Report of the WIPO Internet Domain Name Process

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Reportof theWIPO Internet Domain Name Process
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Genesis

• USG White Paper, June 5, 1998
• The U.S. Government will seek international
  support to call upon the World Intellectual
  Property Organization (WIPO) to initiate a
  balanced and transparent process, which includes
  the participation of trademark holders and
  members of the Internet community who are not
  trademark holders, to (1) develop recommendations
  for a uniform approach to resolving
  trademark/domain name disputes involving
  cyberpiracy (as opposed to conflicts between
  trademark holders with legitimate competing
  rights), (2) recommend a process for protecting
  famous trademarks in the generic top level
  domains, and (3) evaluate the effects, based on
  studies conducted by independent organizations,
  such as the National Research Council of the
  National Academy of Sciences, of adding new gTLDs
  and related dispute resolution procedures on
  trademark and intellectual property holders.
  These findings and recommendations could be
  submitted to the board of the new corporation for
  its consideration in conjunction with its
  development of registry and registrar policy and
  the creation and introduction of new gTLDs.

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The Process

• international support
• decision of WIPO member States (171), September
  1998
• balanced and transparent process
• web site in three languages (E, F S), 1358
  subscribers from 74 countries
• open meetings with audio and text records
  available (17 in 15 countries and 5 continents
  with 1264 participants)
• list server (420 subscribers)
• three RFCs in three languages
• 332 comments on RFCs altogether comments and
  presentations from
• 40 governments
• 4 international organizations
• 74 professional, industrial and academic
  organizations
• 181 corporations and law firms
• 183 individuals

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Summary of Results

• Minimalist approach
• trademarks only (other problems exist)
• cybersquatting only (not more general problem of
  intersection of multijurisdictional medium on
  territorial systems)

• Findings indicate
• significant problem
• wasteful diversion of resources
• condemned by all

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Registration Practices

• Purpose
• functionality and registrar protection
• transparency and fairness
• conflict avoidance
• The open gTLDs are undifferentiated (no use
  restrictions)
• Reliable and accurate contact details
• horizontal issue
• coincidence of interests between intellectual
  property, consumer protection, prevention of
  fraud and other public policies
• Notice and consent
• Takedown procedure where contact impossible
• Recommend further study of practicality of
  non-commercial, use-restricted domain

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Uniform Dispute-Resolution Procedure

• Administrative procedure
• Limited to abusive registrations (cybersquatting)
• Mandatory submission by domain name applicants
• Rapid and cost-effective

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Definition of Abusive Registration

• Limited to trademark abuse
• Three cumulative conditions
• domain name identical or misleadingly similar to
  mark in which complainant has rights
• domain name holder has no rights or legitimate
  interests
• domain name has been registered and is used in
  bad faith

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Famous Marks

• Protection under the Paris Convention (152
  countries) and the TRIPS Agreement (134
  countries)
• Exclusions as means of giving expression to that
  protection
• Public adjudicatory procedure
• Exclusions for exact name only
• Evidentiary presumption in anti-cybersquatting
  procedure
• Possibility of complete or partial cancellation

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IP and New gTLDs

• IP one of multiple perspectives
• Need to avoid repetition of experience of last
  five years
• Can do so if
• improved registration practices
• efficient dispute-resolution mechanism
• exclusions
• controlled introduction

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Outstanding Issues

• Report adopts a minimalist approach
• Examples of issues not treated
• other intellectual property rights (geographical
  indications, personality rights)
• internationally (and nationally) protected names
  and acronyms (States, UN organizations)
• INNs
• non-commercial, use-restricted domain

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