Comments in Response to the Secretariat's Questionnaire on the Protection of Country Names in the Domain Name System
Secretariat,
World Intellectual Property Organisation,
34 Chemin des Colombettes,
1211 Geneve 20,
Suisse
Questionnaire on the Protection of Country Names in the Domain Name System.
Dear Sir or Madam,
Please find attached the Irish input to your survey on the Protection of Country Names in the Domain Name Process. This is based on preliminary consultations
The Irish Government consider this to be an important issue and take the view that the objective must be to ensure that the protection afforded to the official and recognised designation(s) of States will be no less than that generally applied in relation to commercial and intellectual property.
States should be enabled to protect their official and commonly used designations. Those designations convey to the public the involvement of the State in the activities to which they are applied. Any unauthorised use by third parties of such designations (whatever the motivation) would most likely deceive or cause confusion on the part of the public and should not be allowed.
Thus, for example, there is a need to afford protection against:-
- the use of domain names which might imply official use or endorsement where no such use or endorsement exists or,
- conveying or attempting to convey a perception that a site is a State, government or other official one where it is not (including "passing off" as an official website).
Our responses to the questions posed (above) - (i)-(vii) are based on these principles.
The last four questions on the questionnaire are bound up with the extent and manner of protection; and seem to be based on the principles and method of the ICANN Uniform Dispute Resolution Policy (UDRP) which allows acquired rights in domain names to be defeated where the domain name is the same as or confusingly similar to a registered trademark and was registered in bad faith. The process by which it is enforced is one of modified arbitration, conducted largely via (WIPO and National Arbitration Forum) or on (e-Resolution, now defunct) the Internet. The process of resolving all such disputes via or on the Internet appears to be valuable and efficient. However, substantive problems may arise in applying the UDRP approach to country names. A country name is not normally a registered trade mark, so establishing a country's claim to a name could create difficulty - e.g., Ireland might claim an exclusive right to Eire (the name of the country in the Irish language) or .ie.
These are, to some extent, issues raised by the first three questions below, but unless a very clear basis for establishing an entitlement to a country name is devised in answer to those questions, any process produced in answer to the remaining four questions will be susceptible to criticism and to widespread variation in decisions.
(i) Q. How should the name of a country be identified (for example, by reference to the United Nations Terminology Bulletin, ISO Standard 3166, or by some other method) and should both the long and short names of countries be protected?
A. The measures to be adopted should be capable of protecting any designation (including numeric) which is officially recognised or commonly used as a designation by a state or by any official institution of State (e.g. A Department of State).
(ii) Q. In what languages should country names be protected?
A. In all and any languages.
(iii) Q. To what domains should any protection be extended (for example, to all, both existing and future, gTLDs, only to future gTLDs, also to ccTLDs, etc?
A. All domains, both existing and future.
(iv) Q. How should any alleged acquired rights be treated?
A. Where any such designations are already in use by third parties, provision should be made for them to revert to the State in an equitable manner. A suitable transition period might allow existing users to promote an alternative website/domain/identity. However, in cases where the appropriation was mischievous, and the domain registration authority or WIPO were satisfied that such was the case then the reversion to the State should be immediate and without a transition period.
(v) Q. What mechanism should be used to implement protection (for example, the UDRP or some other mechanism)?
A. Achievement of these objectives may require a convention or other international agreement which would be enforceable in signatory states and in respect of domain names registers.
(vi) Q. Should any protection extend to the exact country name only or also to misleading versions?
A. Include misleading variations (see principles above).
(vii) Q. Should protection be absolute or should it be dependent upon a showing of bad faith?
A. Absolute.
I look forward to the outcome of the survey so that the issue can be further discussed. Should you require any further clarification on any of the issues raised, please do not hesitate to contact me.
Yours sincerely,
Michael Clifford
Intellectual Property Unit,
Department of Enterprise Trade and Employment,
Earlsfort Centre,
Lower Hatch Street,
Dublin2
Ph: +353 1 6312592
Email: Michael_Clifford@entemp.ie