Comments in Response to the Secretariat's Questionnaire on the Protection of Country Names in the Domain Name System
GOVERNMENT OF CANADA SUBMISSION TO WIPO ON SCT/SI/6 QUESTIONS ON GEOGRAPHICAL TERMS
The Government of Canada would like to thank the World Intellectual Property Organization (WIPO) for its comprehensive Report on the First Special Session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) on the Report of the Second WIPO Internet Domain Name Process, and is pleased to provide comments on the proposed questions on geographical terms.
General principles
The Government of Canada is of the view that, as a general principle, the rules that apply in the physical world should apply equally, as much as is technologically possible, to the virtual world. A corollary of this principle is that there should not be new legal obligations or rights created in the virtual world that do not already exist in the physical world.
The Government of Canada recognizes that domain names have become an important identifier for commerce. As well, the Internet and the World Wide Web have become an increasingly important source of information. In many cases, they are the primary sources people consult when looking for information.
The same could be said for information on countries or governments. The Government of Canada also recognizes the need of countries to have a presence on the World Wide Web, and supports their interest in finding ways to ensure that this information can be easily found.
The Domain Name System (DNS)
Unlike the situation in the physical world, where dozens of different products and services can use the same word or name as trade-marks, within the Internets DNS, only one entity can use a particular domain name within any given top level domain (TLD). As a result, the growing use of the DNS meant that some users were unable to acquire a name that was already in use. This perceived "scarcity" is being addressed in a number of ways.
As in the physical world, the DNS allows registrants to combine words together in a manner that allows for multiple domain names to make use of the same words in variations. For example, with country names, one could register "infocanada.com" or "canadainfo.com" as reasonable substitutes.
Secondly, the creation of new generic TLDs was approved by ICANN in order to respond to the perceived depletion of names in the DNS. Seven new gTLDs were approved and some have already begun operations. In addition, there are over 240 country code TLDs for which the respective government or public authority may assume some level of policy oversight.
Another phenomenon that is reducing this perceived scarcity, is the increased popularity of so-called higher-layer naming systems, search engines and directories. It is important to remember that the DNS was not established to be a directory system and, although it is used in this manner, its functionality in this respect is limited. Internet users are more likely to use a directory or search engine to find the information they require than by simply typing in a URL. The result of such a search is a list of websites that make use of the search terms. Several different entities can ensure that their website comes up in the list whenever those same search terms are used, thus potentially alleviating the perceived scarcity.
Country Name Protection in the DNS
The most frequently stated concerns about the registration of country names in the DNS are twofold. First, as mentioned above, there is a concern about the perceived scarcity arising from the fact that only one registrant can register a given domain name within a particular TLD. Since only one registrant can register "nameofcountry.com", one can argue that such a registration creates an exclusive use of the country name that does not exist outside the DNS and therefore such exclusivity should belong to the relevant government or public authority. The second concern is that the registration of country names by a party other than the relevant country or public authority can cause confusion in the minds of Internet users as to whether or not the site has any official status.
As noted above, there are various technical ways in which the perception of scarcity, exclusive use and potential for confusion are being addressed. The flexibility to combine country names with other words in gTLDs, the creation of new gTLDs, the ability of a national government to establish policy governing the use of its country name in its respective ccTLD, and the emergence of higher-layer naming systems, search engines and directories, all contribute to alleviating perceived scarcity and improving the ability of users to find the information that they want from various sources. In addition, government policies regarding their use of the Internet can address the "confusion" issue by the use of common design elements and protected wordmarks or other insignia which clearly identify to users whether or not the site is associated with the government.
The recognition of some form of generally-applicable priority or right for governments to register their country names within the DNS could, if pursued diligently by governments in all TLDs, enable an exclusive right for governments in the use of their country names on the Internet a right that does not exist in the physical world. Currently, nothing prevents anyone from using country names, for example, as the titles of books and magazines, as the names of stores and restaurants, or as brands for clothing and other consumer products. Hence, the following questions arise: would the proposed new priority or right for governments give rise to policy concerns equal to or greater than those that arise from the status quo? In other words, is the proposed remedy proportional to the perceived problem?
Establishing such a priority within the DNS raises a number of issues that have not been fully explored. These include, but are not limited to, the treatment of acquired rights of existing users of such names and concerns about freedom of expression. For example, any attempt to apply a policy of protecting country names within existing TLDs would raise issues related to the rights of current registrants of country names. Unless a policy of grandfathering current registrations were applied in that context, the policy would raise business and legal issues, including potential lawsuits, and the possibility of trade issues where the registrant is located in a country other than that of the country name. As well, the ability of a national government to establish a de facto exclusive use of its country name within the DNS could be perceived as limiting freedom of expression and the ability to engage in democratic debate. In addition, the potential impact of granting some protection within the DNS to country names raises issues in relation to ongoing international discussions about protection of other geographical identifiers. Many of these issues remain unresolved.
In light of this discussion, it is not readily apparent that creating the potential for the exclusive use of country names by governments in all existing or future TLDs within the DNS would be in the interests of the Internet community at large. Its impact could be contrary to one of the underlying rationales for creating new gTLDs in the first place, that is, the alleviation of the perceived scarcity in domain names. As recognized in the Report of the Second WIPO Internet Domain Name Process, the issue of the registration of country names is not covered by existing international laws or treaties. Accordingly, Canada believes that the matter ought to be dealt with in the context of international law or treaties before any recommendation can be made to ICANN to take such action.
Dot-info TLD
The Government of Canada supports the protection for country names in the dot-info gTLD, as set out in the communiqué from the Governmental Advisory Committee (GAC) to ICANN. We believe that this is a compromise that answers many of the concerns raised by certain governments in a timely manner and in a way that does not prejudice international discussions on the broader issues of protecting country names. It also provides an opportunity for countries to have their own space on the web without creating a new broadly applicable exclusive right. Afilias, the company in charge of administrating the dot-info domain name, has agreed to withhold the registration of over 300 country names until ICANN meets in March, 2002 and gives more direction. We note, as well, the discussion within ICANN regarding the possibility of establishing a gTLD intended solely for use by governments as an additional means of addressing these concerns.
Answers to Questions
With this discussion in mind, the Government of Canada responds to the following questions.
(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?
Canada supports the GACs recommendation concerning country names in the dot-info registry, including how the name of a country should be identified and whether the short and long name should be protected. The GACs recommendations are premised on the ISO Standard 3166.
(ii) In what languages should country names be protected?
Canada supports the GACs recommendation that country names in the dot-info gTLD would be protected in English and in the official language(s) of each country (using the Roman characters with no accents).
(iii) 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.)?
For the reasons set out in Canadas submission, country name protection should be limited to the dot-info gTLD. Protection should not be extended to existing or future gTLDs until such time as governments have agreed on an acceptable level of protection for country names in the appropriate international fora.
(iv) How should any alleged acquired rights be treated?
Alleged acquired rights should continue to be treated in a manner consistent with the UDRP. The registration of a domain name may be contested by a common law trade-mark rightholder though the UDRP. Similarly, such rights may be used as a defence against allegations of bad faith registration of a domain name.
(v) What mechanism should be used to implement protection (for example, the UDRP or some other mechanism)?
Since dot-info registrations are subject to the UDRP, we believe this is the best mechanism for protection.
(vi) Should any protection extend to the exact country name only or also to misleading variations?
Canada supports the GACs recommendation that the ISO Standard 3166 be used.
(vii) Should any protection be absolute or should it be dependent upon a showing of bad faith?
Since the dot-info will be subject to the UDRP, a showing of bad faith and the other relevant criteria will be necessary.
March, 2002