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Study Finds Current International Protection System for Names Inadequate to Deal with all On-line Abuses

Geneva, September 3, 2001
Press Releases PR/2001/281

At the close of an international consultation process spanning the past year, the World Intellectual Property Organization (WIPO) has released its Final Report http://wipo2.wipo.int/process2/report/index.html containing recommendations dealing with the misuse of certain names and identifiers in the Internet domain name system (DNS). WIPO finds that the international legal framework for the protection in the domain name system (DNS) of the naming systems examined is not yet fully developed. The Report calls upon the international community to decide whether to address these insufficiencies and establish a complete legal basis for dealing with offensive online practices in connection with the naming systems concerned.

WIPO's first Internet Domain Name Process, focusing on protection of trademarks, led to the current Uniform Dispute Resolution Policy (UDRP), which, since December 1999, has provided the means for solving thousands of conflicts relating to cybersquatting on the Internet. The report of the first WIPO Process noted that certain issues relating to intellectual property still remained unresolved, insofar as they relate to the use of other identifiers in the domain name system.

A group of countries spearheaded by Australia (Argentina, Canada, Denmark, European Union, France, and the United States of America) wrote to WIPO Director General Dr. Kamil Idris in July 2000 requesting the Organization, in line with its mandate to promote the protection of intellectual property rights, to initiate a second fast-track international consultation to address these issues.

WIPO's study addressed the abusive registration as domain names of:

  • International Nonproprietary Names (INNs) for pharmaceutical substances;
  • names and acronyms of international intergovernmental organizations;
  • personal names
  • geographical identifiers, notably, indications of geographical source used on goods, geographical indications and other geographical terms; and
  • trade names.

The Second WIPO Process Report produces considerable evidence of the registration and use of these names and identifiers as domain names by persons who are unconnected with the naming systems in question. With respect to these issues, WIPO recommends:

  • International Nonproprietary Names (INNs); (unique and distinctive names of pharmaceutical substances that are selected by the World Health Organization (WHO), and maintained as generic names free from private rights in order to protect the safety of patients worldwide);

RECOMMENDATION

A simple mechanism should be established to protect INNs against identical domain name registrations. This administrative system would operate when any interested party notified WIPO that a domain name registration is identical to an INN - WIPO, in conjunction with WHO, would verify this fact and notify to ICANN and, in turn, the applicable registrar, that the domain name registration should be cancelled.

  • Names of international intergovernmental organizations (IGOs); (which are protected against use and registration as trademarks by the Paris Convention and TRIPS Agreement);

RECOMMENDATION

States, as the constituent members of IGOs, should work towards establishing an administrative dispute-resolution procedure, similar to the UDRP, to allow an IGO to bring a claim that a domain name was the same or confusingly similar to its name or acronym, that it has been registered without legal justification, and that it is likely to mislead users that an association exists between the domain name holder and the IGO in question.

  • Personal names; (in particular, names of individuals who are targets of abusive registration because they are distinguished or famous)

RECOMMENDATION

WIPO suggests that the international community needs to decide whether to work towards some means of protection for personal names in the domain name space. Under the current UDRP, personal names that also qualify as trademarks, whether registered or unregistered, can be protected (i.e., only when the name is used in connection with goods and services in commerce). Although clearly sensitivities are offended by the registration of personal names as domain names by persons unconnected with the person in question, there are no existing international norms dealing with protection of personal names per se that can simply be reflected in the domain name space.

  • Geographical indications, indications of geographical source and other geographical terms; ("geographical indications" are the names of geographical localities with which goods of a certain quality or reputation are associated; "indications of geographical source" are the direct or indirect indications on goods of their geographical origin; "other geographical terms" include the names of countries, cities, places and geopolitical (eg, Europe) and geo-ethnic (eg, names of indigenous peoples) terms);

RECOMMENDATION

The international framework in this area needs to be further advanced before an adequate solution is available in the domain name space. Although there are international norms which prohibit the false and deceptive indications of geographical source on goods and which protect geographical indications, these rules apply to trade in goods and would need to be adapted to deal with the use of geographical indications as domain names by persons unconnected with the localities in question. The lack of an internationally agreed list of geographical indications means that the UDRP cannot simply be applied, because it would raise complex questions of applicable law. For other geographical terms, appropriate international law does not currently exist, and a decision needs to be taken whether laws need to be developed to address evidence of widespread registration of the names of countries, places and indigenous peoples as domain names by persons not connected with them.

  • Trade names; (a name adopted by a business enterprise to identify itself, as opposed to its various goods and services (for which trademarks are used) ).

RECOMMENDATION

It is not recommended that action be taken in the area of trade names because, although international norms exist for their protection, fundamental problems remain in identifying what can be protected as a ‘trade name' across different countries and, as with geographical indications, complex choices would need to be made on applicable law in a global medium.

These recommendations will be presented to WIPO member states and the Internet community, including the Internet Corporation for Assigned Names and Numbers (ICANN), the manager of the technical aspects of the domain name system (DNS). The UDRP, which went into effect on December 1, 1999, was among the WIPO recommendations implemented by ICANN. The WIPO Arbitration and Mediation Center was the first dispute-resolution service provider to be accredited by ICANN. The dispute resolution system is now widely regarded as an efficient, quick and cost-effective way to resolve domain name disputes. Over 3,000 cases have been filed with the WIPO Center, with more than 2000 cases resolved.

Background on Domain Names

Domain names were designed to facilitate connectivity between computers through the Internet. However, as they are easy to use and remember, they have come to constitute also a form of business identifier. The growing number of cybersquatting disputes reflects the premium businesses are placing on domain names and their potential for facilitating electronic commerce. By using trademarks as their domain names, businesses hope to attract potential customers to their web sites and increase their market visibility. Domain names are now used routinely in advertising as a means of indicating the presence of an enterprise on the Internet.

With the growth of the Internet, domain names have increasingly come into conflict with trademarks. The possibility of such conflict arises from the lack of connection between the system for registering trademarks, on the one hand, and the system for registering domain names, on the other hand. The former system (trademarks) is administered by a public (governmental) authority on a territorial (either national or regional) basis which gives rise to rights on the part of the trademark holder that may be exercised within the territory. The latter system (domain names) is usually administered by a non-governmental organization without any functional limitation and on a first-come, first-served basis. Domain names offer a global presence on the Internet, in both gTLDs (generic top-level domains) and ccTLDs (country-code top level domains.

Cybersquatters exploit the differences in the two systems by taking advantage of the global, first-come, first-serve nature of the domain name system. Intellectual property rights owners and people who register domain names in good faith have welcomed the UDRP as a cost-efficient and speedy alternative to litigation.

As new gTLDs, such as .info, .biz, .coop, .museum, .aero, .name and .pro, are currently being introduced, the possibility of further conflicts between domain names and different identifiers arises.

For further information, please contact the Media Relations and Public Affairs Section at WIPO:

  • Tel: (+41 22) 338 81 61 or (+41 22) 338 95 47;
  • Fax: (+41 22) 338 88 10;
  • E-mail: publicinf@wipo.int
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