith of the ease and simplicity of obtaining a domain name registration in order to register, as a domain name, the trademark of another person with a view to extracting a premium from the owner of the mark. Significantly, throughout the whole of the WIPO Process, not one voice defended this practice, which is known commonly as cybersquatting. The practice was universally condemned.

The main recommendations made in the WIPO Report in order to address the problems arising out of the intersection the DNS and the intellectual property rights system are:

It was recommended that improved registration practices be introduced as a means of reducing tension between the DNS and the intellectual property rights system. The recommendations in respect of such practices did not suggest any radical modification to the present simple, efficient and cost-effective system for registering domain names, which was recognized as deserving credit for facilitating the rapid expansion of the Internet. Thus, for example, it was not recommended that registrars should be required to undertake pre-registration checks of prospective domain names against trademark databases, as such a measure would increase significantly the time and cost of obtaining a domain name registration. Rather, the recommendations in relation to registration practices represent minimum standards of good practice which, if adopted, are likely to reduce considerably the possibility of the bad faith abuse of intellectual property rights through domain name registrations.
To deal with the most obvious and recurrent type of conflict between domain names and intellectual property rights, it was recommended that a simple, quick and uniform administrative dispute-resolution procedure be introduced in the generic top-level domains to deal with complaints of the deliberate, bad faith registration and use of domain names in abuse of trademark rights. Domain name applicants would be required to agree, in the domain name registration agreement, to submit to the procedure at the request of any third party. The litigation rights of both parties would be preserved. The results of the procedure would be enforced by all registration authorities. The recommended procedure is modest in its scope, in that it seeks to address only deliberate, bad faith abuses of rights, rather than all disputes between domain names and intellectual property rights. It does not, thus, seek to provide a comprehensive solution to the multi-jurisdictional nature of disputes between domain names and intellectual property rights that is a consequence of the global nature of the Internet and the global presence to which a domain name registration gives rise. Even in its approach to abusive practices it is cautious. Only the bad faith abuse of trademark rights fall within its scope, and not the bad faith abuse of cognate rights, such as personality rights, the names and acronyms of the United Nations and other international organizations or geographical indications.
Famous marks have clearly been the special subject of attention from cybersquatters and have most frequently been the target of predatory and parasitical practices. To extend to them in cyberspace the special protection that they already enjoy in national and international law, it was recommended that a mechanism be introduced allowing for the grant, following an adjudicatory procedure, of an exclusion where it is shown that a mark is famous across a widespread geographical area and across various classes of goods. The effect of the exclusion would be to prohibit any person other than the owner from registering the famous mark as a domain name. Not all well-known marks would thus qualify for an exclusion. Marks that are well known only within one country or within one specific class of goods or services would not qualify.
Finally, the Report addressed, from the perspective of intellectual property, the eventual impact of adding new generic top-level domains. Here, the Report found that, if the recommended improved registration practices, uniform dispute-resolution procedure and mechanism for granting exclusions for famous marks were adopted, the introduction of new generic top-level domains would be unlikely to harm unduly the protection of intellectual property, provided that any such new gTLDs were added in a controlled manner.

The Present Status of the Recommendations

The WIPO Report was submitted to the Interim Board of the Internet Corporation for Assigned Names and Numbers (ICANN) following its publication on April 30, 1999. The Report was posted for comment by ICANN on its website, with a view to consideration by the Interim Board at its meeting in Berlin on May 27, 1999.

In addition to the scheduled consideration of the WIPO Report by the ICANN Board in Berlin, the Report was also considered by the Governmental Advisory Committee (GAC) of ICANN on May 25, 1999. The GAC is one of the advisory committees established under the ICANN Bylaws (Article VII, Section 3(a)), with a mandate to "consider and provide advice on the activities of the Corporation as they relate to concerns of governments, particularly matters where there may be an interaction between the Corporations policies and various laws, and international agreements." The meeting of the GAC on May 25, 1999, was attended by representatives of 29 governments and four intergovernmental organizations. In respect of the WIPO Report, the GAC adopted a recommendation stating, inter alia, that:

- "The GAC reaffirms the requirement for transparency and reliability of DNS registration data, as recommended by the WIPO Report, and requests that ICANN put in place an appropriate system to authorize and ensure access to data, consistent with applicable law or standards, including defining the purposes of such access";

- "In view of the extensive public international consultations undertaken by WIPO in cooperation with ICANN during 1998-1999, we look to ICANNs procedures to result in rapid resolution of the issues concerning dispute settlement and treatment of well known and famous marks. Specifically, the GAC calls on ICANN to report on implementation of the dispute settlement proposals by its Santiago [August 24 to 26, 1999] meeting and to engage in further consultations with the Supporting Organisations and Advisory Committees with respect to the treatment of well known and famous marks."

The action taken by the ICANN Board at its meeting on May 27, 1999, is recorded in a resolution whose effect may be summarized as follows:

It was noted that "most of" the recommendations in the WIPO Report concerning registration practices were closely similar to "many of the elements" of the Statement of Registrar Accreditation Policy that had been adopted by the Board on March 4, 1999. That Statement had been drafted after the publication of the Interim Report of the WIPO Process, which was published on December 23, 1998, and had adopted many of the draft recommendations of that Interim Report.
Two actions seem to have been contemplated by the resolution of the ICANN Board in respect of a uniform dispute-resolution policy. First, the ICANN Board "encourage[d] the testbed registrars to work together to formulate a model uniform dispute resolution policy for voluntary adoption." Secondly, the ICANN Board referred the recommendations in the WIPO Report on a uniform dispute-resolution policy to the ICANN Domain Name Supporting Organization (DNSO) for recommendations to be submitted to the ICANN Board by July 31, 1999, together with "any other recommendations the DNSO may have concerning a uniform dispute resolution policy." In addition, the ICANN Board invited comments from all persons desiring to make written comments on a uniform dispute resolution policy by August 20, 1999, in advance of the meeting of the Board scheduled for Santiago from August 24 to 26, 1999, at which meeting Board action on such a policy was scheduled.
The recommendations in the WIPO Report on famous marks and the impact of the introduction of new gTLDs were referred to the ICANN DNSO for recommendations to be submitted to the ICANN Board "at the earliest practicable time after the Boards meeting scheduled for August 24 to 26, 1999, in Santiago."

Two Urgent Issues: Contact Details and Uniform Dispute Resolution

Of the four sets of issues covered by the recommendations contained in the WIPO Report (registration practices, uniform dispute resolution policy, famous marks and the impact of adding new gTLDs), two appear to be at a critical juncture. These are the questions of registration practices, particularly in relation to the availability of contact details of domain name registrants, and a uniform dispute-resolution policy. They are critical at the moment both because they are of immediate operational significance, since five testbed registrars have been accredited to participate in the Shared Registry System for the .com, .net and .org top-level domains and a further 52 post-testbed registrars have also been accredited, and because the existence of reliable and accurate contact details and a viable uniform dispute-resolution policy are the fundamental, minimal conditions for preventing the fraudulent abuse of intellectual property rights in the DNS. (The other two areas of the WIPO recommendations (concerning famous marks and the impact of new gTLDs) are certainly of immense importance also. They are likely to become operationally significant, however, only when a plan is developed for the deployment of new gTLDs, since it is generally thought that the owners of famous marks have been able to resolve the problem of the registration of the exact name of famous marks (as opposed to close variations thereof) in the existing gTLDs through a combination of litigation and negotiation over the past five years.)

Contact Details

The WIPO Report found that the unreliability of contact details of domain name registrants was a major impediment to intellectual property owners in defending their rights against abusive registrations. The Report recommended several measures to ameliorate the present situation, including the requirement of representations by domain name applicants that the information supplied by them is true and accurate, and the inclusion of a term in the domain name registration agreement making the supply of inaccurate or unreliable information, or the failure to update information, a basis for cancellation of the registration agreement. In particular, the WIPO Report recommended the implementation of a takedown procedure whereby, upon service of a notification in due form by an interested third party that contact details were unreliable and that contact could not be established with the domain name holder, and upon independent verification of the unreliability of those details, the registrar would be required to cancel the corresponding domain name registration.

The WIPO Report found that a number of other public policies coincided with the interests of trademark owners in requiring the availability of reliable and accurate contact details of domain name registrants. In the field of intellectual property, the protection of copyright and the prevention of copyright piracy require the availability of such details as a means of establishing who is responsible for illegal content on the Internet. As the digital consumer economy expands, the prevention of fraud and dishonest commercial practices, as well as the protection of consumers and minors, also support the availability of such details. The only interests formulated against the availability of contact details were the interests of privacy and the protection of free political speech, which can be accommodated already through hosting services provided by a number of Internet Service Providers. In addition, the expansion of the domain name space by the addition of new gTLDs offers the possibility, in the future, of further accommodating such interests through appropriate differentiation in the gTLDs, for example, through the addition of a use-restricted gTLD reserved for non-commercial speech. The Report did not recommend that a new use-restricted, non-commercial domain be added, but did recommend that the possibility of the addition of such a domain be explored further.

We believe that the implementation of the takedown procedure recommended in the WIPO Report as a means of ensuring the availability of reliable and accurate contact details is a fundamental requirement that is urgently needed in order to ensure that rights which are universally recognized in national and international law can be effectively respected in cyberspace.

Uniform Dispute-Resolution Policy

It is to be noted that all policy pronouncements on dispute resolution in the gTLDs have endorsed the desirability or necessity of uniformity in the dispute resolution policy applied in the gTLDs. This was not only the conclusion of the WIPO Report, but also the position adopted in the White Paper and in the ICANN Board resolution of May 27, 1999. This unanimity of view is inspired by recognition that different policies could open the way to different degrees of respect for intellectual property protection, especially as registration services become available on a wider geographical basis. If the policy is not uniform, some registrars might adopt policies that provide little protection against abusive registrations, thus paving the way for infringement havens and forum shopping.

The perceived danger in the current situation with respect to the implementation of the WIPO recommendations on a uniform dispute-resolution policy is that the two-track process initiated by the ICANN Board may lead to different policies, thus making the retrospective application of uniformity practically impossible. If the testbed registrars were to adopt voluntarily a different policy from the one recommended by WIPO, or from the one that may emerge from the recommendations of the DNSO, the opportunity for uniformity may be missed.

In order to endeavor to sew the various threads of actions on dispute resolution into a consistent fabric, WIPO has convened a working meeting of testbed and post-testbed registrars in Washington on June 27, 1999, to discuss the practical details of a uniform dispute-resolution policy, based on the WIPO recommendations, that those registrars might consider adopting voluntarily. The meeting has been convened at the request of several of the registrars that have been discussing with WIPO the details of a dispute-resolution policy. It is hoped that it may produce some progress towards bringing together the various movements that have been set in train to deal with the development of a uniform dispute-resolution policy.

We believe, as mentioned above, that the WIPO recommendations on a uniform dispute-resolution policy are practical, minimalist and the result of extensive consultation with both the public and private sectors on the national and international level. We believe that they afford a sound basis on which to proceed in the gTLDs. In addition, we believe that they have attracted much support amongst the administrators of country-code top-level domains (ccTLDs), and that there is a good possibility of the voluntary adoption of the same policy, when emanating from an intergovernmental organization, by many of those administrators. To this end, at the request of the Permanent Secretariat of the General Treaty on Central American Economic Integration (SIECA), WIPO is organizing a meeting of all administrators of ccTLDs in the Central American region for their consideration of the adoption of the policy recommended by WIPO. We hope that other such meetings may follow.

Mr. Chairman and Members of the Committee,

It was a privilege for WIPO to be given the mandate to conduct the WIPO Internet Domain Name Process by the United States Government and the Member States of WIPO. It was a novel exercise for the Organization, since it involved endeavoring to establish recommendations with the direct involvement of both the public and private sectors, recommendations which it was hoped might find consensus in both those sectors internationally. In this respect, we consider that the Process has implications that are broader than just domain names, since it may provide a prototype for means of dealing with pressing international issues in the rapidly developing area of electronic commerce and the digital economy. For that to be the case, however, it must be shown that this type of Process has inherent advantages over the tested traditional approach to international issues of multilateral State-to-State negotiations over an extended period of time. It must also be shown that the voices of governments are not drowned in a mass of undifferentiated comment from quarters where interests are not always immediately transparent. For these reasons, as well as what we believe to be the inherent acceptability of recommendations based on consultations with governments and private corporations and individuals that is unlikely to be replicated in any of the supplementary processes initiated by the ICANN Board, we consider that action on the WIPO recommendations, in an appropriate timeframe corresponding to that in which the WIPO Process was conducted, is of fundamental importance.

Mr. Chairman and Members of the Committee,

It was also a privilege to have this opportunity to present the Report of the WIPO Internet Domain Name Process to you.