Transcripts - part 1: Cairo regional consultation
Intercontinental Semiramis Hotel
November 1, 1998
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|San Francisco, California,
Chairperson (Dr. El Sherif): I am Dr. Hisham El Sherif and it is a great pleasure for me to introduce this meeting, this meeting about Internet Domain Names. We are here upon the invitation of the World Intellectual Property Organization, the WIPO, and todays issue is Internet Domain Names and Trademarks. We are here upon the invitation of the WIPO, we are here addressing intellectual property rights, specifically Internet domain names, we are here on the virtual information society, we are right here in Cairo as part of a consultation Process that is taking place all over the world, including a number of countries and a number of cities and probably Cairo is one of two cities, Cairo and Cape Town in Africa, and the only city in the Middle East where this consultation is taking place. The Internet domain name issue and Process will be introduced very shortly. I would like at the start to introduce as well, the organizers with the WIPO, the Cabinet Information Decision Support Center and the Internet Society of Egypt and together we have the privilege to welcome you here. We also have a distinguished Panel, jointly with the WIPO members and it gives me great pleasure to introduce them and to welcome them in Cairo and I will give them the floor very shortly so that each can introduce him or herself. On my right hand side, we have David Muls from the Senior Legal Office, I give him the floor to introduce himself.
Mr. Muls: Thank you very much Dr. El Sherif. My name is David Muls, I am a Senior Legal Officer at the World Intellectual Property Organization and I have been working on the Internet Domain Name Process I would say, nearly full-time, for the last six months. Thank you.
Chairperson: Next we have Ola Zahran.
Ms. Zahran: Thank you Dr. El Sherif. Good morning Ladies and Gentlemen. My name is Ola Zahran, I am a Consultant at the Office of Legal and Organization Affairs at the WIPO and I have also been involved in the organization of the Internet Domain Name Process.
Chairperson: Next we have, from the Panel of Experts, Mr. Dr. Ousmane Kane.
Mr. Kane: Thank you Mr. Chairman. My name is Ousmane Kane as you said, I am the Executive Director of the African Regional Center for Technology. Its main mandate is to promote the technological development of Africa, and, of course, information technology is one of our priorities, together with food, energy and capital goods. Thank you.
Chairperson: On my left side, as well, it gives me pleasure to introduce Mr. Frederick Mostert.
Dr. Mostert: Hi. I am Frederick Mostert. I am President of the International Trademark Association.
Chairperson: Mr. Nederkoorn.
Mr. Nederkoorn: My name is Boudewijn Nederkoorn, I am from the Netherlands. I am in day-to-day life acting as Managing Director of the Dutch National Research Network and at the same time I serve as Chairman of the Dutch Registry .nl and the European Registries, almost 35 of them have united in an association and it is called RIPO CENTR and I am acting as Chairman of that Association as well. Thank you.
Chairperson: Mr. Glaas.
Mr. Glaas: Thank you Mr. President, my name is Geert Glas, I am a Brussels attorney specialized in intellectual property in Internet matters, I sit here as chair of the Internet Sub-Committee of the International Trademark Association.
[At the request of the Chairperson, the participants introduce themselves]
Chairperson: Have we missed anybody? Ok. Great. I have done the introduction, I wish you a very pleasant day. The outcome of today should be further knowledge, understanding and consultation and maybe hearing as related to Internet domain names and trademarks. It gives me a great pleasure now to go with the program and introduce David Muls who is going to make a presentation on the issue. David?
Mr. Muls: Thank you very much Dr. El Sherif. Can everybody hear me clearly? The day will have two parts, we will start with the shorter part, the shorter part will consist of two brief presentations. On the one hand a presentation on the relationship between domain names and trademarks and on the other hand, a presentation on the background on the international consultation Process that WIPO has undertaken. After those two short presentations, the goal would be that we hear your views on the issues that are dealt with in this Process so, very much this consultation is an information gathering meeting and we would dearly hope that the audience participate very actively so that we have the full benefit of all your opinions on the issues to be addressed.
If you would allow me to start with the first general presentation on the relationship between trademarks and domain names. I am sure that some of the points that I will cover will be very well-known to you and I apologize for that, but sometimes it is useful to go a little bit through some basics to make sure that everybody in the audience knows what we are talking about. I will speak about four things. First of all, very briefly, I will give you a background of the Domain Name System. Secondly, I will focus on the relationship between trademarks and domain names. Thirdly, I will outline to you the domain name disputes that can arise in relation to trademarks and lastly, I will give you an overview of some of the main historical developments that have taken place over the last two years in this area.
So let us start with a background on domain names. The first question is: what is a domain name? As you know, the Internet is a network of networks and the computers that are on these networks need to be able to get in touch with each other, so there is a need to be able to uniquely identify a computer on the Internet, from a technical perspective. I know this is technically not correct, but intuitively at least it is comparable to a telephone system: when you want to call somebody in another country, you must know the telephone number of that person so that the telephone system knows exactly which telephone to contact. In some way, the Domain Name System does the same thing. It allows computers to find the other computer on the Internet which it needs to contact. Now, at the origin, that function of identifying computers was performed by numbers and not by domain names. Every computer had a number on the system and if you look at the number of the computer that WIPO uses for one of its websites that number is: 188.8.131.52. This is a twelve digit number and is very difficult to remember, it is not something that you can easily remember, it is quite an unwieldy instrument. Because that is the case, at some point persons thought that it would be useful to come up with an alternative system that would replace or, as it were, map on those numbers a name that it easier to remember. So in the system, the almost impossible to remember 184.108.40.206 has been replaced by a name: wipo.int and instead of entering the number into your browser, you just enter the domain name, wipo.int, and you can find the computer in question. So, in many ways, at the origin, the Domain Name System was created to make it easier to navigate the website.
There are two characteristics of domain names that are very important and that have an impact on the relationship on trademarks. The first characteristic is that a domain name must be unique, there can be only one wipo.int, and it must be unique precisely for the purpose of identification. If there were two machines that had the same domain name, the system would not know which machine to contact. So, uniqueness is an important characteristic of the domain name and is one that causes problems in relation to trademarks and we will touch upon those in a second. The second characteristic is that a domain name is global which means that anybody in the world, wherever he is, if he has a browser and a connection, can find the machine on which the website of WIPO is running by entering wipo.int into his browser. So, it is global in the sense that it works all over the world. This is essentially what a domain name is from a more intuitive perspective rather than a technical perspective.
Let us turn to the question of how are they organized? Domain names are organized in Top Level Domains and there are several Top Level Domains such as eg, .com, .int, .net etc. etc. In fact there are over 200 Top Level Domains in which each domain name must be fitted in. Most of these 200 plus domains are national domains, like eg, .be for Belgium, .fr for France etc. etc. But there are also some, less in number but also a significant number that are not national but more international or generic and the most famous ones are .com, .org, .net and perhaps also .int. When you have a computer and that computer has its IP number, the twelve digit number that I just mentioned, and you want to get your domain name, how do you do this? Well, a person must address an entity that will map the domain name to the IP number, there are organizations that do that and these organizations are called domain names registries or registrars. We can get into the details of the distinction some time later. A person who wants to have a domain name addresses itself to a registrar and that registrar will map the domain name desired by the person to the IP number of the machine. Each registrar, and there are quite a lot of them because there are 200 Top Level Domains, has its own registration procedures. Each registrar basically chooses how they want to do this from a legal perspective. Some registrars are more flexible than others, for instance in some countries you will need to show certain certifications, sometimes trademark certifications, to establish that you are entitled to this particular domain name under trademark law. Other registrars are much more flexible and basically only check whether the domain name that you are interested in already exists in the system. This is called the "first-come, first-served" principle and is used by the registry or registrar for the .com Top Level Domain, which is a company located in the United States called NSI. When you apply for a domain name in the .com Top Level Domain, the only thing that NSI will check is whether that particular domain already exists in the .com system. Now, for people who are familiar with trademark systems you will immediately see that this is totally different from the trademark system where there are usually a number of verifications before you can get a particular trademark. The Domain Name System in that respect is much more flexible, and you can get your domain name much faster than you would normally get a trademark.
This leads us to the relationship between domain names and trademarks and this has to be viewed in the following context: the world expects that the Internet will be an infrastructure for a market place basically, for electronic commerce. People expect that in the future - and these things are already happening you will be able to buy books on-line, music on-line, do banking transactions on-line etc. etc. Of course the companies who want to do business on-line want to attract clients to their websites and as in the normal world, one of the most effective ways of doing that, is to use marks to have people recognize your products and to attract them to your business. So what companies have done or what they are doing is that they are integrating their trademarks into their domain names so that people would more easily remember where to go to in case they want to visit the website. For instance, the company Microsofts website, at least in the United States is microsoft.com, it is very easy for somebody to remember that that will be the website or the domain name for the Microsoft website because it has the trademark of the company and it is in the .com Top Level Domain, which is intuitively the one that is currently associated mostly with commercial activity. So, this ease of remembrance becomes quite an important commercial tool. So, while domain names at the origin are not trademarks, they are in fact technical addresses, they do operate in some ways like trademarks and they perform a similar function in the sense that they create in the minds of people an association between products and companies and the string of letters in question.
But, as I said before, there are two important differences, first of all, the domain name is unique whereas a trademark is not necessarily unique; several companies in the world can have the same trademarks if they are operating in different regions or if they have different lines of products or services. This is not the case with a domain name, it must be unique and secondly, it is global whereas the trademark system, historically, has been based on national registration system on a territorial basis. So, what do we have here? We have, in fact a valuable commercial tool, a domain name which is a unique string that can attract people to business from all over the world and it is unique. What happens when a valuable asset is unique? People will start fighting over who is entitled to it and this is precisely what has happened with regard to domain names. People want to have similar domain names because they believe it is in their interest to have a particular domain name.
Let me now give you some idea of what types of conflicts with regard to these domain names can arise, because there are quite a few different categories of conflicts that can come into existence. The most well-known conflict is probably the cyber-squatter situation. What is this? A person who speculates on the fact that in some registries/registrars there are no verification procedures, a person like that will quickly want to register a domain name that is identical or similar to a mark of a large company, hoping to be the first and then being able to turn around and sell it to the company for a significant amount of money because the company would like to have that domain name to publicize its business. There have been several cases of cybersquatting in the world. In the United States and Europe, for instance, the Panavision case in England, the One in a Million case in France, the Frematom Case in Belgium, the Tractabel case. This activity has been ongoing for a while and has been the subject of several court decisions, it would seem that the courts nowadays tend to rule against the domain name squatter because they sense that there is something of bad faith about that activity, in the sense that you capitalize really without any added value on the value of a brand. This is the first situation, a person who registers the domain name turns around and wants to sell it for a significant amount of money.
While this is the most well-known situation, it is certainly not the only situation, there are other situations, for instance there are companies that register domain names that are similar to famous marks, not to sell it but in the hope of attracting business to their websites. For instance, in the United States, there is a website where the domain name is: Pentium3.com, Pentium2 and 3 are trademarks of Intel, the company that has registered Pentium3.com does not want to sell it to Intel but hopes that people will come to its website because they will think of that when they want to go to Intel and instead of going to Intel they end up in this particular website which in this case is a sexually explicit website, it is pornographic material. That is the second type of situation where a company parasites on a domain name or an a famous trademark of a particular company.
There are other conflicts, a third category is where people register domain names to do product reviews or criticize products of companies on the market. For instance, there was a case in the United States called "Jews for Jesus", Jews for Jesus apparently is a religious organization in the United States and a person who did not particularly like the positions of that organization had registered a domain name that was similar to "Jews for Jesus", let us assume it was "Jews for Jesus.com" and said in the website: "I do not approve of the activity of this organization". So you do not have any business motive, but you have a motive where persons want to attract attention to their website, to express views about another organization or its products.
Another type of conflict can exist in a family situation, for instance, let us assume that a person is called Porsche and has a family and wants to have website for presenting his family, a personal website with the hobbies and pictures of the family etc. and he had registered Porsche.com years ago and all of a sudden the company Porsche realizes that it wants to have a website under its own name and it sees that that name has already been taken by this individual. Here the situation is already much more difficult because the individual legitimately is called Porsche, so why would he have to give up his domain name for the large company? So, you see, in these various categories it is sometimes easier to determine who is right than in some of the other disputes, some of the disputes are actually quite difficult and perhaps the most difficult one would be the following: let us assume that there is a small shop in Vienna let us say, that is called Porsche and that sells books. It is well-known because the books are exported all over the world, it is a small company but it sells books quite successfully on the Internet and then quite suddenly the large company Porsche wants to get that domain name. Why would the large company have the right to get the name over the small company? The small company presumably has registered that mark in its own country and because of the registration system, the trademark registration system, they can happily co-exist as trademarks, but they cannot co-exist as domain names.
So, what I am trying to say is that there is whole series of disputes with regard to domain names, a lot of them involve intellectual property rights but not necessarily all of them and that some are easier to resolve than others. In any event, it is clear, we believe that this new phenomenon of the Internet and the domain names used as identifiers on the Internet, has created an additional, quite complex enforcement problem for famous trademark owners because there are 200 Top Level Domains in which names can be registered and the trademark owners are forced to monitor the activities that are going on to see whether any domain names similar to their brands are registered. So there is a fair amount of policing and verification work that is put on the shoulders of the trademark holders to maintain the value of their brands and this is particularly true of the famous trademark holders. For instance, we have had testimony in some countries where companies stated that on a monthly basis they can get anywhere from 20 to 50 new cases where persons have registered domain names that are variations of their famous marks. So, it is a significant problem for trademark owners and the purpose of this Process is to try to come up with some solutions.
There are various approaches that would could take to try to resolve this problem. The first approach would be to have much stricter registration procedures; to say, each time somebody wants a domain name, you are going to verify that that person in question really is entitled to that domain name. This would be more comparable to the trademark system but would be a significant departure from how the Internet is currently operating. For instance, NSI the company that registers domain names in the .com Top Level Domain, registers 5000 new domain names per day. You can imagine if we started injecting verification procedures at the registration level that that will completely alter the dynamics of the current domain name registration system. So, this is a possibility but one would have to realize that this would have a pretty significant impact on the way the Domain Name System currently operates. Another possibility would be to say: well, let us not introduce too heavy verification procedures at the front end, at the registration stage, but let us at least have a solid and effective mechanism for persons and organization to get the situation rectified if a problem has arisen. That is to say, let us at least have effective dispute resolution mechanisms so instead of putting the emphasis on verification at the front end, we try to have effective dispute resolution procedures at the back end. This is the second approach. Another approach would be to try to come up with a technical system that would allow the same names to co-exist on the Internet so that more than one company could be known by its brand, because there are several companies, for instance that are using the brand "United". Why could we not try to make sure that that is also possible at the Internet level, so that more companies would be able to use the same brand. This is mainly a technical question and there are a certain number of initiatives currently ongoing to try to develop systems that would run, I would say intuitively again, on top of the DNS that would allow similar names to co-exist on the Net. Probably for the foreseeable period in the future, the solutions will be a mixture of the three and the question is not as much whether it should be exclusively one of the three, but what is the right balance between the three approaches.