browse comments: WIPO RFC-2

WIPO RFC-2
Ford Global Technologies, Inc (ldadamio@ford.com)
Sat, 14 Nov 1998 10:16:29 -0500

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Comments of Ford Motor Company on WIPO RFC-2

Ford Motor Company supports the WIPO Internet Domain Name Process
and appreciates the opportunity to submit its comments in
response to WIPO RFC-2.

A. Dispute Prevention

The primary focus of any plan to deal with domain name
disputes involving intellectual property rights should be on
the prevention of such disputes in the first place. Given
the extent of trademark abuse that is occurring in the
domain name system today, it is imperative that more
effective mechanisms for dispute prevention be implemented.
14.1 Elements that should be included in domain name
registration contracts in commercial TLDs include: (i) the
applicant's name, business or residential address, state of
incorporation or partnership (if applicable), telephone/fax
numbers and e-mail address, as well as the name, address and
telephone number of an agent for service of process; (ii) a
statement of a bona fide intent to use the domain name and a
statement regarding the intended field of use of the domain name;
(iii) a statement that the applicant believes that the domain
name is available and does not infringe the intellectual property
rights of any other party; (iv) an agreement to submit domain
name disputes to the jurisdiction of particular courts; (v) an
agreement to participate in some form of alternative dispute
resolution procedure, without limiting the applicant's recourse
to litigation options; and (vi) an agreement to maintain the
information provided in an up-to-date form.

14.2 Applicants and registrants that knowingly supply false or
misleading information or make false statements should be
penalized through the cancellation of their domain names.

14.3 Ford supports the implementation of a brief (30 day) waiting
period following publication of new domain name applications
in a comprehensive database, at least in commercial TLDs.

14.4 There should be a pre-payment requirement for both
domain name applications and
& renewals to discourage name speculation in trademarks,
including the warehousing of
14.5 names. Registrants should also be required to renew their
domain name registrations on an annual basis.

14.6 While it would be desirable for registrars/registries
to encourage applicants to conduct searches (e.g., by providing
information regarding the risks associated with not doing so),
searching should not be required.

14.7 The domain name registration information maintained in
registry/registrar databases should be readily accessible
over the Internet. Available database information should
include: the type of information presently available
through the "whois" database, use information supplied by
the applicant/registrant, contact information for the agent
appointed for service of process, and complete chain of
title information for the domain name. If the
applicant/registrant provides information regarding any
intellectual property rights or other proprietary rights in
the domain name, that information should also be included in
the database. This database information should be
accessible through a common interface and databases
maintained by different registrars/registries should be
interlinked to permit comprehensive searching. Ideally,
users would be able to search in multiple fields (e.g.,
domain name, owner name, address, etc.) and be able to
retrieve listings of similar (not simply identical) domain
names. To enable trademark owners to act effectively within
the aforementioned waiting period, the database information
must be updated on a frequent, scheduled basis.

14.8 Ford supports the development of co-existence concepts
based on existing intellectual property rights.

14.9 Registries of ccTLDs should be encouraged to adhere
to the same policies.

14.10 Ford is concerned by the increased potential for
consumer confusion engendered by some registries of ccTLDs
that are marketing their country codes as generic
identifiers.

B. Dispute Resolution

16.1 Ford believes that convenient alternate dispute
resolution mechanisms should be available to parties for the
resolution of domain name disputes, including administrative
procedures, mediation and arbitration.

16.2 To avoid confusion and forum shopping, dispute
resolution approaches should be consistent across the TLDs.
Registries and registrars must agree to abide by the resulting
determinations to the extent that a conflicting judgment is not
subsequently rendered by a court having competent jurisdiction
with regard to the matter. The remedies available in these
dispute resolution proceedings are appropriately limited to non-
monetary forms of relief (e.g., the transfer or cancellation of
domain names).

16.3 While mediation and arbitration should be available to
handle broader conflicts, administrative dispute resolution
procedures should be restricted to matters involving
cybersquatting, warehousing, the provision of false statements or
information, and other clear abuses, including clear cases of
trademark infringement.

16.4 Registries and registrars should not be involved in the
resolution of domain name disputes. Instead, resolution should
be left to neutrals with expertise in trademark law.

16.5 While registrars should be able to act as agents for
service of process, applicants should be free to name others to
act in this capacity.

16.6 ICANN may wish to establish its own dispute resolution
administering authority for resolving domain name disputes.

16.7 Parties should be free to seek judicial resolution of
domain name disputes.

16.8 Prior to the harmonization of trademark laws and the
passage of international treaties affecting these matters, it
would be desirable, as an interim measure, to develop
administrative criteria for use by the dispute resolution
administering authority in resolving domain name disputes.

16.9 If administrative dispute resolution procedures are
restricted to matters involving cybersquatting, warehousing, the
provision of false statements or information and other clear
abuses, there should be a procedure providing for the suspension
of domain names. Domain name holders should receive prior
written notification of such suspensions.

16.10 We believe it is premature to consider barring claims
prior to the implementation of effective dispute prevention and
resolution mechanisms. In examining the matter in the future,
the fact that the use of a domain name can readily change must be
considered. We do not believe that cases involving bad faith or
fraud should ever be time-barred.

16.11 Appeal procedures should be incorporated into the
dispute resolution approaches, but the appeal procedures should
not unduly prolong what are intended to be time and cost saving
alternatives to litigation.

16.12 Each party should bear its own costs.

16.13 On-line dispute resolution systems are desirable.

C. Protection of Famous Marks

Famous marks have repeatedly been the targets of domain name
abuse and are clearly in need of special protection within
the domain name system. Such protection should include the
ability to prospectively prevent others from registering the
marks in either existing or newly created TLD name spaces.
Registrars and registries should simply be prohibited from
granting these domains (and slight variations of these
domains) to anyone other than the trademark owner. To be
accorded this special protection, we believe that a mark
must be determined to be internationally "famous" according
to stringent criteria. Procedures should be available for
those who wish to challenge the special protection afforded
a particular mark.

D. Addition of New gTLDs

Ford is disappointed by the failure of the current domain
name system to provide effective dispute prevention and
dispute resolution procedures. Cybersquatting, warehousing
and conventional trademark infringement are problems for us
in both the ccTLDs and the gTLDs. Parties attempting to
trade off of our marks reside all over the globe. Given the
lack of rapid, effective and inexpensive alternate dispute
resolution mechanisms, most of our conflicts must be handled
through litigation or the threat of litigation, and many
conflicts are as yet unresolved.

We firmly believe that the addition of new gTLDs prior to
the implementation of more effective dispute prevention and
dispute resolution procedures would only exacerbate an
already enormous trademark problem. The addition of new
gTLDs should only take place after such procedures are in
place, only if a need is demonstrated, only on a slow and
deliberate basis, and only if the new gTLDs are
differentiated from existing gTLDs.

Regards,
Lynn DaDamio
Trademark Attorney, Ford Global Technologies, Inc.
Ph: (248)645-1571 Fax: (248)645-0124

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