browse comments: WIPO RFC-3

WIPO RFC-3
MARQUES (process@wipo2.wipo.int)
Fri, 12 Mar 1999 14:04:11 -0500

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MARQUES RESPONSE TO WIPO REQUEST FOR COMMENTS RFC-3

As a general comment, we applaud the enormous effort which has been put into this document and the care which has been taken to explain the rationale behind the recommendations.

For the most part we support the recommendations made. However, we set out below our concerns relating to some specific issues. Privacy, Freedom of Expression and Non-Commercial TLDs (paragraphs 51, 55,
64, 89 and 284)

1. We understand the concerns of individuals who do not wish to make
publicly known their address and telephone number, for legitimate reasons such as where they are involved in politically sensitive areas or simply to avoid harassment by telesales operators. We also recognise the importance of freedom of speech and freedom of expression. However, we have concerns about the proposal that domain names may be registered by anonymous organisations or individuals. The concept of an agent would work only if the agent was a reputable organisation capable of accepting service on behalf of the domain name registrant. Furthermore, the provision of a non-commercial gTLD may not be sufficient to solve the problem as a domain name in such a gTLD could be used as a means of, for example, publishing defamatory material about the holder of a trade mark or other material which would damage the reputation of the trade mark holder by reference to a domain name which is similar or identical to that trade mark (such as pornography). We and our members have already had experience of valuable
and well known trade marks being used as domain names to publish on the Internet defamatory material about the trade mark holder. It is well known that numerous variations of the trade mark can be used in order to register a domain name which is confusing, so it is unrealistic to expect a trade mark holder to be able to register every variation of his trade mark as a domain name.

2. We do not therefore think it would be desirable to allow a domain
name holder to remain anonymous on condition that it supply contact details of a designated agent, unless the agent was a reputable organisation (with a named contact) who accepted and acknowledged its role as agent (Paragraph 51). If the agent has no knowledge that it has been specified as an agent in respect of a particular domain name, the domain name could be cancelled.

One possibility for maintaining anonymity would be for the individual or
company to use an ISP. This happens where domain names need to be
registered in confidence prior to, for example, a planned company merger.

3. We agree that the requirement of the provision of accurate and
reliable contact details is a sufficient safeguard without the need for
requiring further legal formalities at the stage of registration such as the designation of an agent for service of process (Paragraph 64)

4. We do not agree with the recommendation (Paragraph 55) that the
registration agreement contain an agreed term that contact details provided by the applicant will be held by the registration authority for the limited purposes of the transaction and for facilitating contact with the domain name holder where there is an allegation of infringement of an intellectual property right and that it will be made available to others only for those limited purposes. This would involve a judgment as to what is a legitimate allegation of infringement of Intellectual Property.

5. In answer to the request for comments in Paragraph 89, we think that
access to the searchable database should be unrestricted in respect of a
specific registration record, but subject to controls for wider access. We do not support the idea of a third party making a judgment as to whether domain name registrant details should be provided to a third party or not.

Once the question of anonymity of domain name registrant has been addressed, there should be no reason why access to the searchable database should be restricted. Clearly sufficient details must be available for search and watch companies, IP owners, business and individuals to avoid conflict.

However, it could be a condition of access (which must be agreed as part of the means of entry) that the database could not be used for e.g. "spamming" - the use of "seeds" should enable the policing of this condition.

6. We do not see any immediate need for a differentiation between
commercial and non-commercial domains (Paragraph 284). This is a matter
which could be revisited if it becomes apparent that it is necessary after the rules have been in place for a sufficient period to judge properly the extent to which they are effective in protecting the rights of both intellectual property holders and non-commercial organisations/individuals.

On-line validation mechanisms (Paragraph 92)

We support the concept of on-line validation mechanisms (such as on-line
registration forms with mandatory fields) in order to contribute to ensuring more complete contact details for domain name holders. We also consider that the registration authority could implement procedures for the automatic confirmation of the existence of the domain name applicant.

Sanctions for providing inaccurate information - Paragraph 101.

1. We agree with the recommendation that the domain name registration
agreement should contain a term making the supply of inaccurate or
unreliable information by the domain name applicant a material breach of the contract.

2. We also agree, in principle, that a take-down procedure should be
implemented whereby, upon service of a notification by an interested third party containing the details set out in paragraph 99, and upon independent verification of the unreliability of the contact details in question, the registration authority would be required to cancel the corresponding domain name registration.

3. However, such a procedure should incorporate sufficient safeguards
to protect the domain name holder. In particular we wonder what period of time is likely to be "reasonable" (last point of those listed in paragraph 9) and the extent of the enquiries which must be made by the applicant for cancellation. There may be many perfectly valid reasons why a domain name holder may not respond - for example because it is an individual who is away or a small business which has shut down for the summer vacation.

Intention to use - Paragraph 62

We do not consider it necessary to include a statements in the registration agreement concerning an intention to use a domain name.

Dispute resolution on line - Paragraphs 136 and 182

It is recommended in these 2 paragraphs that the arbitration procedure and ADR procedure should be conducted on-line. Whilst we agree that there should be the possibility of conducting these procedures on-line, this must not exclude the possibility of conducting these procedures by other means.

The means by which these procedures should be conducted could be agreed
between the parties or, in the absence of agreement, by an
arbitrator/decision maker having regard to the circumstances and technical means at the disposal of the parties.

Scope of ADR proceedings - Paragraphs 145 and 151

1. Paragraphs 145 and 151 appear somewhat contradictory in that
Paragraph 145 recommends that the applicant should submit to the ADR
procedure in respect of any dispute concerning the domain name. This would, for example, include contractual disputes or disputes concerning the website accessed by means of the domain name (such as defamation). Paragraph 151, and the preceding commentary, advocates the restriction of the mandatory ADR procedure to any dispute concerning the domain name arising out of the alleged violation of an intellectual property right.

2. Although the principal cause of action in any dispute will arise
from the use of a trade mark (registered or unregistered) as a domain name, the ADR procedure should also enable the resolution of related complaints (such as defamation or breach of confidence). We support paragraph 145 rather than 151, particularly as what is classified as an intellectual property right in one jurisdiction may not be so classified in another jurisdiction.

3. It seems clear from Paragraph 165 that either party may apply to
Court to resolve the dispute rather than initiating the ADR process.
However, given that the domain name holder is obliged to submit to the ADR process (paragraph 145), it is not clear at what point and in what manner the domain name holder may "jump ship", and whether he may only do so if he commences legal proceedings. If that is the case, there may be problems with his cause of action. He may have no cause of action until his domain name has been cancelled. The effect of this would be that a legitimate but competing use may be stopped pending either appeal or Court action to challenge the decision, which may seriously damage his business. Can the domain name holder oblige the claimant to bring legal proceedings?

Appointment of ADR Decision Maker - Paragraph 178

1. We have some concerns regarding the proposals for appointment of the
ADR decision maker. We agree with Paragraph 174 - that a single decision maker be appointed unless the parties agree that there should be three.

However our concerns relate to the appointment of the single decision maker
- particularly where interim measures are taken under the proposals set out in Paragraph 171(i). If the appointment procedure set out in Paragraph 176 is to be adopted, the time limits for responding must be sufficiently short to avoid delay. In the case of interim measures it may be appropriate for the dispute resolution service provider to appoint the decision maker, given that the decision is to be granted within a week. Provided there was an appropriate appeal process, this should not cause difficulty. Otherwise the parties must respond within a matter of hours to enable this expedited procedure to work.

2. Whilst we recognise the need for confidence in the ADR process, we
wonder if the party participation in the choice of decision maker may not simply delay the commencement of the process, and lead to further dispute.

ADR Applicable law - Paragraphs 198, 199 and 201

1. We find the question of applicable law difficult. It is not clear
the basis on which the "applicable laws" would be identified where the
parties are in different jurisdictions, and the relationship between the
applicable laws and the guiding principles. This area requires further
detailed consideration.

2. We agree with the idea of the guiding principles but, again, are not
clear as to the basis on which they would be implemented. In response to the request for comments in Paragraph 201, we consider that it would be premature to expand these principles at this stage. The guidelines could be reviewed after the system has been implemented for some time and the effectiveness of the proposed guidelines can be judged.

Protection of Famous/Well Known Marks - Chapter 4

1. As an association of trade mark owners, we, or course, recognise the
need for protection of famous and well known trade marks. However, although in our response to WIPO RFC-2 we supported the general concept of specific protective measures in respect of famous and well known marks, we consider the proposals in Chapter 4 to be too far reaching and premature. It appears from the proposals that owners of famous trade marks will obtain protection which exceeds that available in respect of their trade marks. This whole area raises complex issues - for example there is still no universally accepted definition of what constitutes a famous mark.

2. The owners of famous and well known marks are, inevitably, those
most able to invoke the existing laws and procedures to protect the
unauthorised use of those marks on the Internet. Accordingly, we consider that the whole question of protection of famous and well known marks in the context of this WIPO paper should be placed on hold until the Rules recommended in the preceding chapters have been finalised and implemented, following which an assessment can be made as to their effectiveness in the protection of famous and well known marks. By attempting to incorporate such protection into these rules, there is a real risk that the basic and critical rules relating to protection of trade marks as a whole on the Internet will be delayed and diluted.

MARQUES Internet Sub-Committee
12 March 1999

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