To: process.mail@wipo.int
Subject: RFC-3
From: Megan Richardson
Date: Tue, 05 Jun 2001 11:33:25 +1000
Name: Megan Richardson
Organization: Law Faculty, The University of Melbourne
Position: Associate Professor
I thought I would briefly take the opportunity to elaborate in writing my comment made from the floor about geographical terms. My colleagues David Brennan and David Lindsay have also given me the benefit of their opinions on this issue and I have tried to reflect these in what I say below. The comments are restricted to to the open gTLDs which are the subject of review.
Geographical terms may raise issues of trade mark interests or they may be generic. There are three possibilities:
(1) the term is associated with an existing trade mark (as, arguably, 'Brisbane City' with 'Brisbane City Council or 'Oxford' with Oxford University Press). Subject to sufficient evidence being provided and the bad faith requirements, that interest prevails under the UDRP. The need for a presumption in favour of the 'competent national authority' (option 2 at paras 282-3 of the Interim Report) is questionable;
(2) there are concurrent trade mark interests (for instance, the 'First American' example given in the Melbourne meeting). Subject to sufficient evidence being provided and the bad faith requirements, the first in time prevails under the UDRP. Unless and until there is a more general resolution of the concurrent trade marks issue under the UDRP, it is not clear why geographical terms should be treated as a special case;
(3) the geographical term is generic ('America' and 'Australia' are possible examples - their meaning does not seem to be associated with one or more trade mark: they are common descriptive terms used in a variety of contexts). It is not clear why generic geographical terms should not be treated the same as other generic terms under the UDRP. If 'coffee.com' is registrable to whomever comes first, then arguably so should 'Australia.com' or 'America.com'.
In all of this the onus should be on those who advocate change to demonstrate that change would be beneficial overall. It would probably be practically impossible now to insist that generic terms should be viewed as in the public domain (even though they generally are under national trade mark law systems). The social norm in the domain name context seems to be that, subject to very limited exceptions, any term should be appropriable. If so, what is the special public interest in treating geographical terms differently? There may be some efficiencies in treating even generic terms as subject to private domain name rights and the costs (closing off descriptive/expressive terms from the common language) are not so great as with regular trade marks since the use is restricted to the domain name use in conjunction with .com, .org, etc and new domains (such as .biz) can be created. Possible benefits include -
. dispute resolution systems can continue to exist as relatively clean, simple and low transaction cost;
intermediaries are freer to sell their services of identifying domain names that others might want to use, registering them (requiring a minimal level of technological expertise), and making them available for sale or licence. These can be socially useful services, at least in some cases;
. if someone values a domain name more highly than the intermediary or a third party, that person can seek to bargain around the initial entitlement (buy or licence the domain name from the owner) or go to the nearest substitute. This provides a mechanism for domain names to reach their highest value use.
Obviously, there may be informational, organisational and/or resource constraints on the abilities of some to operate in the market. But I would have thought that other groups, such as indigenous communities, are more likely to suffer these constraints than many competent national authorities. I also wonder whether a useful focus of any further review of the UDRP might be the requirement to show bad faith registration and use for rectification.
Yours sincerely,
Megan Richardson
Associate Professor
Law Faculty
The University of Melbourne