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 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 1 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. 2 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 3 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 4 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 5 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 6 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 7 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. 8 .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. 9 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. 10 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 11 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. ******** 12