Comments in Response to the Secretariat's Questionnaire on the Protection of Country Names in the Domain Name System
United States Patent and Trademark Office
March7, 2002
Special Session of the Standing Committee on the Law of Trademarks, Industrial Designs, and Geographical Indications
Submission of the United States on SCT/SI/6 Questions on Geographic Terms
Introduction
The World Intellectual Property Organization (WIPO) Report on the Second Domain Name Process (WIPO 2 Report) concluded that "protecting country names in the gTLDs would require or amount to the creation of new law, a function traditionally reserved for States." 1 Thus, the final Report did not recommend that country names be included within the Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Dispute Resolution Policy (UDRP). Instead, the WIPO 2 Report recommended that protection of country names in the Domain Name System (DNS) "be further considered in the appropriate intergovernmental fora, in particular with a view to a discussion on the need for new international rules for the protection of country names."
The issue was discussed within the Special Session of the Standing Committee on Trademarks, Industrial Designs, and Geographical Indications (SCT) on November 29 December 4, 2001. The Report from that discussion, SCT/SI/6, indicates that "most delegations favoured some form of protection for country names against registration by parties unconnected with the constitutional authorities of the country in question. However, it was recognized that many details of any such protection were unclear." This admitted lack of clarity prompted the Report to ask for answers to a series of questions designed to flesh out the framework for protection that Member States were contemplating.
As the WIPO 2 Report recognized, the main obstacle to providing any UDRP-type protection for country names is the lack of existing international protection for the names of countries. However, lack of consensus has not resulted from lack of interest or discussion. There have been many debates within the context of the Paris Convention on the issue of protection for geographical indications and other geographical terms but the discussions on country names did not result in international agreement. After lengthy debate, specific intellectual property protection for country names has been considered and rejected as both difficult and unnecessary.
I. Threshold Question: Is there a Problem?
The discussion questions raised in Paragraph 132 of SCT/SI/6 presuppose that protection for country names within the DNS is desirable. The United States is not convinced that such protection is either desirable or necessary. We have not seen evidence that the actual harm from domain name registrations containing the names of countries outweighs the harm that a solution to this problem could cause. Further, an acceptable solution already exists in many countries in the form of national laws that prohibit the misuse of a country name where consumers would be misled as to a connection or affiliation with the country or its government.
There exist over 45 million domain name registrations across all TLDs. Through January 2002, the WIPO Arbitration and Mediation Center disposed of 3457 UDRP cases -- WIPO handles a significant number of these cases. Disputed domain names resulting in UDRP proceedings before WIPO thus accounted for .0000768% of the domain names registered in all TLDs existing as of January 2002. The number of contested cases involving a domain name that consists of or comprises the name of a country might be even smaller. In fact, what may actually be at issue in this controversy is only a handful of domain names. While such cases are significant to the parties involved, it is questionable whether given the small numbers involved they should form the basis for policy decisions that would affect all domain-name owners.
The U.S. has extensive experience with litigation regarding rights on the Internet. U.S. courts hear cases covering all aspects of Internet conflict between defendants, plaintiffs, intellectual property owners, free speech advocates, wrongdoers, and innocent infringers. We recognize that any proposed solution to the issue of country names in the DNS will have serious consequences for many of these groups. In an attempt to find solutions that could mitigate those consequences, we have actively explored options to address conflicts within the DNS. The United States Government sends representatives to participate in the ICANN meetings, both within the Intellectual Property Constituency (IPC) of ICANN and the Governmental Advisory Committee (GAC), and has been actively engaged in the debates within those fora as to the issue of the bad faith registrations of domain names. At this point, the United States has not found that the alleged abuses of country names or geographic terms within the DNS outweigh the potential harm from creating a solution to the perceived problem.
An important consideration for the United States as well as for other SCT delegates is that the SCT does not have a direct impact on the mechanisms to be implemented within the DNS. Any recommendation that the SCT makes to the WIPO Governing Bodies must then be submitted for consideration to the ICANN Board. The Board would vote on whether to implement a particular recommendation from WIPO within the DNS. The ICANN Board could very well reject any recommendation that WIPO makes on this issue, especially if such recommendation were perceived as punishing domain name registrants for legal conduct.
II. Intellectual Property Solution vs. Technical Solution
For purposes of the May 2002 special session, the SCTs discussion of protection of country names in the DNS must acknowledge the three options available: (1) retention of the status quo because the problem does not outweigh the harm from the solution as noted above; (2) creation of intellectual property rights in country names, or (3) creation of a purely technical solution outside of the IP context.
In discussing those options, we must also acknowledge that creation of intellectual property rights in country names through international negotiations will extend such protection to all sectors of society, not just to the Internet. Such repercussions must be carefully considered. On the other side of the coin, ad hoc technical solutions for the DNS for country names outside of the intellectual property context may also have repercussions within the intellectual property context.
As has been noted, there is no international consensus on intellectual property protection for country names, much less on "cybersquatting" of country names. It should be emphasized that implementing a dispute mechanism, the UDRP, within the DNS for trademarks was possible because there already were international norms regarding recognition and protection of trademarks. Such recognition and protection of country names does not exist internationally. In fact, there are differing views as to whether there is even a problem to be addressed. Thus, an amendment of the DNS to address an issue perceived only by some as a problem could result in a decline in the legitimacy of the DNS.
Furthermore, the United States is not convinced that such protection is even possible without severely impacting fair use of terms or without infringing established rights in trademarks. Among the United States concerns is the fact that existing domain names which consist of or comprise country names have been registered in good faith. Few national laws prohibit such registration. Domain name speculation and reselling are typically not acts prohibited by national law. Thus, any action proposed by the SCT against these domain name registrants such as cancellation or transfer of the domain name registrations might be viewed as an expropriation by the State, since the registrants themselves did nothing illegal.
The discussion questions posed in SCT/SI/6 suggest that the International Bureau is interested in exploring technical solutions to achieve the end result that some countries are looking for. The United States is very cautious about applying technical solutions to address academic problems for reasons addressed below.
III. Unworkable Technical Solutions
A. Exclusion Mechanism
The WIPO 2 Report discussed two mechanisms for regulating terms within the DNS that perhaps should be more fully explored here. The first is an "exclusion mechanism." An exclusion mechanism works to prevent future registrations of domain names consisting of the names of countries by removing them from the available pool of names before a new top level domain (TLD) begins taking registrations. An exclusion mechanism can also be used to prevent registrations of names of countries in existing TLDs when they have not yet been registered by someone else. In this way, registrars the domain name retailers cannot assign the names of countries as domain names to any applicant for a domain name. The names are reserved by the registry operators the domain name wholesalers to prevent any registrations of those terms. However, an exclusion mechanism is not an appropriate tool to cancel an existing domain name.
There are two basic premises under which an exclusion mechanism operates: 1) the terms being reserved are "protected" and should be reserved for later registration by the "proper" owner, or 2) the terms are excluded so that no one can register them.
Regarding the first premise, country names are typically not reserved for the exclusive use of the government or a countrys citizens. Reserving a domain name so that a government of a country has the right to register the name at the expense of others with rights would create a de facto right in the name of the country, suggesting that the countrys government is the "proper" owner of the country name. Such an action itself suggests that any use of a country name is unauthorized unless the user has consent from that countrys government.
The second premise reserving the term so that no one can register it -- assumes that no one has a right to register the name of the country. The United States believes that country names can be freely used. This is not to say that there should never be a prohibition on the use of a country name. Many countries, including the United States, have national laws preventing the use of country name where its use would mislead consumers into thinking that the user of the name is associated with the government. However, these laws are designed to prohibit and punish criminal activity. 2 Criminal activity of this nature must be differentiated with mere commercial activity. 3
1. What Names Would Be Reserved?
Exclusion mechanisms are also problematic because they require a pre-determined list of terms in all languages and dialects to be reserved. Such a list would therefore necessitate an agreement by all countries as to what constitutes "state-hood" and which dialects might be worth reserving and which ones might not. Furthermore, the mechanism can only be implemented in future TLDs.
A list of names to be reserved by the Registry Operator must be decided on before an exclusion mechanism can be implemented. A definitive internationally agreed upon list of countries and their names does not exist at this time. Using an existing unofficial list or creating a new list could have the unintended consequences of elevating a geographical place or entity to "state" status. Avoiding such unintended consequences would require full national review by all relevant ministries. Is this an exercise that WIPO Members wish to undertake? Is the perceived harm worth the expenditure of resources to create such a list? Will deciding on or creating a list become more of a trade discussion rather than an IP discussion? What would Members be willing to trade to ensure that their names are included on the list?
2. In What Form Should Country Names be Reserved?
An exclusion mechanism requires the countries to be listed in whatever form is to be reserved, including the languages to be covered, the spacing to be covered (hyphens or telescoped composite terms), or the variations to be covered.
If an exclusion mechanism were implemented for future TLDs, it would be reasonable to expect that WIPO Members would want the list of names to be reserved to include languages such as Mandarin, Spanish, English, Hindi, Russian, French and German, in both Roman and non-Roman characters. However, if protection were extended only to a discrete set of languages, it would likely subvert one of the main goals of extending protection to country names. It is presumed that, in crafting an exclusion mechanism for protection in future TLDs of country names, countries will request protection for dialects as well as for other languages.
The list of languages that developed and developing countries would like to protect would not be infinite, but it would be very lengthy and difficult to manage. Creating such a list or using an existing list not developed for this purpose nor agreed upon internationally, is not practical. In the interest of fairness, such a list would require frequent changes as countries become aware of new, previously unprotected rights in their individual country name.
3. In What TLDs?
For reasons we have explored, an exclusion mechanism would only apply to TLDs that have not yet come online. Country names that are still available in the existing TLDs would be registered by the country identified, if the country desires to prevent others from registering that domain name. No remedy is necessary in those cases. An exclusion mechanism for existing TLDs is not an exclusion mechanism, but a taking mechanism, since it would involve taking existing domain names from current owners.
For the reasons discussed above, it should be clear that an exclusion mechanism is limited in what it can accomplish, and possibly causes more problems that it solves. An exclusion mechanism for country names in all future TLDs is a solution for an activity perceived as a problem by only some of the worlds governments. In fact, many governments do not perceive such registrations to be a problem and would view an exclusion mechanism for country names to constitute tortious interference with a private contract.
B. Challenge Mechanism
As we have seen, since exclusion mechanisms can result in absolute protection of country names, thus granting ownership rights to the countries, the reservation of names will not be viewed by all WIPO Members as an acceptable solution. Of course, exclusion is prospective. For those countries desiring action against existing registrations, some type of challenge mechanism would have to be created to address retrospective existing registrations that consist of country names.
The ICANN UDRP is a useful model of a successful challenge mechanism that can regulate existing registrations of trademark terms. However, the greatest obstacle in fashioning a challenge procedure for country names is determining the basis for the challenge. Currently, trademark rights or other preexisting internationally recognized rights do not exist for country names. Therefore, it is questionable whether any basis other than that of force majeure could provide the legal theory for taking domain names from existing owners, for the sole reason that the domain name is the same as the name of a country.
IV. Potential Workable Solutions
A. Country Code Top Level Domains
An existing mechanism for ensuring a countrys "national presence" on the Internet lies in the use of the country code Top Level Domains (ccTLDs). In light of the lack of an international framework for intellectual property protection of country names and the attendant lack of a consensus to provide such protection, ccTLDs appear to be the appropriate places to implement mechanisms to safeguard the interests in place names within those national domains. If a country is interested in having a domain name registration consisting of the name of their country, the easiest solution is to create such a space within the ccTLD of that country.
B. Dot Info
Another opportunity for countries is currently being debated within the Internet Corporation for Assigned Names and Numbers (ICANN). As a way to ensure that newcomer countries to the Internet have a namespace in a commercial top level domain (TLD), it was proposed by the ICANN Governmental Advisory Committee (GAC) that the country names that were not already registered by legitimate trademark owners in the new "dot info" TLD be reserved from general registration. The ICANN Board will be discussing the idea of whether those names should be then assigned to the appropriate head of government of that country at the March 2002 ICANN meeting in Accra, Ghana. This reservation and assignment would be strictly limited to the "dot info" TLD and no others.
C. Official Top Level Domain for Governments
Yet another solution being discussed in ICANN is the creation of a new "official" TLD whereby only governments could register their names and political subdivisions. The charter for the TLD would have to be strictly regulated to prevent registrations from non-governmental registrants. In theory, there would be no confusion with trademark owners since the charter would be limited to registrations of country names, federal departments and agencies. Furthermore, situations such as Paris France versus Paris, Texas could be solved by assigning the second level domain to the country and then the country could allow registrations by governmental entities at higher levels: paris.texas.us.xyz or paris.france.xyz. This proposal has not yet been fully developed within ICANN.
D. WHOIS
While there are many country names registered in good faith as domain names by businesses and the like, there are presumably some country names registered in bad faith. For those instances, an administrative basis for cancellation of domain names registered in bad faith does exist. The existing provisions in the domain name registration contracts require the domain name registrants to provide -- and update as necessary -- accurate contact information for the WHOIS (pronounced "who-is") database. Registrars may cancel the registration of any domain name holder who fails to provide accurate contact information with their domain name registration application or who fails to update that information. Naturally, bad faith actors typically have no incentive to supply accurate contact information. Therefore, enforcing the relevant contact information provisions of existing registrant/registrar contracts seems a practical expedient for removing bad faith domain names.
Specifically, the ICANN Registrar Accreditation Agreement requires registrars (those who provide domain name registration services) to include in their contracts with the domain name registrants the following provision:
A Registered Name Holder's willful provision of inaccurate or unreliable information, its willful failure promptly to update information provided to Registrar, or its failure to respond for over fifteen calendar days to inquiries by Registrar concerning the accuracy of contact details associated with the Registered Name Holder's registration shall constitute a material breach of the Registered Name Holder-registrar contract and be a basis for cancellation of the Registered Name registration.
If "bad faith" registration of domain names is the activity troublesome to governments as well as to business owners and consumers, then attention should be focused on ways to prevent or deter bad faith actors from engaging in such activities. At an international level, such a solution may be elusive since, in the absence of any international standards, the definition of "bad faith" will change country by country and identifier by identifier. A focus on the contractual obligations of all domain names registrants namely, the obligation to provide accurate contract information avoids the difficult issue raised by differing standards of "bad faith."
Conclusion
As indicated above, the United States is not convinced of a problem within country names that should be addressed on an international basis. To the degree actual harm does exist, we wonder whether existing criminal provisions in national laws might not address wrongdoing against a sovereign.
But merely because the United States does not perceive a problem does not mean that the problem is not real for others. In that regard, the United States has been working through WIPO and ICANN to devise potential solutions that could address the perceived problem without impacting existing rights, creating new obligations for countries, or unfairly punishing domain name registrants. So far, it appears that an exclusion mechanism for future TLDs would essentially create an intellectual property right in the name of a country to be owned and controlled by that countrys government, and therefore we pose the question of whether it is wise, as a matter of intellectual property policy, to create a de facto intellectual property right on an ad hoc basis. As for a retroactive challenge mechanism, there does not appear to be an appropriate legal basis to institute such a procedure and additionally, the issue of sovereign immunity poses a serious and legitimate obstacle. In contrast, the workable solutions posed in Part IV of this paper could provide a positive way forward to address the outstanding concerns of some countries without many of the adverse consequences for pre-existing rights or national sovereignty.
The United States is very interesting in hearing what other delegations have discovered in their efforts to answer the questions posed in the SCT Special Session Report and hopes that suggestions from other delegations will greatly enhance the discussion at the upcoming Special Session meeting in May 2002.
Footnotes:
1. "The Recognition of Rights and the Use of Names in the Internet Domain Name System," pg. 122 (2001).
2. For example, in the United States, except as permitted by the law, it is a criminal offense to use the term ''United States'' as part of a business entity engaged in the banking and loan industry. See 18 U.S.C. § 709. Also, under 18 U.S.C. § 712, it is a criminal act to use the term "United States" or "U.S." in connection with the collection of private debts or obligations for the purpose of conveying and in a manner reasonably calculated to convey the false impression that such communication is from a department of the United States or in any manner represents the United States.
3. The prohibited criminal activities, where consumers are or could be misled, should be contrasted with the commercial use of geographic terms under U.S. trademark law where use of a country name, for example, would be acceptable if consumers would not be misled as to the origin of the goods or services. Under the
U.S. trademark law, 15 U.S.C. § 1052(e)(2) and (3), a trademark consisting of a geographic term will be refused registration if, when it is used on or in connection with the goods or services, it is primarily geographically descriptive of them or if it is primarily geographically deceptively misdescriptive of them. If consumers would not be confused as to the source of the goods or services, i.e., they wouldnt think the goods came from the place named in the mark, the mark is eligible for registration.
An additional contrast from the criminal use of the term "United States" is in the domain name context. We note, for example, that there exist three different owners of websites located by the domain names www.usa.com, www.unitedstates.com, www.unitedstatesofamerica.com. None of these websites is operated or endorsed by the U.S. Government, nor has the United States Government taken any action against the owners of the domain names based on concern over the domain names. The official websites of U.S. Government agencies are located in the .gov TLD; therefore, it is presumed that consumers are not confused by the existence of other websites that use the term "United States."