To: process.mail@wipo.int
From: Brisbane City Council, Australia
Subject: RFC-3
Date: June 8, 2001
WIPO Internet Domain Name Process
World Intellectual Property Organization
34 Chemin des Colombettes
P.O. Box 18
1211 Geneva 20
SWITZERLAND
Fax 0011 41 22 740 3700
Dear Madam
Re: Third Request for Comments regarding the Interim Report of the Second WIPO Internet Domain Name Process (WIPO2 RFC-3)
Thank you for providing the opportunity to provide comments on the Second Report. It is a very impressive and thoughtful work.
I am the Lord Mayor of Brisbane elected directly by the people of Brisbane Australia. The Brisbane City Council which I lead, was recently unsuccessful in two proceedings instituted under the ICANN Uniform Domain Name Dispute Resolution Policy ("UDRP") in relation to the domain names brisbanecity.com and brisbane.com.
In both cases, the WIPO arbitration panels denied the Councils request for the domain names to be transferred to the Council. In both cases, the panels found that the Council did not have sufficient trademark rights in the words "Brisbane" and "Brisbane City". In the brisbane.com case, the panel also found that the Respondent had commenced making plans to use the brisbane.com domain name and that these plans showed that the Respondent had a legitimate interest in the domain name.
I strongly support the proposal to clarify the UDRP to ensure that the names of cities and countries can be proper subject matter for a UDRP complaint. I attach to this letter detailed comments regarding Chapter 5 of the Second Report for your consideration.
The place name "Brisbane" belongs to the people of Brisbane, not any one individual or business. An elected authority for a place is in the best position to hold the domain name representing that place.
In reading the recent brisbanecity.com and brisbane.com UDRP decisions, I think it is absurd that the Brisbane City Council was found to have no rights in the name "Brisbane", but that an advertising agency located 1,600 kilometres from Brisbane and that had no connection with Brisbane other than registration of the brisbane.com domain name was found to have a legitimate interest in the name "Brisbane".
In these decisions, the panels decided that the Brisbane City Council had trademark rights in at least two logos, namely, a stylised "eBrisbane" logo (which is a registered trademark) and the Councils well-known corporate logo consisting of the words "Brisbane City" and a representation of our famous City Hall clock tower. However, the panels found that these trademarks were not similar to the domain names brisbanecity.com and brisbane.com. If this is a correct interpretation of the UDRP, then the UDRP in my view needs to be amended. (This also appears inconsistent with the UDRP cases involving the following domain names, which suggests that panelists are placing a higher burden on complainants in place name cases: mattres.com, booz.com.)
In my view, and based upon the inquiries made by the public to our telephone call centre, most people believe that the Brisbane City Council is responsible for the infrastructure and operation of Brisbane. A community website is a part of the infrastructure of a modern city. I suggest that most people in Australia would believe that the domain names brisbanecity.com and brisbane.com are, or should be, associated with the Brisbane City Council. (Indeed, even the Respondent in the brisbane.com case believed that brisbane.com is best utilised by the Brisbane City Council -- it wrote to the Brisbane City Council (and as far as I know, no-one else) when it first tried to "commercialise" the brisbane.com domain name it purchased.)
In the attached detailed comments, I also suggest that WIPO consider further the requirements for legitimate interest and bad faith. It is becoming too easy for a clever cybersquatter to create a paper trail or a "fake" website to demonstrate a "legitimate" interest, when the only interest of the cybersquatter is to resell the domain name at a profit.
I am concerned that there are many place name domain names that have been registered for the primary purpose of re-sale. For example, www.audomains.com, a website that specialises in brokering the sale of Australian place names as domain names, lists many place name domain names for sale. Most of these domain names have never been used, and are unlikely to be used in any legitimate fashion by the current owners. This ties up valuable domain name resources, and prevents legitimate organisations from using them without paying exorbitant fees.
Thank you again for this opportunity to respond.
Please do not hesitate to contact me if you have any queries in relation to this submission.
Yours sincerely
Jim Soorley
LORD MAYOR
Detailed Submission of Brisbane City Council
in response to
Third Request for Comments regarding the Interim Report of the Second WIPO Internet Domain Name Process (WIPO2 RFC-3)
8 June 2001
This submission is made on behalf of the Brisbane City Council in response to your third Request for Comments regarding the Interim Report of the Second WIPO Internet Domain Name Process. This submission considers Chapter 5 of the Interim Report relating to "Geographical Indications, Indications of Source and Other Geographical Terms". In particular, this submission considers the protection of geographical terms in the open gTLDs.
Background
1.1 The Council is the local government for the city of Brisbane, Queensland, Australia.
1.2 The Councils chief functions include enhancing the environment in Brisbane; managing Brisbanes water and sewerage infrastructure; improving public transport, minimising traffic congestion and developing an efficient use of Brisbanes transport system; providing a framework for sustainable and responsible development in Brisbane; introducing community health and safety initiatives to improve the lifestyle of Brisbanes residents. Further details can be obtained at www.brisbane.qld.gov.au
1.3 The Council was established pursuant to the City of Brisbane Act 1924 (Qld) on 30 October 1924.
1.4 The Council manages one of the largest cities, by land area, in the world.
General Comments
1.5 The Council supports the proposal to protect geographical terms in the open gTLDs. The Council supports the recommendation to protect at a minimum the names of:
(a) countries; and
(b) administratively recognized regions and municipalities within countries, such as the name "Brisbane".
1.6 The Council asserts that it would be desirable to introduce measures aimed at curbing abusive registrations of such names (option 2, at paragraph 282). The Council generally supports the proposition that the scope of the UDRP should be broadened to protect such names. The Councils comments in relation to the possible new UDRP cause of action are set out in paragraphs 3 to 5 below.
1.7 The Council asserts that the competent authority of a country or of an administratively recognized region or municipality is in the best position to ensure that the domain name corresponding to the name of the country, region or municipality is protected and used for the benefit of the country, region or municipality.
1.8 In the event that more than one country, or administratively recognized region or municipality within a county, has the same name, the Council submits that the gTLD should be allocated on a first come first served basis. It is not a concern that more than one place may exist with the same name. This should be handled in the same way as in relation to existing UDRP cases where two or more entities having the same trademarks.
Paragraph 1(i) of the Proposed New UDRP Cause of Action
1.9 The Council supports proposed paragraph 1(i) of the possible new UDRP cause of action set out in paragraph 283 of the Second Report.
1.10 The panelists who decide cases under the existing UDRP are familiar with the concept of "identical or confusingly similar" names. As a general proposition, the Council supports the use of decisions based upon the existing UDRP as precedents when interpreting these words. For example, misspellings of such names, the addition of punctuation marks (e.g. hyphens) and the addition of derogatory words (e.g. sucks) may be held to be within the scope of this paragraph.
1.11 However, the Council also recommends that further details be provided as to when a domain name is confusingly similar to a place name. Recent UDRP place name cases, such as brisbane.com and brisbanecity.com, appear to have taken a strict and narrow reading of similar language in the existing UDRP. The Council submits that this narrow interpretation should not carry across to any new UDRP cause of action concerning place names.
1.12 The Council suggests that the UDRP should clearly cover common abbreviations of place names (such as "QLD" for Queensland) in the same way.
1.13 The Council notes that there are at least four possible place name scenarios that should be considered:
(a) a domain name that is identical to a place name;
(b) a domain name that is confusingly similar to a place name;
(c) domain name that is identical or confusingly similar to a trademark, where the trademark includes a place name as part of the trademark (for example, "Burlington Coat Factory" or "Australian Stock Exchange" or "Singapore Airlines");
(d) a domain name that is confusingly similar to a trademark, where the domain includes a combination of the trademark and a placename (for example, rollsroycecanada.com or yahooindia.com.)
1.14 It should be made clear that proposed paragraph 1(i) of the possible new UDRP cause of action set out in paragraph 283 of the Second Report deals only with 3.5(a) and (b) above, and not (c) and (d) which are adequately covered by the existing UDRP.
Paragraphs 1(ii) and 3 of the Proposed New UDRP Cause of Action - Legitimate Interest
1.15 Unlike paragraph 4(a)(ii) of the existing UDRP, the Council proposes that the registrant should have to prove that it has rights or legitimate interests in respect of the domain name. The Council proposes that the initial assumption should be that the competent authority is the only entity with rights or legitimate interests in the domain name and that initial assumption is subject to the registrant of the domain name proving that it also has rights or legitimate interests in the domain name.
1.16 If the domain name registrant fails to submit a response, the Council proposes that the competent authority should be taken to have satisfied this criteria.
1.17 The Council proposes that paragraph 3 of the possible new UDRP cause of action (paragraph 283 of the Second Report) should be restricted. The Council submits that paragraphs 3(a) and 3(d) are too wide.
1.18 In relation to paragraph 3(a), it is very easy for a domain name registrant to "mock-up" a website that contains information concerning the country, region or municipality in order to satisfy this paragraph and avoid the operation of the new UDRP cause of action.
1.19 The scope of paragraph 3(d) is unclear. It is unclear what constitutes "use" of the domain name for the purposes of this paragraph and it is also unclear what type of comment the domain name registrant must be seeking by using the domain name. Is it intended that "use" of the domain name is to be interpreted in accordance with the existing decisions regarding paragraph 4(a)(iii) of the existing UDRP? Is use of the domain name in order to obtain comment in relation to the country, region or municipality in question the type of comment that is intended by this paragraph? Is the domain name registrants use of the domain name in order to obtain comments in relation to the domain name registrants ownership of the domain name sufficient to satisfy this criteria?
1.20 In addition, the Council submits that use of a place name as part of a trademark should not give the trademark owner a legitimate interest in the domain name corresponding to the place name alone. For example, use of the "Burlington Coat Factory" trademark should not result in a finding that the Burlington Coat Factory has a legitimate interest in burlington.com or that the Australian Stock Exchange has a legitimate interest in australia.com or that Singapore Airlines has a legitimate interest in singapore.com.
1.21 A person who has a first name or surname identical to a place name should be regarded as having a legitimate interest in the domain name. For example, Jack London should be entitled to keep a registration, if he had it, for london.com.
1.22 The Council asserts that paragraph 3 of the proposed new UDRP cause of action should state that:
"3. For the purposes of paragraph 1(ii), the following, in particular, shall be evidence of the registrants rights and legitimate interests in the domain name:
The domain name closely corresponds to a bona fide trademark or service mark or business name of the registrant, and that the registrant is operating a legitimate website using and relating to the domain name; or
The registrant (as an individual, business or other organization) has been commonly known by the domain name; or
The registrant is the competent authority of a country or of an administratively recognized region or municipality within a country that is identical or confusingly similar to the domain name."
Paragraph 1(iii) and 2 of the Proposed New UDRP Cause of Action - Bad Faith
1.23 The Council supports proposed paragraph 1(iii) of the possible new UDRP cause of action. However, the Council proposes that paragraph 2 of the possible new UDRP cause of action should be broadened to include some additional examples of registration and use of a domain name in bad faith.
1.24 In relation to paragraph 2(a), the Council proposes that circumstances indicating that the registrant has registered or has acquired the domain name for the purpose of selling, renting or otherwise transferring the domain name registration to anyone or listed generally for sale should be sufficient to show that the registrant registered the domain name in bad faith.
1.25 The Council proposes that paragraph 2 should be broadened to include evidence of circumstances that indicate that the registrant has registered or has acquired the domain name primarily for the purpose of procuring the complainant to enter into an agreement with the registrant to establish a website or other on-line location. This new criteria would include the situation where a registrant registers a domain name for the sole purpose of procuring a competent authority to enter into a joint venture agreement with the registrant where the only contribution made by the registrant is the right to use the domain name.
1.26 Additionally, evidence that the registrant has not used the domain name for more than a year should be treated as evidence of bad faith. A placeholder website should not be regarded as proper use of a domain name.
1.27 The Council asserts that paragraph 2 of the proposed new UDRP cause of action should state that:
"2. For the purposes of paragraph 1(iii), the following, in particular, shall be evidence of the registration and use of a domain name in bad faith:
(a) Circumstances indicating that the registrant has registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant or any other entity for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(b) The registrant has registered the domain name in order to prevent the competent authority from reflecting the name of the region or municipality in a corresponding domain name; or
(c) The use of the domain name as the address of a website or other on-line location without there being a connection between the information provided on such website or location and the region or municipality corresponding to the domain name; or
(d) The use of the domain name as the address of a website or other on-line location in a manner that creates a likelihood of confusion as to the endorsement by the competent authority of the information provided on such website or location; or
(e) Circumstances indicating that the registrant has registered or has acquired the domain name primarily for the purpose of procuring the complainant to enter into an agreement with the registrant to establish a website or other on-line location; or
(f) The domain name has been owned by the registrant (and any associates of the registrant) for more than a year and has not been used for more than a year."
1.28 The Council has been informed that at a consultation conducted in Washington, D.C. on May 29, 2001, the South African Ambassador to the United States argued for broader protection. Apparently, Ambassador Sheila Sisulu argued that the UDRP should recognize that a private registrant of a country name with no connection to the country should be deemed to have registered the domain name in bad faith. The Republic of South Africa considers country names to be national assets of sovereign nations and not subject to private registration.
1.29 The Council sees merit in this proposal and agrees that the name of a country, region or municipality should be treated as an asset of the relevant competent authority. For this reason, the grounds for legitimate interest should be extremely narrow and the examples of bad faith should be broad.
Standing
1.30 The proposed new UDRP cause of action can only be instituted by "competent national authorities".
1.31 The Council proposes that this term should be broadened to include "competent authorities" generally. This term should include national authorities, State authorities, local authorities and any other governmental authorities that may exist within a country and that are responsible for the governmental functions of a country, region or municipality.
1.32 The Council notes that this view was supported by the panel in the bamberg.com case.
Remedies
1.33 The Council considers that there is no need to amend the existing remedies that are available under the UDRP. The Council believes that the ability for an eligible complainant to seek the cancellation or transfer of a domain name is adequate.