[cctlds-comments] WIPO ccTLD Best Practices

  To: cctlds.mail@wipo.int
  Subject: [cctlds-comments] WIPO ccTLD Best Practices
  From: "Stephan Welzel/Denic" < welzel@denic.de>
  Date: Mon, 23 Apr 2001 14:43:58 +0200


On behalf of DENIC, the registry for the German TLD .de, I submit the
following comment on WIPO's draft of "ccTLDs Best Practices for the
Prevention and Resolution of Intellectual Property Disputes":

In general, DENIC shares WIPO's opinion that legal disputes regarding Internet domain names deserve the attention and concern of everyone involved in the Internet. Therefore DENIC welcomes every effort to prevent such disputes and especially supports all reasonable actions to help parties concerned by infringing domain names, to enforce their rights against the respective domain name holder. It can nonetheless not be overemphasized that it is the domain name holders who are foremost responsible for any infringements of other parties' rights occuring from domain names. DENIC appreciates WIPO's acknowledgement of this fact in stating that the respective domain name registry must be shielded from any liability and extricated from any dispute as far as possible.

Given the diversity of regional practices and legal frameworks regarding domain name registration under more than 240 ccTLDs, DENIC also welcomes WIPO's recognition that it will never be possible to create a "one size fits all"-document or apply the same rules to all ccTLDs. Different from gTLDs, ccTLDS, even if they allow worldwide registrations, are tightly linked to their respective territory. Therefore they are able (and required) to comply with, as well as adjust to, their local law and jurisdiction, but also to the needs of their local community. In this instance, "community" means both, the local Internet community and the local Intellectual Property community, which obviously knows best how to protect intellectual property owners under the specific local situation.
Bearing this in mind, DENIC agrees with the idea that a registry should endeavour to enable any concerned party to get hold of the registrant of an infringing domain name and to enforce its intellectual property rights against him.

Additionally, DENIC takes pride in already following most of the principles that are now being endorsed and specified by WIPO. By doing so, DENIC expresses its support of these principles in the strongest possible form: by action.

For example, this is the case with the entering into a formal domain name registration agreement which includes an obligation on the registrant's side to provide accurate contact data, and allows termination without notice if the registrant fails to comply with this obligation. Nonetheless, it has to be clear that the provision of incorrect registration data by the registrant should not lead to the termination of the registration contract automatically. The registry needs some latitude in this instance, to act appropiately (e. g. it would be inappropiate to terminate the registration contract only on the grounds of an unintended misspelling of the registrant's name). Moreover, a representation on the registrant's part that the prospective use of the domain name would not infringe other parties' rights appears to be inappropiate. That is, because an illegal use of a domain name never can, will, or should result in the cancellation of the domain name itself, but will only lead to a ban of this specific use. The use of a domain name is not an actual domain name issue, and so a clause regarding the use does not actually fit into the registration contract. Regardless of this more principle matter, the suggested presentation obviously never could get verified or falsified at the time of the domain name registration and therefore would also be of no particular worth afterwards.

Another example is the collection of the contact data which intellectual property owners need to enforce their rights against domain name holders, and the making available of this data. Notwithstanding regional legal requirements which obviously have to be met, it is indeed of vast importance to provide a public Whois Service with the contact data for every domain name registered under a certain TLD.

Besides all of this, DENIC views the part of the best practices draft which deals with Alternative Dispute Resolution as follows:

In spite of the fact that ADR might be seen as a reasonable and appropiate instrument to deal with disputes under gTLDs, the same does not necessarily have to be true for disputes occuring under ccTLDs. This becomes especially clear in sight of the characteristics quoted from the (first) WIPO Internet Domain Name Process, which can most definitely not be applied to ccTLDs so easily:

Under ccTLDs as under gTLDs disputes may be multijurisdictional in the sense that several jurisdictions may be concerned in theory, but they are not insofar as under ccTLDs usually the jurisdiction of the respective ccTLD's territory (at least: also) applies.
The possibility that an intellectual property owner has to deal with abusive registrations under several TLDs and therefore might have to undertake several (court) actions in several countries, is in the nature of the issue and therefore can not be avoided. This problem (if seen as one) can also not be solved by ccTLDs implementing an ADR modeled after UDRP because there would still be different procedures, as these ADRs of different ccTLDs would have to be adjusted to the different local situations. Even if this obstacle was left aside, the intellectual property owner still would have to go through multiple ADR proceedings throughout the world, unless all TLDs used only one and the same ADR provider (which is neither likely to happen nor desirable). Finally, even if one ignored this problem as well, it would still have to be taken into account that due to the different legal environments in different ccTLD territories, the same Second Level Domain may be an infringement in one territory and no infringement in another one, so that the outcome of the ADRs or the one combined ADR, most probably will vary (especially when it comes to not so clear infringements which are envisaged to be covered by ADR at a later stage).

It is true that domain name disputes should be resolved in a timely manner; nevertheless the final resolution of a dispute will usually not be urgent and, even if it was, could under no circumstances be achieved in a short period of time (i. e. a few weeks). It is particularly noteworthy that the WIPO-proposed ADR itself does not finally resolve domain name disputes and therefore does not provide a solution to the (alleged) problem of urgency. Urgently necessary, but at the same time absolutely sufficient is in almost all cases a simple ban to continue using the (presumably) infringing domain name. Such a ban - in the form of an injunction - can be obtained from a regular court of justice within hours under many jurisdictions, including the German one. Any ADR procedure would obviously be much slower, so that at least under jurisdictions with such a fast functioning court system there is no need for an ADR in the first place.

The same applies to the costs of regular court proceedings: in many countries, as in Germany, for example the costs for getting an injunction or - under certain circumstances - even a final court ruling are very often lower than the costs of an ADR procedure would be (if the costs of UDRP are taken as a measurement). Additionally, under the law of many countries, including Germany, the party having lost a law suit has to cover the expenses of the winning party as well, so that a successful law suit filed against the domain name holder costs the plaintiff absolutely nothing and therefore significantly less than an ADR procedure which requires the complainant to pay not only for the process but also for his own expenses (e. g. attorney's fees).

The goal to keep the registry out of domain name conflicts deserves every support, not because this was in the registry's own interest, but because otherwise the registry would not be able to serve the local Internet community by registering domain names as fast, uncomplicated, and cheap as possible. Nevertheless, unfortunately the implementation of an ADR cannot prevent the registry from getting involved in such conflicts. That is, because if the registry, according to local law, is liable for infringements caused by domain names, in general or under particular circumstances, no ADR can change that. Moreover, there will always be people who think it was a good idea to take on the registry itself instead of (or in addition to) the domain name holder.

In sight of all of this, before dealing with the possible shape of an ADR to be adopted by ccTLDs, the basic question has to be asked and answered: Is there a real need for an ADR for ccTLDs or are there at least convincing advantages of such an ADR? Given the now repeatedly accented diversity in organization, practice and legal framework of each of the more than 240 ccTLDs, it appears to be obvious that there can not be a common answer to this question, whatsoever. On the contrary, there will probably be about 240 different answers, and this should not be deemed something bad. The idea of creating ccTLDs in the first place was to allow and encourage regional diversity in domain name registration and administration, corresponding with the regional diversity in culture, law, and business. Therefore it is not just appropiate, but a pure necessity, to allow and encourage regional diversity in dealing with domain name disputes, as long as they are dealt with in an appropiate manner at all.

This insight does not at all render the attempt superfluous, to think about the prevention and resolution of domain name disputes under ccTLDs from a more general perspective, but it highlights the impossibility to create a single solution for all, as already emphasized at the beginning. The possible solutions for each separate ccTLD will rather range between the realization that it is appropiate to implement no ADR at all, and the implementation of an UDRP-like shaped ADR (as already done by some ccTLD registries). So one possible answer can very well be to have no ADR in the usual sense, but to offer some other kind of dispute policy to support intellectual property owners. DENIC itself provides a good example for this: DENIC does not offer any path leading to a resolution of domain name disputes, because, as described before, a fast and relatively cheap resolution can easily be obtained from the courts in Germany. The German experience also demonstrates that it is very often not even necessary to take legal action at all, and domain name holders can be convinced without a court's help that they should give up the infringing domain name.
However, DENIC offers the party whose rights may be infringed, to make the
(allegedly) infringing domain name's transferral impossible (to avoid
"cyberflight"), regardless of whether a law suit has been filed or not.
Moreover DENIC implements final court rulings issued against the domain
name holder. This procedure which is similar to the UDRP for gTLDs with the
difference that it uses the German courts as dispute resolution providers,
works very well, and in sight of this neither DENIC nor the German
Intellectual Property community feel any need to add an ADR going beyond

Stephan Welzel Attorney-at-Law Head of the Legal Department DENIC eG

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