browse comments: WIPO RFC-2 Comment

WIPO RFC-2 Comment
Axel H. Horns (Horns@t-online.de)
Thu, 17 Sep 1998 22:56:28 +0100

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Axel H. Horns
Patentanwalt
Mittermayrstrasse 16
D-80796 Munich
horns@t-online.de

speaking only for myself and not in any other capacity:

> 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 (vii) 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.

ad 14.1) The application procedure should be as lean as possible. The
minimum requirements should be:

- The name of the domain to be registered must, of course, be given
with the application.

- Proper identification of the applicant (first name, last name in
case of a natural person, proper firm identical as recorded in the
respective commercial register) has to be provided with the
application. The term "applicant" encompasses "administrative
contact" but is more than only some kind of "contact" address. The
applicant is a legal entity who is contractor of the registry
and therefore assumes legal responsibility for the domain.

- The applicant's residence or location of business where Official
Communications or communications of the registry can be served has
to be specified with the application.

- A statement exhibiting the applicant's request to register the said
domain in his name, thereby assuring that the application is made in
good faith.

- Manual signature or digital signature (if digital applications
are permitted) of the applicant or by an appropriate representative
acting on behalf of the applicant.

A domain application lacking one or more of the above essential
requirements should not be processed by the registry but the
applicant should be notified accordingly. If these requirements are
fulfilled, the date of filing of the application constitutes the time
rank that is relevant for the first-come first-served principle.
There should be no other essential requirements for obtaining a time
rank of a domain application.

There are other requirements, inter alia specification of

- Usual telecommunication channels (telephone, fax, e-mail) of the
applicant;

- Technical contacts, zone contacts, billing contacts etc. pp.

- Nameservers etc.

If something is wrong with these indications, the applicant should be
notified of the defects of the application by the registry and
invited to correct or complete all necessary data within a prescribed
term. If the applicant fails to rectify said defects in due time the
application shall lapse.

I do not see any benefit from requesting any further paperwork at the
time of applying for a domain name registration. This holds in
particular with regard to any certificates for any anticipated use of
the domain.

As long as the registry operates on a contractual basis (i.e.
the domain registration is based on a contract between registry and
applicant rather than on some kind of International Statutory Law)
there is no room for binding arbitration mechanisms. There may be
countries where e.g. natural persons are not entitled to make
contracts with binding arbitration clauses freely at their own
discretion. Instead, the statutory law of many countries provides
certain lists of "black clauses" which are deemed to be void and/or
unenforceable in any private contracts. Hence, before including
binding arbitration clauses into domain registration contracts to be
signed by persons or legal entities from around the world, very
intense legal research would be necessary to find wordings for
clauses which are considered to be enforceable in a global context.
I think that such task would be too big to be performed within the
process time schedule.

ad 14.2) There should be no "official" examination or investigation
of the data specified by the applicant in order to keep the
registration process lean. The crucial point is the identity of the
applicant. If the identity of the applicant has been specified
correctly, all other problems can be disputed properly. The main
problem arises whenever the true identity of the applicant is
obscured, e.g. in order to commit fraud or the like. Therefore,
considerations should be made to put any registration "on hold" if
serving any notification by the registrar to the applicant or bearer
of a registration fails at the specified domicile or location
of business because the communication can't be delivered due to
non-existence of the address or upon well-reasoned indications of
third parties that a person or legal entity according to the
applicant's identity does not exist at the given domicile or place of
business, respectively.

14.3) Due to marketing requirements a waiting period seems not to be
appropriate.

14.4) The registration should be set "on hold" if payment is overdue
for a reasonable period of time, e.g. 2 months. In this case, the
registry should be obliged to send a reminder to the applicant /
bearer of the domain registration. If no payment is received 4 months
or so after falling due, the application / registration should be
cancelled.

14.5) I do not see any reasonable definition of the term
"warehousing of names" which might allow any reasonable legal
interpretation. To impose any limitations on the absolute number of
domain registrations looks somewhat inappropriate.

14.6) Using a certain domain name might potentially infringe
trademark rights in any jurisdiction of the world. A _binding_
requirement to conduct a trademark search would thus make only sense
if such search could cover each and every jurisdiction on the world.
This is currently infeasibile. However, every domain applicant should
be encouraged to conduct a trademark search for as much as
jurisdictions as possible on a voluntary basis. This should be
possible at low cost or even for free (e.g. a scan for _identical_
trademarks, if the Trademark Offices in as many jurisdictions as
possible would put their trademark data on the Internet without
charge). However, searching for similar trademarks on a purely
computerized basis is _very_ difficult, if not impossible because of
the applicable criteria of phonetics and writing differ from country
to country. A search for similar trademarks done by experienced
trademark experts is _very_ expensive and thus can be afforded for
the required number of jurisdictions only by "global player"
companies.

14.7) Such databases should be made available to the general public
via the Internet.

14.8) The current DNS system solves all requirements of easy
computer-to-computer interconnection and should not be replaced by
other systems. Maybe that within 1980 to 1990 other directions had
been theoretically available. But in those times nobody thought of
trademark problems. There is no way to undo real history.

14.9) Yes, there should be a harmonization of the policies regarding
intellectual property issues associated with domain names.

14.10) The policies of ISO 3166 TLDs should be maintained as-is. Also
with regard to these policies there is no way to undo real history.

> 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 registry's and/or
> registrar's 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.
>

ad 16.1 to 16.13)

Unless there is a clear indication that binding arbitration clauses
signed by private parties of domain registration contracts are indeed
enforceable in all jurisdictions, court litigation should be the
general rule. However, domain applicants or bearers should be
encouraged to make use of arbitration or mediation e.g. offered by
the WIPO on a voluntary basis if they determine that they are clearly
entitled to do so by applicable national law.

The legal constitution of the registries should be carefully selected
so that they are entitled under all applicable law to agree to
clauses binding them to the results of any authorized arbitration
proceedings. The problems come up, however, with regard to the
"customers", say "applicants" or "domain bearers" which might not be
fit to sign binding arbitration clauses e.g. in view of applicable
consumer protection law or so.

There is no reason why to exclude private persons generally from
obtaining domain registrations.

The key point of all non-court dispute resolution attempts is "due
process". Arbitration dispute resolution will be successful and
widely accepted on the long run _only_ if there is a course of
proceedings according to those rules and principles which have been
established in western-style democratic countries for the protection
and enforcement of private rights. These principles comprise, inter
alia, that decisions with regard to the dispute may only be based on
grounds or evidence on which the parties concerned have had an
opportunity to present their comments. Also the right to appeal is
essential.

The question is whether or not it is a) possible and b) reasonable to
implement such "due process" on a private contractual basis and has
yet not been answered in a satisfacting way. Perhaps it might be a
better idea to create some kind of International Statutory Domain Law
by virtue of some kind of Internet Convention or so. Maybe that such
political process will take too much time, thereby justifying any
private contractual attempt which might be established much faster.

Hence, if arbitration is considered for domain dispute resolution,
utmost care should be exercised for implementing "due process" as a
mirror image of well-conducted court proceedings.

This would not exclude innovative new solutions like "on-line dispute
resolution systems". However, appropriate cryptographic measures
should be applied in order to maintain data integrity (encryption for
concealing the content and digital signatures for securing
authenticity).

The scope of voluntary arbitration should be limited to simple cases
where there is no need for taking evidence on a large scale. The
latter should be left to the competent courts. "Simple cases" might
particularly such cases where identical domains and trademarks are
conflicting without need to apply the concepts of "similiarity" or
"well-known marks" or "famous marks".

The basic guideline for conflict resolution should be given by the
respective time ranks of the conflicting domain registration /
trademark ("principle of priority").

There is another area for voluntary arbitration: If disputes arise
between a registrar and its customer, e.g. in view of alleged
non-payment or incomplete application specification or so. In
particular, an voluntary arbitration scheme should be offered if the
registry declares an application or registration to be lapsed due to
formal problems, non-payment or the like.

> 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.

It seems to be hardly feasible to deal with problems of famous and
well-known marks by any binding or voluntary arbitration scheme. In
particular, the determination whether or not a given trademark
registration is "well known" or "famous" involves a lot of factual
and legal problems, i.e. taking evidence in order to determine the
related trade circles and the knowledge within such trade circles on
the respective trademark by means of representative polls etc. pp.

Such items should be left to the competent courts.

It seems to be evident that the scope of protection of a well-known
mark and, of course, of a famous mark is lesser or not at all coupled
to any similarity of goods and / or services.

The problem is that all really "well-known" or "famous" trademarks
clearly deserve that no domain should be registered within a certain
range of similarity irrespective of the associated goods or services.
The concept of "similarity" is, however, much too complex to be
applied by any registry during normal daily operations.

Nevertheless, other concepts of categories of trademarks have been
proposed for purposes of domain registration. Some of them have
already been discussed before, e.g. establishing a category of
trademarks that are registered in at least a fixed number of
jurisdictions. A separate database of such marks (which, in a legal
sense may or may be not "well-known" or "famous" in a legal sense)
might be set up, binding the registries not to register any
conflicting domain. As stated above, this will not work because of
the scope of protection of such trademarks can be determined only by
experienced experts.

 -- Patentanwalt (German Patent Attorney) Dipl.-Phys. Axel H. Horns D-80796 Munich horns@t-online.de http://www.horns.netplace.de Voice: ++49.89.30630112 * * * Fax: ++49.89.30630113 PGP fingerprint A4 5F 5F 39 B7 CC E0 32 5D B8 15 55 F3 19 78 C5