Comments in Response to the Secretariat's Questionnaire on the Protection of Country Names in the Domain Name System
QUESTIONNAIRE
ON
THE PROTECTION OF COUNTRY NAMES
IN THE
DOMAIN NAME SYSTEM
- Comments of the Hungarian Patent Office -
- 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?
Since no standard list exists in this matter, the name of a country should be identified by reference to the most widely accepted list of country names. If the official linguistic publication of the United Nations, the United Nations Terminology Bulletin, is considered the generally accepted list of country names, then it should constitute the basis for the protection of these names. The protection should above all concern the short names of countries as these are the most likely to be subjects of abusive domain name registrations. Protection of long names of countries is also recommended.
On the other hand, as far as ISO 3166 country code elements are concerned we subscribe to the view expressed in paragraph 292 of the Final Report according to which while ISO 3166 country code elements should be protected, absolute prohibition of registration and use of these country code elements is not necessary. ISO 3166 country code elements should be protected in a way which would not preclude the legitimate use of similar identifiers (e.g. a trademark or its acronym corresponding to a country code). This might be possible by permitting the use of these codes in combination with other names (for example, a trade name, company name or trademark) in a way that would allow the exclusion of any possible confusion with the country code elements.
- In what languages should country names be protected?
Country names are in general registered as domain names only in some commonly used languages but this should not be considered a sufficient reason for limiting the list of languages in which country names should be protected, especially if the protection also applies to ccTLDs.
- 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.)?
In order to reduce the risks of abusive registrations, protection should preferably apply to all existing and future gTLDs. The extension of the protection to ccTLDs is also recommended.
- How should any alleged acquired rights be treated?
Concerning acquired rights, registrations of country names as domain names made in good faith should be distinguished from those made in bad faith. Good faith should be established by demonstrating that there exists a real connection between the type of activity conducted under the domain name and the country name in question. (For example, the provision of information about the country concerned).
If absolute protection of country names is adopted, as far as acquired rights are concerned, bona fide domain name registrants will have to be entitled to fair compensation. If it is decided that protection of country names should be relative, i.e. dependant upon a showing of bad faith, legitimate users must be entitled to register country names as domain names.
- What mechanism should be used to implement protection (for example, the UDRP or some other mechanism)?
In a situation where protection of country names is absolute, this protection could be implemented in the form of an exclusion mechanism which would automatically exclude country names from the possibility of registration as domain names.
As far as the alternative dispute resolution procedures are concerned, the examples mentioned in paragraph 253 of the Final Report about complaints concerning country names show that there exist a certain need for such kind of protection. The question is whether this need is sufficiently important to justify any measures in this field. In the affirmative, the extension of the scope of the UDRP to registration of country names by the introduction of a new cause of action might constitute a solution.
- Should any protection extend to the exact country name only or also to misleading variations?
Extending the protection of country names to misleading variations would be recommended but it seems difficult to implement it in practice. Therefore, it is suggested that the protection of country names should be restricted at this stage to the exact names of countries.
- Should protection be absolute or should it be dependent upon a showing of bad faith?
Absolute protection of country names seems to be a too strict solution. Exclusions of registrations of country names as domain names should be dependent upon proof of bad faith.
In the case of a dispute, the burden of proof should rest upon the complainant.