Comments in Response to the Secretariat's Questionnaire on the Protection of Country Names in the Domain Name System
4 March 2002
Secretariat
Standing Committee on the Laws of Trade Marks, Industrial Designs and Geographical Indications
World Intellectual Property Organization
34, chemin des Colombettes
1211 Geneve 20
Switzerland
Re: Circular C. 6635
Questionnaire on the Protection of Country Names in the Domain Name System
New Zealands Response
Contact Details
Name: George Wardle
Title: Advisor, Intellectual Property
Office: Ministry of Economic Development
Member State/Organization: New Zealand
Email: george.wardle@med.govt.nz
Telephone: 64 4 474 2196
Facsimile: 64 4 471 2658
Indications of Source and Geographical Indications
New Zealand supports the recommendation in paragraph 244 of the Final Report of the Second WIPO Internet Domain Name Process that no modification be made to the UDRP to permit complaints to be made concerning the registration and use of domain names in violation of the prohibition against false indications of source or rules relating to the protection of geographical indications.
Expanding the UDRP to cover indications of source and geographical indications would raise administrative and definitional issues. Given the variety of different national approaches to both the definitions of indications of source and a geographical indication, as well as the means of protection provided, there would be no agreed international parameters by which panellists could make a determination under the UDRP. This could ultimately lead to issues concerning the consistency of decisions and, could create uncertainty for participants in the process.
The WTO will be considering the issue of geographical indications in the context of the forth coming Doha Round. It would, therefore, not seem appropriate to extend the function of the UDRP when a number of substantive issues are yet to be determined.
Protection of Country Names in the Domain Name System
New Zealand does not believe it is appropriate or necessary for members of Special Sessions of the SCT to give further consideration to the protection of geographical terms. Further, it is not in the interests of member states to develop ad hoc solutions for the protection of country names, which would apply only on the Internet.
It is not clear what will be achieved by providing special protection against the registration of country names as domain names, particularly since a large majority of country names will have already been registered as domain names or as part of a domain name. It is noted that the use of geographical terms as trade marks is common and an exclusion list would prohibit use of such trade marks as domain names. Existing rights and legitimate interests in honest domain name registrations and trade marks must be protected.
Further substantive analysis would be required to identify to what extent current registrations are clear cases of cybersquatting or where registrants are intentionally using existing registrations in bad faith, and to what extent existing domestic or international remedies could be used to resolve this. For countries wishing to acquire the rights to existing domain name registrations, it appears that there is the option to purchase from the right holders the existing registrations.
The protection of the names for municipalities, cities and provinces would be even more problematic than country names, as more than one person, entity or location could share such names and, therefore, it is not clear who can legitimately claim any alleged rights to such names.
New Zealand law, custom or practice does not preclude the use of country names under any circumstances. New Zealand does not see any reason why the domain names should be excepted from this general rule.
If members of the Special Sessions of the SCT, however, wish to continue considering some form of the protection for country names, the following comments are provided in response to the Questionnaire on the Protection of Country Names in the Domain Name System:
- How should the name of a country be identified and should both the long and short names of the countries be protected?
Only the full name of the country should be protected as well as misleading variations of the full name. It is, however, recognised that issues may arise in relation to what would constitute a misleading variation. Preference would be for the protection of the full names as appearing on the United Nations Terminology Bulletin.
- In what languages should country names be protected?
The full name of the country in all languages would require protection. Any attempt to afford protection in a limited range of languages will be lost if that protection could be circumvented by registration of the same name in some other language.
- To what domains should any protection be extended?
If some form of protection was to be extended to domain names, protection should only apply to new gTLDs
- How should any alleged acquired rights be treated?
Existing good faith registrations should stand and the legal right of trade mark owners to use their trade marks as domain names must be protected.
- What mechanism should be used to implement protection?
Not withstanding our comments above on the use of the UDRP to provide protection for geographical indications, the UDRP by being an established disputes mechanism in which participants will have familiarity with its procedures may provide a suitable mechanism, provided that the guidelines for use are strictly adhered to.
- Should any protection extend to the exact country name only or also to misleading variations?
Please refer to our comments above made under question (i).
- Should protection be absolute or should it be dependent upon a showing of bad faith?
Such protection should only apply in cases of proven and demonstrated bad faith.