Comments in Response to the Secretariat's Questionnaire on the Protection of Country Names in the Domain Name System
To: World Intellectual Property Organization
Your reference: document SCT/S1/6
Questionnaire on the Protection of Country Names in the Domain Name System
Dear Sirs,
Enclosed please find the submissions as regards the above questionnaire contained in your letter of December 19, 2001. My submissions reflect the opinions of our organization.
February 26, 2002
Sincerely yours,
Takeshi Kikuchi
President
Arbitration Center for Industrial Property
The Protection of Country Names in the Domain Name System
Under the current domain name registration system in Japan, there is no procedure for pre-investigation to detect potential infringement issues at the time of registration of domain names. Rather, issues regarding domain names are dealt with under the UDRP (Uniform Dispute Resolution Policy), after they actually emerge. It is true that there is a possibility of establishing such a pre-investigation procedure to cancel a domain name registration including infringement issues. However, that will be contradictory to the first to file rule, that is, the no review rule that the current domain name registration system has adopted since its inception.
Under the circumstances, the question of how to protect country names in the domain name system poses an important question in the context of the borderless internet world. Should we stick to the no review rule, or should we move forward to approaching such a review system for registration as adopted in the trademarks registration system?
The followings are my opinions in this regard.
(i) 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?
Currently, there is no universal code or treaty on the integrated registration procedures for trademark or domain name system, and each country has its own original registration procedures. Although it is true that the countries within the framework of the Paris Convention and TRIPs Agreement are under obligation to implement those treaties in respect of the trademark registration system, there is no universal standard relating to the protection of country names that those countries are subject to. On the other hand, domain names have more flexible elements in nature than trademarks, because they are directly related to the cyber world. Therefore, it may be easier to establish a universally integrated procedures for registration of country names in the domain name system than those for registration of country names in the trademark system. They should be accomplished as soon as possible according to such standards as the United Nations Terminology Bulletin or ISO3166, through the discussions of a special task force.
(ii) In what languages should country names be protected?
In what languages country names should be protected is a very difficult problem. In my view, the following ten languages should fall within the scope of protection: English, German, French, Italian, Spanish, Russian, Chinese, Korean, Portuguese, Arabic, in addition to the specific country language in issue. This scope of protection may be extended to the limited degree.
(iii) To what domains should any protection be extended (for example, to all, both existing and future, gTLDs, only to future gTLDs, also to ccTLD, etc.)?
Only gTLD (generic TLD) or ccTLD (country code TLD) that will be registered in the future should fall within the scope of protection. With regard to the ones that have already been registered, it may be appropriate to add some extent of time limitation to their current protection period.
(iv) How should any alleged acquired rights be treated?
Generally speaking, domain names are not regarded as a legal right. This led to the current chaotic situation surrounding the protection of domain names on the internet. So, in my view, there should be some legal frameworks in which domain names are protected in the almost same way as trademarks. (In some countries, the tile of a literary work is protected under their copyright laws. This may be interesting in this regard.)
(v) What mechanism should be used to implement protection (for example, the UDRP or some other mechanism)?
The procedures for protection of country names in the domain name system should be based on the UDRP. However, the current procedures under the UDRP require the submission of evidence of a malicious intent. This may constitute an undue burden for applicants. So, the current UDRP procedures should be revised to the extent that there is no pre-requisite of submission of evidence in this regard.
(vi) Should any protection extend to the exact country name only or also to misleading variations?
Such a revision of the current UDRP as mentioned above should be made within the limit of legal certainty.
(vii) Should protection be absolute or should it be dependent on a showing bad faith?
The protection of country names in the domain name system should be absolute.