Comments in Response to the Secretariat's Questionnaire on the Protection of Country Names in the Domain Name System
International Trademark Association
1133 Avenue of the Americas, New York, NY 10036-6710 USA
Telephone: 212-768-9887 Fax: 212-768-7796
Via Electronic Mail
February 26, 2002
Mr. Francis Gurry
WIPO Internet Domain Name Process
World Intellectual Property Organization
34 chemin des Colombettes, P.O. Box 18
1211 Geneva 20 Switzerland
Attention: David Muls
Re: Intersection of Domain Names and Geographic Terms
Dear Mr. Gurry:
The International Trademark Association (INTA) is pleased to respond to the request for comments on the intersection of domain names and geographic terms which is put forth in paragraph 132 of the December 7, 2001, report published by the Standing Committee on the Law of Trademarks, Industrial Designs and Geographic Indications (SCT). INTA is a 123-year-old not-for-profit organization consisting of over 4,000 members in 150 countries. The membership of INTA, which crosses all industry lines and includes both manufacturers and retailers, values the essential role trademarks play in promoting effective commerce, protecting the interests of consumers, and encouraging free and fair competition. INTA has been a participant in the deliberations of the Internet Corporation for Assigned Names and Numbers (ICANN), is a founding member of the ICANN Intellectual Property Constituency (IPC), and has been a respondent to previous request for comments published by WIPO on the intersection of intellectual property and domain names.
INTA acknowledges that there have been instances where domain names corresponding to the names of countries have been registered or are being used in bad faith. The association condemns such practices, as it has done in the case of trademark cybersquatting. And as was the case with trademark cybersquatting, we look forward to working with WIPO in devising means that will ensure that national governments can provide information about their country online using the countrys name if they so choose or permit those countries to take administrative action against those who register or use a country name in bad faith or in a manner that would confuse an online user.
Towards those ends, INTA proposes that there be introduced into the legacy root a new sponsored, highly restricted gTLD that would be used exclusively by national governments for the purpose of registering their countrys name as a domain name. By way of example, this new gTLD could be .nation. A country, provided that it is a recognized member of the United Nations General Assembly, should be permitted to register within this restricted gTLD, its name in as many languages and in whatever abbreviated forms it so chooses, provided that the language is supported by the DNS. This new gTLD would serve as a pristine environment, ensuring that there is one space on the Internet where users may go to obtain information about a country from the national government itself. Furthermore, states, provinces and cities could also enjoy the benefits of this new gTLD by registering their names on the third level. Cities that share a name, but are located in different countries, like Paris, France and Paris, Texas, can both be accorded space (i.e. paris.france.nation, paris.usa.nation).
INTA would also be open to considering the tandem adoption of a dispute resolution mechanism to be used only to resolve matters concerning the bad faith registration or use of a country name as a domain name in future gTLDs but that is completely separate and apart from the existing Uniform Dispute Resolution Policy (UDRP). The burden of establishing bad faith registration of a country name should rest with the government of the country claiming such bad faith. Bad faith should be defined as registering a domain name identical to the country name with the intent to mislead Internet users into believing that the registrant represents or is affiliated with the government of that country.
While the UDRP can and should serve as a model for any new domain name dispute resolution mechanism, including one established just for country names, INTA does not support adding disputes concerning country names to the existing UDRP, since, as we stated in our submissions relating to the Second WIPO Domain Name Process, these and other forms of disputes unrelated to trademarks "generally tend to evoke complex questions, which cannot be effectively addressed by the UDRP, a system that has a narrow focus and limited resources." We maintain that opinion. To the extent that a country or any geographic name functions as a trademark, however, the owner of that trademark should be able to seek relief under the current UDRP system, provided no one else with a legitimate right had previously registered the name.
As part of this new dispute resolution mechanism, INTA suggests that the following be deemed as legitimate rights or defenses to a cause of action initiated by a national government for the bad faith registration or use of the country name as a domain name: (1) being the first in time to register a country name so long as registrant is using the domain name or has the intent to use it in good faith for a legitimate purpose; (2) being the owner of a trademark that is also the name of a country; or (3) being an entity associated with that country.
Thank you for considering INTAs comments on matter of geographic terms and domain names. Our recommendations concerning the creation of a new gTLD exclusively for countries and a dispute resolution mechanism for country names would require approval not just of the WIPO Member States, but that of ICANN itself. INTA looks forward to continuing to work with WIPO, as well as within the ICANN process to address these issues.
Sincerely,
Nils Victor Montan
President