[process2-comments] RFC-1

 September 15, 2000 Mr. Francis Gurry WIPO Internet Domain Name Process World Intellectual Property Organization, 34 chemin des Colombettes, P.O. Box 18, 1211 Geneva 20, Switzerland Dear Mr. Gurry: The Motion Picture Association of America (MPAA) is pleased to respond to the Request for Comments on Terms of Reference, Procedures and Timetable for the Second WIPO Internet Domain Name Process (RFC-1), published on July 7, 2000. MPAA appreciates the efforts of the World Intellectual Property Organization to protect the rights of intellectual property owners and the interests of consumers in the evolving world of electronic commerce and the Domain Name System (DNS). Our member companies appreciate, in particular, the work of the First WIPO Internet Domain Name Process and the resultant Uniform Dispute Resolution Policy (UDRP) for the arbitration of trademark disputes arising from bad faith domain name registrations. As WIPO embarks on a Second WIPO Internet Domain Name Process, MPAA believes that the terms of reference should include both a review of the evidence of the types and extent of abuses within the DNS which relate to intellectual property rights other than trademarks and service marks, and the degree to which existing abuses are capable of being resolved by national law or within the existing framework of the UDRP - particularly in the case of personal names which have in a number of highly publicized cases been protected by the existing UDRP. Such a process should also include a review of the degree of uniformity in national laws with respect to these forms of intellectual property - again with a special emphasis on personality rights which lack substantial harmonization - and whether such uniformity as may exist is sufficient to form the basis for a consensus-based international dispute resolution mechanism. Finally, MPAA believes the terms of reference should include the issue of how to deal with legitimate registrations and uses of personal names, such as those involving creative expression and protected speech. 1. About the Motion Picture Association of America MPAA is a trade association representing major producers and distributors of theatrical motion pictures, home video material and television programs. MPAA members include: Buena Vista Pictures Distribution, Inc.; Metro-Goldwyn-Mayer Studios, Inc., Paramount Pictures Corporation; Sony Pictures Entertainment, Inc.; Twentieth Century Fox Film Corporation; Universal Studios, Inc.; and Warner Bros. 2. Scope of the WIPO Internet Domain Name Process In July 1998, based on a proposal of the U.S. Government and with the approval of the WIPO Members States, WIPO began an extensive international process of consultations aimed at formulating recommendations to the Internet Corporation for Assigned Names and Numbers (ICANN) "on certain questions arising out of the interface between domain names and intellectual property rights."1 That process culminated in April 1999, with the submission of a Final Report to ICANN and the WIPO Member States that addressed specifically: (1) Practices designed to minimize conflicts arising out of domain name registrations; (2) Uniform dispute resolution procedures; (3) Mechanisms for the protection of famous and well-known marks; and (4) Intellectual property-related considerations associated with the addition of new Generic Top Level Domains (gTLDs). The Final Report included, among other things, recommendations that ICANN adopt a number of improved "best practices" for accredited registrars designed to minimize tensions between intellectual property rights and domain name registrations, a uniform dispute resolution policy for the mediation of disputes involving the bad faith, abusive registration of domain names that violate the trademark rights of others, and a mechanism for the exclusion of famous and well-known marks from registration as domain names by anyone other than the trademark owner. The report further recommended that the introduction of new gTLDs be conditioned on the implementation of the foregoing recommendations and that any new gTLDs be introduced in a slow and controlled manner. While ICANN has yet to implement some of the WIPO recommendations - such as incorporating a mechanism for famous mark protection - others have been adopted in varying degrees by ICANN, including most notably the adoption of an administrative Uniform Dispute Resolution Procedure (UDRP) for the resolution of trademark-related domain name disputes and a set of "best practices" for ICANN accredited registrars. On July 7, 2000, WIPO announced it intention to conduct a second Internet Domain Name Process. This announcement came in response to a request from 19 WIPO Member States that WIPO initiate a study of domain name-related issues that were identified as beyond the scope of the first WIPO Internet Domain Name Process. In announcing the initiation of this second Internet Domain Name Process, WIPO identified these issues specifically as those associated with the bad faith, abusive, misleading or unfair use of: (1) Personal names; (2) International Nonproprietary Names (INN) for Pharmaceutical Substances; (3) Names of International intergovernmental organizations; (4) Geographical indications, geographical terms, or indications of source; and (5) Tradenames. 3. Scope of This Request for Comments These public comments respond to the Request for Comments on Terms of Reference, Procedures and Timetable for the Second WIPO Internet Domain Name Process (RFC-1), published by WIPO on July 7, 2000. The proposed terms of reference embodied in the RFC-1 are "intended to define the scope of the Second WIPO Process, and the principle issues to be addressed therein." The RFC-1 solicits comments "from interested parties on these terms of reference and, in particular, whether they properly define all questions that should be addressed," as well as comments on the proposed procedures and suggested timetable for the Second WIPO Process. Consistent with the directive embodied in the RFC-1, these comments address "only whether issues mentioned are appropriate for the Process, whether they are adequately described, and whether any further issues should be included." Substantive comments with respect to the issues posed by the proposed terms of reference are, therefore, beyond the scope of these comments and will be deferred until the publication of the proposed second RFC to address the substance of the issues identified in the finalized terms of reference. 4. Draft Terms of Reference - Personal Names The RFC-1 provides that the Second WIPO Process will explore and develop findings and recommendations relating to domain name registration problems involving the 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 indicators of source, and Tradenames. With respect to personal names, the RFC-1 provides that "[r]ecommendations 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." The following issues are identified as those proposed 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? a. Scope of existing protections for personal names MPAA agrees that the proper starting point for this Process is the question of whether or not personal names - and the other names and indicators of source identified in the RFC-1 - should be afforded some form of protection against abusive registrations in the DNS. That determination should be informed by an inquiry - perhaps inherent in the terms of reference but not made explicit by them - into the types and extent of abuses within the DNS that involve bad faith registrations of personal names. If some sort of protection for personal names is called for, the natural outgrowth of that determination is an inquiry into what the proper scope of that protection should be, including an inquiry into what names are to be protected (e.g., all names, names of famous persons, names of government officials or other public figures, etc.) and the contours of what constitutes "bad faith, abusive, misleading or unfair registration and use". Should certain classes of names - such as names of "famous" persons - be determined to merit additional protection, a careful inquiry should be had regarding exactly how to define the contours of such a class. Again, any such determinations should be rooted in a review into the types and extent of abuses within the DNS with respect to the registration of personal name and extant means available to remedy such abuses. The fact is that a determination has already been made that names that serve as identifiers of source or sponsorship with respect to goods or services - including personal names - are deserving of protection within the DNS. These names are currently afforded protection as trademarks or service marks through national laws and through the Uniform Dispute Resolution Policy established by ICANN on December 1, 1999, and imposed as a condition of accreditation for all ICANN accredited registrars. WIPO is the leading dispute resolution service provider under the UDRP, and as of July 31 of this year has rendered decisions in 369 of 904 cases filed, in which four out of five have resulted in a transfer of the offending domain name. A number of these cases have been highly publicized cases involving the bad faith, abusive registrations of personal names, including the names of Jimi Hendrix, Julia Roberts, and novelist Jeanette Winterson, as well as a case brought by Sting in which evidence of bad faith registration and use was found lacking. MPAA recommends, therefore, that the terms of reference be amended specifically to include an inquiry into the types and extent of abuses involving the registration of personal names within the DNS and the extent to which redress is available within the existing framework of the UDRP, as well as existing national legal systems. MPAA further recommends that any consideration given to what names might be afforded additional protections include a very careful effort to define without ambiguity the classes of names for which protection is to be afforded. b. Is there uniformity in national laws sufficient to support an international mechanism for dispute resolution with respect to the registration of personal names The recommendations made by WIPO in its First Internet Domain Name Process and the UDRP adopted by ICANN in response to those recommendations are both premised on a framework of national trademark laws that are sufficiently uniform to provide the basis for a consensus-based administrative mechanism for international dispute resolution. For example, more than 150 countries are party to the Paris Convention for the Protection of Industrial Property, which forms the basis for an international standard of protection for famous or well known marks. Similarly, more than 130 countries are party to the World Trade Organization (WTO) and are thereby bound by the Trade-Related Aspects of Intellectual Property Rights (TRIPs) Agreement, which provides similar uniform protections and stiff enforcement mechanisms. In addition, the 1994 Trademark Law Treaty aims to provide even greater uniformity between national trademark systems. Commentators in the First Internet Domain Name Process noted that similar uniformity is lacking with respect to the trademark-related intellectual property rights that are the focus of this proposed inquiry. It was on this basis, coupled with the untested nature of the proposed uniform dispute resolution policy, that WIPO determined it was "premature to extend the notion of abusive registration beyond the violation of trademarks and service marks at this time."2 Moreover, while the WIPO Final Report noted that international norms do exist concerning the protection of trade names and geographical indications - although less evenly harmonized than trademark laws - there was no suggestion that any real uniformity exists with respect to the publicity rights that form the basis for an inquiry into possible protections for personal names that are not the subject of trademark or service mark protection. Indeed, even within the United States there is a lack of uniformity in the state common law and statutory protections that serve to protect such publicity rights against commercial misappropriation and defamation. MPAA recommends that the draft terms of reference be amended to include a review of the degree of uniformity in national laws - or lack thereof - in each of the respective forms of intellectual property that is the subject of this Second Process and whether such uniformity is sufficient to form the basis for a consensus-based international dispute resolution mechanism, in particular with respect to the abusive registration of personal names. MPAA also notes that the UDRP is still fairly nascent in its implementation and encourages careful consideration of whether sufficient experience has been gained to assess the likely effects of extending the scope of this process to include disputes involving less harmonized intellectual property rights. c. How do you deal with legitimate registrations and uses of personal names other than by those of the same name The questions of how to define "bad faith, abusive, misleading or unfair registration and use" and how to deal with multiple incidences of the same name (such as Willie Brown the football player and Willie Brown the mayor) both recognize that there will clearly be circumstances in which the registration of personal names is not abusive and the ability of registrants to maintain the rights in such domain names should be preserved. Included among these are certain instances involving creative expression, free speech, and privacy rights. For that reason, common law publicity rights in the United States embody exceptions and limitations that balance the property rights associated with the common law right of publicity with overriding concerns of freedom of expression. State statutes similarly carve out exceptions in favor of such overriding policy concerns, such as the California statute that exempts from its scope uses of a deceased person's name, voice, signature, photograph, or likeness in connection with certain fictional or non-fictional entertainment, or a dramatic, literary, or musical work.3 The U.S. Congress has addressed this issue in the context of the DNS when it enacted the "Anticybersquatting Consumer Protection Act."4 That statute includes a prohibition on the registration of a personal name as a domain name "with the specific intent to profit from such name by selling the domain name for financial gain. . . ."5 The statute explicitly excepts in certain circumstances "[a] person who in good faith registers a domain name consisting of the name of another living person, or a name substantially and confusingly similar thereto . . . if such name is used in, affiliated with, or related to a work of authorship protected under [the Copyright Act]. . . ."6 According to the legislative history, this exception seeks to "recognize the First Amendment issues that may arise in such cases and defer[s] to existing bodies of law that have developed under State and Federal law to address such uses of personal names in conjunction with works of expression."7 MPAA recommends that the terms of reference be amended to include, within or following item (iv), the issue of how to deal with other legitimate registrations and uses of personal names, such as those involving creative expression and free speech. Similar considerations should also be included in conjunction with defining the definitional parameters of "bad faith, abusive, misleading or unfair registration and use in respect of personal names" under item (iii) and any discussions of a dispute resolution procedure to accommodate personal name disputes under item (v). 5. Technical Solutions for Domain Name Collision Control According to the RFC-1, an investigation will be made into the availability of technical solutions to reduce the tension and minimize disputes relative to rights and interests in domain names. As noted, the First Internet Domain Name Process sought comments regarding "[t]he 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." Based on these comments, the WIPO Final Report recommended that contact details of all domain name registrants in the gTLDs be made publicly available in real time as a means of ensuring adequate protection of intellectual property rights and of protecting consumers by ensuring a "straightforward means of applying the developed body of law concerning commercial practices" in the online sphere.8 Unfettered real-time access to current and accurate registrant contact data is key to any meaningful effort at "domain name collision control." As pointed out in the WIPO Final Report, the ICANN Statement of Registrar Accreditation Policy requires ICANN accredited registrars to make such information available to the public on a real-time basis, such as through a publicly accessible Whois service. The ICANN constituencies are currently discussing ways to improve the functionality of such Whois services to better meet the needs of consumers, intellectual property owners, and domain name registrars, and are expected to report their recommendations in the coming months. In addition to the request that led to the initiation of the current inquiry, WIPO has been requested by several of its Member States, including the United States, to endeavor to assist administrators in the ccTLDs in developing best practice guidelines to address intellectual property concerns in the administration of the ccTLD registries. The MPAA has, in coordination with the Copyright Coalition on Domain Names and the Intellectual Property Constituency of the ICANN Domain Name Supporting Organization (DNSO), encouraged the adoption of such best practice guidelines by ccTLD administrators, and specifically the inclusion in any such guidelines of provisions that call on ccTLDs to provide free and unfettered access to current and accurate contact information via a publicly available Whois-type database on the World Wide Web.9 The MPAA believes that coordination and consistency among registrars and across registries in this area - including among the ccTLDs - will prove to be a critical and effective tool in preventing domain name disputes and protecting both consumers and intellectual property owners in the DNS. For that reason, the MPAA recommends that as WIPO continues its review of the technical solutions available to prevent or minimize domain name conflicts it consider the utility of uniformity and universality of publicly available Whois-type services for accessing current and accurate registrant contact data. We further recommend that WIPO consider the specific utility of including uniform provisions relating to the real-time public availability of accurate and current registrant contact data in any voluntary guidelines it develops for the assistance of ccTLD administrators. In doing so, WIPO should consider the anticipated recommendations of the ICANN constituencies for enhancing the functionality of Whois-type services and the usefulness of extending those enhancements to the Whois services offered by the ccTLDs. 6. Conclusion MPAA appreciates this opportunity to share its perspectives with respect to the draft terms of reference on this important topic. Please feel free to contact me if there are questions I can answer or points to be clarified. Sincerely, Troy Dow Counsel Technology & New Media