Comments in Response to the Secretariat's Questionnaire on the Protection of Country Names in the Domain Name System
Subject: WIPO SCT
Geographical Terms: Replies from the Services of the European Commission to WIPO
NB The text of the WIPO questions is in italics.
(b) Geographical Terms
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 recognised that many details of any such protection were unclear. It was decided that delegations should be invited to submit comments on the following questions to the International Bureau before the end of February 2002 and that the International Bureau should prepare a paper on the basis of comments received for distribution before the second special session of the Committee and for consideration by that session. The questions were:
As a general observation it must be noted that this reply has been drawn up in the context of the contemporary DNS using a sub-set of the ASCII character set. As and when the International DNS is deployed in other non-Latin Character sets, this area will have to be re-visited by WIPO and ICANN.
It is also worthwhile pointing out that whatever policy is put in place for the protection of geographical terms, an up-dating mechanism will be required, because the names of countries change over time.
Recent experience also suggests that the eventual protection policy should take account of the risk of abusive registration and re-direction of protected names for which registration has momentarily expired.
(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, the only nomenclature that is recognised in the context of the Internet Domain Name System is the ISO 3166-1 list. That was the basis for the GAC recommendation and ICANN Board Resolution regarding .info and the subsequent report published by the ICANN Internet Country Names Group (ICGN): http://www.icann.org/accra/icng-topic.htm
The ICANN Board resolution in response to the ICGN Report is at:
http://www.icann.org/minutes/prelim-report-14mar02.htm
The ISO 3166 list has acquired a certain standing in this area because it is the historical basis for the allocation of national ccTLD Registries.
The ISO list is however problematic, and several governments would be interested in a thorough reform for future purposes. However, any new list that resulted in existing ccTLD delegations being questioned would be opposed by the operator and user interests concerned.
Although the ISO 3166-1 list includes many sub-divisions and dependencies that happen to be islands, it tends to ignore political or administrative sub-divisions that are geographically co-terminus. Consequently it is not a suitable basis for defining geographical terms, more generally.
Any thorough revision of this list through the UN and ISO would take a long time, whereas an immediate solution was required for .info
Usually, the short name of the country would, no doubt, be adequate. Those short names that comprise two (or more) words will have to be designated with no-space a hyphen or an underscore, since no spaces are allowed in the DNS.
The reference to country names (as defined by ISO 3166-1) begs the question of what to do about geographical terms representing other geographical sub-divisions and geo-political concepts. GAC found that the ISO 3166-2 list (that attempts to address this question) is quite incomplete and inconsistent between countries. WIPO could invite ISO and member governments to proceed to complete and up-date the ISO 3166-2 list should that prove to be necessary. That would also take some time.
(ii) In what languages should the country names be protected?
Currently the GAC position on .info is that country names should be protected in recognised local official languages in Latin characters and in English. This is because the DNS operates exclusively with a sub-set of the ASCII 7 bit character set. For this to be done fairly and comprehensively, the competent authorities of the countries concerned must be consulted, notably regarding the transliteration of names in local official languages using non-Latin scripts.
Others have suggested that WIPO could consider extending protection to country names in local official languages and in the official languages of the United Nations.
In due course other character sets will be usable in the DNS (IDNs), at which time this restriction to ASCII would have to be re-visited.
(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.)?
The current position in ICANN and GAC is that the protection envisaged (a sort of temporary reservation) is limited to the one new gTLD concerned: .info
GAC was prepared to accept this limitation on the understating that WIPO would adopt a general policy in the near future.
It is not possible to apply new rules retrospectively to existing gTLDs because of the acquired rights in such names by the Registrants concerned. In such cases the only recourse would appear to be UDRP (if applicable) or the Courts.
By extension it is not possible to apply new rules to the ccTLDs past registrations.
The question of whether geographical terms should be protected in any other new gTLDs is still open for discussion. Most Internet Registries and Registrars would argue that they should not. It probably depends on what the strings of the new TLDs turns out to be and what they will be used for.
(iv) How should any alleged acquired rights be treated?
The primary objective should be to limit the acquisition of unjustified acquired rights through clear registration rules, sunrise periods and challenge procedures. UDRP should apply to those cases that are disputed. The GAC attempted (unsuccessfully) to limit such acquired rights in the new gTLDs by recommending caution in this regard in November 2000. It subsequently transpired that ICANN and the new Registries had not heeded that advice.
(v) What mechanism should be used to implement protection (for example, the UDRP or some other mechanism)?
Reservation of the names, pre-registration by the public authorities concerned and UDRP for any remaining disputed cases.
(vi) Should any protection extend to the exact country name only or also to misleading variations?
Protection should extend to the exact country name only (short version). Once the principle has been established that such names cannot be used indiscriminately, then misleading or abusive (bad-faith) use of variations on that name should be challenged under laws against fraud or passing-off.
(vii) Should protection be absolute or should it be dependent upon a showing of bad faith?
It is probably not necessary to establish a general rule in this regard. Many governments would apparently be quite comfortable with the use of e.g. countryname.info by a private entity for a variety of purposes (tourism, culture, marketing of national products, transport information etc.) provided that there was recourse against registration and use outside the country concerned, including bad-faith.