The Management of Internet Names and Addresses:page 1
Intellectual Property Issues
THE RECOGNITION OF RIGHTS AND THE USE OF NAMES
IN THE INTERNET DOMAIN NAME SYSTEM
Interim Report
of the
Second WIPO Internet Domain Name Process
April 12, 2001
The Management of Internet Names and Addresses:page 1
Intellectual Property Issues
The World Intellectual Property Organization (WIPO) is an organization founded through a treaty by States, which has 177 States of the World as members. The member States established the Organization as the vehicle for promoting the protection of intellectual property throughout the world.
The Organization provides services both to its member States and to the individuals and enterprises that are constituents of those States.
The services provided by WIPO to its member States include the provision of a forum for the development and implementation of intellectual property policies internationally through treaties and other policy instruments.
The services provided to the private sector by WIPO include the administration of procedures for the settlement of intellectual property disputes through the WIPO Arbitration and Mediation Center, and the administration of systems that make it possible to obtain protection for patents, trademarks, industrial designs and geographical indications in different countries through a single international procedure.
The operations of WIPO are financed as to 90 per cent by fees generated by the Organization for the services it renders to the private sector, and as to the remaining 10percent by contributions made by the member States.
World Intellectual Property Organization (WIPO)34, chemin des Colombettes
P.O. Box 18
1211 Geneva 20
Switzerland
* * * *
For information concerning the
Second WIPO Internet Domain Name Process:
Office of Legal and Organization Affairs
Telephone: (41 22) 338 8138
Fax: (41 22) 733 31 68
Internet:
e-mail:
The Recognition of Rights and the Use of Names inpage (ii)
the Internet Domain Name System – Summary of Contents
SUMMARY OF CONTENTS
Executive SummaryParagraph Numbers
1.Real and Virtual Identifiers ......
The Second WIPO Process: Domain Names and
Other Identifiers......
Mandate for the Second WIPO Process......
Guiding Principles in the Formulation of Recommendations...
The Interim Nature of the Present Report......
Implementation of Future Recommendations...... / 1 to 28
7 to 10
11 to 15
16 to 21
22
23 to 28
2.International Nonproprietary Names for Pharmaceutical Substances (INNs)
The INN System......
The Selection of INNs......
The Policies Underlying the INN System......
INNs and Trademarks......
Questions for Decision......
Should INNs be Protected against Registration
as Domain Names?......
The Extent of Protection to be Conferred......
Policy Instruments for the Implementation of Protection
for INNs in the Domain Name Space......
/
29 to 84
34 to 35
36 to 39
40
41 to 42
43
44 to 48
49 to 69
70 to 84
3.Names of International Intergovernmental Organizations
and their Protection in the DNS......
International Protection for Names and Acronyms of International
Intergovernmental Organizations (IGOs)......
The .int Top-Level Domain Reserved for Organizations
Established by International Treaties......
Review of Comments and Nature and Extent of Abuses......
Alternatives for Protection of the Names and
Acronyms of IGOs......
Applicability to ccTLDs...... /
85 to 131
88 to 97
98 to 103
104 to 110
111 to 130
131
The Recognition of Rights and the Use of Names inpage (ii)
the Internet Domain Name System – Summary of Contents
What’s in a Name: Personal Names and Technology......
The Evolving International Protection of Personal Names....
Protection of Personal Names under the Uniform
Domain Name Dispute Resolution Policy (UDRP)......
Personal Names and the Evolving DNS: The Proposed
.name Top-Level Domain......
Analysis and Options...... / 132 to 186
138 to 140
141 to 166
167 to 177
178 to 184
185 to 186
5.Geographical Indications, Indications of Source and
Geographical Terms......
Geographical Designations Recognized by the Intellectual
Property System......
Terminology, Purpose and Legal Framework......
The Desirability of Protecting Geographical Indications
of Source in the Open gTLDs......
The Use of Exclusions to Protect Geographical Indications
and Indications of Source in the Open gTLDs......
The Possible Modification of the UDRP......
The Protection of Geographical Indications and
Indications of Source in the ccTLDs......
Geographical Designations Beyond Intellectual Property.....
Examples of the Registration of Geographical Terms
as Domain Names......
General Considerations Relating to the Protection
of Geographical Terms against Abusive Registration
as Domain Names......
The Protection of ISO 3166 Code Elements
in the gTLDs......
The Protection of Names of Countries and Place Names
within Countries in the gTLDs...... /
187 to 286
193 to 235
193 to 206
207 to 214
215 to 223
224 to 234
235
236 to 286
239 to 253
254 to 270
271 to 275
276 to 286
The Recognition of Rights and the Use of Names inpage (ii)
the Internet Domain Name System – Summary of Contents
What is a Trade Name?......
International Protection of Trade Names......
National Protection of Trade Names......
Protection of Trade Names in the DNS......
Review of Comments Received......
Possible Accommodation of Trade Name Protection
within the UDRP ......
Scope of Protection of Trade Names in gTLDs and ccTLDs...
Technical Means for Coexistence of Trade Names
in the DNS...... / 287 to 330
288
289 to 295
296 to 301
302 to 305
306 to 314
315 to 327
328 to 329
330
7.The Role of Technical Measures......
The Whois Data Search Facilities......
Privacy Implications of Extended Whois Services......
Directory and Gateway Services — Technical Measures for
Coexistence of Names......
New Technological Developments......
/ 331 to 359
333 to 347
348 to 353
354 to 356
357 to 359
* * * * * * *
The Recognition of Rights and the Use of Names inpage (ii)
the Internet Domain Name System – Summary of Contents
I.List of Governments, Organizations and Persons Submitting Formal Comments
II.Contracting States of Pertinent International Intellectual Property Treaties
III.World Health Assembly Resolutions on Nonproprietary Names for Pharmaceutical Substances
IV.World Health Organization (WHO) Procedure for the Selection of International Nonproprietary Names (INNs) for Pharmaceutical Substances
V.International Registrations of Appellations of Origin Under the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration
VI.Study Submitted by the Fédération des Syndicats de Producteurs de Châteauneuf du Pape on Claimed Geographical Indications that have been Registered as Domain Names
VII.Examples Submitted by the Institut national des appellations d’origine (INAO) of Claimed Appellations of Origin that have been Registered as Domain Names
VIII.Examples of Appellations of Origin Registered Under the Lisbon Agreement that have been Registered as Domain Names
IX.Examples of Other Possible Geographical Indications Registered as Domain Names
X.Examples of Names of Countries Registered as Domain Names
XI.Examples of Names of Cities Registered as Domain Names
XII.Examples of Names of Indigenous Peoples Registered as Domain Names
XIII.WIPO Questionnaire on Trade Names and Summary of Responses
XIV.European Parliament Text (Provisional) Internet — International and European Policy Issues
The Recognition of Rights and the Use of Names inpage (ii)
the Internet Domain Name System – Summary of Contents
EXECUTIVE SUMMARY
1Between July 1998 and April 1999, the World Intellectual Property Organization (WIPO) undertook an extensive international process of consultations with the public and private sectors to develop recommendations on ways to deal with certain predatory and parasitical practices that had developed in the registration of domain names. The central recommendation of the final Report published at the conclusion of this first WIPO Internet Domain Name Process was that a simple and cost-effective dispute resolution procedure should be established to deal with cases of deliberate and bad faith registration and use of domain names in violation of trademarks, a practice commonly known as “cybersquatting.”
2Following WIPO’s recommendation, the Internet Corporation for Assigned Names and Numbers (ICANN), the body responsible for the technical management of the domain name system, adopted the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP entered into force in December 1999. In the 15 months since its commencement, more than 4,000 cases have been filed under it.
3The UDRP is limited to the abusive registration of domain names in violation of trademark rights. In the course of the first WIPO Process, it became apparent that other forms of real-world identifiers were also being targeted and made the subject of predatory practices in the domain name system. The identification of these other areas of abusive registrations led to a request to WIPO to undertake a further international process to develop recommendations on whether and, if so, how such practices in respect of other identifiers might be dealt with. In response to this request, the Second WIPO Internet Domain Name Process was commenced in July 2000.
4The present Report constitutes the Interim Report of the Second WIPO Process. It deals with the abusive registration of domain names in relation to the following identifiers:
·International Nonproprietary Names for pharmaceutical substances (INNs). INNs are used within the health sector as a system managed by the World Health Organisation to maintain generic names for pharmaceutical substances free from proprietary rights and available for use by all;
·The names and acronyms of international intergovernmental organizations, such as the United Nations (UN) or the World Intellectual Property Organization (WIPO);
·Personal names;
·Geographical indications, which are terms recognized in law as designations applied to products which originate in a certain area and which bear characteristics that are particular to that area. Geographical indications are well-known in respect of, for example, wine. In addition to geographical indications, the Interim Report addresses the putatively abusive registration of geographical terms, such as the names of countries and peoples;
The Recognition of Rights and the Use of Names inpage (ii)
the Internet Domain Name System – Summary of Contents
·Trade names, which are the names applied to distinguish an enterprise (as opposed to the products or services of the enterprise).
5The Interim Report sets out considerable evidence of the registration of the above-mentioned identifiers as domain names when no connection exists between the holder of the domain name registration and the person, entity or group with which the identifier is authentically associated. It also sets out possible solutions to predatory practices in respect of these identifiers. Those solutions or recommendations are advanced for the purpose of promoting further discussion within the international community before developing positions for the final report of the Second WIPO Process, which is expected to be published in July2001.
6WIPO will conduct a series of meetings throughout the world over the coming months to promote discussion and to develop ideas in relation to the questions dealt with in the Interim Report. All interested parties are invited to attend those meetings, or to submit written comments for consideration through WIPO’s website for this Second Process at .
The Recognition of Rights and the Use of Names inpage 1
the Internet Domain Name System – Chapter 1
REAL AND VIRTUAL IDENTIFIERS
1.In July 1998, upon the proposal of the Government of the United States of America, and with the approval of its member States, WIPO commenced an extensive international process of consultations, which became known as the WIPO Internet Domain Name Process (“the first WIPO Process”). The purpose of the first WIPO Process was to develop, through public and private sector consultations, recommendations on certain questions arising out of the interface between Internet domain names, on the one hand, and trademarks on the other hand. The central recommendation contained in the final Report of the first WIPO Process, which was published in April 1999,[1] was that an administrative dispute settlement procedure should be adopted with effect throughout the generic toplevel domains which were open for registration of domain names without restriction. It was proposed that this dispute resolution procedure should be available to deal with complaints in which it was alleged that a domain name had been registered and was being used deliberately and in bad faith in violation of a complainant’s trademark rights.
2.The recommendation for the establishment of such an administrative dispute resolution procedure was, in due course, adopted by the body that had been established to take responsibility for the technical management of the domain name system (DNS), the Internet Corporation for Assigned Names and Numbers (ICANN), a not-for-profit corporation established under the laws of the State of California, in the United States of America.[2]
3.The dispute resolution procedure, known as the Uniform Domain Name Dispute Resolution Policy (UDRP), entered into operation on December 1, 1999. Four dispute-resolution service providers have been accredited to administer disputes under the procedure. The WIPO Arbitration and Mediation Center was the first dispute-resolution service provider to be accredited and the first with which a dispute was filed.
4.Since the entry into force of the UDRP, over 3640 decisions have been rendered, of which 2316 have been administered by the WIPO Arbitration and Mediation Center. The UDRP has attracted a widespread geographical participation, reflecting the international nature of the Internet. Within the calendar year 2000, for example, parties to complaints filed with the WIPO Arbitration and Mediation Center came from 74 countries. The UDRP has also proven itself to be an efficient and cost-effective means of resolving disputes. Of the 1,841 cases filed with the WIPO Center in the year 2000, 69.9% of the cases were resolved. Filing such a case with the WIPO Center costs US$1,500 and a decision is normally given within 50 days of the commencement of the procedure.
5.The UDRP was deliberately limited in scope. It deals only with the class of disputes that concern conflicts between domain names and trademarks and, within that class, it deals only with deliberate, bad faith violations of trademarks in which the domain name holder has no rights or legitimate interests in the domain name. Such deliberate, bad faith violation of trademark rights through the registration and use of domain names is popularly known as ‘cybersquatting.’
6.The limited scope of the UDRP was a natural outcome of the first WIPO Process for which the mandate was formulated as the development of “recommendations for a uniform approach to resolving trademark/domain name disputes involving cyberpiracy (as opposed to conflicts between trademark holders with legitimate competing rights).”[3] Not only was the mandate for the first WIPO Process limited, but the environment in which the recommendations of the first WIPO Process were made was one in which many elements were new and untried. ICANN was established only in the course of the first WIPO Process and had only recently commenced operations by the time that the final Report of the first WIPO Process was published. In addition, the notion of an administrative dispute resolution procedure with a quasi-international competence within the DNS was untried. Furthermore, the concept of implementing policy through rules established by a technical and private body was new. All these elements signaled the need to proceed cautiously and gradually. Thus, when it became apparent in the course of the first WIPO Process that the practice of cybersquatting went well beyond the violation of trademark rights and encompassed the putatively unfair abuse of other forms of identifiers, the final Report of the first WIPO Process did not recommend immediate solutions for these other areas, but rather identified them as issues that would require careful attention in the future.
THE SECOND WIPO PROCESS: DOMAIN NAMES AND OTHER IDENTIFIERS
7.Since the publication of the final Report of the first WIPO Process, the DNS has continued to attract increasing interest as the system for identification, navigation and location on the Internet, with the demand for domain names seeming to increase endlessly. More than 35 million registrations are reported in the generic and country code top-level domains (gTLDs and ccTLDs, respectively).[4] At the same time, the introduction by ICANN of competition between domain name registration authorities has resulted in greater complexity in the technical infrastucture, operation and management of the DNS. ICANN’s approval of proposals for seven new gTLDs in November 2000, while opening new space for domain name registrations, has further extended the complexity of the DNS.[5]
8.As the DNS has evolved, and as demand for domain name registrations has increased, a greater awareness has arisen of the profundity of the tension between domain names, as the identifiers in the virtual world, on the one hand, and naming systems used in the physical world, on the other hand. Trademarks are but one example of the latter class of naming systems. Their commercial value and the attention focussed on them through advertising and branding naturally caused them to be prominent at the first stages of consideration of the intersection between domain names and realworld identifiers. There are many other realworld identifiers, however, that play vital roles in the areas of government (for example, the names of countries, government departments or international organizations), health (for example, International Nonproprietary Names for pharmaceutical substances (INNs)), science (for example, naming systems used for the plant and animal kingdoms) and almost any other sphere of human endeavor or activity. Wherever one looks in the physical world, there is a naming system to assist the regard, whether it be on a banal but important level, such as street names, or on a metaphysical level, such as the names in the pantheon of gods.