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WIPO Targets Abuse of Trademarks on the Internet

Geneva, April 30, 1999
Press Releases PR/1999/170

In a report published on Friday, the World Intellectual Property Organization (WIPO) sets out a series of recommendations that are aimed at curbing the abuse of trademarks on the Internet. The WIPO report has been presented for consideration to the Interim Board of the Internet Corporation for Assigned Names and Numbers (ICANN), the new non-profit international corporation formed to oversee a select number of the Internet's core technical management functions.

The report is the culmination of a process initiated by WIPO in July 1998 in response to a request by the United States, one of WIPO's 171 member states. It addresses questions relating to domain names, intellectual property and related dispute-resolution issues. For the first time ever, the report sets out a definition for the abusive use of trademarks on the Internet.

With the explosive growth of the Internet and the increasing use of domain names as business identifiers, these issues have sparked great interest and worldwide debate. Among the problems identified in WIPO's report, and directly addressed by its recommendations, are bad faith, abusive registrations of domain names, also known as "cybersquatting," as well as the countervailing practice, referred to by domain name holders as "reverse domain name hijacking." "Cybersquatting" occurs when individuals register a recognized trademark as a domain name and attempt to sell it to the genuine owner of that trademark for commercial profit. So-called "reverse domain name hijacking", which has appeared as a reaction to this, involves big businesses threatening to sue legitimate domain name registrants who do not give up the right to the registration.

WIPO issued an interim report in December 1998 based on international consultations. Experts at WIPO then engaged in a second series of regional consultations to receive comments on the draft recommendations. The final report reflects the concerns that were expressed in the course of this process. Some of WIPO's initial recommendations have been reversed, others have remained intact and a few have been modified.

"In the final report, WIPO has made changes to the draft recommendations contained in its interim report in a concerted effort to build consensus amongst the diverse Internet stakeholders, and to produce practical recommendations for an effective Internet domain name system," said Mr. Francis Gurry, WIPO Assistant Director General. He added "WIPO has conducted a truly international process, aimed at openness and transparency, with the widest possible geographical and sectoral participation among those interested in the future of the Internet."

WIPO's consultations were extensive. They were conducted via three "Requests for Comments" which were widely distributed, published on the web site (at http://wipo2.wipo.int), and discussed in 17 regional consultations in 15 different countries. The process attracted the participation of over 1,300 participants from 74 different countries, including many governments.

The recommendations were made with the assistance of a multi-disciplinary panel of 15 international experts, set up by WIPO to contribute their expertise and to reflect the concerns of the intellectual property, Internet and public interest communities.

The final Report addresses four areas: dispute prevention, a uniform system of dispute resolution, the protection of famous and well-known marks in generic top level domains (gTLDs), and the impact on intellectual property of adding new gTLDs. WIPO makes a number of recommendations aimed at meeting the concerns of the rapidly expanding Internet-user community, and at giving recognition to the diverse social, commercial and communication purposes for which the Internet is used.

  • Key Recommendations:
  • A set of minimum "best practices" to be adopted by all gTLD registration authorities. In particular, WIPO has recommended that the contact details of applicants using existing gTLDs be collected, and that those details be freely and instantly available over the Internet. WIPO also invites interested country top level domains (ccTLDs) to implement these practices.
  • A uniform and mandatory administrative dispute-resolution system, to address cases of bad faith, abusive registrations, also known as "cybersquatting." Using this system, panels of three experts would apply the streamlined, quick and cost-effective procedures outlined in the report, to review multiple claims and eliminate cases of clear abuse of trademark holders' rights, leaving the more complex cases to the courts.
  • A system by which owners of globally famous marks can obtain exclusions prohibiting others from registering the marks as domain names in gTLDs. The status of these marks would be determined by a panel of experts drawn from a list administered by WIPO.
  • The WIPO report recommends further study and consultation on the feasibility of adding a differentiated non-commercial and use-restricted domain that could address the need for privacy and free speech on the Internet. In such a domain, users could agree that their contact details would remain private on condition that they refrain from commercial activity or from actions that might infringe the intellectual property rights of others. The suggestion needs more consultation before any recommendation can be made about it.
  • Provided that the recommendations in the report are adopted and implemented, WIPO believes that the introduction of new gTLDs is possible. However, it does maintain that any new gTLDs should, in any event, be added to the domain name system in a slow and controlled manner to ensure that the impact of this experience is monitored and assessed.

WIPO's recommendations have been presented to ICANN for consideration at its Berlin meeting on May 25-27, 1999. WIPO will present this report to its 171 Member States at their annual meeting in September.

For further information, please contact the Media Relations & Public Affairs Section at WIPO:

Telephone: (00 41 22) 338 81 61 or 338 95 47
Fax: (00 41 22) 338 88 10
E-mail: publicinf@wipo.int

Transcript of Press Conference by Francis Gurry, Assistant Director General, May 3, 1999.

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