Intellectual Property Issues
WIPO Survey of Country Code Top Level Domains (ccTLDs)
While the WIPO Process is directed primarily towards the gTLDs, it was considered that the experience of ccTLDs regarding intellectual property issues raised by domain names may offer valuable insights. Consequently, as proposed in WIPOs Interim Report, a survey was conducted to gather information on the impact on intellectual property of the practices and procedures adopted by a representative group of ccTLD registration authorities.
The 35 ccTLDs surveyed by WIPO were selected on the basis of their number of domain name registrations (both large and small), geographic representation and diverse registration procedures. The questionnaire was devised to obtain information concerning the registration authorities' procedures and experiences in domain name registrations relating to three main areas:
(i) registration practices and procedures;
(ii) dispute resolution; and
(iii) experiences with registration operations and disputes involving domain names.
II. COUNTRY CODE DOMAINS SURVEYED 1
.cc Response Number of Registrations
Argentina .ar 3 70,919
Australia .au 82,094
Austria .at 3 37,754
Belgium .be 3 15,938
Brazil .br 59,628
Chile .cl 3 7,500
China .cn 3 19,608
Czech Republic .cz
Denmark .dk 3 93,181
Egypt .eg 3 1,135
France .fr 3 37,174
Germany .de 3 340,124
Hungary .hu 3 7,000
Israel .il 3 10,000
Italy .it 3 51,446
Japan .jp 3 63,678
Malaysia .my 3 4,700
Mexico .mx 3 14,400
Netherlands .nl 3 70,985
New Zealand .nz 3 31,161
Norway .no 25,160
Niue .nu 34,688
Senegal .sn 3 87
Singapore .sg 3 9,401
South Africa .za 3,538
Spain .es 3 11,580
Sweden .se 3 36,152
Switzerland .ch 3 64,967
United Arab Emirates .ae
United Kingdom .uk 3 229,954
Venezuela .ve 3 2,000
In a few instances, ccTLD registration authorities have requested that their answers remain confidential and, in these circumstances, although statistically represented, the name of the ccTLD is not disclosed.
III. SURVEY QUESTIONS, RESPONSES & ANALYSIS
Registration Practices & Procedures
- Does the ccTLD operate an "open" domain, or are there restrictions on who may register a domain name (e.g., requirement that an applicant be resident in the country of the ccTLD)? If "restricted", please state the restrictions:
A significant majority (71%) of ccTLD registration authorities operate restricted domains, while the remaining domains (for example, .at, .dk, .mx, .nz, .ch and .uk) are open to all applicants. In those ccTLDs that place restrictions on which applicants may apply for registration, the most common restrictions were a requirement of residence (for example, .fr, .de, .it, .be, .my, .es, .se, .nl and .ve), or registration of the company or its legal representative in the country. Some ccTLDs limit the numbers of domains which any one applicant or organization may register, for example, 10 domains per person in .il, one domain per organization in .it. Others require official certification by the national authorities, for example, .cl requires an identifier given by the Chilean tax-office.
- Does the ccTLD formalize the terms and conditions of the domain name registration agreement with an applicant? If 'yes', how (e.g., by an electronic/ paper document defining the relationship between the parties)?
Total online contracts = 13
Total paper contracts = 6
One ccTLD, .uk, issues a Registration Certificate to the registrant or its agent, as well as sending an e-mail message, confirming that the registration has been successful and refering to the terms and conditions at www.nic.uk/terms.html. The registrar of .sg requires applicants to submit an on-line contract via e-mail, and also sends a letter of confirmation outlining its rules and regulations. Another authority, .it, signs a contract with the ISPs which provide the service to domain name applicants, and also requires the applicants to sign a letter acknowledging responsibility. Similarly, in .nl, both registries and registrars sign an Indemnity Statement, and the applicant also signs an Indemnity Statement with the registrar. A number of other registration authorities (for example, .cl, .es, .se, .be) post their terms of registration on-line, and also require applicants to sign a written agreement.
- Does the ccTLD require the applicant to provide the following contact details upon registration?:
(a) the applicant's name:
(b) the applicant's postal address:
(c) the applicant's e-mail address:
(d) the applicant's telephone number:
(e) the applicant's facsimile number:
(f) the name of an authorized contact person (if the applicant is an organization, association or corporation):
(g) the primary nameserver (hostname and netaddress)(h) the secondary nameserver (hostname and netaddress):
- Does the ccTLD require the applicant to certify upon registration that their ownership and use of the domain name will not interfere with or infringe the intellectual property rights of any third party?
- Does the ccTLD require the applicant to certify upon registration that the information they provide to the ccTLD is true and accurate?
- Does the ccTLD take any steps to verify that the information provided by the applicant is true and correct? (e.g. on-line data validation mechanisms, or automatic confirmation by e-mail). If 'yes', please describe such steps:
A number of registration authorities verified applicants' identities with on-line e-mail checks (for example, .my, .nz, .ch), while others required companies to present certificates of registration from the national authorities either as a matter of course (for example, .cl, .fr, .nl, .eg), or in the authorities' discretion (for example, .it, .jp). Verification is only partial in .uk, where applicants are checked against the authorized national register of companies only if applying to register in the restricted second-level domains of .net.uk, .ltd.uk or .plc.uk.
- Does the ccTLD require the applicant to notify the ccTLD of any change in the information provided at registration (i.e., maintain up-to-date registration information)?
- Does the ccTLD take steps to maintain the confidentiality of information provided by applicants for domain name registration? If 'yes', please specify the steps taken:
A majority of ccTLDs take no steps to maintain the confidentiality of registrants' contact details, and in most cases make the information freely available on Whois databases (for example, .my, .mx, .nz, .sn, .se, .ch, nl, .uk, .be, .eg). However, even in such domains, registrars may ensure that their practices comply with applicable national privacy laws (for example, .nz and .uk). Of those ccTLDs that do take steps to maintain confidentiality (for example, .cl, .ch, .dk, .fr, .il, .it, .sg, .es, .ve, .jp), a number will release information only to parties that have entered a contract with the registry and have thereby committed to following the ccTLDs' policy for acceptable use of the contact details (for example, .ch). Other registration authorities undertake to provide the information freely, but only upon request (for example, .mx and .dk).
- Does the ccTLD make registrants' contact information available to third parties in any circumstances? If 'yes', please specify in what circumstances such information is made publicly available:
A clear majority of ccTLDs make registrants' contact details available in some circumstances, usually through publication on the registration authorities' web sites, or via Whois (for example, .at, .cl, .ch, .dk, .fr, .de, .il, .it, .mx, .nz, .sg, .es, .ch, .nl, .ve, .uk, .jp). The registration authority for .fr makes such information available on Whois, but forbids its use for commercial purposes. The registration authorities for .uk and .il note that applicants are notified in their registration contract that their contact information will be in the public domain.
- Does the ccTLD take any steps if an applicant is found to have provided false or inaccurate information, particularly in the case of false or inaccurate contact details (e.g., suspension, take-down or de-activation of domain name registration)? If 'yes', please describe:
A clear majority of ccTLDs take action if an applicant is found to have provided false or inaccurate contact information (with the exception of .cn, .nz and .uk). The most common actions are described as warning, suspension, take-down, de-activation, and revocation of the domain names. The registration authority for .dk will put a domain name on hold for up to three months, while the authorities for .es, .be and .de warn the domain name holder to correct the data before taking action, although no indication is given of the length of the period before subsequent de-activation. The authorities for .nl and .sg will revoke the name if the organization holding the domain name ceases to be active. The authority for .mx, after de-activating a name, takes the additional step of not re-registering the name for a further 30 days.
- Does the ccTLD require payment of a registration fee?
- Does the ccTLD require payment of the registration fee before activation of the domain name registration?
A small minority (12%) of registration authorities (.cn, .de and .jp) require payment of registration fees before a domain name is activated. The more common procedure, by which domain names are activated without requiring payment (88% of ccTLDs), was identified by a substantial number of commentators in the WIPO Process as facilitating abusive registrations by cybersquatters and warehousers.
- Does the ccTLD require payment of re-registration (i.e. renewal) fees?
In contrast to the previous response, of those ccTLDs that do require a fee to be paid, a significant majority (88% of ccTLDs) aslo require payment of renewal fees (only .jp does not).
14. Does the ccTLD take any steps in the event that a domain name holder fails to pay any required fee (e.g., suspension or cancellation of domain name registration)? If 'yes', please describe the steps taken by the ccTLD:
The majority (83%) of those ccTLDs that do require a fee to be paid, take some action if the domain name holder fails to pay the fee. Only .jp does not take such action. In most cases (for example, .cl, .fr, .my, .nx, .sn, .se, .ve), non-payment results in cancellation of the domain name. Some registration authorities describe their procedures for warning applicants by e-mail, fax and/or post (for example, .de, .sg, .es, .ch, .be), or waiting for a 30-day period (for example, .mx, .cn, .il), before suspending and ultimately de-activating names. The registration rules and procedures of the ccTLDs detail these actions, for example;
- .ch automatically deletes inactive names, but for active names which are late in payment, the registry tries to contact the holder by e-mail and fax, before the name is set to 'inactive' and, if there is no response, the name is deleted;
- .it puts a name which is late in payment on 'frozen' status, so that it is left active, but will not make any modifications until a new provider takes charge of the name;
- .es contacts the holder who is late in payment by e-mail, then twice by registered mail, then if there is no response, cancels the name;
- .nl, the ccTLD, has no direct relationship with the domain name holder (which exists between the registrars and domain name holders), however if the registrar fails to pay the fee to the ccTLD, after 60 days its status as registrar is cancelled.
15. Does the ccTLD register domain names solely on a first-come, first-served basis (i.e., when processing an application for a domain name, does the ccTLD perform any checks, other than ascertaining whether the domain name applied for has already been registered)? Please describe the ccTLD's policy in this respect:
A significant majority (88%) of ccTLDs operate on a strictly first-come, first-served basis of registration. A number of registration authorities noted that they also do not permit reservation of names (for example, .cn, .fr. .it). Some registration authorities operate on a different basis, for example, .se will register only names that are identical to the applicant's company name, regardless of priority of application. A number of ccTLDs, although operating under the general priority principle, take some procedural steps to ensure that all of their rules of registration are met before a domain name is allocated. For example:
- .cl publishes an application on the web for 30 days, during which time third parties may challenge the application, and an arbitrator must then decide which party should be allocated the name;
- .it verifies the correctness of information received, verifies that primary and secondary name-servers are in operation, verifies that the requested name is not a well-known trademark, and then applies the first-come, first-served principle;
- .fr first verifies that all documents provided are legitimate;
- .ve verifies that the name is not a registered trademark in Venezuela, unless owned by the applicant, then applies the first-come, first-served principle;
- .eg applies the first-come, first-served principle, but also verifies the legal status of the applicant and the status of the applicant's trademark with the Egyptian Department of Foreign Relations;
- .uk applies the first-come, first-served principle in the .co.uk and .org.uk second-level domains, but undertakes cross-checks in .plc.uk, .ltd.uk and .net.uk.
16. Does the ccTLD take any (other) steps to prevent 'cybersquatting' or 'warehousing' 2 of domain names? If 'yes', please describe:
A majority (67%) of ccTLDs take steps to prevent abusive registration of domain names, while a minority (33%) do not (for example, .at, .dk, .nz, .uk, .be, .eg). The preventive steps taken by the registration authorities vary widely. For example:
- .il imposes a limit of 10 names per person or organization;
- .jp imposes a limit of one name per organization and forbids transfer of domain names;
- .fr forbids reservation of domain names, and the application must be justified and technically ready before activation of the domain name;
- .se permits only the officially registered company of that name to register the domain name;
- .it forbids reservation of domain names, will only register names that are activated through an operational DNS, and currently imposes a limit of one name per person or organization;
- .mx issues a warning to applicants seeking a domain name that includes a generic or famous name, then freezes the domain name if a conflict arises;
- .sg imposes a higher fee on second and subsequent names, requires an applicant to have two active servers, forbids sharing of domain names and limits transfer of names to one transfer per organization per year;
- .ve permits only the registered trademark owner to hold the identical domain name, and liaises with the national intellectual property office (Servicio Autonomo de la Propriedad Intellectuel);
- .cn forbids registration of names which include the words 'china', 'chinese', 'cn', 'national', and names of countries, regions, foreign locations, international organizations, full or abbreviated names of administrative organizations at and above country level, classifications of industries, generic names of goods or enterprises, trademarks already registered in China, and names harmful to State, society or public interest;
- .nl requires the domain name to correspond to the brand or tradename of the applicant, and requires applicants to undertake that the domain name does not contain misleading references to its purpose or function or in respect of any other information, and does not violate any third parties' rights.
17. Does the ccTLD sub-divide its country code domain space into differentiated sub-domains?
Two thirds of ccTLDs differentiate their domain space into second-level domains (only. cl, .dk, .de, .es, .nl, and .be do not).
(a) Please specify the categories of sub-domains:
There is wide variation in the number of categories of sub-domains into which ccTLDs are differentiated, ranging from four (.at) to forty-two (.fr) such second-level domains. Most registration authorities follow a common pattern, sub-dividing into second-level categories for education, organizations, police, military, government, network services, geographic regions and commercial services, with some regional variations. For example,
- .fr sub-divides into 42 categories including .fn (official organizations), .tm (INPI registered trademarks), .asso (associations), .presse (press), .gouv (govt), .barreau (lawyers), .pharmacien (pharmacists) etc.;
- .il sub-divides into .kiz (school), .org, .ac (higher education), .gov, .mun (municipalities), .net (ISPs), .co, .idf (military);
- .cn sub-divides into .ac (scientific research), .com, .edu, .gov, .net, .nics, .nocs, .org, and 34 administrative names for provinces of China;
- .jp sub-divides into .ad (network administrative organizations), .co, .ac (academic), .go (government), .or (other organizations), .ne (network service domains), .gr (group domains), .ed (schools), .tokyo (geographical);
- .ve sub-divides into .edu, .net, .com, .co, .bib, .tec, .int, .org, .mil, .firm, .store, .web, .arts, .rec, .info, .rio, .nom;
- .nz sub-divides into .ac, .co, .net, .cri, .gen, .govt, .iwi, .mil, .org, .school.
(b) Does the ccTLD maintain criteria for registration in sub-domains, or can applicants select freely which sub-domain they wish to be registered in?
o Criteria are maintained
o Open choice of applicant
A significant majority of ccTLDs maintain, or regulate, the second-level domain in which an applicant's domain name will be registered. A small number of ccTLDs allow applicants free choice (for example, .at, .it, .sn, .ch).
(c) If, 'criteria are maintained' by the ccTLD, do they serve merely as guidelines, or are they enforced?
o Not applicable
A significant number (46%) of ccTLDs enforce the distribution of users into appropriate second-level domains (for example, .fr, .il, .mx, .nz, .sg, .se, .ve, .uk, .jp, .eg). A number of registration authorities maintain some of their second-level domains, but not others, for example:
- .il maintains only .kiz.il, .ac.il, .gov.il, .muni.il, .net.il, .inf.il;
- .nz maintains only .gov.nz, .mil.nz, .iwi.nz, .cri.nz.
(d) If criteria are 'enforced' by the ccTLD, please describe how:
Registration authorities vary as to the methods they use to enforce their second-level domains. For example:
- .jp state that they simply reject applications that do not meet the criteria of a particular second-level domain;
- .eg monitor the differentiation according to the documentation provided by the applicant and the applicant's activities;
- .uk's central registration authority directly manages only some of the second-level domains within the country code and within those second-level domains, criteria are enforced, so that for .ltd.uk and .plc.uk, the domain name must correspond exactly to the applicant's limited or public limited company as registered at Company House, UK. Within .net.uk, the applicant must be either an ISP or a registered company in the UK, or a UK Government department, local government body or associated government-funded organization, a recognized academic institution in the UK, a charity on the Register of Charities at the Charity Commission in the UK. Also, the applicant must be listed as a local IP address registry with a regional IP address registry, or have an Autonomous System containing hosts in the UK that is listed with a regional IP address registry and that is continuously reachable from major Internet exchange points. Also, the requested domain name must be the same as or a reasonable variant of the applicant's name, and the applicant must use the domain in conformance with RFC 1591 guidelines for NET domains, and the organization must be an ISP with an AS registered number.
(e) Please comment on whether you consider any ccTLD practice of differentiation into sub-domains has been useful in avoiding intellectual property disputes (particularly in terms of permitting identical names to co-exist):
18. Please describe any other registration procedures or requirements of the ccTLD you consider to be important:
- .dk noted that it would only register through registrars known to them;
- .fr noted its differentiation into 42 classes of marks and other classifications as having been very useful;
- .de noted its practice of not registering domains of less than three symbols, or vehicle license plates, or numbers; and requiring a minimum of two nameservers (non-identical) in the Class C network;
- .it noted its management of the domain by two distinct authorities - the Naming Authority (made up of ISPs and experts on e-mail) which establishes the rules, and the Registration Authority, which registers the names and participates in the work of the Naming Authority;
- .mx noted its procedure by which any problem related to the ISP is sent to the national industrial property office, Instituto Mexicano de Propriedad Industrial (IMPI), to be resolved;
- .es noted its revised procedures, which allow several domains to be held by organizations with registered marks, time for third party opposition, petitions only by intermediaries, and the establishment of an appeal committee;
- .uk noted its practice of issuing a Registration Certificate on paper to each domain name holder, as having been very useful in maintaining the accuracy of the details listed in the register;
- .jp notes its policies of allowing only one domain per organization and forbidding transfer of names, as having been quite successful in preventing disputes.
- Does the ccTLD have an established policy for the resolution of disputes that may arise between the holder of a domain name and a third party?
Almost half the ccTLDs have an established dispute resolution policy (for example, .cl, .dk, .de, .il, .it, .mx, .sg, .ch, .ve, .uk, .jp), while a small majority have no established policy (for example, .at, .cn, .fr, .my, .nz, .sn, .es, .se, .nl, .be, .eg). The registration authority for .mx noted that any disputes in its domain are sent to the national industrial property office (IMPI), for resolution.
- Does the ccTLD require applicants, in the registration agreement, to submit to the jurisdiction of any particular court of law, in the event of a dispute arising between the holder of a domain name and a third party?
A majority of ccTLDs require domain name holders to submit to a particular court of law in the event of a dispute (for example, .at, .dk, .de, .il, .mx, .sg, .se, .ch (only for disputes between registry and registrant), .ml, .eg), while the rest specify no jurisdiction (for example, .cn, .fr, .it, .nz, .sn, .es, .ve, .uk, .be, .jp).
- Does the ccTLD's registration agreement provide the applicable law to apply in the event of any dispute arising between the holder of the domain name and a third party?
- Does the ccTLD require applicants, in the registration agreement, to submit to any alternative dispute resolution (ADR) procedure (i.e., a procedure, other than in a court of law, for the resolution of disputes, e.g., conciliation, mediation, arbitration or administrative dispute resolution) in the event of a dispute arising? If 'yes', please specify the procedure of alternative dispute resolution:
o Not applicable
Half the ccTLDs surveyed do not require applications to submit to alternative dispute resolution (for example, .dk, .fr, .de, .my, .mx, .nz, .sn, .sg, .ch, .nl, .uk), while those that do, use the services of an arbitrator (for example, .cl, .se, .ve). The registration authority for .uk facilitates the use by registrants of alternative dispute resolution services, solely on a voluntary basis.
- Does the ccTLD become involved in any significant, formal or informal, way in the resolution of the dispute (e.g., to encourage applicants to mediate or settle their dispute)? If 'yes', please describe how the ccTLD is involved:
A majority (63%) of registration authorities do not become involved in the resolution of disputes which occur in their domains (for example, .at, .cl, .cn, .fr, .il, .mx, .sn, .sg, .se, .ch, .nl, .jp, .eg). Of the significant number (38%) of ccTLDs that do become involved, almost all seek to informally mediate the dispute, without becoming substantially involved (for example, .uk, .my, .be). Some registration authorities take more of an active role (for example, .it, .es, .ve), while others simply provide information (for example, .ch). Some ccTLDs have adopted different procedures, for example:
- .de will recommend an out-of-court settlement, and facilitate lawyer referrals;
- .it will, upon receipt of a formal letter from a third party notifying them of a dispute, put a flag on the database record stating that the name is under dispute; then provide informal advice in the settlement discussions, and wait for the parties to reach agreement, or for a court order to change the status quo.
- Please describe the ccTLD's procedures for implementing decisions resulting from court litigation or alternative dispute resolution proceedings, in the event such decisions affect the status of a domain name (e.g., cancellation or transfer of a domain name):
Almost all registration authorities follow a policy to immediately implement the orders, usually for cancellation or transfer of a domain name, in a certified decision of a competent court (for example, .at), or the national court (for example, .dk), or as determined by an arbitration authority (for example, .cl, .ve). Some registration authorities will implement only final non-appealable decisions of the courts (for example, .nl), whereas others will implement the orders, pre-trial or final, of competent courts (for example, .uk). Some registration authorities follow different procedures, for example:
- .cn will de-activate a name within 30 days after a trademark owner files an opposition;
- .nz will act only upon authorized instructions from the domain name holder;
- .ch will put a name on hold pending the outcome of a dispute, then implement a legally valid judicial decision;
- .mx, once it has received a decision from the national industrial property office (IMPI), will notify the affected party, wait 30 days, then effect the modification to the domain name;
- .nl will implement only an authentic copy of a non-appealable final judgment to cancel a registration;
- .be will implement a court decision, however transfer of the domain name is not automatic, because the transfer must comply with the rules for the .be domain;
- .jp will cancel the domain name upon presentation of a certified copy of the judgment, but will not implement an order to transfer a domain name, because transfer is not permitted by their registration policy and rules.
Experiences of Registration Operations & Disputes involving Domain Names
- Please specify the number (if any) of disputes relating to domain names, which are known to have occurred in the ccTLD name-space:.
Total number of disputes:
0 = 4
1- 10 = 11
11 - 20 = 3
100 - 500 = 4
> 500 = 2
- Please indicate the occurrence of use of the following types of dispute resolution:
- Resulting in use of the ccTLD dispute resolution policy:
No policy = 13
0 = 5
1- 10 = 3
11 - 20 = 1
100 - 500 = 2
> 500 = 0
- Resulting in legal action being initiated before the courts:
Unknown = 2
0 = 10
1- 10 = 10
11 - 20 = 1
>30 = 1
Most registration authorities indicated that when disputes arose, the parties reached agreement without becoming involved in formal dispute resolution (for example, .de, .it, .mx, .sg, .nl). The registration authority for .nz indicated that, in its experience, most disputes occurred becaues of businesses splitting up, causing disputes over who controlled the name, rather than disputes between trademark owners.
- Please describe any other experiences of disputes in the ccTLD you consider to be important:
- .il indicated that its registration policy (at www.isoc.org.il/domains) had taken 18 months and the resources of three lawyers to draft;
- .se indicated that its system of registration allows no room for disputes because, for all registrations, the domain name must be the company name;
- .nl indicated that the Indemnity Statement that registrants are required to sign has ensured that the ccTLD has not become involved in disputes;
- .uk indicated that it has been joined as a party in litigation on only three occasions (transcripts are available at http://www.nic.uk/news/index.html), and that the issue of alleged liability of TLD managers for causing or enabling passing off or trademark infringement has yet to be determined by English courts. The registration authority also noted that, although it had arranged for the availability of a commercial mediation service, the scheme had not been utilized, in part due to the success of impartial conciliation by its staff, and in part due to the early settlement of disputes in which the registration authority has acted according to its rules to suspend the delegation of a domain name or to cancel its registration.
1. These numbers reflect the total registration as at April 28, 1999. See Netnames.com's website