To: process.mail@wipo.int
From: "South Africa, Ministry of Communications"
Subject: RFC-3
Date: June 7, 2001
MINISTRY OF COMMUNICATIONS
REPUBLIC OF SOUTH AFTRICA
07 June 2001
By Telefax No: 0941 227403700
Mr David Muls
World Intellectual Property Organisation
Switzerland
Dear Mr Muls
SUBMISSION BY REPUBLIC OF SOUTH AFRICA
Further to the request for comments on the issues addressed in the Interim Report, I enclose herewith the Submission by the Republic of South Africa in respect of the WIPO2 RFC- 3, the Second WIPO Internet Domain Name Process, for consideration and inclusion in the Final Report.
I should be grateful if you would ensure that our Submission is accepted for inclusion in the Final Report.
Kindly acknowledge receipt of this letter and the attached Submission.
My mobile number is: +27 083 408 4120. It is always possible to get me on my mobile at any time or leave a message.
Yours sincerely,
K. Matthews
Special Advisor to Minister
+27124278111
+27 21 462 1632
kittenm@docpwv.gov.za
SUBMISSION BY REPUBLIC OF SOUTH AFRICA IN
RESPONSE TO WIPO2 RFC-3
INTRODUCTION
The Republic of South Africa herewith submits its response to the Request for Comments 3 on issues addressed in the Interim Report of the Second WIPO Internet Domain Name Process (WIPO2 RFC-3). South Africa requests that its comments and proposals be considered and addressed in WIPO's Final Report of the Second WIPO Internet Domain Name Process. The Republic of South Africa specifically responds to WIPO's request for comments concerning the issue of the registration and use of domain names that are the same as the names of sovereign nations ('ICountry Names"). WIPO2 Interim Report ~ 280. South Africa also provides information regarding the status of the lawsuit brought against it in the courts of the United States by a private, for-profit United States corporation that asserts ownership rights in the domain name <southafrica.com>.
South Africa appreciates the Interim Report's response to the issues that South Africa has raised. South Africa further appreciates the recognition in the Interim Report of the significant problems arising from the registration of domain names that are the same as Country Names by private parties with no affiliation or ties to that sovereign State, especially as it relates to and exacerbates the problem of the digital divide between rich and poor countries.
However, South Africa believes that the proposals suggested in the Interim Report to address this problem fail to protect a sovereign's rights in their own names from monopoly, commercial exploitation by private parties. This flaw arises in part because the Interim Report does not address the fact that the names of sovereign nations are deserving of substantially greater protection than other geographical terms generally. In particular, the Interim Report fails to address the need for a binding arbitration process, to prevent the indignity and impropriety of forcing the sovereign to litigate its rights in the courts of a foreign nation, often where the registrant resides, and under the laws of that foreign nation. Second, the Interim Report suggests that a sovereign should have to show that the registrant acted in "bad faith," when in fact the true issue is the fact that the unaffiliated registrant never had any right to the monopoly commercial exploitation of the sovereign's name. Third. the Interim Report understates current intellectual property law protections accorded to a sovereign's rights in its national identifiers, including its name, and the unique problems created by the monopoly nature of the domain name system.
It is important to recognise that South Africa's proposed policy for protection against the registration of Country Name domain names will affect only a tiny number of current registrants, as there are less than 200 sovereign nations. Accordingly, south Africa's proposal would have no effect on the domain name registration of any geographical terms other than the very few Country Names. This limitation addresses the concerns raised in the WIPO2 Interim Report regarding the scope of geographical terms that are deserving of protection. Interim Report para. 272-77.
SOUTH AFRICAS POSlTION STATEMENT
South Africa herewith reiterates the position statement that it previously submitted to WIPO2 RFC-2:
It is the position of the Republic of South Africa that the following geographical terms should be protected against bad faith, abusive, misleading or unfair registration and use: second level domain names, in all generic top level domains (gTLDs), that are the same as the official or common names of sovereign nations ('Country Names').
The Republic of South Africa, therefore, proposes that WIPO recommend the following policy in the WIPO2 Final Report, and that this proposal be adopted and incorporated in the ICANN UDRP:
No second level domain name can be registered in a gTLD that is the same as the official or common name of a sovereign nation, except by the sovereign nation itself, or upon the authority of that nation, and any sovereign nation has the right to have any such existing registrations cancelled and/or transferred to the sovereign.
For example, the Republic of South Africa would have the right to be protected against registration of its full or "formal" name "RepublicofSouthAfrica" and its usual or .'short" name "SouthAfrica".
The Republic of South Africa is aware, and the Interim Report recognises, that almost all Country Names have been registered by private parties in the gTLDs, and not by the sovereigns. Frequently, the registrants of these domain names have no association or tie with that country, and in fact a number of such registrants have registered numerous Country Names. Interim Report ~ ; 241-42, 254; Annex 10.
Second level domain names the same as Country Names are valuable national assets that belong to the respective sovereign nations. The Country Names in the gTLDs, particularly the dot-com TLD, have the potential to be of substantial political and economic value, particularly to developing nations. When the original registration authorities began permitting registration of second level domain names on a first come-first served basis, primarily to private western corporations and individuals, the registrants participating in this "gold rush"' appropriated these valuable assets of the sovereign nations, to which the registrants had no preexisting rights. Furthermore, the registrars of gTLDs had no right to give away the names of sovereign nations in the second level domain names to private entities acting without permission or authority of the nations whose names were registered. Therefore, registrants of second level domain names the same as Country Names do not have and never had any property right in those domain names.
The Interim Report recognises that, largely due to the digital divide, this "gold rush" by entities in developed nations occurred at a time when many developing nations were unaware of the activities of these entities and how these activities would affect them. Interim Report, 11 267. The Interim Report further recognises that, in light of the digital divide, the "first-come, first-served" principle is "somewhat facile," because the principle "assumes an equal playing field" that , "does not exist." Id.
Unlike the developed nations, the governments of developing nations have an obligation to their people to harness the power of the internet to promote a positive image of their country and to provide information on national resources and history. These governments also have an obligation to attempt to focus global attention on national and local businesses and resources for purposes of trade, tourism and investment, in an increasingly competitive global environment. In developing countries, many nationals need the assistance of their governments to reach out into the global internet economy, since individually they lack the resources to create significant web site portals on their own. In contrast, in developed nations, there generally is a far lesser need for the sovereign to establish one national internet site that supports domestic businesses and the domestic economy and attracts global attention to the nation.
Futhermore, it cannot be disputed that the primary internet sites utilized by individuals seeking information about particular countries would be domain names which are the same as the Country Names themselves, particularly at the dot-com gTLD.
If the current registrants, primarily western individuals and corporations, are permitted to continue to exploit these valuable national assets to which they have no rights, the effect will be to widen the digital divide to the further detriment of developing nations.
Thus, it is the position of the Republic of South Africa that the registration of a second level domain name the same as a Country Name itself constitutes a bad faith, abusive, misleading or unfair registration, because the registrants have no right to appropriate a valuable national asset that belongs to a sovereign nation. Moreover, the registrations by western entities of the domain names of Country Names of developing nations to which the registrants have no ties or affiliations are particularly abusive, misleading as to source, and unfair and deceptive as false designations of origin. In fact, the only reason that these registrants appropriated these domain names is to trade on the economic value of the Country Names of the sovereign nations, intending to attract for their own profit internet traffic seeking information about these nations. The Republic of South Africa is further aware of efforts by western registrants to sell these domain names back to the respective sovereigns at extremely high prices. In fact, the registrant of the domain name
SOUTH AFRICA'S COMMENTS ON THE INTERIM REPORT'S PROPO'SED NEW UDRP CAUSE OF ACTION FOR GEOGRAPHICAL TERMS
A. South Africa Agrees that There Should Be a New Cause of Action Under the UDRP for the Protection of Country Names
In the Interim Report, WIPO requests comments on whether there should be a new cause of action under the ICANN UDRP for the protection of certain geographical terms, including Country Names. Interim Report, ~ 280-86. South Africa agrees that there should be a new cause of action for the protection of Country Names, and otherwise does not take a position on appropriate measures to provide protection for other geographical terms. South Africa, however, believes that the proposed new cause of action for geographical terms generally, as suggested in the Interim Report, fails to take account of the special nature of Country Names in the international legal and political system and, therefore fails to give the heightened protection to which Country Names should be entitled.
B. Arbitration Concerning Country Names Should be Mandatory and Binding Under the current ICANN UDRP including Under the WIPO arbitration procedures, arbitration is non-binding. The proposed new cause of action in the Interim Report for the protection of certain geographical terms would also be non-binding. The reasons for non-binding arbitration as proposed in the First WIPO Internet Domain Name Process for traditional trademark disputes, such as the new and untried nature of the arbitration process, ICANN's recent creation, and a concern with ousting national courts from an area of traditional competence, are not applicable, some two and one-half years after the UDRP entered into operation, to the unique and very limited circumstance of the protection of Country Names. The Interim Report does not state any reasons why a new cause of action limited to protection of Country Names should be non-binding.
With non binding abitration even if a complainant prevails in the arbitration, the registrant is free to institute a lawsuit, typically in the registrant's own country.
Thus under the policy propose the interim reports, in any dispute between a sovereign nation and a private registrants of its country, the sovereign nation almost inevitably will be forced to litigates in the courts of the forewing country mostly like United States. The courts of that country will not necessarily give any deference to the arbitrator's decision, and are free to apply national law, even if inconsistent with uniformity and the goals of the UDRP process. In disputes over traditional commercial trademark rights between private partiest resort to the national courts may be appropriate. However, proper respect for a sovereigns independence and its equality among other sovereigns under the international illegal and political system. should not result in a DNS resolution process that forces a sovereign nation into the courts of a foreign country.
South Africa speaks here from experience. When South Africa asserted the rights of sovereign nations to own their own domain names, it was immediately sued in a court of the United States by a private United States corporation. South Africa has since been forced to the significant expense, inconvenience, and indignity of litigating in a foreign court, including having its motives, intentions, and integrity brought into question before a foreign judge of a co~equal sovereign. While South Africa enjoys excellent relations with the United States, and has no reason to expect hostility from the courts of this country, this may well not be true for all countries forced into the courts of another country .
Thus, in South Africa's view, only mandatory, binding arbitration can adequately protect the rights of sovereign nations to their own names. Indeed, the absence of binding arbitration would be almost equivalent to no protection for sovereign states, except in the cases of the most egregiously exploitative registrants, or those without the resources to undertake litigation in their national courts. Given the very limited number of potential proceedIngs, since there are les than 200 sovereign states and the extensive experience garnered by WIPO arbitrators since the institution of the UDRP. there should be no serious concern over the fairness of a binding arbitration process before WIPO.
C. The New Cause of Action Should Not Have a Bad Faith" Standard
A second important flaw in the suggested new cause of action is the proposed requirement of "bad faith" by the registrant similar to that under the current UDRP. This proposal, unfortunately, fails to address the basic problem of private registrations of Country names. The issue is not whether the registrants have acted improperly with their registrations, but rather that they have appropriated to themselves a valuable national asset the countrys own name in the DNS to which the registrant has no right. In fact, the suggested proposal would appear to permit a registrant to retain a Country name domain name as long as it provided some information about the country, an exceedingly simple task. Thus, the Interim report perversely appears to reward the private registrant who successfully exploits for his own gain the general public interest in the country, and to obtain for itself the economic value of the internet traffic that seeks information about a sovereign nation, based on that countrys name. Furthermore, the proposed standards of "bad faith" may require complex, time-consuming and subjective inquiries, such as the registrants purposes in acquiring the domain name and the creation of the likelihood of confusion. Interim Report 283(2).
Thus, South Africa proposes that the UDRP recognize that a private, unauthorized registrant, of a country name, with no ties or affiliation to that country, has no right to that countrys name, and that there be no requirement that the sovereign nation show that the registrant otherwise acted in bad fait.
D. Sovereigns Have Cognizable Rights to their Own Names
The names of sovereign nations are deserving of special protection as domain names, in addition to and different from any protections that may be accorded other geographic terms. As the WIPO2 Interim Report recognizes, the Paris Convention for the Protection of Industrial Property, Article 6ter, has long afforded special protections limited to national symbols of sovereign nations, such as national flags, emblems, official signs and hallmarks. Interim Report 256-64. Under what it characterises as a 'broad interpretation" of the Paris Convention, the Interim Report recognises the legal basis for the protection of Country Names in the DNS, separate and apart from any protection of geographical terms, "'in light of [Article 6ter's] spirit and underlying objectives, and, on the other hand, in view of recent technological evolutions, in particular the emergence of the Internet as a commercial medium and the Importance of domain names as valuable signp osts in this context." Interim Report 264. The Interim Report then provided several compelling arguments for this view of the Paris Convention, including that "domain names are more appropriately viewed as 'emblems' for purposes of Article 6ter, rather than regular names," because of "their uniqueness and function as primary signposts on the Internet." Interim Report 264(iii).
Nevertheless, the Interim Report appears to take an unnecessarily begrudging approach to this compelling case for the protection to Country Names in the DNS. This approach is based on overly narrow arguments that do not give full consideration to the consideration to the technical structure and importance of the Internet. This approach also is inconsistent with the appropriation and exploitation of its national identifiers by persons who have no ties or relations to that State. In to day's world of increasing reliance on the internet as a primary source for information throughout the world, and where only one person or entity in the entire world can hold a particular domain name, a sovereign State's own name becomes the primary "emblem" or symbol of the sovereign nation. Thus a sovereign state should be entitled to use its own name as its unique global Internet identifier under Article 6ter of the Paris Convention.
South Africa further contends that the Interim Report, although acknowledging the problem of registration of Country Names, understates the protections that intellectual property law in addition to Article 6ter of the Paris Convention, accords to sovereigns to prevent unauthorized use of their names. Again, any consideration of such protections must bear in mind the unique nature of the DNS, in which only one registrant can use a name in any particular TLD, thereby granting the registrant monopoly control over a particular name, including a Country Name. This new worldwide regime -the DNS -therefore, turns on its head the traditional world in which intellectual property rights developed in response to the physical reality that multiple users, as a practical matter, could use the same name to identify their goods and services. In this traditional regime in contrast to a DNS no private party could monopolise a geographical turn as a general matter and, therefore, no private party could deprive a sovereign of the right to use its own name for a particular purpose.
The uniqueness and power of the Internet demand that the DNS not to be controlled by overly narrow I technical interpretations that violate the spirit and purpose of existing international law, and which serve only to preserve an affair and unequal status quo. It must also be considered that those who call for the preservation of this status quo, and who demands some unidentified "consensus" before appropriate protections are accorded to the sovereign nations are frequently the primary beneficiaries of the unequal "plain field" and are themselves highly unrepresentative of the world at large.
As the interim report recognizes, the traditional" first come, first served" principal is to faciae an approach to the problem of Country Names, given the reality of the digital divide and the unequal" play field " at the time of the earlier "land rush" for domain names. Thus the proper question for consideration is: who has a superior right to the monopoly use of the Country Name of a sovereign nation - the unrelated person or corporation whose only possible claim is that it got there first, or the nation itself? Given this stark choices, the answer is self evident.
South Africa also points to two traditional sources of intellectual property law that support South Africa's position, in addition to the inherent sovereign right to prevent a private unrelated party from appropriating valuable national assets that belong to the nation, and the protections accorded by Article 6ter of the Paris Convention, as discussed above. The WIPO2 report gives to little consideration to this points.
First, while geographical terms that are merely descriptive have generally not enjoyed legal protection, geographical terms that acquire secondary meaning, beyond a mere place-name association, are entitled to legal protection. South Africa contends that its name -and the names of other countries --does far more than describe a geographical location of the southern tip of the African continent. Rather, when people think of "South Africa," a host of associations are conjured up, including South Africa's rich culture, its history, its wildlife, the diversity of its people, and its political struggle for multiracial equality and democracy. In an era of instant global communication and world-wide access to information resources, it is too simplistic to contend that a country's name serves as nothing more than a geographical place identifier, rather than as distinctive set of associations that may have little to do with geographic location.
Moreover, it must be recognize that the effect, if not the purpose, of the traditional prohibition on trademark rights in descriptive place names has been to protect the political authority of that geographic area from monopoly exploitation of its name. Thus, a producer of goods and services about California and located in California, could call its business "California" but: 1) It could not prevent the state political authority from calling itself "California" and using the name "California" to promote itself, its people and its goods and services; and 2) the more recognition the private entity created in its use of the name "Californian" the more imitators could free -right off its fame, thereby discouraging, or eliminating, the effort to exploit a geographical term in the first place.
As noted above, however, technical structure of the internet truns this basic proposition upside down. Unlike in the physical world, there can only be one
Thus, in order to ring the DNS into line with the basic principles that a private party cannot monopolise the use of a Country Name, and that a sovereign has the right use its own name to promote itself, a private party cannot be permitted to "own" a geographical domain name, particularly one with which it had no previous association, and the political authority must be allowed the right to see its own name.
Second, the law of unfair competition. recognised in the Paris Convention, Article 1Obis, prohibits and calls for the repression of all forms of unfair competition, broadly defined. The right to prohibit and repress unfair competition has not been limited solely to trademark holders. Rather, unfair competition applies to a wide range of practices with the focus not primarily on the superior rights of the complainant, but on the challenged unfair acts. Thus, unfair competition prohibits a wide range of false and misleading statements regarding the nature of the product, particularly false designations of geographic origin and the creation of confusion, it is too simplistic to contend that a sovereign nation has no interest or rights in its own name, such that it cannot challenge the misleading activities of
domain name registrants who appropriate and exploit the sovereign's name, despite the absence of any ties or affiliations to that country. For example, when an internet user in Europe seeking information about South Africa types in the address
PROPOSED NEW POLICY TO PROTECT COUNTRY DOMAIN NAMES
The Republic of South Africa proposes that WIPO recommend to ICANN that it adopt the following policy and procedure, to amend the policy and the procedure for ICANN's Uniform Domain Name Dispute Resolution Policy:
"1. ICANN should adopt the following policy, and instruct all authorized registrars to comply with this policy, and amend all Registrar Licenses and Agreements to include this policy:
No second level domain name can be registered in any gTLD which is the same as the official or common name of a sovereign nation, except by the sovereign nation itself; or upon the authority of that nation, and any sovereign nation has the right to have anyexisting such registrations canceled and/or transfe"ed to the sovereign.
II ICANN should amend ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP) to provide for the following procedures and obligations to implement this policy:
a. Any sovereign nation has the right to bring 8n arbitration before an ICANN-authorised dispute resolution service provider against any registrant in a gTLD of a domain name in which the second level domain name is the same as the official or common name of the sovereign nation.
b. Such arbitration shall be mandatory and binding, the recognition and enforceability of any such arbitral process or award shall be governed by the New York Convention on the Recognition and Enforcement of Foreign Arbitral A wards of 1958.
c. In such arbitration, if it is determined that the registrant's second level domain name is the same as the official or common name of the sovereign nation, the domain name shall be ordered transferred to the sovereign nation. The arbitrator shall have the discretion to award to the reg;strant the following; (1) a monetary payment not to exceed US$10, 000, if the arbitrator finds that the registrant acted in good faith in registering the domain name and with a bona fide intent to provide services at that domain nameJ' and (2) request the sovereign nation to provide, for a period of up to one year, a link on the home page of its website at the domain name, which links to any new web site of the original registrant, if the arbitrator finds that the linked website is used for an appropriate purpose, unless otherwise agreed by the parties."
SUMMARY
Restricting the abusive registration of domain names in this category second level domain names in gTLDs which are the same as the official or common names of sovereign nations --would have the beneficial effects of promoting information and electronic commerce concerning developing nations, would permit those developing nations to exploit these valuable national assets to the advantage of their citizens, and would help to narrow the serious problem of the digital divide between developed and developing nations. This change would affect only a small number of registrants, who acted without any reasonable expectation that they had any property rights to these domain names, and would provide relief to such registrants as the arbitrator deems appropriate.
LEGAL CHALLENGE AGAINST REPUBLIC OF SOUTH AFRICA
South Africa further responds to WIPO's inquiry in mid-January 2001 regarding the status of the litigation in the United States against the Republic of South Africa commenced by Virtual Countries, Inc., a private for-profit United States corporation that is the registrant of the domain name
In further response to the inquiry from WIPO, the Republic of South Africa confirms that it has not commenced any arbitration concerning this domain name before WIPO or any other arbitral authority. The Republic of South Africa contends that the lawsuit is a preemptive attempt by the private U.S. corporation to obtain a ruling from a United States court in order to circumvent WIPO' s consideration of this very issue. Virtual Countries, Inc., which has registered approximately fifteen domain names in which the second level domain name is the same as the names of sovereign nations, is one of the leading examples of entities that engage in this type of abusive, misleading and unfair registration of Country Names. It remains the view of the Republic of South Africa that the United States court lacks jurisdiction to determine the rights of the Republic of South Africa, particularly since the Republic of South Africa is a sovereign nation entitled to sovereign immunity from such lawsuits, and in any event that the lawsuit initiated by Virtual Countrie$ has no merit.
For further information, please contact
Ms Kitten Mat thews
Ministry of Communications, South Africa
Phone: 27-12-427-8000
Fax: 27-12-427-8026
Email: kittenm@doc.DWV.OOV.z.a
URL: httD://docweb..owv.aov.za