Comments in Response to the Secretariat's Questionnaire on the Protection of Country Names in the Domain Name System
FIRST SPECIAL SESSION ON THE REPORT OF THE SECOND WIPO INTERNET DOMAIN NAME PROCESS
Introduction
In general we support the careful broadening of the UDRP rather than the creation of extensive lists of reserved words. As we see this approach as being generally less burdensome. Extensive lists of reserved words would be increasingly difficult to maintain and implement.
Geographical Terms
We recognise that the protection of geographical terms presents problems whatever approach is adopted. To apply the UDRP or an equivalent policy to the protection of geographical indications or country names, we need to clarify who can bring such a complaint. There are also likely to be many competing claims for use of a geographical indication/country name.
In the report of the First Session various questions were included for comment:
(i) How should the name of a country be identified (for example, by reference to the United Nations Terminology Bulletin, ISO Standard 3166, or by some other method) and should both the long and short names of countries be protected?
Our discussion at the First Session demonstrated the practical problems in obtaining a definitive source of country names that should be protected. The United Nations Terminology Bulletin, which is used to maintain the ISO 3166-1 Alpha-2 code elements, appears to be the most relevant source of country names for our purposes. It would seem sensible to protect both the long and short names of countries.
(ii)In what languages should country names be protected?
The "official" languages of a country and English would seem to be the most straight-forward choice.
(iii)To what domains should any protection be extended (for example, to all, both existing and future, gTLDs, only to future gTLDs, also to ccTLDs, etc.)?
Any protection should be extended to future names. There would be considerable difficulties in applying protection to existing names. ICANN's policy is that ccTLDs decide their own registration policies. Consequently we should be looking for a policy that applies to all new gTLDs and provides a best practice guide for ccTLDs (but not mandatory).
(iv) How should any alleged acquired rights be treated?
Perhaps broadening of the UDRP will help here. Our concern is essentially with bad faith use of a name rather than absolute protection.
(v)What mechanism should be used to implement protection (for example, the UDRP or some other mechanism)?
The UDRP has proved to be an effective means of dealing the domain name disputes, and careful broadening of the scope of the UDRP would a sensible way forward. We see this as a cost-effective and pragmatic way forward rather than the creation of extensive "black lists".
(vi) Should any protection extend to the exact country name only or also to misleading variations?
We think practical problems dictate that protection is not extended beyond exact country names.
(vii) Should protection be absolute or should it be dependent upon a showing of bad faith?
There are likely to be competing claims for "genuine use" of country names. We believe therefore that protection should depend on showing bad faith.
Jeff Watson
Intellectual Property Policy Directorate
The Patent Office
March 2002