browse comments: WIPO RFC-1

WIPO RFC-1
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Mon, 24 Aug 1998 17:07:54 -0400

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Attachment: http://wipo2.wipo.int/dns_attachments/attach903992874.doc

Please see the attached comments regarding the referred-above matter. I prepared the same comments not only in a rich text file of MSWord v.7 but also in a MS-DOS text file for your convenience.
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Date: August 17, 1998
To: Mr. Takeshi Kikuchi, The Arbitration Center for Industrial Property
Cc: process@wipo2.wipo.int of The World Intellectual Property Organization
From: Kozo Yabe; Vice Chair, Legal System Committee of the Japan Trademark Association
Re: Comments Concerning Terms of Reference, Procedures and Timetable for the WIPO Internet Domain Name Process

* NOTE: The comments given below are my individual comments as Mr. Kikuchi referred RFCs of Terms of Reference, Procedures and Timetable for the WIPO Internet Domain Name Process. Therefore, please note that my comments do not necessarily represent the official views of the Japan Trademark Association.

* * *

1. Concerning Dispute Resolution (4A)

With respect to c., the dispute resolution approaches should be limited to cases involving cyberpiracy, which is an imperative issue in need of a solution. These cases can be covered by any trademark law or unfair competition law of WIPO member countries without time consuming arguments and arrangements. Otherwise, it would take more time to reach a specific standard, which could be accepted, by each member country. Considering that trademark rights are registered rights in many countries, conflicts between trademark holders with legitimate competing rights should, at least for now, be left to a traditional dispute resolution system, particularly the judiciary of each country.

With respect to d. and e., if we think about this point, we should pay attention to the nature of the respective registry and registrar. We should compare the differences between a public and quasi-public organizations as a registry or registrar of Internet domain names, and a private corporation doing the same for its private business purposes.

With respect to g., we may not necessarily be affected by final binding awards rendered through dispute resolution regarding Internet domain names issues. Although final resolutions given by the dispute resolution tribunal are desirable, balancing the freedom to obtain Internet domain names and the rights of registered Trademark holders or famous trademark holders should allow for the opportunity to appeal to the judiciary system in the relevant national region. In other words, dispute resolution for Internet domain names can be considered a special exception from the usual standards of commercial arbitration and mediation.

With respect to h., in order to avoid the complexity of applicable laws, it is not necessary for us to establish a new rule for choice of law regarding Internet domain name issues. Instead, we should adjust how choice of law is to be properly applied within our current rules for international conflicts of law.

As mentioned in i., developing special criteria for Internet domain name issues is desirable, mostly because the issues fall somewhere between Trademark laws and Unfair Competition Prevention laws. However, in the case of a traditionally "not-so-litigious" country, it would be difficult to understand the special and precise criteria when these dispute resolution approaches are established. For the convenience of such countries, I suggest the Experts be required to provide collective research about past precedents.

2. Concerning Process for the Protection of Famous Marks in the Generic Top-Level Domains (4B)

With respect to c., I am unclear on what is meant by "retroactive" effect. I would be most appreciative if you could clarify the meaning.

Provisional protection, as mentioned in d., should be considered. Considering the expansion of Internet domain name issues, provisional protection should be required in timely manner. It may be useful if we consider a system similar to defensive marks in Japan, etc.

With respect to g., from a practical point of view, how necessary is it to extend the same protection for Famous Trademarks to any ccTLDs in addition to gTLDs. Is it feasible considering the practical resources of WIPO and other countries' systems?

Cancellation, as set forth in h., should maybe be allowed to a certain extent because the circumstances for usage of a Famous Mark may have changed since the time that protection for such Mark was given. In addition, we may want to think about procedural defects, such as forgery of evidence, for the protection of Famous Marks.

3. Concerning Addition of New Generic Top-level Domains and Related Intellectual Property Rights (4C)

I understand the need to investigate the nature and extent of problems resulting from interface between the registration of Internet domain names and intellectual property rights. However, I am afraid that the addition of new gTLDs may amplify the issues because it parallels the situation where a cybersquatter gains an advantage unless proper rules and special criteria for Internet domain names are installed in advance.

4. Concerning Proposed Procedures (6 and 10)

With respect to 6, who should be the "members of the Internet community who are not trademark holders"? Does this include only registrars and registries of Internet domain names or do you intend to invite major Internet providers and even cybersquatter representatives? I am concerned that bringing together too many parties with different concerns will result in less efficient WIPO hearings to decide on resolutions.

As stated in 10, a series of regional hearings and consultations is productive. Even though we can communicate with each other online, this communication remains somewhat passive rather than active due to language and cultural barriers. It is my opinion that these should be held in Asian, African and East European countries. Communication in person is still effective and powerful in this age of Internet communication.

* * *

Kozo Yabe
Yuasa and Hara
Office Telephone: 81-3-3270-6641 (Receptionist)
81-3-3246-6513 (Direct)
Office Fax (G3): 81-3-3246-0233
E-mail: illiniky@mx2.nisiq.net

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