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WIPO RFC-3
SWEDISH PATENT AND REGISTRATION OFFICE (patrik.havermann@prv.se)
Tue, 23 Feb 1999 05:41:36 -0500

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SWEDISH PATENT AND REGISTRATION OFFICE
Department of Trademarks & Designs

February 23, 1999 AD-13-00615/1999

WIPO Internet Domain Name Process
Att: Mr. Francis Gurry
World Intellectual Property Organization
34 chemin des Colombettes
P.O. Box 18
1211 Geneva 20
Switzerland

Re: C.INT.11/RFC-3

Dear Mr. Gurry,

The Trademark Department of the Swedish Patent and Registration Office (SPRO) would like to provide the following comments regarding the Interim Report of the WIPO Internet Domain Name Process.

Below comments will be provided in relation to each of the chapters in the above-mentioned report. Summarizing, the following will be elaborated upon in the below text.

(Commenting chapter 2) It is essential, in the interests both of the public and of the holders of IP rights, that there exists openness regarding availability of information to the greatest extent appropriate. Further, there should be means to protect holders of IP rights aquired in good faith. Also serving the above-mentioned purposes, there are simple measures that can be taken to improve the quality of domain name registers.

(Commenting chapter 3) Clear limits for the aims and the validity of the dispute-resolution procedure must be set in order to ensure that the procedure attracts its intended users and that it is kept efficient and fairly inexpensive. Acceptable time-limits are of main importance in such a system. Further, it is of utmost importance that the demands set on the system are high and that the same goes for the demands set on each decision-maker. In order to ensure that such high demands are upheld there must be sufficient safeguards built into the system but also ample room for professional skills and creativity with the help of guidelines.

(Commenting chapter 4) Famous and well-known marks should not be made subject for any specific mechanism for exclusion but rather gain protection within the dispute-resolution system (as well as within the ordinary court systems of the countries provising TLDs).

(Commenting chapter 5) The need to develop a comprehensive dispute-resolution system prior to the introduction of new generic top level domains is obvious. Differentiation will be a useful tool in further developing future gTLDs, paving the way for i.a. different demands on the amount of information being made publicly available.

Chapter 2 - Registration practises for domain names

Contact details and availability of such information, paragraphs 47-51, 54-55 and 79-89

At least where a domain name is used as an address of a web site used for commercial purposes it is desirable to make all available information public. It must be a logical and foreseen consequence of such commercial use that information regarding the applicant/holder is made publically available. In relation to such use the interest of the public and of those possibly having their intellectual property rights infringed should prevail. Indeed, extra details such as the company name, company reg. no. and the place of business of the applicant/holder could be of relevance when trying to determine whether the use of a domain name is warranted or not. For companies wanting to register domain names it can also be envisaged to demand that they file the Registration Certificate for the applicant company.

Thus, contrary to what is stated in paragraph 55 the SPRO believes that - for domain names intended for commercial use - there should be no restraints on the possibilities of the public to obtain this information and, thus, no need to specifically demand that the information should be intended for contacting the domain name owner. This could be achieved by public access to an unresticted and searchable domain name data base as outlined in paragraphs 84 and 85

Waiting periods and Automatic "take-down procedure", paragraphs 70-75

The main purpose of any method of making registration of a domain name more difficult than technically warranted should be to secure the interests of holders of intellectual property rights which might be infringed by the registration and use of a domain name.

Thus, in case the method of inserting mandatory waiting periods will not be adopted it is important that some other efficient measure be adopted to achieve the same purpose. One such appropriate alternative approach would be to initiate an automatic "take-down procedure", as described in paragraph 74. The elements described in paragraph 73 seem appropriate, prior to being allowed to initiate such a "take-down procedure".

Such an expedited procedure would not necessarily need to be part of the alternative dispute resolution system but could function also outside the alternative dispute resolution system as such. Naturally, the obligation to agree to and comply with this procedure should still be made a mandatory precondition in connection with the application for a domain name.

Dealing with false or inadequate information, paragraphs 90-92 and 97-101

Since false or inadequate information is a major problem in many of the domain name registers it is warranted to use simple technical means to try and remedy, at least partly, this problem. Measures that can be easily taken, such as including mandatory fields in an on-line registration form and checking of an an e-mail address, and which, nevertheless, do not impede the swiftness and simpleness of the registration system can help in this procedure.

A further such simple measure is to - as mentioned in paragraph 101 (i) - make sure in the domain name registration agreement that supplying of inaccurate or unreliable information can amount to a material breach of the contract. This procedure should - as suggested in 101 (ii) - be handled by the registration authority.

Chapter 3 - Dispute-Resolution Procedures

Alternative Dispute-Resolution Policy, paragraphs 120-168

The SPRO considers that the limitation to issues regarding the status of the domain name registration will be sufficient and that the delimitation that the ruling of a competent court should prevail is correct.

Further, the SPRO considers that it is sufficient that mediation and arbitration will be available on a voluntarily basis and that it is imperative that this policy is made available in all open TLDs. In order to implement this policy and to avoid different practises, which as such would threathen the system as a whole, the dispute-resolution policy should be included in the domain name registration agreement (as recommended in paragraph 151).

In order to make sure that the suggested procedure is kept efficient and fairly inexpensive, thereby attracting the intended users, it is of main importance to clearly delimit the scope of this procedure. The SPRO approves of the limitations as outlined in paragraphs 155-157.

In reply to the request for further comments in paragraph 159, it can be contended that the main task of the dispute-resolution policy must, at least initially, be to focus on the areas of main relevance. In accordance with such an initial focusing, it should be contended that - for the time being - issues regarding modification, re-assignment or maintenance of a gateway should not fall under the powers of the decision-maker in the dispute resolution procedure.

As this system is intended to function, the above-mentioned tasks are typical tasks for mediation procedures, arbitration procedures or the rulings of competent national courts. Should this system not function as intended it can - at a later stage and once the fundamental tasks are operated in a reliable way - be considered to add one or more of these functions (and possibly other functions as well) to the dispute-resolution system.

Length of proceedings and time-limits, paragraphs 169-171

Corresponding with the above, it is imperative that the system is provided with acceptable time-limits. The time-limits outlined in paragraph 171 seem sufficient in order to help achieving the aim of creating an efficient and reliable system.

Decision-maker, appointment of, paragraphs 172-178, and costs for, paragraphs 190-194

There is no doubt that there are important safeguards in relation to the dispute-resolution policy, mainly the possibility to recourse to a court procedure. Nevertheless, in order for the proposed system to gain confidence among users and in order for said system to have any real significance - the dispute-resolution policy initially depends heavily on the skill and integrity of the decision-makers.

Thus, although it is positive that the parties participate in the choice of the decision-maker, such participation must be the subject of clear delimitations. The facts that the parties might agree on whether there is to be one decision-maker or three decison-makers and even agree on one specific decision-maker all seem acceptable. It is also acceptable that two decision-makers, having been appointed, might appoint the third decision-maker.

However, considering also the risks for abuse of the system and possible corruption, there should be more space for direct appointment by the dispute-resolution service provider. Indeed, in all other cases apart from those mentioned above, the decision-maker(s) should be directly appointed by the dispute-resolution service provider. It is then assumed - as hinted in paragraph 195 - that the domain name applicant will be able to choose among a number of dispute-resolution service providers. This would in turn help to safeguard the system and to act - in relation to the skill of each decision-maker - as a factor of competition among dispute-resolution service providers.

It would seem that competition in favour of the public and IP holders is best upheld - in a dispute-resolution system - by favouring the dispute-resolution service providers and the decision-makers that can best resolve diputes - not mainly by allowing them to set free rates. Indeed, such a system allowing the domain name holder to select a dispute-resolution service provider who is free to set his own rates increases the risk of favouring unsuitable behaviour and - in the end - creating a corrupt system. There would - at least - be a risk that decisions be ordered by the party paying for the decisions who might be willing to pay a high rate to make sure that the decision issued will be satisfactory for him.

A simple measure to take in order to significantly decrease the risk for such a corrupt system would be to provide some sort of guidelines for costs, including i.a. maximum and minimum rates. Given the background that the dispute-resolution system is to be efficient and fairly cheap, allowing recourse to other systems - it can be said that the aim of the system is not to be so costly that competition as regards costs would be of any main significance.

Precedents and appeals, paragraphs 186 - 189

The issue regarding a centralized appeal procedure is quite a difficult issue. There are clear arguments both in favour of and against such a procedure.

The main argument against is that the dispute-resolution procedure should be kept limited and expedite. Allowing appeals would inevitably slow down the procedure and also make it more costly. Further, the alternative ways of mediation, arbitration and resorting to the court system are also factors to consider that work against the need for an appeal procedure; indeed, there are already alternative procedures. It can also be envisaged that the rulings in the competent courts will allow a variety of guiding precedents.

The main argument in favour of an appeal procedure is the need - if the new system is to survive - to create a body of precedents which will lead to consistent practise and which will uphold the legitimate expectations and the legal certainty for the users.

Since it should be possible for the decision makers to take into account the precedents at hand, since those precedents could very well be made publicly available and since the court system can be resorted to after the dispute-resolution provided within the domain name system, the SPRO recommends that no centralized appeal process should be provided within the system. Given the fact that major amounts of information should be made available to the decision-makers and the public it can be left in their hands to set demands for an appeal system. In case the system does not work as intended there will be renewed demands from them for such an appeal procedure.

Guiding principles for decision-makers, paragraphs 199 - 201

Provided that there are sufficient safeguards to make sure that the system which is being built is as free as possible from corruption, it must be recognized that the decision-makers - subject to such suitable safeguards - should be as free as possible to rule in each particular case.

Therefore, although all of the principles enumerated in paragraph 199 are relevant - these principles are by their nature guiding principles only. This leads in turn to the conclusion that the list provided in paragraph 199 should be considered an open list and that said principles - having the nature of guiding principles - should not be further elaborated.

Chapter 4 - Famous and Well-known Marks

Mechanism for Exclusion of famous and well-known marks in open TLDs, paragraphs 216 - 229 and Abusive Registration ground for cancellation 239 - 245

As pointed out in the previous comments from the SPRO (Re: C.INT.7/RFC-2), it is very difficult to establish that a trademark is famous or well-known. There are also differing assessments in this respect being made throughout the world.

On the other hand, it is quite obvious - as also illustrated by the examples in chapter 5 - that the majority of problems in relation to domain names are connected with such famous or well-known trademarks. This latter fact is a fact in favour of initiating a specific mechanism for excluding such famous or well-known (and problematical) marks.

Measuring the above and stressing the major difficulties in relation to delimitation (as illustrated in the above-mentioned previous comment from the SPRO) warrants the conclusion that no such specific mechanism for exclusion of famous and well-known marks should be set up. Thus, exclusion would not be granted as such but the initiation of a dispute-resolution procedure could be based on a famous or well-known mark.

Indeed, the protection of the marks that the subject mechanism is intended to protect can be assured - and should be assured - by an efficient dispute-resolution system. Provided that such a system is fast enough and not too costly it should provide a sufficient safeguard to protect the famous and well-known marks and there will be ample opportunities to issue precedents relating to this matter. Further, the court system that can be resorted to is already today under an obligation (not least by the TRIPS Agreement) to protect famous and well-known marks.

Such famous or well-known marks are often the subject of abusive registrations. Thus, in consequence with the above the SPRO favours the view that the abusive registration of a domain name is a suitable ground for cancellation or transfer of a domain name within the boundaries of the administrative dispute-resolution procedure.

The list set out in paragraph 244 should function as an open list to set guidelines for decision-makers, intended to guide but not to be mandatory for the decision-makers in their ruling.

Chapter 5 - New Generic Top Level Domains

First of all, it should just briefly be remarked that if the recommendations suggested in the above chapters - subject to the remarks made - were to be adopted this would help removing many of the problems present today. Further, the adoption of a more comprehensive dispute-resolution system would be highly advisable prior to the initiation of New Generic Top Level Domains.

Differentiation, paragraphs 279 - 284

It is recognized that differentiation might be a useful tool to serve both the interests of the intellectual property owners and the owners of domain names. Obviously, the use of differentiation would be suitable as between commercial and non-commercial interests and it would be a good opportunity to present some results of differentiation when introducing new gTLDs.

Whereas the commercial domain names have a major bearing upon the intellectual property rights and whereas as much information as possible should be available in relation to domain names intended for commercial purposes, there are other main considerations in relation to non-commercial domain names. This might, i.a., warrant the conclusion that other considerations in relation to information provided are to be taken into account in regard to such non-commercial domain names.

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