Request for Comments
on
Issues Addressed
in the
WIPO Internet Domain Name Process
Introductory Remarks
1. The World Intellectual Property Organization (WIPO) has convened an international process to develop recommendations on certain intellectual property issues associated with Internet domain names, including dispute resolution. The recommendations resulting from this WIPO Internet Domain Name Process will be made available to the new organization that will be formed to manage the technical and policy aspects of the Internet domain name system (the "New Organization"), and will be reported to WIPOs member States.
2. Although domain names were originally intended to perform only the function of facilitating connectivity between computers through the Internet, they have developed into business identifiers because they are easy to remember and use. In addition to their uses by individuals and non-commercial entities, they are now also used in advertising to indicate the presence of an enterprise or business on the Internet. Due to the growth of the Internet, the technical requirement that domain names be unique, and current domain name registration practices, domain names have increasingly come into conflict with intellectual property rights, particularly trademarks.
3. WIPO is aware that the international process that it is convening is part of intensive discussions that have taken place in various fora over the last two years in respect of the management of the Internet domain name system. These discussions have addressed also the interface between domain names and trademarks. It is intended that the WIPO process take full account of, and build on, the substantial contributions that all interested parties have made in the course of those discussions as they relate to intellectual property.
4. In convening this process, WIPO restricts itself to its area of competence: the international protection of intellectual property. The WIPO process will not address such issues as Internet governance, and related technical and economic policy. The background to this process and to the management of the Internet domain name system is contained in the Statement of Policy on "Management of Internet Names and Addresses" (Docket Number 980212036-8146-02) issued on June 5, 1998 by the Department of Commerce of the United States of America.
5. International discussions concerning the management of the Internet domain name system, and in particular, the establishment of the New Organization, continue to move forward rapidly. WIPO will cooperate closely with the New Organization to provide information about the WIPO process and to coordinate with the New Organizations plans.
Progress to Date
6. WIPO formally commenced the Internet Domain Name Process on July 8, 1998 with the publication of WIPO RFC-1 on the Terms of Reference, Procedures and Timetable. WIPO RFC-1 was intended to define the scope of the process, including the principal issues to be addressed therein. Comments were sought from interested parties on these terms of reference and, in particular, whether they encompassed and properly defined all issues that should be addressed. Parties were requested not to address the substance of the issues described in the terms of reference, but to address only whether issues mentioned were appropriate for the process, whether they were adequately described, and whether any further issues had to be included.
7. By the deadline for comments (August 24, 1998), WIPO had received more than 60 comments on WIPO RFC-1, which were submitted by a geographically diverse range of participants. All comments received have been posted on this web site.
8. The comments were presented to the panel of experts and formed the basis for the finalization of the terms of reference and the preparation of this WIPO RFC-2. On the basis of the comments received, WIPO has prepared the list of issues set forth below, divided into four categories: dispute prevention, dispute resolution, process for the protection of famous and well-known marks in the gTLDs, and effects on intellectual property rights of new gTLDs. Some comments suggested that the Process address a number of issues which, in the view of WIPO and the experts, are beyond its scope. In addition, several comments addressed matters of substance, although interested parties had been requested to restrict their observations only to the question of whether WIPO RFC-1 encompassed and properly defined all the issues to be addressed by the Process. While these comments were not taken into account in the preparation of WIPO RFC-2, they will be considered at a later stage of the Process.
9. From the comments received, no revisions to the procedures for the WIPO Internet Domain Name Process were deemed desirable at this stage.
10. With respect to the timetable proposed in WIPO RFC-1, there was concern that the proposed timetable (8 months) was too short for accomplishing the complete work program and for meeting all of the objectives envisaged in WIPO RFC-1. The view was expressed that certain issues should be dealt with on an urgent basis, particularly in light of the planned, rapid establishment of the New Organization. WIPO recognizes the need to move forward as quickly as possible, but also the need to provide sufficient opportunity for all interested parties to consider adequately and respond to the many issues to be addressed by the process. While the current timetable will be maintained at this stage, WIPO will be in contact with the New Organization to ensure coordination between the WIPO Process and the plans of the New Organization.
WIPO RFC-2
11. This document is a Request for Comments (WIPO RFC-2) on the substance of the issues to be addressed by WIPO in the recommendations that it will present to the New Organization regarding intellectual property and related dispute resolution issues associated with Internet domain names.
12. WIPO invites all interested parties to comment on the issues in the following four areas: dispute prevention, dispute resolution, process for the protection of famous and well-known marks in the gTLDs, and effects on intellectual property rights of new gTLDs. A detailed list for each category is provided below for purpose of eliciting comments. In view of the scope of the Process, WIPO requests interested parties to confine their comments to the four areas concerned. On the basis of these comments, WIPO will prepare, with the assistance of the panel of experts, an interim report which will be posted on this web site and public comment on that report will also be sought. The deadline for the submission of comments on this WIPO RFC-2 is November 6, 1998.
A. Dispute Prevention
13. Interested parties are invited to propose measures that may aid in preventing Internet domain name disputes involving intellectual property rights. During the discussions that have taken place over the last two years, a number of such measures have been considered. These discussions have often weighed the rapid pace of Internet activity and the current operational practices of registries and registrars against the need for enhanced vigilance and procedures with respect to intellectual property rights.
14. In formulating their comments, interested parties may wish to consider the following illustrative list of measures:
14.1 The elements that should appear in a domain name registration contract: (i) contact details with e-mail and regular mail addresses (e.g., for purposes of service of process), (ii) certification with respect to the use of the domain name, (iii) certification with respect to the domain name and any related intellectual property rights, (iv) agreement to submit a dispute relating to the status of a domain name to the jurisdiction of particular courts, (v) agreement to submit a dispute relating to the status of a domain name to particular alternative dispute resolution procedures, and (vi) other relevant information or certifications and the need to maintain such information in up-to-date form.
14.2 Measures to prevent false and misleading information from being included in the domain name registration contract, and consequences of including such information.
14.3 The desirability of imposing waiting periods prior to the activation of new domain name registrations.
14.4 The desirability of suspending the activation of domain names until payment of the applicable registration fees has been received.
14.5 The desirability of requiring measures to mitigate warehousing of names.
14.6 The desirability of requiring certain trademark or similar searches to be performed prior to the registration of a domain name. If such measures are deemed desirable, how they would be performed in light of current domain name registration practices, who is to perform the searches, and who should bear the associated costs.
14.7 The requirements of any domain name databases (including the type of information to be stored therein) that may be developed to allow domain name applicants, holders of intellectual property rights, and other interested parties to search for and obtain information for purposes of evaluating and protecting any potentially related intellectual property rights. These requirements may include, in particular, the need to make the information accessible through a common interface and to interlink databases that may be maintained by various registries and/or registrars in order to permit single comprehensive searches.
14.8 The possible use of directory and listing services, gateway pages or other methods aimed at avoiding trademark and domain name conflicts by allowing identical names to co-exist, thus overcoming the technical requirement that each domain name be unique.
14.9 The desirability of encouraging registries of ccTLDs to adhere to policies regarding intellectual property issues associated with domain names that may be adopted by the New Organization with respect to gTLDs.
14.10 The appropriateness of registries of ccTLDs marketing the ISO 3166 country codes associated with their ccTLDs as generic identifiers and using their top level domain space as a generic space.
B. Dispute Resolution
15. Interested parties are invited to propose dispute resolution procedures that may assist in resolving disputes concerning domain names and intellectual property rights. The discussions on the management of the domain name system have addressed the conflicts between domain names and intellectual property rights, and have considered whether certain alternative dispute resolution procedures may facilitate the settlement of this sort of dispute. The global character of the Internet, and the consequence that the effects of Internet activity may not to be restricted to any particular national jurisdiction, has been recognized as calling for the establishment of dispute resolution policies for domain names that are international and consistent in scope.
16. In considering the issues, interested parties are invited to submit comments on the following items:
16.1 The desirability of approaches, other than court litigation, for the resolution of domain name disputes involving intellectual property rights. Such approaches may include various forms of administrative procedures, mediation and arbitration.
16.2 The desirability of ensuring consistency in the above dispute resolution approaches and how they should be adopted and implemented to achieve this. This may include in particular that (i) domain name registrants agree to submit their domain names disputes to such procedures, (ii) registries and registrars agree to abide by the resulting determinations, (iii) the dispute resolution alternatives be limited to certain designated procedures, and (iv) the remedies available in the proceedings be restricted to the status of the domain name itself as opposed to other remedies, such as monetary damages.
16.3 Whether some or all of the above dispute resolution approaches should be restricted to cases involving cyberpiracy or be available also for conflicts between bona fide parties (e.g., trademark holders) with legitimate competing rights. If the approaches are to be restricted to cyberpiracy, what range of activities should be deemed covered by this term.
16.4 The appropriate extent of a registrys and/or registrars involvement in the resolution of domain name disputes.
16.5 The desirability of making the relevant registrar responsible for accepting service of process (and forwarding the process) in cases of disputes.
16.6 The possible involvement of dispute resolution administering authorities, the basis on which and by whom they should be selected, and the coordination reasonably necessary so that any dispute resolution procedures offered are made available to domain name registrants, registrars and registries.
16.7 The relationship between any such dispute resolution approaches and the jurisdiction of relevant national courts.
16.8 Whether the decisions resulting from any such dispute resolution approaches should be based on the applicable law or whether it would be desirable to develop special criteria of an administrative nature to be used as a basis for decision.
16.9 The desirability of providing for suspension in the case of an objection to an existing domain name registration, whether such suspension should be implemented automatically or as a result of certain expedited procedures, and whether the domain name holder should receive prior notification of the impending suspension.
16.10 The desirability, in cases where domain names have remained unchallenged during a certain period of time, of either barring claims against such domain names or allowing such claims only on a narrow basis (e.g., in cases of bad faith).
16.11 The extent to which appeal procedures should be incorporated in any such dispute resolution approaches.
16.12 The extent to which any costs associated with such dispute resolution approaches should be shared and by whom.
16.13 The role of on-line dispute resolution systems for domain name disputes and the related security requirements.
C. Process for the Protection of Famous and Well-Known Marks in the Generic Top-Level Domains
17. Interested parties are invited to propose procedures for the protection of famous and well-known trademarks in the context of Internet domain names. Such procedures have been considered during the general discussions on the domain name system.
18. The list below is intended to generate comment by interested parties on relevant issues, so that recommendations can be formulated regarding such procedures and the appropriate extent of any protection for famous and well-known marks in respect of the registration of domain names in the gTLDs:
18.1 The desirability of providing such protection for famous and well-known marks.
18.2 The processes and any relevant criteria that may be developed for determining whether such protection should be accorded in any particular case.
18.3 The relationship between any such protection for marks determined to be famous and well-known for purposes of Internet domain names and the protection of famous and well-known marks under the Paris Convention for the Protection of Industrial Property and the TRIPS Agreement.
18.4 The development, administration and content of any database(s) listing the status of any marks or terms determined to be subject to such protection.
18.5 The desirability of providing special measures of protection for famous and well-known marks upon the introduction of new gTLDs to prevent such marks from being registered as domain names by persons other than their owners.
18.6 The desirability of extending any such protection to any ccTLDs.
18.7 The availability of procedures to obtain the cancellation of such protection.
D. Addition of New Generic Top-Level Domains and Related Intellectual Property Rights
19. Interested parties are invited to provide information on the nature and extent of problems resulting from the interface between the registration of Internet domain names and intellectual property rights. A review of the extent of such problems will provide a better understanding from which to develop appropriate measures for protecting intellectual property rights in relation to domain names.
Extent of Problems
20. An investigation will be made of the extent of problems resulting from the interface between the Internet domain names and intellectual property rights. The investigation will take into account any studies that may have been conducted on the subject, and any relevant information that may be provided by interested parties participating in the process, including relevant experiences in relation to gTLDs and ccTLDs.
21. The investigation will address, in particular, the demonstrated effects to date on intellectual property rights resulting from the existing TLDs, and the satisfaction or dissatisfaction with related dispute resolution approaches. Participating parties are invited to contribute to this investigation by submitting comments on the nature of any problems encountered (e.g., whether they involved cybersquatters or parties with legitimate competing interests a domain name), whether these problems involved parties from the same or different jurisdictions, and whether they were encountered in relation to gTLDs and/or ccTLDs.
22. Parties also are invited to indicate the means by which the problems have been addressed, including whether they have remained unresolved or whether they have been resolved by (1) informal means (e.g. purchase of the domain name), (2) resorting to the dispute resolution policy of the domain name registrar, or (3) litigation before the courts.
New gTLDs
23. An evaluation will also be made, from an intellectual property perspective, of adding new gTLDs to the domain name system. In this connection, comments are sought on the anticipated and, where possible, actual effects of adding any new gTLDs on trademark and other intellectual property right holders. This aspect of the investigation might consider whether any new additional substructures should be introduced into gTLDs and ccTLDs (e.g., to indicate a category of activity or region of a country), and the extent to which compliance with any such categories may be verified at the registration stage, in light of current domain name registration practices.
Request for Comments
24. This WIPO RFC-2 invites participating parties to submit comments on the topics listed above.
25. Comments can be submitted by the following means:
a) Through the Submit Comment form that is available under the RFCs & Comments section of the Web Site. We recommend choosing this method for the submission of comments.
b) By electronic mail to the following address: process@wipo2.wipo.int.
c) By regular mail to the following address: WIPO Internet Domain Name Process, World Intellectual Property Organization, 34 chemin des Colombettes, P.O. Box 18, 1211 Geneva 20, Switzerland.
26. All comments must be received by November 6, 1998.