World Intellectual Property Organization

WIPO Internet Domain Name Process

WIPO RFC-1

Request for Comments On Terms of Reference, Procedures and Timetable for the Second WIPO Internet Domain Name Process

1. This is a Request for Comments (RFC) on the proposed terms of reference, proposed procedures and suggested timetable for the Second WIPO Internet Domain Name Process, to be convened by the World Intellectual Property Organization (WIPO).

Introductory Remarks

2. The Report of the first WIPO Internet Domain Name Process (The Management of Internet Names and Addresses: Intellectual Property Issues) (the Final Report), published in April 1999 1, acknowledged that its recommendations targeted only the most egregious problems caused by the tension between domain names and trademarks, and that other issues would require further consultation 2. Since the publication of the Report, the Internet Corporation for Assigned Names and Numbers (ICANN) has adopted a number of the recommendations contained in it, including suggested best practices for registration authorities and the establishment of a mandatory and uniform dispute resolution policy for the generic top-level domains (gTLDs). In particular, the adoption by ICANN of the Uniform Dispute Resolution Policy (UDRP) on December 1, 1999 has demonstrated -- through the very substantial number of cases filed -- that an administrative procedure for rightholders to resolve their domain name disputes is of great value to the Internet community.

3. On June 28, 2000, the Director General of WIPO received a request from 19 of WIPO's member States to initiate a new study, to address certain issues involving the recognition of rights and the use of names in the Internet domain name system (DNS) where uncertainty and concern remains 3. The request calls upon WIPO -- through a consultation process similar to the first WIPO Process - to initiate a study of, and to develop recommendations on, these outstanding domain name issues, which it is suggested should include, inter alia, the "bad faith, abusive, misleading or unfair use of:

  • Personal names;
  • International Nonproprietary Names (INNs) for Pharmaceutical Substances;
  • Names of international intergovernmental organizations;
  • Geographical indications, geographical terms, or indications of source; and
  • Tradenames."

4. The request specifies that "this activity should take full advantage of WIPO's prior work and build on existing and ongoing discussions while allowing for a process of consultation with WIPO Members and all interested stakeholders." Further, it directs that the "findings and recommendations should be submitted to the Members of WIPO and for consideration by the Internet community (including the Internet Corporation for Assigned Names and Numbers)." It also states that, "in undertaking this process, it would be beneficial if any information received or collected concerning technical solutions to domain name collision control was collated for the information of WIPO Members and the Internet community."

5. Since the time of the first WIPO Process, discussions have continued in various fora, particularly at the meetings of ICANN, in respect of the management of the DNS. WIPO intends that the Second WIPO Process should take full account of, and build on, the substantial progress that has been made in the course of these discussions, insofar as they relate to the intellectual property issues to be addressed in the Second Process. WIPO will cooperate closely with ICANN throughout the Second Process to consult and to coordinate developments in this area.

 

Draft Terms of Reference

6. The following proposed terms of reference are intended to define the scope of the Second WIPO Process, and the principal issues it will address. Comments are sought from interested parties on these terms of reference and, in particular, whether they properly define all questions that should be addressed. Interested parties are requested not to address the substance of the issues described in the terms of reference at this stage, but to address only whether issues mentioned are appropriate for the Process, whether they are adequately described, and whether any further issues should be included. After the terms of reference have been finalized, the second RFC to be published will request comment on the substance of the issues raised in the terms of reference.

A. Scope of Issues in the Second WIPO Process: The Second WIPO Process will explore, and develop findings and recommendations in relation to, issues raised in the DNS, inter alia, by bad faith, abusive, misleading or unfair use of:

  • Personal names,
  • International Nonproprietary Names (INNs) for Pharmaceutical Substances,
  • Names and acronyms of international intergovernmental organizations,
  • Geographical indications, geographical terms, or indications of source, and
  • Tradenames.

A different set of considerations, based on the nature of the rights or interests involved in each of these areas, may be brought to bear on the questions of whether any protection should be accorded, and, if so, in what circumstances and how. Therefore, a separate list of issues for comment is provided below for each area.

While undertaking to develop findings and recommendations on these issues, the Second Process will also investigate the availability of any technical solutions that might serve to reduce the tension between domain names and other protected rights.

Parties are invited to submit comments on whether there are any further areas to those listed above, relating to the interface between intellectual property and cognate rights and the DNS, which it would be appropriate to include in this study and consultation.

B. Personal Names: Recommendations will be formulated on whether any protection against abusive registration as a domain name in the gTLDs should be accorded to personal names and, if so, in what circumstances and how.

List of Issues:

The list below is submitted for comment by interested parties as the suggested list of issues to be covered in the study:

(i) Should personal names be protected against bad faith, abusive, misleading or unfair registration and use in the DNS?
(ii) Which personal names, if any, should be protected:

- all names,
- names of famous persons,
- names of government officials or other persons in the public eye.

(iii) How do you define bad faith, abusive, misleading or unfair registration and use in respect of personal names?
(iv) How do you deal with multiple incidences of the same name?
(v) What provision, if any, should be made for dispute resolution with respect to disputes concerning personal names registered as domain names?
(vi) Would directory, listing or other similar services aimed at avoiding domain name conflicts concerning personal names be useful, and, if so, please describe such services?

C. International Nonproprietary Names (INNs) for Pharmaceutical Substances: Recommendations will be formulated on whether any protection against abusive registration as a domain name in the gTLDs should be accorded to INNs and, if so, in what circumstances and how.

An "INN" is a specialized, unique name used to identify a pharmaceutical substance or active pharmaceutical ingredient (e.g., ampicillin). INNs are selected by the World Health Organization (WHO) in order to promote and protect the safety and health of patients worldwide, by providing a single, globally available name for each such substance. WHO maintains a list of protected INNs, now numbering approximately 7500. To qualify, INNs must be distinctive in sound and spelling, so as not to be liable to confusion with other commonly used names, and must be in the public domain and therefore freely available for this use.

List of Issues:

The list below is submitted for comment by interested parties as the suggested list of issues to be covered in the study:

(i) Should INNs be protected against bad faith, abusive, misleading or unfair registration and use in the DNS?
(ii) How do you define bad faith, abusive, misleading or unfair registration and use in respect of INNs?
(iii) What provision, if any, should be made for dispute resolution with respect to disputes concerning INNs registered as domain names?
(iv) What provision, if any, should be made for the establishment of exclusions for INNs?
(v) If an exclusion is considered to be useful, how should any exclusion protection take place?
(vi) Would directory, listing or similar other services aimed at avoiding domain name conflicts concerning INNs be useful, and, if so, please describe such services?

D. Names of international intergovernmental organizations: Recommendations will be formulated on whether any protection against abusive registration as a domain name in the gTLDs should be accorded to the names and acronyms of international intergovernmental organizations and, if so, in what circumstances and how.

Names and acronyms of international intergovernmental organizations are currently protected against use and registration as trademarks by the Paris Convention for the Protection of Industrial Property (Paris Convention) and through the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement).

List of Issues:

The list below is submitted for comment by interested parties as the suggested list of issues to be covered in the study:

(i) Should the names and acronyms of international intergovernmental organizations be protected against bad faith, abusive, misleading or unfair registration and use in the DNS?
(ii) How do you define bad faith, abusive, misleading or unfair registration and use in respect of the names and acronyms of international intergovernmental organizations?
(iii) What provision, if any, should be made for dispute resolution with respect to disputes concerning the names and acronyms of international intergovernmental organizations registered as domain names?
(iv) What provision, if any, should be made for the establishment of exclusions for the names and acronyms of international intergovernmental organizations?
(v) If an exclusion were considered to be useful, how would any exclusion be implemented?
(vi) Would directory, listing or similar other services aimed at avoiding domain name conflicts concerning the names and acronyms of international intergovernmental organizations be useful, and, if so, please describe such services?
(vii) Which international intergovernmental organizations should receive any such protection in the DNS (e.g., international or regional organizations, all organizations that have followed the notification provisions of the Paris Convention)?

E. Geographical indications, geographical terms, or indications of source: Recommendations will be formulated on whether any protection against abusive registration as a domain name in the gTLDs should be accorded to geographical indications, geographical terms, or indications of source and, if so, in what circumstances and how.

Geographical indications, geographical terms, or indications of source (collectively "geographical indications") receive protection under the Paris Convention, the Madrid Agreement for the Repression of False or Deceptive Indications of Source of Goods (Madrid Agreement), the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (Lisbon Agreement) and the TRIPS Agreement. A "geographic indication" is one which identifies a good as originating in a territory, or region or locality within a territory, where a given quality, reputation or other characteristic of that good is essentially attributable to its geographic origin. An ‘indication of source’ is a term that refers to an indication of a geographic place of origin of a product (e.g., Florida oranges).

List of Issues:

The list below is submitted for comment by interested parties as the suggested list of issues to be covered in the study:

(i) Should geographical indications be protected against bad faith, abusive, misleading or unfair registration and use in the DNS?
(ii) How do you define bad faith, abusive, misleading or unfair registration and use in respect of geographical indications?
(iii) Which geographical indications, if any, should be so protected (e.g., those receiving protection under the Paris Convention, Madrid Agreement, Lisbon Agreement, TRIPS Agreement, others)?
(iv) What provision, if any, should be made for dispute resolution with respect to disputes concerning geographical indications registered as domain names?
(v) What provision, if any, should be made for the establishment of exclusions for geographical indications?
(vi) If an exclusion is considered to be useful, how should any exclusion protection take place?
(vii) Would directory, listing or similar other services aimed at avoiding domain name conflicts concerning geographical indications be useful, and, if so, please describe such services?

F. Tradenames: Recommendations will be formulated on whether any protection against abusive registration as a domain name in the gTLDs should be accorded to tradenames and, if so, in what circumstances and how.

A "tradename" is a name adopted, and often registered, by a business enterprise to distinguish itself, as a commercial entity, from other enterprises. Unlike trademarks and service marks, tradenames operate to distinguish a business on the basis of its character, independently of the goods or services that the business offers. Tradenames receive protection under the Paris Convention (Article 8), without the obligation of a filing or registration.

List of Issues:

The list below is submitted for comment by interested parties as the suggested list of issues to be covered in the study:

(i) Should tradenames be protected against bad faith, abusive, misleading or unfair registration and use in the DNS?
(ii) How do you define which tradenames would be eligible for any such protection?
(iii) How do you define bad faith, abusive, misleading or unfair registration and use in respect of tradenames?
(iv) What provision, if any, should be made for dispute resolution with respect to disputes concerning tradenames registered as domain names?
(v) Would directory, listing or similar other services aimed at avoiding domain name conflicts concerning tradenames be useful, and, if so, please describe such services?

G. Technical Solutions for Domain Name Collision Control: An investigation will be made into the availability of any technical solutions to reduce the tension and minimize disputes concerning rights and interests in domain names. In the first WIPO Process, comments were sought, in the context of the prevention of domain names disputes, on the following aspects:

"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.

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."

In the intervening period, new technical solutions may have developed that could serve to reduce the tension and prevent conflicts between competing interests in each unique domain name, principally where the competition is between persons or entities with good faith interests in the name. Information is now sought on the development of such technical solutions, and comments are sought on whether these technical solutions may offer realistic options for resolving conflicts between rightholders and domain name registrants.

7. While the above are the main topics to be addressed, WIPO will, on the basis of comments received on this Request for Comments (WIPO RFC-1), develop a final listing of all issues on which comments shall be solicited and recommendations formulated.

 

Proposed Procedures

8. As with the first WIPO Internet Domain Name Process, the Second WIPO Process will be conducted in a balanced and transparent manner with a view to the international Internet community. To that end, WIPO invites all interested parties to participate, with the aim of achieving consensus among all stakeholders of the Internet on the issues concerned.

9. The Second Process will be undertaken through a combination of Internet-based discussions and in-person consultations. It will be conducted on the basis of a number RFCs that are to be made available to the public through publication on the web site and through transmittal by electronic or regular mail. All interested parties are invited to submit comments on the RFCs through a special form that is available under the Comments section of the web site, or by electronic or regular mail if necessary.

10. WIPO will acknowledge receipt of each comment and post it publicly on the web site. WIPO reserves the right not to post any comment that is obscene or otherwise clearly fails to constitute a contribution relevant to the discussion of the issues raised in the RFCs. WIPO will not issue any specific responses to the comments it receives. All comments, however, will form the basis for the findings and recommendations to be developed.

11. In order to ensure that interested parties have the opportunity to present their views on the issues to be addressed by the process, WIPO will also hold a series of regional consultations. The location of these meetings will be determined with a view to ensuring wide geographical representation. The views presented at these meetings will, in addition to the comments on the RFCs, serve as the basis for WIPO findings and recommendations.

 

Timetable

12. The Second WIPO Process is intended to consist of the following steps, culminating in a final report to be submitted to the members States of WIPO and for consideration by the Internet community including ICANN:

a. Publication of the present WIPO RFC-1 on the draft terms of reference setting out the proposed scope of the project, including the issues to be addressed, the proposed procedures and a suggested timetable for completion of the work.
b. Publication of WIPO RFC-2 containing the finalized terms of reference and issues to be addressed.
c. Regional consultations to receive comments on WIPO RFC-2.
d. Preparation of a draft interim report on the basis of all comments received on WIPO RFC-2.
e. Publication of the interim report as WIPO RFC-3.
f. Regional consultations to receive comments on WIPO RFC-3.
g. Preparation and publication of the final report on the basis of all comments received during consultations and on WIPO RFC-3.

13. It is expected that the Process will take less than nine months to be completed. As mentioned above, WIPO will seek to coordinate its plans with ICANN. The following table proposes a draft implementation plan, reflecting the various stages in the Process.

Activity

July 10, 2000

Announcement of Second WIPO Process

Publication of WIPO RFC-1 on draft terms of reference

August 2-3, 2000

Consultation in conjunction with WIPO Ecommerce

Regional Meeting in São Paolo, Brazil

August 3-4, 2000

Consultation in conjunction with WIPO Ecommerce

Regional Meeting in Chiang Mai, Thailand

August 15, 2000

Final date for comments on WIPO RFC-1

September 8, 2000

Publication of WIPO RFC-2 (issues to be addressed)

September 18-20, 2000

Consultation in conjunction with WIPO Ecommerce

Regional Meeting in Ahman, Jordan

October 25-26, 2000

Consultation in conjunction with WIPO Ecommerce

Regional Meeting in Krakow, Poland

November 17, 2000

Final date for comments on issues in WIPO RFC-2

November 20 – December 31, 2000

Drafting of Interim Report

January 26, 2001

Publication of Interim Report (WIPO RFC-3)

February – March, 2001

Further Regional Consultations

March 31, 2001

Final date for comments on WIPO RFC-3 (Interim Report)

April 2001

Drafting of Final Report

May 2001

Publication of Final Report

Request for Comments

14. This WIPO RFC-1 requests participating parties to submit comments on:

a. The draft terms of reference, as specified in paragraphs 6 and 7 above;
b. The proposed procedures, as specified in paragraphs 8 through 11 above;
c. The proposed timetable, as specified in paragraphs 12 and 13 above.

15. Comments can be submitted by the following means:

a. Through the Submit Comment form that is available under the Comments section of the web site. We recommend that you choose this method for the submission of your comments.
b. By electronic mail to the following address: process.mail@wipo.int
c. By regular mail to the following address: WIPO Internet Domain Name Process, World Intellectual Property Organization, 34 chemin des Colombettes, P.O. Box 18, 1211 Geneva 20, Switzerland.

16. All comments must be received by August 15, 2000.


Footnotes:

1. Report of the WIPO Internet Domain Name Process (April 30, 1999), WIPO Publication No. 439(E).

2. See Report, Executive Summary, First Steps and Outstanding Issues, pp. 8-9.

3. The request is made in a letter from the Minister for Communications, Information Technology and the Arts for the Government of Australia, in which WIPO is requested by the Australian Government on its own behalf and on behalf of 18 other member States to initiate the new study. An attachment to the letter indicates that the following States and the European Union endorse the request: Argentina, Australia, Canada, Denmark, France, United States of America, European Union. The attachment also states that the Government of Brazil will communicate its support through its diplomatic mission in Geneva

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