AIPPI CONGRESS
Melbourne, March 24 to 30, 2001
Workshop No. III
Strategies In Domain Name Protection
March 27, 2001
Chairman: Christine Lowe (Australia)
Speakers: Francis GURRY (WIPO), Jane MUTIMEAR (Great Britain), Guillermo CAREY (Chile) and Zoltan TAKACS (Hungary)
Reporter: Susanna H. S. Leong (Singapore)
-The Uniform Dispute Resolution Procedure (UDRP) in the Generic Top-level Domains (gTLDs)
-Status of the new gTLDs, likely timetable to implementation, what protection is offered to intellectual property rights holders and what companies need to do to take advantage of the protection
-What legal remedies are available when UDRP is not available
-Strategies in Domain Name Protection – Commercial remedies when UDRP is not available and the role of the ccTLDs – a trademark view
Summary Report
by Susanna H. S. LEONG
The workshop was chaired and introduced by Christine LOWE. In her introduction, Christine described this session as one that will heighten the audiences’ awareness of the current trends, identify points of controversy, advise of the imminent changes and suggest practical solutions to the problems. An eminent team of speakers from various parts of the world has been gathered to speak on the topic of strategies in domain name protection and related issues. The four speakers were Francis GURRY, Director of the WIPO Arbitration & Mediation Center; Jane MUTIMEAR, Vice President – Intellectual Property Constituency of ICANN and Partner – Bird & Bird, London; Guillermo CAREY, an Associate with Care y Cia Limited of Santiago, Chile; and Zoltan TAKACS, an Associate with Danubia Patent and Trademark Attorneys, Budapest, Hungary. The topics dealt with by each of the speakers were as follows.
Dr Gurry spoke on The Uniform Dispute Resolution Procedure (UDRP) in the Generic Top-level Domains (gTLDs). In particular he dealt with the key questions in the Present Application of the UDRP such as procedural questions, the trademark basis of the procedure, the requirement of bad faith, the defenses and the consistency of decisions. He concluded with a discussion on the future developments of the Domain Name System.
Ms Mutimear shared with the delegates the status of the new generic top level domains such as .biz, .info, .name, .pro, .aero, .museum and .coop. She also spoke about the protection offered to trademark owners and the issue of internationalised domain names.
Mr Carey’s topic was what legal remedies were available when the UDRP is not available. He identified the situations when the UDRP is not available and discussed the legal status or nature of a domain name. Finally, he discussed what legal remedies might be applicable when the UDRP was not available.
Mr Takacs dealt with the commercial remedies available when UDRP was not applicable and the role of ccTLDs in the prevention of abusive registration of domain names and the need for improvement in the registration practices.
I will now report, in greater details, on the various sub-topics/issues raised and discussed by each of the speakers.
Francis GURRY
After a short introduction of the gTLD Uniform Dispute Resolution Policy (UDRP) in terms of its procedure, geographical distribution of parties, case results and statistics of cases filed with the WIPO Domain Name Arbitration and Mediation Center, Dr Gurry proceeds to discuss some major issues of concern. These issues include procedural issues, trademark basis of the policy, the requirement of bad faith and defences.
Procedural Issues
The procedural issue that has arisen is whether under the UDRP a re-filing of complaints is permissible. To answer this question, Dr Gurry refers the delegates to two decisions: iriefm.com, D 2000-703 and creo-scitex.com, D 2000-1490. These two decisions made a distinction between re-filed complaints concerning acts forming the basis of the original complaint and re-filed complaints concerning subsequent acts. In the former category, the decision in iriefm.com states that a re-filing ought to be permitted under the UDRP on limited (exceptional) grounds where (a) it is proven that there is fraud or corruption or (b) there is a discovery of new evidence. As for the latter category, that is with regard to re-filed complaints concerning subsequent acts, the creo-scitex.com decision states that in such a situation, the re-filing ought to be treated like new a case or hearing.
The Trademark Basis of the Policy: Personal Names
There had been many decisions rendered in respect of personal names such as Julia Roberts, Sting, Madonna, Back Street Boys and so on. In the vast majority of these cases, a decision has usually been granted in favour of the celebrity in respect of their unregistered right in their names. In the case of juliebrown.com, Case D2000-1628, the panelist found that “authors and performers can establish trademark rights … because, through deployment of their names as source indicators in commerce, they have unregistered or “common law” rights to protection against misleading use …While the complainant in this case has not yet registered her name as a trademark, it is clear that her fame as a performer, video producer and author establishes the kind of reputation which can warrant protection against passing off.” On the other hand, there is dicta in other decision such as brucespringteen.com, Case D2000-1532 in which the panelist was of the opinion that “ it is by no means clear from the UDRP that it was intended to protect proper names of this [Bruce Springsteen] nature.”
Bad Faith: Inaction or Passive Use
Another issue which causes certain amount of controversy is with regard to the requirement that under the UDRP, the complainant must show that the domain name has been registered AND used in bad faith. What is the position if the complainant is able to show, at least, that by intimation that the registration of the domain name must have been in bad faith but the website has been inactive. Dr Gurry refers to the decision of telstra.org, D 2000-0003 where it was said “it is possible, in certain circumstances, for activity by the Respondent to amount to the domain name being used in bad faith.” The panelist in the telstra.org decision reviewed all the circumstances in the case and concluded that it was “not possible to conceive of any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate…”
Defences
One of the defences available under the UDRP is if the domain name holder can show that he has rights or legitimated interest in the domain name, then the complainant has no grounds for succeeding. Dr Gurry explains that this goes to highlight that the procedure is meant to deal with clear-cut, black and white, open and shut cases and not instances in which one party has a superior right to another party. In his opinion, Dr Gurry feels that this limitation of the procedure has been one of the reasons for its success.
Another group of cases, which has caused considerable amount of controversies, concerns the “sucks” cases where the trademark is used together with an appendix “sucks”. By and large, it is generally accepted by panels that when a trademark is used together with an appendix “sucks”, this creates a situation, which does not amount to use of the domain name in a manner that is misleadingly or confusingly similar to the trademark in question. (see lockheedsucks.com, D 2000-1015) However, it has been pointed out in other cases such as accorsucks.com, D 2001-0007 that since the use of the Internet extends beyond native English speakers confusion can arise for non-native English speakers. These non- native English speaker may think that the domain name is associated with or controlled by the original trademark owner simply because the abusive connotation of the word “sucks” is not known to these non-native English speakers.
New and Future Developments
Dr Gurry moves on to discuss some of the new developments in the area of domain name protection and the related intellectual property issues. Broadly speaking, these issues concern the misuse of other identifiers, ccTLDs, the internationalization of the Domain Name System and Non-ICANN root identifiers.
In the first Report of the WIPO Internet Domain Name Process, a number of problems have been identified with regard to the intersection between domain name and intellectual property issues. However, no recommendations were made with regard to these problems at that stage. Last year, WIPO received a Letter of request from 29 States endorsed by all WIPO member states to ask WIPO to look into some the other issues/problems relating to domain name protection and its intersection with intellectual property rights.
The issues that WIPO has been requested to look into in the Second WIPO Internet Domain Name Process include:
- Indentifiers
- Personal Names
- International Nonproprietary Names (INNs) for Pharmaceutical Substances
- Names of International Intergovernmental Organisations
- Geographical Indications and geographical terms
- Trade names
- Interface with Domain Names
- “bad faith, abusive, misleading or unfair use”
- Mandate
- Submit findings and recommendations to member states of WIPO and to the Internet Community, including ICANN, for considerations.
Geographical Indications Registered as Domain Names
As far as the UDRP is concerned, unless the geographical indication is protected by a collective mark or some form of trade mark right, the intellectual property right holder cannot make a complaint against the domain name registrant. Examples of geographical indications registered as domain names include bergerac.com (country of geographical indication: France, country of domain name holder: Coasta Rica); pommard.org (country of geographical indication: France, country of domain name holder: USA); tequila.com (country of geographical indication: Mexico, country of domain name holder: USA); and valpolicella.com (country of geographical indication: Italy, country of domain name holder: USA).
Country Names
Dr Gurry highlights the controversies involved in this area where country names have been registered as domain names. An example of this sort of dispute concerns the Southafrica.com domain name. The government of South Africa has issued a number of press statements indicating that they might lodge a complainant with the UDRP against the holder of the domain name Southafrica.com, a company called Virtual Countries Inc. based in Seattle. Arguments for and against the rights of the government of South Africa have been canvassed recently in an article in the New York Times. The South African government asserts that “this is the colonial experience in a fundamental sense … This is the same as getting to the diamond mine first with a bigger gun.” Furthermore, the government of South Africa argues that they ought to be able to control their identity in cyberspace. That they were less aware as a result of the digital divide of the Internet and the Domain Name System and the possibilities of its implications on the outset, this fact ought to indicate that some form of protection should be accorded to them. On the other hand, the Virtual Countries Inc. argues that the South African government is proposing a change in the WIPO regulations so they can steal property that rightfully belonged to them. Other examples of names of countries registered as domain name include Albania.com (country of registrant: USA), Algeria.com (country of registrant: USA), france.com (country of registrant: USA), India.com (country of registrant: USA) and italy.com (country of registrant: Canada). Examples of names of indigenous people registered as domain names are aborigines.com (country of registrant: USA), maasai.com (country of registrant: USA) and nuer.com (country of registrant: Maldives). Should something be done about these domain names? Some have argued that countries names or names of indigenous tribes or people are sacred and rights in relation to them could never be alienated or defeated by any intellectual property rights.
The Challenges Ahead
Formulating the Appropriate Policies
One of the challenges faced by the WIPO Internet Domain Name Process is to formulate appropriate polices in this area of other identifiers. The difficulty stems from the great diversity in terms of national approaches to the issues. Although there are certain elements of international law and policy such as provisions in Paris Convention on international organizations, trade names and unfair competition; the TRIPs Agreement; specialized instruments on geographical indications Agreement; and the WHO Assembly resolutions, there is still insufficient material upon which appropriate policies may be formulated. This is especially so if one compares with the long history of international law and policy in the area of trademark protection. As far as the UDRP is concerned, its task is merely to express or apply existing law in a new medium i.e. the cyberspace and not to create new law or legislation.
ccTLDs
WIPO member countries have also requested WIPO to look into the matter of ccTLDs. In particular, WIPO is asked to work with the administrators of these ccTLDs, if they so wish, in terms of an appropriate adoption of the UDRP by them. So far, 18 ccTLDs have adopted the “uniform” dispute resolution procedure and there have been 26 cases filed with WIPO in relation to cyberspace squatting activities in the ccTLDs. Dr Gurry mentions that one advantage of having ccTLDs adopting the UDRP is the possibility of consolidation of ccTLDs and gTLD cases. This will undoubtedly save much time and costs.
Language Issues and “Internationalization” of the DNS
According to Dr Gurry, one must make a distinction at the outset between (a) language of the UDRP proceedings and (b) language of the domain name registration. With regard to the former, under the UDRP the language of the dispute resolution procedure is the language of the domain name registration agreement. As there is increasing geographical diversity of the accredited registrars, the language issue will become a problem that must be resolved urgently.
A separate issue is the possibility of having domain name registration in non-roman script or foreign language script. There have been numerous developments in this area. First of all, the Internet Engineering Task Force is working on a standard which may apply or may be adopted by everyone for non-roman script registration, for instance registration in .com in Chinese. Verisign/NSI has commenced a ‘Test-Bed Experiment” to accept registration in Chinese, Korean and Japanese in .com, .net and .org. There are certain developments outside the ICANN route notably, I-DNS.net in the United States of America and Singapore which registers Korean.Korean, Japanese.Japanese in all possible languages as well as .CN which has been accepting registration in Chinese with CN denoting Chinese. At this juncture, Dr Gurry refers the delegates to the Dispute Resolution for Chinese-Language Registration in .CN and a translation of the Resolution can be found in the Journal of Information, Law and Technology.
Non-ICANN Root Identifiers
Finally, Dr Gurry looks at the problems of non-ICANN root identifiers. This concerns identifiers that have become popular on the Internet but they are outside the ICANN system. The first set of non-ICANN root identifiers is the I-DNS and the .CN, non-roman script registrations. The I-DNS applies UDRP whereas the .CN applies the UDRP model with slight variations. The second set of non-ICANN root identifiers is the new.net and it applies the UDRP. There is also a possibility of “Keywords” becoming popular. These keywords resolve not to the website itself but to particular pages of the website. They resolve to URL and there are several systems about this such as RealNames, CommonNames and AOL. Although they do not have the same status as domain names, these keywords are possible alternative identifiers in the Internet and it is possible that these may infringe intellectual property rights particularly if they become very popular.
On this note, Dr Gurry concludes his presentation.
Jane MUTIMEAR
The Intellectual Property Constituency (IPC) of the ICANN Domain Name Supporting Organisation represents the views and interests of intellectual property worldwide with particular emphasis on trademark, copyright and related intellectual property rights and their effect and interaction with the Domain Name System. Ms Mutimear is the Vice President of IPC and presently she and the other members of IPC are involved in negotiations with the 7 organisations which were shortlisted at the last ICANN in November 2000 to provide the new top-level domains. The negotiations are crucial in ensuring that the final contracts which are negotiated with ICANN affords adequate protection to intellectual property rights during the start-up phase of the new gTLDs and later.
Ms Mutimear begins by explaining that the 7 new gTLDs may be classified as unsponsored ones and sponsored ones. The unsponsored new gTLDs will be .biz, .info, .name and .pro whereas the sponsored ones will be .museum, .coop, and .aero. The significance of the distinction lies in that the sponsored new gTLDs will be run by the industries bodies on behalf of the industries that they represent. Another way to classify the 7 new gTLDs will be whether they are fully restricted, loosely restricted or unrestricted in the sense of whether upfront verification would be necessary. Generally speaking, .aero, .museum, .coop, and .pro will fall under fully restricted gTLDs as upfront verification is necessary to prove that the applicant has a right to such a gTLD. As for .info, it will fall under the category of unrestricted just like .com and anyone may apply for it. The last two new gTLDs .name and .biz will fall under the category of loosely restricted in that there will be no upfront checking but some form of self-verification is necessary.