On behalf of DENIC, the registry for the German TLD .de, I submit the
following comment on WIPO's draft of "ccTLDs Best Practices for the
Prevention and Resolution of Intellectual Property Disputes":
In general, DENIC shares WIPO's opinion that legal disputes regarding
Internet domain names deserve the attention and concern of everyone
involved in the Internet. Therefore DENIC welcomes every effort to prevent
such disputes and especially supports all reasonable actions to help
parties concerned by infringing domain names, to enforce their rights
against the respective domain name holder. It can nonetheless not be
overemphasized that it is the domain name holders who are foremost
responsible for any infringements of other parties' rights occuring from
domain names. DENIC appreciates WIPO's acknowledgement of this fact in
stating that the respective domain name registry must be shielded from any
liability and extricated from any dispute as far as possible.
Given the diversity of regional practices and legal frameworks regarding
domain name registration under more than 240 ccTLDs, DENIC also welcomes
WIPO's recognition that it will never be possible to create a "one size
fits all"-document or apply the same rules to all ccTLDs. Different from
gTLDs, ccTLDS, even if they allow worldwide registrations, are tightly
linked to their respective territory. Therefore they are able (and
required) to comply with, as well as adjust to, their local law and
jurisdiction, but also to the needs of their local community. In this
instance, "community" means both, the local Internet community and the
local Intellectual Property community, which obviously knows best how to
protect intellectual property owners under the specific local situation.
Bearing this in mind, DENIC agrees with the idea that a registry should
endeavour to enable any concerned party to get hold of the registrant of an
infringing domain name and to enforce its intellectual property rights
against him.
Additionally, DENIC takes pride in already following most of the principles
that are now being endorsed and specified by WIPO. By doing so, DENIC
expresses its support of these principles in the strongest possible form:
by action.
For example, this is the case with the entering into a formal domain name
registration agreement which includes an obligation on the registrant's
side to provide accurate contact data, and allows termination without
notice if the registrant fails to comply with this obligation. Nonetheless,
it has to be clear that the provision of incorrect registration data by the
registrant should not lead to the termination of the registration contract
automatically. The registry needs some latitude in this instance, to act
appropiately (e. g. it would be inappropiate to terminate the registration
contract only on the grounds of an unintended misspelling of the
registrant's name). Moreover, a representation on the registrant's part
that the prospective use of the domain name would not infringe other
parties' rights appears to be inappropiate. That is, because an illegal use
of a domain name never can, will, or should result in the cancellation of
the domain name itself, but will only lead to a ban of this specific use.
The use of a domain name is not an actual domain name issue, and so a
clause regarding the use does not actually fit into the registration
contract. Regardless of this more principle matter, the suggested
presentation obviously never could get verified or falsified at the time of
the domain name registration and therefore would also be of no particular
worth afterwards.
Another example is the collection of the contact data which intellectual
property owners need to enforce their rights against domain name holders,
and the making available of this data. Notwithstanding regional legal
requirements which obviously have to be met, it is indeed of vast
importance to provide a public Whois Service with the contact data for
every domain name registered under a certain TLD.
Besides all of this, DENIC views the part of the best practices draft which
deals with Alternative Dispute Resolution as follows:
In spite of the fact that ADR might be seen as a reasonable and appropiate
instrument to deal with disputes under gTLDs, the same does not necessarily
have to be true for disputes occuring under ccTLDs. This becomes especially
clear in sight of the characteristics quoted from the (first) WIPO Internet
Domain Name Process, which can most definitely not be applied to ccTLDs so
easily:
Under ccTLDs as under gTLDs disputes may be multijurisdictional in the
sense that several jurisdictions may be concerned in theory, but they are
not insofar as under ccTLDs usually the jurisdiction of the respective
ccTLD's territory (at least: also) applies.
The possibility that an intellectual property owner has to deal with
abusive registrations under several TLDs and therefore might have to
undertake several (court) actions in several countries, is in the nature of
the issue and therefore can not be avoided. This problem (if seen as one)
can also not be solved by ccTLDs implementing an ADR modeled after UDRP
because there would still be different procedures, as these ADRs of
different ccTLDs would have to be adjusted to the different local
situations. Even if this obstacle was left aside, the intellectual property
owner still would have to go through multiple ADR proceedings throughout
the world, unless all TLDs used only one and the same ADR provider (which
is neither likely to happen nor desirable). Finally, even if one ignored
this problem as well, it would still have to be taken into account that due
to the different legal environments in different ccTLD territories, the
same Second Level Domain may be an infringement in one territory and no
infringement in another one, so that the outcome of the ADRs or the one
combined ADR, most probably will vary (especially when it comes to not so
clear infringements which are envisaged to be covered by ADR at a later
stage).
It is true that domain name disputes should be resolved in a timely manner;
nevertheless the final resolution of a dispute will usually not be urgent
and, even if it was, could under no circumstances be achieved in a short
period of time (i. e. a few weeks). It is particularly noteworthy that the
WIPO-proposed ADR itself does not finally resolve domain name disputes and
therefore does not provide a solution to the (alleged) problem of urgency.
Urgently necessary, but at the same time absolutely sufficient is in almost
all cases a simple ban to continue using the (presumably) infringing domain
name. Such a ban - in the form of an injunction - can be obtained from a
regular court of justice within hours under many jurisdictions, including
the German one. Any ADR procedure would obviously be much slower, so that
at least under jurisdictions with such a fast functioning court system
there is no need for an ADR in the first place.
The same applies to the costs of regular court proceedings: in many
countries, as in Germany, for example the costs for getting an injunction
or - under certain circumstances - even a final court ruling are very often
lower than the costs of an ADR procedure would be (if the costs of UDRP are
taken as a measurement). Additionally, under the law of many countries,
including Germany, the party having lost a law suit has to cover the
expenses of the winning party as well, so that a successful law suit filed
against the domain name holder costs the plaintiff absolutely nothing and
therefore significantly less than an ADR procedure which requires the
complainant to pay not only for the process but also for his own expenses
(e. g. attorney's fees).
The goal to keep the registry out of domain name conflicts deserves every
support, not because this was in the registry's own interest, but because
otherwise the registry would not be able to serve the local Internet
community by registering domain names as fast, uncomplicated, and cheap as
possible. Nevertheless, unfortunately the implementation of an ADR cannot
prevent the registry from getting involved in such conflicts. That is,
because if the registry, according to local law, is liable for
infringements caused by domain names, in general or under particular
circumstances, no ADR can change that. Moreover, there will always be
people who think it was a good idea to take on the registry itself instead
of (or in addition to) the domain name holder.
In sight of all of this, before dealing with the possible shape of an ADR
to be adopted by ccTLDs, the basic question has to be asked and answered:
Is there a real need for an ADR for ccTLDs or are there at least convincing
advantages of such an ADR? Given the now repeatedly accented diversity in
organization, practice and legal framework of each of the more than 240
ccTLDs, it appears to be obvious that there can not be a common answer to
this question, whatsoever. On the contrary, there will probably be about
240 different answers, and this should not be deemed something bad. The
idea of creating ccTLDs in the first place was to allow and encourage
regional diversity in domain name registration and administration,
corresponding with the regional diversity in culture, law, and business.
Therefore it is not just appropiate, but a pure necessity, to allow and
encourage regional diversity in dealing with domain name disputes, as long
as they are dealt with in an appropiate manner at all.
This insight does not at all render the attempt superfluous, to think about
the prevention and resolution of domain name disputes under ccTLDs from a
more general perspective, but it highlights the impossibility to create a
single solution for all, as already emphasized at the beginning. The
possible solutions for each separate ccTLD will rather range between the
realization that it is appropiate to implement no ADR at all, and the
implementation of an UDRP-like shaped ADR (as already done by some ccTLD
registries). So one possible answer can very well be to have no ADR in the
usual sense, but to offer some other kind of dispute policy to support
intellectual property owners. DENIC itself provides a good example for
this: DENIC does not offer any path leading to a resolution of domain name
disputes, because, as described before, a fast and relatively cheap
resolution can easily be obtained from the courts in Germany. The German
experience also demonstrates that it is very often not even necessary to
take legal action at all, and domain name holders can be convinced without
a court's help that they should give up the infringing domain name.
However, DENIC offers the party whose rights may be infringed, to make the
(allegedly) infringing domain name's transferral impossible (to avoid
"cyberflight"), regardless of whether a law suit has been filed or not.
Moreover DENIC implements final court rulings issued against the domain
name holder. This procedure which is similar to the UDRP for gTLDs with the
difference that it uses the German courts as dispute resolution providers,
works very well, and in sight of this neither DENIC nor the German
Intellectual Property community feel any need to add an ADR going beyond
it.
Stephan Welzel
Attorney-at-Law
Head of the Legal Department
DENIC eG
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