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)
-
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The Uniform Dispute Resolution Procedure (UDRP) in the Generic Toplevel 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
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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.
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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
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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 nonnative 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:
a. Indentifiers
 Personal Names
 International Nonproprietary Names (INNs) for Pharmaceutical
Substances
 Names of International Intergovernmental Organisations
 Geographical Indications and geographical terms
 Trade names
b. Interface with Domain Names
 “bad faith, abusive, misleading or unfair use”
c. 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
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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
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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 nonroman 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 nonroman 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 IDNS 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
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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.
.biz
Ms Mutimear expects this gTLD to be very popular. An issue of concern for the
IPC is that there will be no “sunrise period” for trademark owners in the sense
that they will be allowed to register their trademark as domain names before
applications are open to the rest of the world. Instead, what have been proposed
are (a) an intellectual property claim form for trademarks owners and (b) a
procedural policy that restricts application: applicants must show that the domain
name is used or intended to be used primarily for bona fide business or
commercial purposes. In order to prevent the registration of domain names and
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thereafter the sale of these domain names for a profit, an anti-speculation clause
has been proposed which states that such speculative activities will not be
considered as bona fide business or commercial purposes.
The intellectual property claim system that is put in place by .biz serves to inform
the applicant if there have been prior lodged of intellectual property rights against
his application. If the applicant after being so informed decides to proceed with
his application, a stay of 30 days will be enforced and the intellectual property
holder will be informed. At this stage, the intellectual property holder may
proceed to have his case heard by the UDRP.
.info
This is a completely open new gTLD in that anyone may make an application
under it. There will be a “sunrise period” for registered trademark owners so that
before the new gTLD is open for application, a registered trademark owner may
apply first to obtain a domain name under this gTLD. In order for a trademark
owner to take advantage of the “sunrise period”, he or she must have a valid and
enforceable trademark or service mark registration having national effect issued
before 2 October 2000. The “sunrise period” is only applicable for registration of
word marks and it must correspond exactly with the mark in the certified
registered trademark certificate. Procedures for challenge of a sunrise application
are also put in place and after that, the normal UDRP will continue to be available
to aggrieved parties.
.name
This a new gTLD for personal names. An applicant may apply for a domain name
under .name for any the following:
a. personal name or a name that he or she is commonly known as;
b. a deceased person’s name (provided the applicant can show that he has
authority from the deceased’s estate)
c. a name of a fictional character such as harry porter. name (provided the
applicant can show that he has a trademark or a service mark in relation
to the name of the fictional character).
An Eligibility Requirement Dispute Resolution Policy (ERDRP) will be put in place
to allow a person who thinks that a registrant of a .name has not met the criteria
set forth above to challenge the registration. If he successfully shows that the
criteria are not met by the registrant he may get the .name transferred to him
(provided he himself meets all the criteria). The normal UDRP is also available.
Defensive registration is also available and this allows companies to register their
companies names under .name. However, they are not allowed to use this
domain name as their website and if they are successfully challenged by others
on three separate occasions, they lose their defensive registration.
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.pro
This is a heavily chartered new gTLD and it is open to professionals only.
Initially, .pro is open to lawyers, doctors and accountants in the United Kingdom,
the United States of America and Japan. There is a “sunrise period” for
registration and procedures are also put in place for charter violation disputes.
The UDRP is also available.
.aero, .museum, and .coop
These very restricted new gTLDs and they are open to restricted industries.
Internationalised Domains and related issues
With regard to internationalised domains, the issue that arises with regard to
intellectual property is that although there are all these various options like the
verisign test-bed, the iDNS system and the national based ones like the Chinese
and the Taiwanese NIC systems, none of these will resolve to a website at the
moment and the e-mail system does not work. This being the situation,
accessibility becomes a problem. From the point of view of an intellectual
property owner, how is he to find out if his intellectual property rights have been
infringed in the sense that his trademark or his company name has been
registered as a domain name in a system that he has no access to. Other
problems pointed out by Ms Mutimear include technical difficulties with the
various systems and that these technical difficulties are not easily resolved. From
an intellectual property perspective, should a trademark owner try to register his
mark in all the systems available and hope that one of them will be the adopted
standard. Other related issues are if a trademark owner has registered in a
system that ultimately is the adopted system, does he then automatically get to
keep his registration. If the system in which he has registered in turn out not to be
adopted one, will he lose his registration. Such issues cannot be resolved until
the technical difficulties are resolved.
Zoltan TAKACS
Mr Takacs’s topic is “Commercial remedies when UDRP is not available and the
role of ccTLDs”. He begins by stating that the UDRP is not available in Hungary
and domain name disputes must necessarily be resolved via some other
solutions. As a background to his presentation, Mr Takacs related the historical
development of the generic top-level domains and the fact many trademark
owners fail to obtain registration for their trademarks as domain names. This has
given rise to conflicts between domain names and trademarks and in response to
these conflicts, the UDRP has been put in place by ICANN and also in 1999, the
United States of America has passed the Anti-Cybersquatting Act. The UDRP
and the Anti-Cybersquatting Act apply only to the bad faith registration of domain
names and have proved to be effective remedies against cybersquatting.
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Turning to Hungary, Mr Takacs explains that in view of Hungary’s desire to
become one of the leading countries in e-commerce in the central and eastern
European region, the Hungarian government has put in place new rules for the
registration of domain names and the resolution of potential conflicts and
disputes. This is because the old rules governing domain names are seen by the
Internet community and the Internet Service Providers as barriers to the growth
of e-commerce in Hungary.
On March 1st, 2000, the new set of regulations governing domain name
registration in Hungary came into place. Under this new set of rules, any
Hungarian natural person, legal or an organization without a legal entity may be a
registrant. As for foreign registrant, a hundred percent of local business presence
is not necessary but application for a domain name is permissible only if the
foreign registrant has a trademark registered in Hungary. Another important
feature of the new rules is that applications are separated into two groups:
applications with priority and applications without priority. If a registrant is
applying for a domain name in which he already has a trademark or a
commercial registration as a company or business name, then he will obtain
priority in terms of his domain application. In the event that the application is
without priority, the application will be published for a period of 14 days in
Hungary and during this period, anyone that has a stronger right like a trademark
or a company name registration will be able to recover the domain name for
which registration is sought. Sometimes, nothing may be done by the intellectual
property owner during the 14 days and the application is approved. In this case,
the Registrar still has the right to suspend or cancel the domain name registered
by the registrant if:
a.
b.
c.
d.
the application did not meet the requisite criteria for registration;
the registrant has submitted false data in his application;
the registrant is no longer authorized to hold the domain name; or
the domain name has been obtained in bad faith.
In practice, the Registrar is often reluctant to exercise his discretion to suspend
or cancel the domain name once registered.
At this juncture, Mr Takacs pointed out that the avenues open to the intellectual
property owner are litigation or the alternative dispute resolution processes like
arbitration. Litigation is often a long drawn process and proves not to be an
attractive option. With regard to arbitration, one possible disadvantage may be
that once an arbitral award is granted it is taken to be the final decision of the
matter under the Arbitration Act 1994 in Hungary and if this happen, the
intellectual property owner may have no choice but to file a request for setting
aside of the award, precious time will once again be lost.
Finally, when all else fails, an intellectual property owner may consider some
other commercial remedies such as recovery, buy back or ignoring of the name.
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For recovery, the trademark owner is willing to pay the registration and
maintenance costs of the domain name to the registrant for a return of the
domain name to the trademark owner. In the case of buy back, the rightful owner
is willing to pay a reasonable consideration to the domain name registrant in
return for the transfer of the domain name from the registrant to the rightful owner.
The problem that may arise in the case of a buy back solution is that if the rightful
owner starts to negotiate with the registrant personally and the rightful owner is a
large company with a big name, then it is likely that the registrant may wish to
double or triple the price and this will inevitably lead to the end of the negotiations
as the rightful owner is unlikely to agree to part with such a huge sum of money
for return of the domain name. The other option is to ignore the domain name.
There are advantages and disadvantages to ignore the domain name. The
advantages are (a) no costs of enforcement, (b) after some time, the pirate
registrant may decide that it is no longer profitable for him to maintain the domain
name and so he gives it up, (c) the trademark owner may be able to avoid bad
publicity that is normally associated with the recovery of a domain name by a
huge powerful trademark owner from a small enterprise. The main disadvantage
for ignoring a domain name is that this will give rise to a free territory for
speculative activities in the domain name and other related domain names of the
rightful owner.
In his conclusion, Mr Takacs spoke on the inevitable expansion of ccTLDs in
Hungary as local customer prefers a local service in the local language and time
zone and for payment to be made in local currency. Thus domain name
protection issues remain important to be reconsidered by both international and
national bodies.
Guillermo CAREY
Mr Carey has divided his presentation into three parts: (a) identification of
instances when the UDRP is not available, (b) what is the legal status or nature
of a domain name? and (c) what legal intellectual property remedies may be
applicable when the UDRP is not available.
(a) Identification of instances when the UDRP is not available
Mr Carey identified three instances when the UDRP will not be available. The
first instance is when bad faith is not evidenced for use and registration of the
domain name. The second situation involves the new .net registrar. These new
third level .net domains such as .shop, .mp3, .inc, .kids, .sports etc are non
ICANN root identifiers and it is uncertain whether the UDRP will apply. Lastly, Mr
Carey predicts that as the number of generic ccTLDs increases and that
cybersquatting becomes more and more rampant, it may come a day when it is
just impossible for trademark owners to police all the instances of cybersquatting.
When this happens, disputes will shift from domain names to the searching level
of web pages and metatags and keywords usage in the search engine will be
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important. In these cases, the original trademark owners will have to rely on his
trademark rights to police such unfair practices and Mr Carey concludes that in
the end trademark rights will prevail and domain name disputes will become less
important.
(b) What is the legal status or nature of a domain name?
Mr Carey says a domain name is a localizer or identifier on the Internet. In order
to activate the localizer, the services of an accredited registrar is required. The
services rendered are based upon terms agreed upon in a contract executed via
the Internet, similar to a shrink-wrap agreement. Out of this contract, personal
contractual rights are borned. A domain name is therefore not a tangible property.
Whatever rights that accrues to a domain name are derived from the contract
with the Registrar. Thus, a domain name is a form of use of a word in the Internet.
There are cases in the United States of America that supports the proposition
that domain names are not tangible properties.
(c) What legal intellectual property remedies may be applicable when the
UDRP is not available?
The legal intellectual property remedies applicable in the situation when UDRP is
not available can be found in trademark laws, anti-trust laws and unfair
competition laws. Mr Carey asserts that following from the argument that domain
names do not constitute tangible properties and they mere forms of use of words
in the Internet, ownership of domain names arises purely from the personal
contractual rights found in the service agreement with the Registrar, the existing
legal intellectual property protection framework for trademarks will then be
applicable to resolve the disputes. There is no need to create a special category
of intellectual property by new laws. The current legal framework is adequate.
********
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