To: process.mail@wipo.int
From: "Kathryn Kleiman, Milton Mueller, Alexander Svensson, Andrew Shen, Hur Sang-Soo, Eric M.K. Osiakwan"
Subject: RFC-3
Date: June 15, 2001
June 15, 2001
To Mr. Francis Gurry:
We are pleased to submit our comments, below, in response to the Interim Report of the Second WIPO Internet Domain Name Process. Thank you for your consideration of our concerns and views.
Sincerely yours,
Kathryn Kleiman, Director, Association for Computing Machinery's Internet Governance Project, USA/International Organization
Professor Milton, Mueller, Director, The Convergence Center, School of Information Studies, Syracuse University, USA
Alexander Svensson, Editor, ICANN Channel, Germany
Andrew Shen, Senior Policy Analyst, Electronic Privacy Information Center, USA
Hur Sang-Soo, Ph.D., Lecturer, SungKongHoe University, Korea
Eric M.K. Osiakwan, Ghana
I. Why are We Here? Why is WIPO Holding This Proceeding So Quickly After the First WIPO Domain Name Process?
The ICANN Uniform Dispute Resolution Policy (UDRP) is in its infancy. Barely eighteen months since its first use, the UDRP has yet to be formally evaluated. Yet, WIPO contends that the "UDRP has also proven itself to be an efficient and cost-effective means of resolving disputes," Interim Report of the Second WIPO Internet Domain Name Process (referred to below as "WIPO2 Interim Report" or "WIPO2"), paragraph 4.
This declaration of UDRP success seems self-serving for WIPO as the largest provider of dispute resolution services. The UDRPs efficiency and cost-effectiveness have come at the expense of fairness, especially for the noncommercial community. The UDRP rules are overbroad and they encompass legitimate noncommercial uses of domain names under the umbrella of cybersquatting abuse.
Before expanding the UDRPs controls and effects over the domain name system, a full and fair review of the UDRP needs to be undertaken by ICANN. Just a few of the remedies needed under the current UDRP are: actual notice to noncommercial domain name owners, timely copies of appendices which are in electronic form and often fail to domain name owners in time for their response; and Panelists better schooled on the protections of UDRP for noncommercial and fair use of domain names.
The Noncommercial Constituency recommends that WIPO place this WIPO2 on hold until we together find and fix the problems of the First WIPO Internet Domain Name Process.
II. WIPO2 is not WIPO1: the Complex Factors that Led to the First WIPO Internet Domain Name Process in 1998-99 do not exist here.
As WIPO points out in its WIPO2 Interim Report, WIPO1 was of very limited scope. The US Department of Commerce (DOC) and the Clinton White House, in the famous "White Paper," asked WIPO to help resolve the most divisive issue of the Internet the conflict between trademark owners and domain name owners over abusive registrations of trademarks as domain names (with no other fair use or noncommercial purpose behind them).
At the time, the DOC and Clinton White House were trying to create a nonprofit organization (now ICANN) with an international and democratically-oriented framework to run the technical management of the domain name and Internet Protocol systems. The chasm and divisiveness of the cybersquatting problem threatened the entire process. Unless trademark owners (mostly large corporations) and domain name owners (mostly small business, noncommercial organizations, and individuals) could be brought together, the new Internet corporation would never survive.
Like WIPO1, WIPO2 is asking for ICANN, a technical body, to create law for the Internet that does not exist in any international treaty or practice. But unlike WIPO1, WIPO2 lacks the unique and unusual factors that led to WIPO1's success:
A0 Anger in the Community that Blocked All Efforts to Move Forward with Constructive Solutions to Internet Governance.
The trademark/domain name debate was so divisive that its anger divided the Internet community for years and threatened the existence and continuance of ICANN. The early proceedings, including the International Forum on the White Paper (IFWP) meetings and White House meetings with Ira Magaziner and Becky Burr, were filled with people and their rancor. In contrast, the WIPO2 proceeding is barely attracting attention. (For example, the WIPO1 Consultation, held in Washington DC in 1999, drew a large crowd despite a heavy snowstorm which closed roads; while the WIPO2 Consultation in May 2001 barely drew 30 people on a sunny day).
B. The ICANN community chose to go forward with only those areas of WIPOs proposed UDRP that reflected basically settled areas of international law and practice on trademark infringement.
The ICANN community chose to go forward with only those areas of WIPOs proposed UDRP that reflected basically settled areas of international law and practice on trademark infringement. Further, ICANN added to the WIPO1 UDRP proposals specific additional elements to protect noncommercial and fair use of domain names (just as these uses are protected in the real world). In contrast, the WIPO2 proposals draw from unsettled areas of international law and practice and disregard clear protections for noncommercial and fair use under existing law.
C. WIPO1 operated under an emergency deadline imposed by the US Department of Commerce and Clinton White House, which does not exist here.
The US Department of Commerce and ICANN in 1998 faced the end of the Network Solutions contract and the need to create the body which became ICANN. The WIPO1 proceeding was tied directly to ICANN birth and worked under an emergency timeline. The Noncommercial Community participated because they had no real choice, and also so that the new Internet corporation could move quickly on to the crucial business of creating new gTLDs and ending the artificial scarcity of the domain name system.
There is no emergency deadline for the WIPO2 proceeding. Like every other newcomer to the Internet, the World Health Organization, international governmental organizations, countries and regions, have awaken to the fact that they do not have a monopoly on "their words" on the Internet or within domain names.
But these countries and organizations do not have absolute control over such words today. South Africans living outside of their country may legitimately and legally choose to create a newspaper called "South Africa." It seems reasonable that they would register a domain name such as southafrica.org, or in the future, southafrica.news. In addition, the acronym "ICC" is in peaceful parallel use by the Internet Chamber of Commerce, at www.icc.org, and the United Nations International Computing Centre (which does not appear to use www.icc.int under the United Nations top level domain .INT). People name their daughters "Sherry" as one of the most popular girls names, and consumer buy diamonds with a "champagne" color. These redundant uses of words are normal use, without a shred of bad faith.
It is inappropriate and irresponsible of WIPO to cast a shadow over the normal uses of ordinary words in the domain name system. Further, by seeking to ask ICANN to bar normal uses of words, WIPO is bypassing the traditional ways that international law and practice are developed. These traditional processes allow country representatives to discuss and debate the protection of legitimate noncommercial, political, personal and political use of words and the need for other forms of intellectual property and intellectual property-type protections.
To pass this "hot potato" of complex and unsettled international issues to the ICANN Board is unconscionable. ICANN has a limited mandate -- technical management of the domain name system. Its leaders are largely technical in their orientation and background. Expediency is no longer an excuse. Theirs is not a job of creating new intellectual property-type rights in the domain name system.
III. Intellectual Property Law and Its Traditional Limitations Protect the Very Form of Noncommercial and Fair Use of Words In the Domain Name System That WIPO Seeks to Ban in WIPO2.
Prior to commencing a detailed discussion of the sections in the WIPO2 Interim Report, it is important to devote a few paragraphs to the protections for noncommercial use and fair use that exist in all intellectual property legal frameworks.
A. Generic words are open for use as a matter of public policy.
Generic words are "the name of a product or service itself." McCarthy on Trademarks and Unfair Competition , §12:1 (a major trademark treatise widely used in the daily practice of trademark law). This category of generic words includes "apple" for a type of fruit, "tide" for the ebb and flow of the ocean, and "uno" for the Spanish number one. Generic words can "never function as a trademark to indicate origin" because they merely identify the particular type of product or service. McCarthy, §12:1.
Further, Professor McCarthy tells us that no one can limit the use of a basic word when it is used in a basic way: "Clearly, one seller cannot appropriate a previously used generic name of a thing and claim exclusive rights in it as a trademark for that thing." McCarthy, §12:1. Thus, apple growers, apple pickers, and organizations of apple sellers have rights that are not impaired or limited by the trademark registration of Apple Computer.
Why do we have such strong protection for open use of generic words? Because public policy demands it: "Generic names are regarded by the law as free for all to use. They are in the public domain." McCarthy, §12:2.
B. Like generic words, geographic terms are available and accessible for noncommercial and other uses.
In the WIPO2 Interim Report, WIPO asks ICANN to adopt severe limitations on how geographic terms can be used in the domain name system (including country names, regional names, indigenous peoples and geographic features). Yet, public policy dictates that these words belong to the public for open and free use:
"A parallel rationale states that descriptive geographical terms are in the public domain in the sense that every seller should have the right to inform customers of the geographical origin of his goods.... These geographical terms should remain free for all sellers in that portion of the world to use descriptively with equal honesty." McCarthy, §14:1.
The protections for sellers apply equally, if not with greater force, for noncommercial users and uses.
IV. WIPOs Substantive Proposals Address Not a Single Issue of Intellectual Property, and Substantially Limit the Right of the Noncommercial Community to Use Generic and Geographic Terms in Normal and Customary Ways.
A. WIPOs Proposals to Ban the Use of Generic Drug Names by Noncommercial Users Is Contrary to Law and Public Policy.
In the WIPO2 Interim Report, WIPO proposes to recommend that ICANN allow the World Health Organization (WHO) to control generic drug names, to exclude these drug names from all existing and future gTLDs, and to revoke them without due process from existing registrations:
83. It is recommended the Cumulative list of INNs [Intergovernmental Nonproprietary Names for Pharmaceutical Substances (INNs)] in Latin, English, French, Russian and Spanish be excluded automatically from the possibility of registration as domain names in the open gTLDs
84. It is further recommended that any existing registrations of INNs as domain names be cancelled and that, following such cancellation, such INNs be excluded from any further registration. WIPO2 Interim Report.
This approach violates the very foundation of generic drug names. Manufacturers create two names for new drugs: a trademark and a generic name. They then use the trademark for their publicity and advertising, and the scientific, regulatory and consumer communities use the generic name for their discussions of the drugs benefits, side effects, testing and regulatory review and progress. As a matter of basic law and practice, the public understands that NutraSweet® is a trademark, but that its generic term "aspartame" is open for all to use.
That the WHO chooses to include these generic drug names in a database of "International Nonproprietary Names for Pharmaceutical Substances" (INNs) may serve the goal of helping drug providers worldwide to standardize their terminology. However, such a database does not serve to limits the rights of the public. The essential word of the database title is "Nonproprietary" these INN names are nonproprietary in scope and protection. These words are public domain and generic.
Thus, WHO has no rights in the real world to limit, exclude, expel or control the use of these words for noncommercial or even commercial purposes. Accordingly, the Aspartame Homepages services at www.aspartame.org is free to "provide comprehensive information about Aspartame" and other noncommercial information with or without the approval of WHO.
That the WHO proposals would bar even use of these words in an arbitrary sense as domain names is contrary to existing law and policy. Anyone is free to start a rock group called, for example, The Aspartames. WHO has no right in the real world to control or censor unrelated and arbitrary uses of generic drug names.
Action and Alternatives on INNs
The Noncommercial Community urges WIPO to withdraw the INN proposal, in its entirety, from the final report to ICANN. We recommend that WIPO act as a mediator to bring WHO and representatives of the Noncommercial Constituency together to talk about ways to protect INNs consistent with the traditional protections of law and traditional principles of openness in the domain name system.
To the World Health Organization, the Noncommercial Community continue the dialogue started at the Stockholm ICANN meeting in the Noncommercial Constituency session. We ask that you not compromise the tremendous value of your worldwide health care work to take on the label of drug information censor. The proposals being submitted under your name by WIPO will:
- damage the robust, dynamic, and open discussion of drugs in the real world and on the Internet; and
- likely cause WHO to be blamed for damaging new domain name system changes, including a new system of prior restraints (automatic exclusions have been rejected by the Internet/ICANN community) and loss without due process (revocations of domain names without due process and evaluation of context and use do not now exist and have no basis in any international or sovereign law).
We further note that there are far better options for the protection WHO seeks without creating terrible procedural precedents and infringements upon open communication. One excellent option is to create new gTLD such as .DRUG, where WHO could control the registration of all INNs as second level domain names. The Noncommercial Community offers its assistance and support in exploring and, if appropriate, proposing this option to ICANN.
B. WIPOs Proposals to Ban the Use of the Names and Acronyms of International Governmental Organizations is Contrary to Law and Public Policy.
In the WIPO2 proposals, WIPO proposes banning the registration and use of International Governmental Organizations (IGOs) as names and acronyms in existing and future gTLDs:
123. It is recommended that the names of IGOs protected under the Paris Convention and the TRIPS Agreement should be excluded from registration in all existing open gTLDs, as well as in all new gTLDs.
This extraordinary proposal means that an IGO such as the World Health Organization would have a superior right to the common three letter combination, WHO, over any other user. Such a scope of protection exceeds any found under existing law, and invades clearly protected areas of noncommercial use.
In the world today, the World Health Organization cannot stop the dynamic use of "who" in common speech whether by a rock group (The WHO), by reporters (Who? What? Where? When? Why?), by science fiction fans (Dr. Who), or by children (Horton Hears a Who, by Dr. Suess). Further, these real world uses should extend seamlessly unto the Internet and allow current and future users to express these ideas in domain names and websites. Thus, we envision www.who.rock, www.who.writing, www.who.scifi, and www.who.suess in future gTLDs. These are legitimate users, not uses in bad faith.
Similarly, the Internet Chamber of Commerce (www.icc.org), peacefully coexists with the International Computing Centre (also ICC). Thats a fact of language and its normal and natural redundancies, not any proof of bad faith.
Action and Alternatives for IGOs
Are there alternatives? Of course! At the WIPO Consultation in Washington DC on May 29, 2001, the U.S. Small Business Administration noted the use of "SBA" in many other instances. See for example, Southern Bakers Association at www.sba.org, and Smith, Bucklin & Associates at www.sba.com. Rather than seeing such use as bad faith, the SBA attorneys applauded it as part of the robust nature of language and the Internet. They assured WIPO that other uses of "sba" online did not keep the public from finding the official Small Business Administration website at WWW.SBA.GOV.
As an alternative to the WIPO2 proposals, SBA attorneys urged WIPO and IGOs to use the trump card handed to them by the current domain name system -- the .INT international top level domain. This top level domain exists expressly for the United Nations and its supporting organizations, including IGOs. SBA attorneys stated that the lack of knowledge about the .INT domain name can be easily solved -- by using it! They said that the more UN organizations register their names and acronyms under .INT, the faster the public will know to find them there.
The Noncommercial Community supports the US Small Business Administration proposal that IGOs use .INT and not force massive exclusions under gTLDs that will create scarcity and eliminate normal and good faith use. As part of its final report to ICANN, we urge WIPO to carefully review the domain name registrations allowed under .INT, and the broad scope of IGOs and other United Nations sub-groups. WIPO should propose to ICANN the expansion of the.INT definition, to include the full range of names and acronyms to accommodate the array of United Nations activity on the Internet today.
C. WIPOs Proposals to Ban the Use of the Two Letter Combinations in Second
Level Domain Names Are Contrary to Public Policy and Common Sense.
In the WIPO2 proposals, WIPO will ask ICANN to allow countries to control all use of the two letter combinations assigned to them by the International Organization for Standardization (ISO) in its ISO country code list:
275. With regard to the ISO 3166 alpha-2 code elements, it is recommended that:
(i) a mechanism be established to exclude such elements from registration in the new gTLDs, absent an agreement to the contrary from the relevant authorities;
This proposal imbues the ISO country code listing with a trademark-like status that neither the ISO nor Dr. Jon Postel ever intended or anticipated.
Dr. Jon Postel used the ISO country code list as a handy tool for creating the country code top level domains (ccTLDs). However, these two letter combination are better known, in many instances, for meanings other than country codes. Thus, "TV" is better known as an abbreviation for television, than for the country of Tuvalu; and "TM" is better known for trademark than for Turkmenistan (ironically enough).
We note in passing that not even a hint of present harm appears in this WIPO2 section. Further, the large intellectual property law firm of Fish & Richardson would no doubt be surprised to find that WIPO believes that its domain name and website (www.fr.com) causes confusion with the country of France.
Action and Alternatives for ISO country codes
We recommend that WIPO drop any requests for exclusions of two letter country codes because these requests are not grounded in any semblance of bad faith or abusive use. Further, the proposals would create a system of prior restraint unlike any that currently exists online.
D. Expanding the Uniform Dispute Resolution Procedure (UDRP) Would Cause ICANN to Enter Into One of the Most Controversial and Unsettled Areas of International Law and Practice, Creating Tremendous Damage to Traditional Protections of Noncommercial Use of Words.
In one of the most complicated sections ever written for a general audience, WIPO staff tries hard to explain geographic indicators, indications of source, and reasons for protecting country names and indigenous people names (among others). This is virtually incomprehensible because the ideas are so complex and unsettled.
1. Definitions in WIPO2 are Cloudy at Best
WIPOs good faith attempts to define these difficult terms makes even a trademark practitioners head spin:
- geographical indications are "designations applied to products which originate in a certain area and which bear characteristics that are particular to that area. Geographical indications are well-known in respect of, for example, wine." Para. 4.
- Indications of source are "designations of the geographic place of origin of a product (for example, made in ), Para. 193.
- Yet, "the precise definition of geographical indications and indications of source often is the source of considerable confusion, principally because of the subtle differences in meaning attributed to these concepts in the various legal instruments governing them (at the global, regional, as well as national levels)," Para. 190.
Professor Christine Haight Farley, of the American University Washington College of Law, stated in her oral and written statement to WIPO as part of the May 29 Consultation in Washington DC that the WIPO2 definitions differ from those adopted by treaties:
"the definition of geographical indications adopted in the Interim Report is different from any [definition] in any international treaty including the Agreement on the Trade Related Aspects of Intellectual Property [TRIPS], which explicitly sought to define this concept." Statement of Professor Farley to WIPO at the Washington DC Regional Consultation, May 29, 2001, page 1. Also submitted to WIPO as a formal comment, and found at http://wipo2.wipo.int/process2/rfc/rfc3/comments/msg00057.html.
How can the ICANN community understand basic definitions that are in flux? This ambiguity itself gives cause for concern to noncommercial users of domain names, and raises a red flag of caution regarding how we proceed.
2. WIPO proposes protections for these geographic terms that run counter to the ways these words are used in normal noncommercial use throughout the world.
In the Interim Report, WIPO proposes an expansion of the Uniform Dispute Resolution Policy (now for trademark/domain name disputes) to allow, unbelievably, proof of bad faith when there is:
"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" WIPO2, paragraph 283.
Has WIPO lost its perspective of uses of geographic terms around the world and the protections of public policy known to every trademark practitioner? The names WIPO seeks to protect are, generally, in generic and common use throughout the world. Wine stores worldwide commonly carry champagne, chablis and sherry from California and other locations; clothing stores and car manufacturers sell lines of products called "Cherokee" (a US Indian tribe); a formerly small dot-com company created an experimental distribution system and online success story under the rain forest and river name Amazon.com without even being located in the Amazon geographical region!
3. Professor Farley explains that international treaty law and practice are not nearly as clear as the WIPO Interim Report Indicates. In fact, protection of geographic terms is among the most unsettled of all treaty law and practice.
Professor Farley also explained that geographic terms created bitter divisions among nations during treaty negotiations: "The negotiations over geographical indications were the most protracted and held up all of the WTO agreements." Farley Statement, page5.
Further, while treaties represent an agreement to continue working on these issues, Professor Farley explained that they did not establish a clear standard of international action or implementation:
"These trademark treaties evidence a lack of international harmony with respect to geographical indications...The TRIPS Agreement is the first multilateral agreement containing somewhat detailed standards for the protection of geographical indications that has achieved widespread international acceptance. TRIPS, however, leaves the substance of the protection to national law...The reason that these standards were left to be defined and applied in domestic legislation is that there was no consensus on how they should be applied uniformly." Farley Statement, pages 3-4.
4. The Proposals of the Interim Report Clearly Infringe Upon Rights and Protections for Noncommercial Users.
If the use of the geographic terms without the authority of some WIPO-selected entity is deemed a major indicator of bad faith, then a myriad of current and future good faith uses of domain names will be subject to UDRP challenge and revocation. The following completely legitimate and noncommercial uses would likely be lost:
- Use of geographic term to accurately reflect the region being discuss, such as PARIS.CLUBS (a club for Parisians living in, perhaps, New York City), BURGUNDY.CHAT (people who love burgundy wine, burgundy beef and trips to the Burgundy region of France), and AMAZON.BIRDS for lovers of Amazon Parrots;
- Use of a geographic term in its generic sense among those countries whose practices allow generic use, such as cognac, champagne and sherry for drinks; and
- The use of geographic terms in an arbitrary noncommercial sense (such as Sherry for a girls name) or champagne for a senior citizens club (aging beautifully) or champagne for jewelry, ice skating exhibits and mango fruit drinks (active registrations of the US Trademark Office).
As discussed above, public policy allows a wide variety of free and open uses of geographic terms in the real world, and limiting these uses online creates bad faith out of thin air.
Action and Alternatives for Geographic Terms
We respectfully submit that it is beyond the scope of WIPOs authority and mandate to submit to the ICANN Board of Directors a set of geographic proposals that amount to advocacy on behalf of European countries. The law and practise are neither settled nor harmonized and a technical body managing domain names and Internet Protocol addresses has no business being dragged into the fray.
In its over one hundred paragraphs of discussion on this issue in the Interim Report, the WIPO Staff has created a framework for talking with its 177 member countries directly about concerns for geographic term use among certain countries and different paths to be taken.
E. The Interim Report Recommends Not Moving Forward with Recommendations
on Personal Names and We Agree.
In the Interim Report, WIPO wisely proposes no recommendations to ICANN on personal names, stating only:
186. Further comments and, in particular, expressions of preferences are invited on the options set out in the preceding paragraphs.
Personal names need no further protection than that provided by the UDRP. Further, new action would raise a tremendous range of problems for noncommercial speech and communication.
F. Regarding trade names, the Interim Report Does Not Propose Any Recommendations to ICANN, and we agree.
The International Trademark Association, in its May 29 presentation to WIPO suggested that WIPO take no action on trade names. We agree with INTA on this matter. In the Interim Report, WIPO sets out the following action point:
322. It is not recommended that a special procedure for the protection of trade names against abusive registration and use as domain names be established at this stage through the modification of the UDRP.
We agree. However, WIPO also adds that
329. It is recommended that any revision of the UDRP to extend to trade names should apply to all existing open and all new gTLDs. The administrators of ccTLDs that apply the UDRP are encouraged to adopt any revision of it concerning trade names within their respective ccTLDs.
How can WIPO propose that a system of protections extend across all gTLDs, current and future, before we possibly know what the proposals will be? This type of recommendation does not make sense and promotes a scarcity situation in the domain name system, without even an detailed proposal. Under this scenario, IKEA employees would not be entitled to use the trade name IKEA in a future IKEA.UNION registration. We submit that WIPO is too Internet savvy to place such a recommendation before the ICANN Board.
- A Different Role for ICANN: Bringing Different Parties Together To Negotiate Among Themselves
Outside the Internet arena, WIPO and its talented staff play an important role as mediators and organizers. This traditional role would be welcome on these domain name issues.
As the most Internet savvy of the IGOs, WIPO is in a position to invite leaders of the Noncommercial Constituency to meet with those countries and organizations lobbying WIPO for special protection in the domain name system. Let us explain to these organizations and countries the history of similar requests on the Internet, the very limited technical mandate of ICANN and the desire of the Internet community to eliminate the artificial scarcity and open a myriad of communication alternatives on the Internet. Member countries could then seek consensus through their traditional avenues, including the WIPO General Assembly.