Transcript: Sydney Regional Consultation
November 4, 1998
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|San Francisco, California,
(Mr. Ross Wilson, Trademarks Registrar, IPAustralia): (The tape begins in the middle of a sentence) On behalf of IPAustralia and on behalf of the other co-sponsors for today's session, I would like to welcome you. This is the 11th and last WIPO consultation and you will hear more about that during the morning. And as you know the purpose of today is to inform WIPO and its Expert Panel of representatives on our views on what's important for the Domain Name System and the Processes that are being put in place. It is really based on these views that WIPO will be making recommendations to the new body that is being formed, the new corporation in the United States. And they are looking for recommendations on a whole lot of matters including the Internet Domain Names. And so there is a real opportunity here for you to make a contribution, your voices will be heard and recorded.
I would also like to particularly welcome the WIPO representatives, Francis Gurry and Catherine Regnier and members of the Expert Panel, Ken Fockler and Roger Hicks, welcome to Australia and thank you for coming out and being here to listen to the comments that we wish to make to you today. As I said, the seminar today is co-hosted by the National Office for the Information Economy, the Department of Foreign Affairs and Trade and IPAustralia, which is the umbrella organization for Patents and Trademarks Office. We are quite a diverse group and yet there are the common interests of the impact of the electronic commerce and the need to have issues like domain names well resolved. Electronic commerce, the development of electronic trade and protection of trademarks are all elements that are interwoven in this particular matter and that is I guess why we are all here today. In promoting this seminar we use the title of 'Come and Have Your Say' and that is really what we want to do, to encourage you to speak out, to comment and we are really keen to hear that. So, I would really ask that you don't hold back, the intention will be to give you plenty of opportunities to let us know what your views are. So, we are really looking forwards to that. There is going to be some people who have prepared statements and there are going to be others who will be just wishing to talk from the floor. We will have roving microphones and so on to help in that regard.
So, to formally open this session I would like to introduce Dr. Paul Twomey who is the Chief Executive Officer of the National Office for the Information Economy here in Australia and reports directly to the Minister for Communications, the Information Economy and the Arts. Only last week his role was expanded when he became the Minister's Special Adviser for the Information Economy and Technology, with responsibilities for developing strategies to address those converging issues of the information economy, information technology and telecommunications. And his Organization was also responsible for coordinating the Australian Government's comments that went back in response to the U.S. Green Paper that came out in January. So, Dr. Twomey's experience is very broad in covering both the public and private sector and his expertise lies in strategic and business development. Prior to his current appointment, he was the Executive General Manager for Europe of Austrade. That is the Australian Trade Commission, and in that position he was the leader of Austrade's global information technology and telecommunications network which assisted Australia's IT firms to market their products and services into key European, American and Asian markets. From 1994 to 1997, Dr. Twomey was the Executive General Manager of Strategic Development for Austrade and in that role he was responsible for developing corporate strategy, business crises and operational management within Austrade, and successfully revolutionized Austrade's service offerings and method of operating. Prior to that he was a consultant with the global management consultancy of McKenzie and Company. And in that role he advised major corporations, primarily from the telecommunications and financial service and tourism sectors in Australia, in the U.S., Japan and Hong Kong. So, with that I would like to introduce Dr. Paul Twomey and he is going to deliver an opening statement. Thank you.
(Dr. Paul Twomey, CEO, National Office for the Information Economy): (From this point on there was a problem with the sound system, making it very difficult to transcribe some of the speakers) Thank you Ross. I am going to just sit here and talk as a spectator, which is more informal. I think the style that the people are looking for here is very much a two way communication between the floor and the podium, so I will start the thing off by not standing up and giving a formal speeche. I would first like to say thank you very much to Ross for IPAustralia's sponsoring and chairing this meeting which is a very useful and very key part of the debate here in Australia about intellectual property and technology and getting new markets to interact. I would particularly like to thank Francis and Catherine and welcome them to Australia. I am very glad that you are here in this part of the Process. The Australian Government has been pretty concerned with domain names. A because it is important, and B I think for another reason, which is when I look at the international arena as it is involved in this new if you like electronic market, the market of selling physical goods and services, digital goods and services and to a degree promoting and using the technologies to look globally as well as looking locally. It strikes me that we are going to have to think about several issues. The first one, from an Australian perspective and to a degree from the Asian Pacific perspective, is to what degree is this debate in the late twentieth century going to be a transatlantic one and to what degree is it going to be a truly global one. And you would be surprised to hear that I don't think a transatlantic debate is necessarily a good thing. That it becomes completely dominated in some of the already existing international trade power plays between say Brussels and Washington, or Brussels and, Washington with a side kick across to Japan. But that does not necessarily represent, I think, where the future of global online markets are going to go. I mean, we are certainly going to see a large increase in Internet usage in our part of the world. Within an eight hour flight from this city, there are 2.5 billion people and the growth of the Internet amongst the 2.5 billion people is the fastest in the world. So, one of the issues that we have to deal with is the degree to which we let this thing be transatlantic at one end of the spectrum through to fully global at the other.
Another theme that we need to consider, it strikes me, is the degree to which markets require laws to operate and the degrees to which they require rules to operate. And I would like to make a distinction between, if you like, laws and rules. But to give you a domestic example that I like to consider. We have our securities legislation in Australia, we have a series of laws around components of doing business, components which businesses are dealing with. But the key markets are actually not driven by laws, they are driven by rules and if you take the stock exchange, the stock exchange is a rule-making body for a market. Where the people actually in the market plays a very important role as to how those rules get set. It is very responsive to the conditions of its market. It sets the rules. If you break the rules you are not in the market. But it certainly responds in a way which is much faster than you would ever expect the Canberra legal Process to respond. And our legislative Processes are, by the way we design our constitutions, they are perhaps a little slow and they perhaps have checks and balances in them. We have a thing called the House and the Senate and they ............. the same sort of mix purposely and our civil liberties are driven by that if you like. And I find it quite interesting to distinguish in the market place between where is it that you need to have law versus where do you need to have rules. And if I can take us to an international arena, because I think at the moment one of the things that Internet online is actually doing is challenging policy makers. You have to think about what is good policy in terms of the market. And everybody in an OECD country says that we should have market-led development. Some actually believe it, I think some actually don't. They just say it. But everybody says we should actually be market-led. But what does that actually mean? Because we are going to need to have certain situations, we are also in this room today to ask whether we need to have rules. Well, if I can give you two extremes again of a spectrum. It strikes me that at one end of the spectrum we will have things like the WTO. Where the World Trade Organization is in international trade terms is as close as you get to the law. Everybody signs up, it gets passed, everybody has got to ratify it and we are talking about a real legal model. One of the reasons that we got so strongly involved in the domain names issue and the eventual development of the DNS, is not just because we saw this as an important issue, but also because we saw it as an important example of moving towards an international self regulatory rule-making-body which does not involve Governments per se, I mean Governments have some advisory interaction role with ICANN, but ICANN is not a rule-making-body at a national level. If you like to take my example, it is like the stock exchange again internationally. This is how I hope I can develop this. It is actually a rule-making-body driven by participants in the market place, at the speed that the market place requires.
So, what we are dealing with here in this whole arena, it strikes me, is an ongoing discussion and debate about what is it that we need to have laws about and what is it that we need to have rules about. And it is going to take quite some time I think and quite a lot of discussion to try to figure out where do these things fit. I very much welcome the WIPO involvement around this, because when we started coming with, you know, why do you have rules and why do you have laws etc., its because you have got to solve disputes and you have got to look after people's interests and you have got to prioritize against those values and interests. We pushed quite strongly to the Americans in response to their Green Paper the principle that one of the things the Internet is going to do, in our perspective, is that we are going to have a period of time, it strikes me, where we are suddenly going to have an explosion or we could have an explosion of conflicts around my trademark versus your trademark, my name versus your name. Because in the physical world, geography and size matter. In the online world they do so less and as a consequence if I can use an example, the word Coke could appear in three different companies doing three different things fir three different sizes in three different countries. And suddenly they appear on the screen and to a consumer initially, they may look exactly the same. So, a company worth ten million dollars may look on the screen exactly the same as a company in terms of its size, what it does, it could look the same as a company which is worth a million dollars, so its worth a thousand dollars. In other words, the screens could well end up generating a whole series of conflicts that you would not in the physical world necessarily have, because people only worry about spending resources on things which already have an impact on their business. I think you will find people searching websites non stop, looking for screens that look a bit like our screen with names that look a bit like our name and we can take them on as a potential risk. So we push very strongly for a considered alternative dispute resolution mechanisms, to try to find some way to take this out of national jurisdictions. To try to find some way of again of deciding what sort of rules do we need to have and how are we going to resolve these things which don't need law. For the lawyers in the room, I am not sort of talking purely legalistically here, I am trying to say you have political institutions around law or you can have market institutions around rules and I think, I suspect, the latter sometimes are faster than the former. We have got to think through pretty carefully where is it that things like domain name administration and IP addresses, domain disputes where should they sit within that spectrum? Now, I have got an answer which we put forward you know we think alternative dispute resolution using WIPO type guidelines might be quite useful as a way to try to again make that quicker and faster than what we purely see in the courts. But the courts are obviously going to have it wrong.
My last comment is the following, that one of the areas where this whole tension comes to the fore, is the issue around famous brands, famous marks. And if you don't take a legal perspective and you take a pure power politics perspective of it, that whole area of internationalization of property is an expression of the multinational dominance of consumer markets prices, basically in the United States and to a degree then Europe and Japan. And I would have a concern that we don't let this area become driven by those power politics and power trade issues. We should actually try to resolve issues around new access to markets and people arising. I mean, certainly I think from an Australian perspective that is important. We are mostly a producer of industrial inputs, we mostly export industrial inputs be they finished or raw or whatever, and we don't have that many so called famous consumer brands. We have famous brands here in the coal industry there are a lot of famous brands in Australia, and I think we ought to think pretty carefully about what are the possible mechanisms that is going to turn out. Francis and I had a discussion before we started about how we should find other ways of dealing with those issues that have been raised by famous consumer brand holders especially in the United States and Europe than simply letting them basically have special rules for themselves. Because I get concerned about things, if I can just take a name of, lets say, a name of a famous restaurant chain. And there is that famous restaurant's chain's name, they may well become increasingly litigious in looking after it judiciously just on the website. I can imagine just especially in our part of the world that this is becoming a big burden. They are going to find lots of similar sorts of names doing lots of funny different businesses but they actually may be doing similar businesses for some time. And we can end up with a huge backlog and clogging up of resolution Processes going on, purely being driven by somebody having this right to say, well we have got a famous name because we say we have got one and we are going to put a sort of boundary around that. And you know national Governments will get involved in that and one can already see the sort of tension that its going to produce. I haven't got an answer to it but I am sort of sitting with a sort of civic perspective and I suppose from a national interest perspective, I just question whether that necessarily is a smart way to go or whether the very valid concerns some of those people have, especially around cybersquatting and people rushing out and taking their names and things, whether they have actually got different ways of approaching their problems which don't end up with this, what I think will become a natural trade power and somehow or another the trade power, the trade issue will get sort of brought to bear. Something of a rambling thought which is only three quarters thought through, but nevertheless I do think when we look at this issue from an Australian perspective that its a fairly important one we have got to keep an eye on.
Many of you know the significance being paid to this whole Internet domain names issue in Australia and internationally, so to reinforce that I just make this final point. We very much welcome these sort of discussions, we very much welcome getting opportunities for the Australian business community to put in their perspective. I think we have been quite successful and we are very thankful to the international institutions for realising that Australia is an important place. That people are going to come and listen to the WIPO meeting here is a good example and we will keep pushing that. We need to keep raising these issues. We need to do it and you need to do it, because otherwise the natural tendencies of people is that this thing will sort of get out across the Atlantic. And you will have to deal with the OECD, now how hard it is to get anybody from the OECD to come down south of the equator? Paris is a very comfortable place to live. And we need to always be very careful that the institutions that already exist for economic and for trade discussions and dialogue have had an almost internal logic, which is a transatlantic logic or it is a transatlantic and Japanese logic. And in this area, where we are certainly one of the leading countries in the world and where I think it is incredibly important for us because it just destroys the geography, it destroys the distance in so many respects, it destroys the tyranny of distance. And because it is going to be so important for our region and we are leading the region in many respects, we have to be at the industry level and at the Governmental levels constantly putting that ginger into the international institutions saying, no you simply cannot sort this out in your old patterns with a sort of fight between Washington and Brussels. You know you actually have to listen to other parts of the world. So I will just leave it at that and look forward to hearing some of the discussion.
(Mr. Francis Gurry, Chairperson, Legal Counsel, WIPO): Thank you very much for those remarks. Good morning ladies and gentlemen. My name is Francis Gurry from WIPO and let me welcome you here this morning to this meeting. We are extremely pleased ,to take up where Paul left off, we are extremely pleased to be able to come to Australia to hold this domain name hearing for several reasons. First of all, on the information that we have at any rate, Australia is the sixth country in terms of number of Internet hosts in the world. Secondly, this WIPO Internet Domain Name Process has its most recent genesis in the White Paper which was mentioned by Paul Twomey. The Green Paper however, that preceded the White Paper of the United States Government did not mention WIPO. And one of the reasons for the change between the Green Paper and the White Paper was the support that was given by the Australian Government amongst others, for a greater internationalization of the Process of the reorganization of the domain name space and in particular of dealing with the intellectual property issues. Thirdly, we know that there have been a number of important meetings already held in Australia. I think it was in March of this year that the National Office for the Information Economy or it could have been March of last year, held its own significant consultations. We are aware of those and we wanted to use this opportunity to integrate the learning that has taken place and our discussions that have taken place in Australia into our own Process. So, on behalf of WIPO I would like to thank very much first of all the Australian Government and in particular IPAustralia. Ross Wilson has done a splendid job in dealing with the organization of this meeting. I thank the Department of Foreign Affairs and Trade and thank also the National Office for the Information Economy. We would also like to thank you very much for having come this morning and for participating in this Process. There are a number of names that we are very familiar with, who have been active in the debate on these questions over the last two years, so it is very nice to be able to associate faces with those names.
I would like to just before we start the formal proceedings to just say a few words about the Process itself from WIPO's perspective and that is from the perspective of an international organization which is an interGovernmental organization, our members are Member States. And this is a Process which has a number of different novel features for us from our point of view. First of all the modalities that we are using in the course of the Process are somewhat different from those that we have used in the past. Of course, it is very obvious that we are using as a primary vehicle web-based consultations, Internet-based consultations. The website that we have established for the Process is becoming much more active these days we are getting around about 30,000 hits per week. And we imagine that once some preliminary recommendations are published then it will become even more active. At the same time one of the purposes of our involvement is as an international organization to try to deal with the interests of all the countries in the world. So, that whatever we do on the web or on the Internet we also have to do in paper form for those parts of the world in order to try to have the participation of those parts of the world that are less favorably disposed in terms of Internet access. An interesting feature of Process from our point of view which touches on many of the remarks that Paul Twomey made is that it is a Process that we are doing directly with the interested parties. The normal Process in WIPO and in other intergovernmental organizations is a Process that involves direct dialogue with our Member States in meetings of Member States and their representatives. Here, we have to, by the very nature of the subject matter, extend well beyond that to try to deal not just with Governments who also have a role of course in the Process, but also with the interested parties directly. And in this respect we feel that this is because of the nature of the subject matter which really requires practical mechanisms to solve urgent problems. If you like, disputes are there before the law is there and so we need to develop mechanisms or in Paul Twomey's terms "rules" that can deal with these disputes before a legal framework is fully established and I think there is increasing recognition that the traditional instruments for the establishment of a legal framework, which at the international level are treaties, are just totally inappropriate to deal with the sort of problems that this Process is addressing. To develop a treaty normally takes same period of some five years of multilateral negotiations. It is then not automatically binding. Countries have to sign on if they are going to be bound by it and they can't be forced to sign on. And the Process of signing on to a treaty usually takes some ten or so years. So, you see with this sort of a time frame it is completely impossible to use traditional Processes to deal with the problems that we confront in the domain name area. In this respect, we at WIPO see the Domain Name Process as in many ways a prototype for other issues that are going to arise in the intersection of the real world with cyberspace. The real world of course is being built up on a system basis of discreet physical units with the attributes of sovereignty and we have imposed on it this global medium which creates, at least in the intellectual property area, some very real problems of jurisdiction and enforcement that can't easily be dealt with. We look forward to your participation in this Process and your ideas about the way in which we can develop practical mechanisms that can deal with these questions.
As far as the Process itself is concerned, let me just say a few words about the principles on which we have tried to base it. The first, is a principle of trying to attract the widest possible geographical participation. We now have as registered individual or organizational participants on our website close to a thousand participants coming from over 70 countries, which we feel is a reasonable geographical spread. We have organized these regional consultations, physical consultations now in 10 different areas of the world. We also think it is important not just to have wide geographical representation but wide sectoral representation. We don't think these issues are issues that belong only to trademark owners or only to the engineering community or only to those interested in the development of public policy on the Internet. We feel that if viable solutions are to come out of the Process then it would be necessary that they be solutions that can be ascribed to by all communities interested in the future development of the Internet.
As far as the solutions themselves are concerned we start without any particular ideas as to what they will be. There are some lines that are emerging in the course of these consultations but we are still entirely open as to the ultimate solutions.
If I may just make one comment on one of the issues, I won't otherwise be commenting on the merit or substance of any of the issues. But Paul Twomey has raised the question of the protection of famous marks and to carry on from the conversation that we commenced together this morning. It is perhaps the most difficult of the issues in this Process and to just throw out a thought to you, perhaps we have the wrong, we are starting to approach it or we have been approaching it in the wrong way. We know that there is a problem of cybersquatting and we know that famous marks are the target for cybersquatters because they are an easy target. But instead of trying to deal with that problem by developing a specific mechanism of protection for famous marks, one other way of dealing with the problem might be to characterize as wrongful the conduct of cybersquatting. That is to say that when you have a dispute, instead of the dispute concerning in this area of famous marks an assessment of the relative balance of rights where the one has more rights than the other, which we all know leads us into some horrific problems of jurisdiction on the Internet. Perhaps if cybersquatting were to be recognized as a tort, then the basis of the action would not be a relative balance of rights, but simply the elimination of conduct which is considered to be wrong or tortious. How we get to the point of characterizing conduct as tortious in this world in which we can't, we have legislative Processes on the national level which are extremely slow and on the international level which are somewhat similar to the pace of snails. This is the interesting question and Paul Twomey has given us a number of interesting leads in this respect in connection with the distinction between law on one hand in its traditional sense and rules. Like a club may have rules that you can only dine with a tie on and if you want to join the club you can. If you don't want to join the club, if you want to dine without a tie, you don't have to. It is in a sense similar rules or similar legal recognition of the appropriateness of rules in a club provided that those rules do not offend fundamental matters of public policy such as non-discrimination.
Let me say one other thing about the Process then, going back to procedural issues. We have used a Panel of Experts and I would like to introduce two of them in a little bit more detail who are present with us today. We have exhausted the Panel of Experts sending them around the world over the last couple of weeks. But Ken Fockler who is sitting on the far right hand side of the table over there is not yet exhausted. He has been to more consultations than anyone else. Ken was one of the primary persons responsible for the development of the Internet structure in Canada. He was the founder of the Canadian Association of Internet Service Providers. He has been associated with the installation of the backbone of the Internet with Canary, a Government network based operation with educational objectives amongst others. On my left is Roger Hicks who comes from New Zealand we will give you that in view of yesterday's event. Roger is a Board member of the Asia Pacific Internet Association. He was a founding Chairman of the Internet Society of New Zealand and has been responsible there for major changes to the New Zealand Domain Name Policy and Management. Roger works for Clear Communications which is a New Zealand Telecom. I have two colleagues here, one of who is hidden if I may just introduce them. First of all on the table on the far left hand side of the table is Catherine Regnier who is a lawyer from France and a specialist in domain name questions. And hidden, but conspicuous because of the color she is wearing (sky blue), is Lucinda Jones who is actually here on holiday, so we have very loyal staff. She comes to the meeting even during her holidays and Lucinda is a lawyer from Australia in fact, like myself.
If I may take just three more minutes of your time first of all to explain the stages very briefly of this Process and then secondly, the practical arrangements for the rest of todays proceedings. The stages we conceive as three-fold, very briefly, I am sure that most of you are familiar with it. When we were given the mandate ultimately in the U.S. Government's White Paper three issues were mentioned. Namely, to try to develop recommendations on a uniform dispute resolution policy. Secondly, to try to develop recommendations on a mechanism for the protection of famous marks. And thirdly, to evaluate the effects on intellectual property of adding new generic top-level domains. What we did is take those three at the first stages, take those three issues and try to flesh them out in a Request for Comments and seek observations on how they could be made a little bit more detailed. That stage has finished and we are know at the second stage of the second Request for Comments on the issues themselves so defined in that first stage. We added one additional term of reference as a result of its first Process and that was dispute prevention. Namely, before considering a uniform dispute resolution policy what measures can be taken in order to reduce the need for resort to a dispute resolution policy. How can you eliminate disputes by having, for example, full and comprehensive details available on domain name registrants. The final stage will commence in about six weeks time, namely in mid-December when we will publish an interim or draft report on the issues and we will subject that to the same Process of physical and web-based consultations.
Let me then go now to the practical arrangements for today. As Ross Wilson has mentioned, our primary objective is not to speak, you might find that difficult to believe at this stage, but it is the primary objective for the rest of the day is not to speak but to listen and to collect and integrate the views that will be expressed here into this Process. There are a number of formal presentations that will be made and if I read you the list and if anyone else would like to add their names to that list please if you could let us know now. The so-called formal statements will be made by Leni Mayo from the Internet Society of Australia, who is well known to you and a major participant in the International Ad Hoc Committee movement in CORE. Patrick Fair of the Internet Industry Association of Australia. Professor Brian Fitzgerald and Ms. Gail Evans of the Southern Cross University Law School. And Ms. Jane Perrier of Telstra. Mr. Patrick O'Brien of Domainz New Zealand, NZ. Professor Peter Gerrand the CEO of Melbourne IT. Mr. Spiro Pappas of Mallesons and Kerry Henry who is the CEO of Australia E. Commerce Propriety Limited. Is there anyone who would like to add their names to this formal as it were part of the presentation? Well, you can always do so in any case in the course of the day. Now, each person I would ask to speak for between 15 and 20 minutes and then we will have between 10 and 15 minutes of discussion on the particular presentation that is being made, during which you can make observations on comments that have been made or ask direct questions at any of the speakers. When you do intervene we would ask you to identify yourself, give your name and your affiliations because these proceedings are being recorded and will be made available by way of audio tapes on our website and as well by way of a text transcript on our website.
Finally, when we get through the formal presentations, which I expect will take most of the morning, we will use the remainder of our time to have a round-table discussion with everyone going through the issues in the Request for Comments and endeavoring to see just what the feeling is of the meeting on approaches with particular issues. So, thank you for your patience during this stage. And if I may ask Leni Mayo if you would like to lead us forth into the next stage, unless there is anyone who would like to make a comment or ask a question now?
(Mr. Leni Mayo, Member, Board of Directors, Internet Society of Australia and Member, Executive Committee, Internet Council of Domain Name Registrars): Good morning and welcome to the WIPO Seminar and thanks to WIPO and Francis Gurry in particular for organizing and providing this event and excuse the initial technical difficulties, I was somewhat taken by surprise by the early appearance. I was reflecting on the plane coming up from Melbourne this morning about someone whose background is in the technology addressing and participating in the event organized by the World Intellectual Property Organization, and recall some comments made by a fine WIPO representative named Albert Tramposh at a meeting in Tokyo late last year, who commented that domain names bring together participants from many backgrounds, particularly people involved in the technology and legal experts. He additionally observed that the experts in the technology seemed to have a background in the law and the experts in the law seemed to have a background in technology. So, I address you as a technologist and hope I don't stray to far from the course.
For those who are taking notes, this presentation is available at a website and I will provide the URL at the end of the presentation. So, just beginning on some of the kind of motherhood issues if you like that are part of the Process. We talk about cybersquatting, but its a difficult issue to get a handle on. I have just tried to put it in one sentence there cybersquatting, being the warehousing of domain names that match someone else's trademark. Matching is a difficult question but also warehousing is a difficult question. There are a number of legitimate uses where people who may wish to register hundreds and hundreds of domain names and I am thinking about the people in the Internet community that offer free e-mail services. People who choose to legitimately run a business based on having lots and lots of domain names. So, the issue of legitimate use of warehousing versus illegitimate use of warehousing is quite difficult and I think the essence of exactly what is cybersquatting may be pertinent to the issues raised by Francis earlier. Piracy, again a simple definition is using a domain name that infringes someone else's trademarks. Another very thorny question is conflicts between equally legitimate intellectual property rights. Reverse hijacking is using a trademark to take away a domain name from a third party who is using the domain name legitimately. I haven't looked into closely the Pokey case in the U.S., but people seem to raise that case. It was very well publicized I think its a couple of months ago now. But when I think of reverse hijacking I think of like a 16 year old kid in Melbourne who enjoys playing computer games and I think about this scenario a lot when I think about dispute resolution name allocation policies. The 16 year old kid, he has got computer games and decides that he is so good that he wants to start a little Internet business that sells game hints and game secrets. So, he registers the domain name. He does not have much money to start off with so he does not a business name, does not register a company name. So, he registers the domain name in one of the generic top-level domains. And he is using some technology now that is pretty much off the shelf and doing maybe $50 or $100 a month in credit cards. And someone says gee! that is a really good idea and I really like that guys name, I am going to register a trademark somewhere and then there is this kid getting maybe 200,000 hits a month on his web site and its really popular, I can register a trademark for $500 or $1,000 somewhere and there might be some Process somewhere that allows me to assert my rights to that person's name. Now, for that 16 year old kid that is going to be the first time he comes across a serious dispute resolution policy and it leads me to an issue which I guess we will address in the next light, which is, who is it in these policy debates who is going to represent the interests of that 16 year old kid? So, some broad names which may not sound defeating in a particular area but I nevertheless seem to run through much of the issues in my mind anyway. It is very difficult to have a direct mapping between domain names and any other external reference, that includes in my mind company names and street names and human people and geographical localities. Very difficult to come up with a workable mapping. Now, trademarks as most of you would know can be things like sounds and colours you know, what is a domain name that maps to that? I think some of the early comments addressed whether IP law is effective at solving these questions. Clearly it is not going to be the whole answer and there are jurisdiction issues you know, the trademark holder and the 16 year old kid example might be someone who has registered a trademark in Guatemala or the United States. Will that effect the position of the parties there? And one thing that I think is very important, and everyone agrees here, is that we need to maintain a stability of the Internet Domain Name System. In that context I think ......... (end of tape) It is important that people who register domain names on behalf of customers are insulated from the legal liability that arises. Well, who is finally going to make a decision on these issues, they have been somewhat of a moving target. Around July of 1997 there was an agreement basically a document which was drafted by the Internet Ad Hoc Committee, well it was born from the Internet Ad Hoc Committee, it was lodged with the ITU, it is basically a statement of good governance that the DNS of the principles that we think are important. That was called the Generic Top-Level Domain Memorandum of Understanding, a mouthful. And it had some 200 signatories from large and small corporations around the world. Signatories included Australia's Telstra, the Internet Assigned Numbers Authority and many large European parties. The Generic Top-Level Domain MoU called for the formation of a structure of which some of you may be aware, the Policy Oversight Committee, a body which was going to register names in seven new top-level domains and an Advisory Committee that represented the interests of the broad Internet users. The new generic CORE is one of the hats that I wear, I am a member of the Executive Committee there. We were scheduled to come into operation registering names in seven new top-level domains in, well the scheduled time-table was March of this year. In late January the U.S. Government issued the Green Paper which called for, amongst other things, it was a broad ranging document, called for the creation of five competing registries each with one top-level domain each. There was public consultation on the Green Paper, and on my side there was some international opposition to some of the elements there, and we had the White Paper in July of this year which outlined that the U.S. Government was looking to transition its responsibilities over the Domain Name System into a private sector scheme of industry self-regulation. WIPO has been active on this issue right from the word go and has been working hard on it. The WIPO RFC Process as I understand is intended to have its recommendations hopefully by the end of March. Clearly, in terms of the addition of new top-level domains its important to have a dispute resolution policy in place before the new names can go into operation. So, clearly that links up these intellectual property dispute resolution processes with the commercial interests that relate to the addition of new top-level domains. So, the body that is finally going to be responsible as we understand it is the Internet Corporation For Assigned Names and Numbers which was recently incorporated and has on its Board Australia's ..................., and the interim President is a woman called Esther Dyson who is well known from other activities. Thank you for correcting me Ken. Esther Dyson is the Chair of the Board and Mark Roberts is the first inaugural President. It is not clear whether ICANN is going to make these decisions finally or whether it is going to delegate its authority to something called the Domain Names Supporting Organization. Underneath ICANN there are a number of supporting organizations, one for IP numbers, one for protocols and one for domain names. The domain names supporting organization is in the Process of being formed at the moment and the relationship between ICANN and Domain Name Support Organization is somewhat unclear. For those of you who are interested in the Domain Name Supporting Organization, I would heartily encourage some Asia Pacific participation in that. There is a website www.dnso.org. There has been one meeting in Barcelona and the next meeting is scheduled in November in Monterrey. And so, as Francis mentioned I won't spend much time on this. The WIPO RFC-2 concerns dispute prevention, dispute resolution, the protection of famous marks and the addition of new generic new-top level domains.
I will begin with the latter because that has generated the most hate and fury in this Process. But before getting to the top-level domains I will just sort of ruminate a little on who is it that should be involved in this Process as well. I will put the registries at the top, because it seems to me that so far dispute resolution policies have been here to date decided by the registries, the people who actually insert the names and numbers into the central database. Now, just speaking off the cuff here, an interesting thing that strikes me about registries, is that in terms of the business risk that they face, there is a tremendous business risk in terms of getting involved in law suits which obviously varies from country to country. But in any case, it seems to me that the risk profile is something like the tobacco companies. So, once they lose the first law suit the business risk from there out is extremely significant which could have a serious effect on valuation. So, in terms of how does the dispute resolution policy get formulated, you know it is possible to speculate that business risk may have some significant impact on the way dispute resolution policies have been formulated to date. Registrars are just interested in not being sued and having an efficient and effective Domain Name System, clearly as is the intellectual property community. But the users, the 16 year old kid is obviously going to be affected by this, in terms of who is it that registered domain names. There are many more little fish that register domain names than big fish and there are many more people that haven't registered domain names than have registered domain names. So, there is a whole bunch of users out there, both Internet users and just ordinary people who haven't got in. Now, given that users may not be as active in this Process as lets say some of the other categories there, then that leaves Governments who have been the traditional guardians of the public interest to be active in the role. Particularly one Government, the U.S. Government who some of you may or may not know is conducting a, I am not sure if parallel would be the right word, but also an enquiry into domain names which was called for recently.
So, that is something to watch. ICANN has not yet made a statement about who it is going to look to, to formulate these policies. So, that is still a court hard issue. So, what is a generic top-level domain that causes all the trouble? The Domain Name System is as most of you know basically divided into, well it started off with only generic top-level domains. In other words things like .edu and .com and so forth and domain names were basically organized during the physical structures of the networks which were being placed for one name for one network. People quickly realized that, that did not work too well when you have got networks inter-operating. So, the themes they assigned number of authorities at the time looked to the International Standards Organization to allocate a country code for each name. A two letter and a three letter prefix for each country. The two letter names have been allocated. But it is not clear that just because you are looking at a ISO 3166 country code that its not yet nearing top-level domains. I am thinking about things like .TV and .CC, .TO there are many other examples. So, the people marketing the globe with top-level domains are extremely critical and I have in my bag an interesting fax that someone from Japan sent me recently which is the .cc registry organization who has sent a fax to a .com domain name registrant saying that you need to protect your name in .cc and attached is an invoice which you can sign and return to us and we will protect your name in .cc. Here, is a list of a whole bunch of other famous names that have registered in .cc. Now, there are well over 200 country code top-level domains and someone who is perhaps a little closer to the marketing than myself, quite as recently 20 and 30 per cent of country code top-level domains are being marketed as generic top-level domains. So, what they are saying to me is that the market is calling for generic top-level domains. And then there are some anomalous cases like how people use the names. Is it .edu and .net which are basically the U.S. names. So, how the registrants use the names and the spaces is also sort of important. So, anyway the bottom line is that this is a somewhat murky definition.
Generic top-level domains are definitely in demand. You know what are the criteria that drive consumers? Experience from my own registrar business is that first of all the consumer wants a domain name space that they can trust. They are developing an E-commerce presence, they don't want a name registered in a space that is going to go away tomorrow. That is very important. There is a little anecdote on that issue, the .TM space which is the country code for Turkmenistan was operational and was phenomenally successful marketed by a very successful marketing organization focusing on domain names, and was tremendously successful. So successful in fact that the Government closed it down and so people who registered names in that space are no longer able to receive service for their domain names. That is a complete disaster if you have got an E-commerce business and the registry that is responsible for administering your domain name goes away. Consumers also want a good name. If you have ever tried to think up a name for a business, you want a name that you like, you may want a name that is trademarkable and these days you want a domain name. So, you want a name that fits all three categories. So, you want a good name, you want a name that is cheap, does not cost too much and you want to get it quickly because typically these things work in fits and starts. You don't want to have to wait a week or two weeks or sixty days.
Some just little fact points on .com, .net, and .org. Fifty per cent based on the network requisites generally on the net server and over fifty per cent of the names at the third level are in .com, .net, and .org. So, in other words over fifty per cent of the world's top-level domains are registered under .com, .net and .org. This is one reason why gTLDs are important. Another fact is when people say okay that is because the U.S. is the largest user of the Internet and the U.S. registers all names or most of the names inside .com, .net and .org. But the fact is that the trend has now swung so that over fifty per cent of registrants inside .com, .net and .org are domiciled outside the U.S., that is from a Network Solutions press release. So, the bottom line is that new generic top-level domains are definitely coming and the question is how do we influence and what is it that we want to see out of that.
Now, returning to the other three elements of the WIPO Request for Comments. CORE was the registry element of the Generic Top-Level Domain Memorandum of Understanding structure. There was a registry element, policy oversight element and a user input element. CORE is the registry element and CORE worked closely with WIPO and so we in CORE have some experience in this sort of Process. We have implemented in our registry and in our policies, I guess we will implement some of the ideas that we are talking about here, so I would like to share some of that with you. Anyone who registers a name inside the CORE top-level domains must be licensed by CORE. And they are required to require of the registrants that the registrants sign and agree to a set of terms and conditions. Now, those terms and conditions are in the Appendix A, B and C of the CORE and is available on the website. Registrants are required to submit the relevant data. Registrants' data is available to challengers. Registrants have the option of opting for an optional 60 day waiting period which means that they can register the name, but the name is not distributed into the Domain Name System for 60 days. The idea being that, that allows third parties time to evaluate whether that name conflicts with an intellectual property right that they may have. The idea behind this is that lets say the 60 days waiting period passes and sometime later there is a dispute involving an intellectual property right and the domain name. The notion is that having opted for that 60 day waiting period would stand the domain name registrant in good stead. The domain name registrant is not required to fully screen with respect to conflicting intellectual property rights after being given a higher court. I will rush through the rest of this.
CORE and WIPO and the Internet Ad Hoc Committee recognized the need for alternative dispute resolution mechanisms. WIPO supports these things called administrative challenge panels. They are an online way for administratively resolving disputes on domain names. The dispute resolution Process is a matrix and it involves the administrative challenge panels. Then there is expedited online arbitration and finally people involved in disputes always have recourse to local jurisdiction and a strong line of understanding in the WIPO Process is, the key thing about this is that WIPO has direct access into the database registries. So, that once the decision is made they can make it so. There is basically a matrix, probably I will skip through this part quickly and allow interested parties to have a look at this on the website. The basic idea is that third party challengers can have three options. They can participate in the WIPO administrative challenge panels, they can go directly to a court or proceed to mediation. The administrative challenge panels decisions are implemented directly inside the database, likewise the WIPO arbitration decisions. The question mark at the bottom there is a very interesting issue and it relates to the question about the location of the registry, in which country is the registry located? So, let us assume we have got all these fantastic dispute resolution Processes. Someone starts a proceeding in the jurisdiction where the central registry is located and it is unclear how that is going to play out. Now, there are lawyers who wish this problem would go away by having some sort of distributed database Process which means that there is no central authority for what is in the database but I can assure you that there is going to need to be one authority deciding what is in the central database. And so that question mark is very much a significant issue.
There is a whole bunch of language in the generic top-level domain which I leave to your reference and it is the basic element that encapsulates the way the gTLD drafters thought about this. The outcome of the administrative challenge panels is that the domain names can be transferred from one person to another. They can say that if you modify this name you are okay. They can say that if you are famous restaurant chain and you go to this administrative challenge panel you can exclude anyone from registering a name in any of the generic top-level domains other than yourself.
Finally, the administrative challenge panels can suggest mediation, arbitration or alternative dispute resolutions mechanisms. ACPs are a good idea because they administrative, they are not judicial in nature. They address some of the thorny jurisdictional issues. They are directly integrated with the registry. They are quick and they don't take months and months and thousands and thousands of dollars. Decisions are above all and importantly the Process can adapt and evolve as time goes by.
Finally, this presentation is available at our website. The gTLD-MoU at all websites is a treasure trove of information and documents. The Council of Registrars is found there. This presentation is based in part on that delivered by a colleague of mine based in Barcelona. He gave me strict instructions not to have his name appearing on this slide. And finally I am available either or basically at that address.
(Mr. Francis Gurry): Fine. Thank you very much Leni for that overview of the system that was developed under the IHC movement. Let me open the floor for a few minutes for any questions or observations.
(Mr. Philip N. Argy, Mallesons Stephen Jaques Solicitors and Vice-President of the Australian Computer Society): Thank you Mr. Chairman. Philip Argy from Mallesons Stephen Jaques and also Vice-President of the Australian Computer Society. Just a couple of very brief observations which I think are important in the context of today's discussions which come out of Leni's presentation and I think he raised some important policy issues for WIPO as well. And that is that the conduct of people who abuse domain names is part of a broader context of abuse of intellectual property rights using the Internet. And for example, very recently a U.S. court has decided that those parts of the URL which follow the first forward slash are not taken to be part of the domain name, and that to the extent to which somebody's trademark forms part of the URL, if its after the first forward slash it is legitimate part of the path to the file and is not a per se intellectual property infringement in the same way it would be if a domain name with a trademark. That seems to me to and probably to most other lawyers and non-lawyers to raise a pretty significant loophole of possibilities. You have also got the issue that Leni adverted to of people using country code top-level domains as ways of escaping intellectual property or even jurisdictional reach. What that means though and the issue I just want to focus on is it makes it very important I think that in any procedures that are developed that the registrars and the registries plainly are not the appropriate forum to resolve these disputes. And that the procedures and policies adopted have to be holistic in a sense that they permit resolution of a dispute involving a panoply of IP infringing conduct. Now, Spiro Pappas from our firm will be making some statements later on so I won't take up more time. But, I think it is important to put that context there for the rest of the discussions. Thank you.
(Mr. Francis Gurry): Thank you very much Philip Argy. Are there any other observations or questions to be addressed to Leni or anyone? Yes please the gentleman at the back.
(Mr. Adam Simpson, Simpson Solicitors): Hi! Adam Simpson from Simpson Solicitors. Just a short question, how do you see the ADR Process, whether it is through one of the organizations or another, being enforced? Do you see one becoming kind of contractually obligated to pursue that Process upon registration?
(Mr. Leni Mayo): Yea, I think there will be a menu that is presented to the registrant and the registrant can in some way select how they are going to navigate through the menu from their perspective. And from the other side there will be a menu presented to a challenger and the challenger will have a bunch of options. And then I see that it is inevitable that one day this will end up at WIPO. The registries don't want to make these decisions, it is just a terrible business, a disaster for them. So, both ICANN, the Domain Names Support Organizations and the registries are not qualified and don't want to deal with these. So, some external party is going to do that and may be WIPO. The activities that are happening in the U.S. are another possibility that makes me watch quite closely.
(Mr. Francis Gurry): Thank you. Fine, well thank you very much Leni for the presentation. May I ask Mr. Patrick Fair please to lead us to the coffee break.
(Mr. Patrick Fair, Internet Industry Association): Thank you. The Internet Industry Association has prepared a submission to WIPO in response to the Request for Comments and a draft of that is up on the website www.iia.net.au. What I am going to do is first speak generally about the context of discussions regarding domain names and then specifically some of the positions which the IIA takes in response to the Requests for Comments. Some of the positions are not yet resolved. We have a constituency to deal with that. Some of the issues are a little difficult, so I will flag one in particular as I mention that. From the IIA's point of view and that is the point of view not just of ISPs, but of the growing industry in Australia using the Internet. I think it is important to stand back from the Domain Name System and realize that it forms only an enhancement to the Internet and the functionality of the Internet and when developing policy for the Domain Name System it is not a live or die issue for people wishing to find content that the Domain Name System be perfect or that it act as, for example a full subject directory of content. Rather we need to have some kind of parodiam to work out where this system fits in relative to wide and powerful search engines, catalogues of content and more recently the advent of servers where you put in the company's name and it takes you to their domain name. The view that the IIA takes is that primarily the function of the Domain Name System is to make it easy for people in a logical, unique and easy way, to find individuals or organizations, and that is its primary function. We think a reasonable secondary function of the system is to enable people to find products and services through a simple, easy to remember and logical classification system. Anything more sophisticated than that would be getting into subject categories. We think that in some ways its quite analogous from the users point of view to White Pages, Yellow Pages of a phone book. Your simply want to have some useful categories that take you to content which has a high and widespread interest. With that in mind, we think it follows that the system needs to be kept relatively simple and relatively uniform internationally and we think that, that means that there should be encouragement at least from registrars for gTLDs and ccTLDs to adopt consistent policies. However, at the end of the day I think it certainly is the view of the organization that ccTLDs should have the final say on what they do within their domain space. And while we encourage consistent policies and even perhaps there should be published standards which deal with the third and the fourth level domains in some categories for consistency, that experimentation of the country code domain is not a killer because this is just an enhancement to our information-finding tools.
In relation to warehousing, part of the tension is that owners of domain names ought to be able to treat their domain names as property belonging to their business or that can be assigned to their business and whatever system is developed, a law which might prevent speculation and warehousing, we think that it is important that domain name owners have a right to control the movement and allocation of the domain name that they have established as being recognized as identifying their business. Should that business be sold or part of it be sold, they should be able to reassign and that must be accommodated in the policy. So, in that context, the principles that should be applied to developing policy on the Domain Name System is that it should favor allocation of domain names to people and organizations. That it should favor the allocation to those who have already established reputations in the name. As a secondary function, it should favor products and service categories and it should favor those who already have products and services with those names. Where two applicants have similar or identical names, we favor a first-in first-served Process. But we don't think that the rules should be so rigorous as to prevent the person coming second from having a coulourable variation of the first name. And unlike trademark law, the significant of these addresses is not so great that it is vital that the names not be close or similar, but rather that everybody be accommodated with a practical address which identifies their business. And to some extent the law relating in Australia to misleading or deceptive conduct and passing-off when people have come to the website will address the problems which might arise from similar addresses, perhaps misleading consumers in the first instance to the role of ...............
We are in favor of prohibiting names of certain types and in our draft paper we have mentioned the sorts of names which are prohibited by Internet Names Australia. And I think that is not an unreasonable list. We think WIPO should assist by perhaps developing an international list of categories. And later in our paper we say that if one was to apply the Paris and TRIPS Convention well-known marks principles and come up with a formula for well-known marks which are international, you could add those to the excluded names and publish that as a list to guide registrars and registries around the world not to register those names and those famous marks from those categories. We think that an issue that WIPO should perhaps take on board is considering a provision which might be part of the Paris Convention or its successor, that makes it clear as a matter between the union countries that the mere fact that a trademark is being registered, or that a domain name is being granted in one country does not constitute a trademark infringement in other jurisdictions who are members of the Convention. Of course that may not be the case anyway in law, but certainly it is an important principle that the Domain Name System be able to operate freely in each jurisdiction even though the Internet gives a visual impression of that name throughout the world.
Where we have an area that is not yet resolved in our organization is the question of what rules should apply to generic top-level domains. I think the dominant view is that generic top-level domains can be openly competitive with country code domains and that no special rule needs to apply to make organizations registered in gTLDs genuinely international rather than merely ambitious locals. But another view is that it is misleading to users that you go to a gTLD and you find that what you are really talking to is a small shop in some suburb in New York, when you were looking at a top-level domain. I think that is a tension which is difficult resolve but in the context of this system it is not a serious issue which would see the system survive or fail. I think a movement towards consistency and more international organizations in the gTLDs would have advantages, on the other hand there are plenty of reasons why people would choose country code domains rather than a gTLD currently, particularly, if the gTLD is not available.
So, into the specific questions asked in the Request for Comments, I mean I will just skip over those briefly. We are very much in favor of trying to prevent disputes by obtaining detailed information from applicants for names and have suggested some additional information that might be obtained from applicants in order to make it easier to deal with them. And certainly the development of some principles which say that if applications are wrong, misleading, faulty in some respect the registration might be canceled or suspended. The terms of the contract of course are vital and need to deal with some of the issues that we have mentioned before, about giving the registered owner of the name the right to reallocate or transfer in certain circumstances. We think a basic check should be made. We think that the name should be made available as soon as payment is received without any kind of waiting period, that would be an impediment to business.
In terms of warehousing of names, we think that every procedure which would prevent warehousing speculation is hardly desirable, and that basic checks should be undertaken of the information that is provided in the trademarks register in order to make sure that there is some legitimacy in the claim for the name. In terms of the issue of country codes and their identifiers being used as generic top-level space, we strongly oppose this. We think that the system ought to take control of itself and if it is a country code domain it should remain so and be available to the citizens of that country on a orderly basis and not be traded as a generic top-level domain which undermines the design and logic of the system otherwise. In terms of dispute resolution I think the issue that Leni raised is an important one, that any system must be able to control what happens in the registry and not suffer from conflicting legal court decisions arising from different jurisdictions where different decisions might be made in relation to similar issues or similar names. For this reason we would favor a system where ICANN or whoever is responsible, develops a consistent policy which is applied by registries appointing independent dispute resolution organizations in their own jurisdictions to apply the principles and policies developed at the top-level. And those dispute resolution organizations act independently from the registry, because we think in some cases the registry might be a party or might be interested in the matter. And that procedure only be reviewable by the local courts in circumstances where the local law would properly intervene, such as fraud or anti-competitive conduct, a lack of justice in the natural operation of the system. But subject to that, every effort should be made to design a system for the final arbitrated determination to be binding and to the extent possible the guiding principles should evolve to eliminate what might be regarded as anomalous decisions in relation to the broad policy that might arise from time to time from those arbitrated decisions.
In relation to the Process for famous and well-known marks for top-level domains, we do think it is desirable to protect famous marks. We think that the Paris Convention and the TRIPS Agreement describe a reasonable basis for famous marks within local jurisdictions and what is needed is some sort of criteria for marks to qualify internationally as well-known or famous marks. Something like a certain number of countries where they have qualified as famous marks within their jurisdiction and perhaps a period where they have been maintained for a certain number of years having that status. Certainly, if international principles were developed which were applied in each ccTLD then the famous marks identified in ccTLDs could be consolidated and you would have a kind of automatic determination within principles of what might be international ccTLDs because of their qualification and the number of ccTLDs. In terms of marks ceasing to be famous marks, the Paris Convention suggests five years of non-use and we don't see any reason to vary from that.
In relation to the addition of generic top-level domains and related rights I think, consistent with the view that the way the space ought to be divided up, it should assist the users find content that they want and make it easy to remember content for specific purposes. It is rational we think and we endorse the suggestions arising from the CORE Process that there be some additional generic top-level domains and that they might be reflected in the ccTLDs and we would favor the creation of the careful delineation of the purpose for which each new gTLD might be applied and so that there is clarity of purpose within each one of them. Subject to that, a limited number of new gTLDs would serve a useful purpose in enhancing the system and giving users more help I suppose to find the content they want to find and certainly make it easier for people wishing to register names to find a space which is suitable to their business. Subject to that, of course, we would be against a significant expansion beyond those suggested by CORE because of the additional costs and problems it might create for users who would wish to protect their names across different top-level domains. Those are our comments.
(Mr. Francis Gurry): Thank you very much Patrick for that presentation and thank you very much in advance for the paper that is on its way in draft form. So I open the floor. Please the gentleman here.
(Mr. Derek Minus, City Barrister): Derek Minus, I am a city barrister. I have also been appointed by WIPO as a mediator and arbitrator. But Patrick, can I just ask a question about dispute resolution? On the diagram that Leni put up there was an opportunity for people who felt aggrieved about a decision or lack of a decision in granting a domain name, to either go to litigation in the court or through a mediation/arbitration Process as I understood it from the diagram. Does the Internet Industry Association have any view about that? Is it the view of the Association that it is preferable to go though the mandatory mediation and possibly binding arbitration or is there a view that litigation is still possibly the best way to resolve the dispute?
(Mr. Patrick Fair): No, our policy is in favor of binding arbitration. I mean we dont have any book with somebody who wants to suggests that you have the mediation Process at some stage. But our view is, that for the system to work internationally across jurisdictions, the rules which apply to the settlement of disputes and the management of those disputes have to be independent of the local jurisdictions view of the issues. I don't want to make too much of that because obviously we are talking about a very narrow category of issues. Merely the issue of who remains proprietor of a particular domain name or the registered owner of the domain name, and we would not seek to eliminate disputes arising from the content of web pages or the way things are represented to the public. However, the control of what is actually registered and what isn't must be held, we think logically, close to the registrars and in order for that to happen, the only way to do it across all the jurisdictions is for registering parties to agree to have their disputes determined by an arbitrator according to the principles that have been determined. In that way the system could maintain a consistency without having courts from one side of the Atlantic saying that they insist that the European company with the name be registered, and courts on the other side of the Atlantic determining that the other name ought to be registered. And that is really the problem. I mean if somebody can suggest a system other than that as kind of which is in fact trying to create a new international jurisdiction just for this very narrow category of issues, then we will be very interested to hear it. But really its just a view by practical necessity.
(Mr. Patrick Fair): Thank you for that question, because in fact we dealt with that and I just did not mention it. The view expressed in the draft paper is that clearly organizations in commercial generic top-level domains and within second-level domains are exposing themselves. It would be reasonable to determine that in a .com domain the applicant applying for registration would submit to having information put on a database. On the other hand it would not necessarily be so reasonable in a .nom domain where you might have individuals who wish to use the domain address for families or for private purposes and it is conceivable that in some circumstances, even .com domains should be kept private. So, while on the one hand we are in favor of an open system where you can search and see who you want to fight with if you think they have got the name you should have and should certainly be able to see what is registered and be able to anticipate problems........... (end of tape)..............
(Mr. Ken Fockler) In a number of these hearings the words registry and registrar get interchanged, so I really want to be sure I understood. Did I hear you say that a registry should not be involved in dispute resolution?
(Mr. Patrick Fair): I said that they should not, that in the model that we would suggest they should not be acting as a bureaucratic determinant of a dispute. That the dispute should be determined by an independent party. Sorry, that does not eliminate them being a party to the dispute and you would have to make the correct distinction then obviously-just reviewing an application for a name involves some exercise of administrative authority which you have to do. But once the matter becomes contentious, we think it should be removed from the registry.
(Mr. Ken Fockler): So, who might be the independent party?
(Mr. Patrick Fair): Well, in most jurisdictions you can find a dispute resolution organization who is prepared to nominate arbitrators and maintain rules and administer that for you. Alternatively, you could maintain your own panel of arbitrators to refer matters to.
(Mr. Ken Fockler): Could I ask again? The gentleman over here, you made the same comment I believe is it as I understand it?
(Mr. Daniel Reckman, Council for Melbourne IT): Daniel Reckman, Council for Melbourne IT. Patrick just thinking about what has been said already about pre-dispute resolution, that is to say, having sets of rules which eliminate disputes when we get to the situation. It seems to me that to do that you have got to have a greater role for registrars. That is to say, there has got to be more information collected and more decisions made at the registrar level. How do you do that? Because there seems to be quite a tension between that positive requirement and the fact that registrars don't really want to do that. They are usually not protected by any statutory or legislative provisions and they are going to be more and more at risk, the more and more they get involved in the dispute. Is there some view here about how you balance the roles of registrars and the requirements of getting as much material and pre-registration settlements of issues?
(Mr. Patrick Fair): Well, I am not sure that I can say much more than I was saying before that certainly collecting that information means when you get the application you have to determine whether its correct and you have to conduct your own independent verification if that's what we think it should be done. And when you have done that, you will need to make a decision about that application whether to proceed or not based on that information. I think that is a legitimate administrative part of trying to prevent the dispute and also trying to ensure the applicant knows what they are getting into. But, I am not sure that there is really any conflict between that and saying, well if you make a decision, an administrative decision this isn't a name that should be registered then the method for reviewing your decision is to go to an independent arbitrator. Where I think it would cause friction and it would cause friction if that was the way it was done in Australia, would be if the final say went to the person who reviewed that application. And that really is my concern with the suggestion that Leni was making that we might have a substantial role for administrative decision making which would very much disempower the applicant and empower the registry and perhaps be a cause of ongoing friction.
(Mr. Francis Gurry): Thank you. Roger Hicks please.
(Mr. Roger Hicks, Member, Asia and Pacific Internet Association): Thank you. Roger Hicks. I have got a question just to clarify your comments on country code domains compared to the global ones. Whether there should be any independent structure on the country code domains or whether you are implying that all the second-level domains under country codes should mark the global ones? The reason for my question is that looking at country code domains at the moment, some are structured at the second-level geographically. Some are social or legal in respect to that country. Some in fact put company names even at the second-level. It seems to me that there would be some issues which are suggesting that one should mark directly to the other, or if not, how do you see those two working together?
(Mr. Patrick Fair): We think that they should map closely one to the other. We think that, that makes the system much more user-friendly for people around the world. However, the point you make is quite right and we have got to recognize that within each jurisdiction there is some, and has been in others an ongoing Process of working out the governance of the ccTLDs and those Processes are coming up with different results. So, our position is really to say that if this is your view of what the system should be, then it follows that they should map closely. On the other hand, the reality is that independent jurisdictions are working out their own systems and the only time, supposing ICANN was to consider disabling a country code domain for some terrible breach, where you start to get into the territory where that ought to be considered is when the country code top-level domain ceases to be a country code top-level domain and becomes a generic top-level domain. And we think that starts to undermine the system and the jurisdiction of the administrators of the system and therefore is a much more serious matter. But as a matter of policy I don't think it is unreasonable to say that administrators of the top-level should be arguing to country code domains that its rational and sensible to adopt a mapping Process. And I noticed, I think that Canada has decided to do that and I think it is much more reasonable for users.
(Mr. Francis Gurry): Thank you Patrick. I will take one last question and then we will have the coffee break. Willie Black please.
(Mr. William Black, Nominet UK): Willie Black, Nominet UK we are on .UK. I just want a clarification. It is very nice and easy to say that you don't want country codes to be run as if they are generic. But how do you exactly propose to define whether a country code is being
used for its citizens or its become generic? I am just interested because I don't know how to do it.
(Mr. Patrick Fair): I don't think we are putting it hard enough that we need to do that. I think we all know when it happens. You know you find corporate names turning up immediately after you know in the second tier and it shows that you are not mapping the policies and Processes at the top-level. I think this system can live with that and the problem with it is that it undermines the usability of the system and undermines the ability of users who think they can guess and a lot of us still do have to go at guessing what the URL is for various web pages. It just undermines your ability to do that and makes the system less useful. So, we think that it is reasonable to argue that as far as possible country code top-level domains should map the top tier.
(Mr. Francis Gurry): Fine. Thank you very much Patrick. After the coffee break we will proceed with Professor Brian Fitzgerald, Ms. Gail Evans, Ms. Jane Perrier, Patrick O'Brian, Professor Peter Gerrand and Spiro Pappas. Okay, so there is a fifteen minute coffee break. Thank you very much.
(Mr. Francis Gurry): So, if we could resume, we are going to start actually contrary to what I said just before the break. We are going to start with Partick O'Brien from Domains. Patrick is the CEO of Domainz. Patrick please.
(Mr. Patrick O'Brien, CEO, Domainz NZ): Morning ladies and gentlemen. Are we all back? Are we all awake? Is there anybody out there? Some of us got up at 2 o'clock this morning to be here. So, if I fall asleep just wake me up. Someone asked me in the break, what is it like working on the Internet? And the best picture I can describe is, remember those old John Wayne films when they had the wagons and there was eight horses in front and it was just galloping down the hill and no one could stop it. Can you all remember those pictures? The Internet is like that, but everyday they put two more horses on the front. It is really galloping away with you. So, I am going to talk to you today about what it is like at the coal-face really in terms of the registry. There are a lot of good ideas talked about, establishing frameworks and what we should or shouldn't do. I am going to tell you how it happens from our perspective and I would like to take a deliberate view point, that of a country registry. So, let us see what we can do. There are about five areas I am going to cover. A little bit about the registry, just who we are and it will give you an idea by contrasting us with Melbourne IT and Internet Names. Some of the relevant laws in practice in New Zealand, the four areas that WIPO wants us to cover in terms of their RFP and just a little bit of two or three screens on service, because from our point of view it is not about intellectual property, its about delivering service to our customers. And finally we hope we can conclude so, lets see how we go.
The NZ registries are basically run by the Internet Society of New Zealand. That is a body which is open to anyone. It is a membership body, so anyone can join, anyone here can join. We have got tickets if you want to sign up today, we would take your money off you. Domainz is a company which is one hundred per cent owned by the Internet Society. So, we are a properly formed limited company. The reason we have that structure is to provide, almost if you will, a commercial firewall to the members in the Internet Society. We introduced fees in June '96. One of the issues we talk about is, should you pay for domain names? You have to because there are costs associated with it. So, we have been fully commercialized for about two, two and a half years. And we like to think that we are one of the countrys leading registries, in fact one of the world's leading country registries. And yes, we get disputes. The aim of the society is pretty much broad in sense of the stewardship of the Net and the infrastructure on the Internet. What we have to do is provide a robust and viable national space, national for New Zealand. And our key goal is to provide cost effective quality service. People want it, they want it now and they want it very, very cheaply. These are some of the drivers in our business. Before I go on, how many lawyers in the audience? The clock is ticking. How many trademark or IP lawyers in the audience? The clock is really ticking. Now, how many domain name holders are there? Okay guys, that's your audience. That is who you are looking at. How many people have names in the gTLDs .com, .net anything like that? A few of you, and how many have names in .au the Australian domain? How many of you have names in that other Australian domain? Can I ask that question here? There is one. Okay that is cool, interesting. It gives me a feel for who the audience is. About a third of you have domain names and about a half of you are lawyers. You will find from my speech I don't know too much about the law. But I do know a bit about domain names, hopefully. So, there is ISOC and there is Domainz. ISOC believes they employed me to manage the domain name registry, I believe I was employed to keep ISOC out of jail. Because the disputes do arise quite often and we have to make sure we protect the membership and the management of that membership company as well. Well, you take any country around the world, do you see this growth? It is pretty exponential-we have gone from two years ago, 5,000 names up, we are now 25,000 names in New Zealand and we keep on growing, the clock keeps ticking. In terms of domains, in terms of country order New Zealand is twelfth in the world. In fact it is fourteenth, Argentina and Brazil should be on that screen. So, in all of the 240 countries there are in the world, New Zealand is fourteenth, so that is quite high penetration for us. In terms of domains per capita, we are second only to Denmark. If we had the graphs of sheep per domain we would probably win on that one, but we have not quite got the status on that. And you can see, there you are Australia, about the fifth or sixth position. So, you get a feel in terms of the relative differences in countries. The Internet is very important to New Zealand, they love technology, its been taken up quite well over there. And being so far away from anywhere else, communications is quite critical to us as a nation state. So, it is quite important that we do put in place a viable system for the domain space.
Key points of our policy. Lets get in touch with policy. We have heard people talking about domain registries needing to have a set of rules. Let's talk about ours. Firstly, it is based. It is definitely first-come, first-served. There is no question on that. We have a formal contract of a service with name holders. I stress "holder" not owner. We don't see it in New Zealand as being a property right, as some people do. People hold a name with a contract for service with domains. And that contract allows them to reassign the name. You hold the name, you can give us a form which says reassign the name to someone else. It is a very straightforward process, reassigning a contract. Name holders agree to the terms of service, it is simply a contract. We have ten second-level domains, .co, .org,, .net and so on and the issue talking about whether country codes should have the same structure as national or if you will gTLDs, we don't think so. We have for instance in New Zealand a .ev okay, which is to do with the indigenous race Maori. Now, I suspect they may have some views if we were told to get rid of that in New Zealand. So, there are certain things which are national that you see in country registries and you probably have one or two things in Australia which are local, if you will, to yourselves over here. By the same token on the telephone system we have an exchange structure in New Zealand, 479473. We don't say, whatever they use in England we will implement that across the world. They have a zip code in America, a post code in England. We don't have any code structure in our postal system in New Zealand, so again the notion of just transferring it across to all media to all countries is I think an interesting concept, but I don't think it will work in the Domain Names System.
Our registry provides searchable contact details. Anyone that lists a name with us you can go on to the Net, you can go on there right now if you wish. You can put your details up, you can see who the name holder is, how you get to them by e-mail, fax, phone and mail address. So anyone can look and see who holds a domain name. It is publicly searchable, it requires no technical knowledge at all. If you have a web browser you just go to the site, key in the name and pull the details out. When the person registers the name, the registrant, they warrant to us that they have the right to that name. So, they say, yes they have got rights to use that name and they warrant to us. You see how we are broadening our protections into the policy and there is no registry involvement in disputes. I will clarify that one when we come on to the WIPO areas. But realistically, the registry does not get involved in disputes. It is between the name holder and the person that claims rights to that name. And the registrant writes some indemnities to us as well, so that if disputes do arise we have got ourselves covered back to back. And of course we are governed by New Zealand laws. A number of the policies we see around the world, often they admit to say what the governing law is. Well, for a nation state like New Zealand, we can say that any disputes that arise are governed by New Zealand law. So, our philosophy then focuses on the relations between the registrant and the claimant. The registry will facilitate communication by means of making the information publicly available over the web and we do get involved with early contact between parties. When a dispute arises between two people, we are always involved in those early stages because first up they call us and say what is the story? So, we do get involved in the early communication of it. We will always act upon the registrants instructions. The person that holds the name, if they tell us to reassign the name, we would do so once they give us appropriate authorization. We don't have to be told by another party. In fact we won't take instructions from another party. If we are given instructions by the courts of New Zealand of course we would act on that as well, but our preference is to say to the court, why don't you tell the registrant to take some action and in New Zealand that is what has happened on all of the cases that have arisen today. The registrant has been advised if you will by the courts to take certain action and that action has been to reassign the name. And the registrant has come to us with the appropriate authority and got the name reassigned. There has been no need to involve us in those Processes. Trademarks we believe are not registry issues. So, the protections in New Zealand, well you have got the Trademarks Act 1953, the issue of common law passing-off which I am sure you are all well aware of. We also have a Fair Trading Act which talks about misleading and deceptive conduct and in fact the cases that do come up in New Zealand tend to start with fair trading, then passing-off, then the Trademark Act. It seems to be easier to catch them in that way. We are party to the Nice Agreement for those international classifications and remember that we are in the Commonwealth, so the U.K. is our highest court. So, what happens in the U.K. we tend to watch fairly closely, because it does have impact on us in terms of any precedents that are set out there. In practice what happens, well for passing-off you need proof, proof that the plaintiff's's got good will or reputation. That there is misrepresentation by the defendant, that there is damage or likelihood of damage to the plaintiff. Misleading or deceptive conduct or similarity of strings there may well be, but confusion does not necessarily arise in that either or when we are called Domainz, Domainz.co. There is Domains.co, there is Domain.co, now we are all fairly similar, but you can go to all of the sites and it is very clear where you are at. There is no confusion once you go to those sites. In practice, it is about issues of facts and issues of law. Registries are not competent, certainly we are not competent to deal with issues of fact and law. Not in resolving, perhaps a little bit in terms of preventing disputes arising, again we are going to come on to that.
So, the four WIPO areas, we have talked about dispute prevention, resolution, famous names and also generic ccTLDs. So, about dispute prevention, well sitting in the registry sometimes it feels like this. You know it comes in by phone, fax or e-mail and in my early days I used to say to my Board, I come in to work in jeans because I get a suit delivered everyday in the mail. And it really feels a little bit like that. Every month there will be one or two issues that arise. Very few ever come to court, most of them are handled at the registry level quite sympathetically and I would say quite well. And when I say quite well I am comparing what happens in other countries as well, what happens in New Zealand is quite similar to what happens in other countries. What you see in terms of disputes in court are the tip of an iceberg really, very few get there. In terms of dispute prevention, the things that registries can do include clear policy statements, in terms of rights, laws, fees, warranties, indemnities, contracts, agreements. We view it in New Zealand as an issue of commercial contract. And that is how we structured our policy, there is a willing purchaser of service, everything needs to be stated clearly in that terms of service in the contract.
We employ rigour in collections. One of the issues people talk about is registering a name before they pay the fee. Most national registries like ourselves have been set up in the last two to two and a half years. Most of them I would say, many of them for sure did not really put into place administrative systems beforehand. So, the notion of collecting fees is a challenge in terms of getting the systems ready. And also the marketplace you deal with, there are some issues of collecting fees for the marketplace as well. We will see a little bit about how we perform on fees later on and we think we are good, so if we are good you just compare it to what other people are like.
Accessible change procedures, in terms of people being able to change their contact details, names, addresses and so on. But also change procedures to reassign domain names if there needs to be a reassignation. And I will stress, procedures which are not for the technical community, just ordinary folks like you and I, if we pass ourselves as ordinary folks.
Ordinary folks could actually get on there and do it themselves. A publicly available registry database. I don't personally feel it has to be the same format in every country around the world. But you need to have basic information in names, addresses, certain basic contact details have to be available publicly over the Net. And what I call published codified wisdom, this is something you haven't seen yet from registries. We have a case at the moment which I will mention and once we finish that case hopefully, if it is in our favor or if it is not, we are actually going to publish on our site just some of the things that happen from both sides of the fence. If registries start to publish how it happens when a dispute arises and the options that are available for the name holders and also for the claimants as well, it will help steer them along the way hopefully to resolving the dispute before it gets to the courts. And responsive, informed responsible triage. Now, I picked the word triage carefully because in essence that is what the registries do. If someone registers McDonalds.co.nz. And then McDonalds comes and says hey! you have got our name, you have got our trademark. Then what happens typically is McDonalds will call us and we will call the person that holds the name or McDonalds will sue the person that holds the name and they will call us. What happens in the registries, if the registries do get involved in the early stages of disputes. And what would they basically say to the trademark holder, this is what happens in our experience when trademark holders try to go after their domain names. And our approach is to try and see if we can educate both sides of the fence then they can normally come to some agreement, and typically in New Zealand that is what happens. There has been two major court cases over a two and a half year period, two only. And in that period we have registered over 20,000 domain names. So, that triage Process is very important. So, the registries have to understand the issues and have to be able to explain the issues to both sides of the fence, almost acting as an intermediary, not giving advice but explaining how it happens from the different perspectives. As I say, no ownership, no passing of names to see like strings, no looking up trademark databases, no long waiting periods before names get registered. We don't see the job of the registry as doing those kind of things.
Okay, so what about dispute resolution then. Dispute resolution is an interesting topic. In New Zealand now its any way that works. Starting off with informal discussion through to formal negotiation, through to the courts of law. And as I say there have been two that have gone to the courts of law, all of the others have come through the funnel and got themselves sorted out along the way. And that informal discussion in the very early stages, the registries do have a role to play providing that triage, putting people in touch with each other, explaining just how it is. Alternate procedures such as WIPO is suggesting, well this is how we see it, WIPO setting themselves up as a service provider over the Net. They have a service on offer and people can make use of that if they so choose, it is a good idea. But it should not be limited to WIPO, anyone could be able do that. Maybe there is a group of Australian patent attorneys or trademark people who want to get together and maybe they could provide a similar thing as well. We are cautious about monopolies being created in terms of that. And I say that with a forked tongue being a monopoly of a .NZ name. But the issue is, WIPO would be a service provider on the network offering dispute resolution, sounds like a good idea. However, the registry cannot be a party to that Process nor can it be bound by that Process as we have said before. If the two parties in that Process agree and there is compliance well hey, the registrant can instruct the registry to make the changes to reassign the name, to change the details whatever. If that alternate procedure fails, well it needs some method of enforcement and in most cases that would probably be either binding arbitration or most likely be the law. Again in New Zealand the law courts would instruct the registrant to take some action. The registrants can advise the registry what they want to do, and the name can be reassigned fairly quickly. It just takes literally a day or two just to get the signed paper work in. So, there is a limited registry role then.
Point of contact details, yes that needs to be published. Searchable database, yes that needs to be there and simple change procedures need to be there as well. Famous names, well we heard earlier it takes five years to become a famous name right? Viagra has done that in five weeks, hasn't it? So, the notion of famous names, it all starts to change things doesn't it? What we might have thought were the old ways of thinking, it is quite interesting when you come here. Now, what we believed in terms of the famous names, some of the things it says, is considered by a competent authority and a country registration were used to determine well-known. And that is one of the definitions or part of the definition of what a famous name is. Now, there are certain things that are in there. The current case in New Zealand is the Oggi domain name. So, that is an issue there now. How many people think that Oggi is a famous name? So, if we came to this country we would fail on the test, assuming we are a competent authority okay, lets assume that. We would fail on the test of people thinking that that is a famous name. One of the issues in their case is its a famous name. Now, there are no special mechanisms in the registry to determine, we are not competent to make these decisions in terms of whether it is, we are not a competent authority. We are not well informed in terms of the countries and some of the issues are entirely subjective that you are looking at. Registries don't employ staff to do those kind of things. We really offer a service which is first come, first served. And the notion of that is you manage exceptions to the Process when they arise rather than check everything as it comes into the door. Its a real fundamental issue here, the notion of management by exception and having Processes in place when exceptions occur to deal with them efficiently. Any Italian speakers here? Okay, Oggi what does that mean in Italian? Today. What is tomorrow in Italian? Domani. Its not a typo. It is quite interesting that Oggi, domani is today and tomorrow in Italian. And one of their defenses is it is an Italian word for today. Oggi is well used around the world. If you go to England there is an Oggi Valley up in north Wales. And there is quite a famous walking club and they have got a website. If you go to, I think it is .com or .org its a gay video site. Certainly in terms of famous names these are subjective issues that you are dealing with here. And if you were in Italy you may say there is nothing wrong with Oggi or you may. I really don't know. But certainly, the registry in New Zealand could not have looked at that name, we could not have passed it, it could have not rejected it on what it saw. And that gives you if you will a practical example of what happens to us day to day.
So, new generic TLDs. Now, generic TLDs are going to be structured by the U.S. Government under this new, is it ICANN, is it IANA, it does not really matter what it is going to be called. They are going to form a new company and we understand that, that new company is going to put Processes in place to say do we need new TLDs. If so, what are their criteria for doing them? How many? How soon? Who should run them etc., etc. As far as the .NZ space is concerned from a country registry, we are ambivalent whether they have more of them, less of them or keep them the same. It does not really matter. Our focus is on our national domain space for New Zealand. The national country TLDs. Well, we tend to view it if you are a country as defined in ISO 3166 then you should be entitled to set up a national country registry. I also believe that the rules that we set up under RFC-1591, on the codification of how it works on the Internet. And one of the things I have talked about the delegated manager. What that actually means is if someone is delegated in a country to manage that space, they should be delegated. That means that no one above them should come in and tell them what they do in their national space. Clearly as time goes by you see a lot of harmonization of Processes and policies between country registries. But that is harmonization because it makes sense. But what we don't see is the new company coming and telling New Zealand or probably Australia what it needs to do with its domain space. Common sense will apply I would say in many of these cases. And in terms of the issue of, is it a generic country code or is it a country code, it is a really interesting question. There is a lot of debate going on. We are very pragmatic in New Zealand, we say well look at Australia, look at all that mineral wealth it has got. Look at Papua New Guinea look at all the mineral wealth it has got. And you exploit it. Look at Tonga, look at that space its got up there in the sky you know, put that little satellite up there. So, it exploited it. Look at some of the small Pacific Island countries that only have a thousand telephone lines so they have sold their national numbering plan offshore I think, so I understand by the way. If you dial one of those sex lines these days you are typically dialing into one of the Pacific Islands because they have got a very short numbering plan. No one has ever stopped them doing that. Likewise Nuway for instance is one of those that is setting itself up as a fashionable country domain. I think 40 per cent of its sales are in Sweden, because .NU stands for no in Sweden, so it is popular. But one of the reasons its popular I would say is that Sweden has very, very, very restrictive rules for who can go into its space. The figures out in terms comparing names registered in the national space versus the rest of the domain names. Sweden ranks the lowest on that. So, one of the reasons Nuway is doing well in Sweden is because of some of the restrictions applied in the national space in Sweden. Having said that, .NU means naked in France and they are doing quite well over there too. There is no truth in the rumor that New Zealand is looking in East Germany or some of the eastern provinces to see if NZ means nude anywhere either. But if we did, we couldn't stop an ISP in Czechoslovakia saying this means something in our language and relating it to it. There is nothing we can do about that at all. I doubt if it is bound to occur, we have searched a long time ago. So, countries wish to govern their national space. New Zealand certainly wishes to govern its national space and there is a rainbow in terms of is it an independent membership-owned industry-wide body or is it Governments that do it. And I think it really is a rainbow, different strokes for different folks, different countries have their own views of doing it. Some of the Asian countries have a very strong affinity with Governments and these are very difficult to know where the line is, between where Government stops and business starts. We certainly don't want rules to be imposed from above and we want to focus on the rules for the .NZ name space. It is our country, it is what we want to do with it. And we want to focus on service delivery within those rules.
So, just a few more charts. Service delivery is chaotic. This is the man on that wagon with two more horses being added. It is a very chaotic business. We have grown in the last year well over 100 per cent year on year. What you have is business growth in Australia two, three, four, five per cent what is it? That is probably higher than New Zealand's growth by the way. So, it is a very chaotic environment. So, there we go, the graphs deny the truth, it just keeps growing and growing and growing. The top line is how many names you register every month. The bottom line if you can see it is how many cancellations. And there are a lot more cancellations in the last six months because our financial systems are getting closer to people who don't pay.
In terms of performance you can see that the green line is really what we need to do. Ninety nine per cent of our names over the last nine months, certainly over the last nine months were registered in the same business day. I know in Australia you have got two ways of doing it, about a one day or two hours service and you have got a slower two days service. We only have one service in New Zealand and most names go up within a day. And our customers want that and our ISPs want that too, because the ISPs are competing. If they can get the name up there and then they want it. Because that may well help them clinch the deal with the website. If someone is looking to them to pitch for work they want fast response. I don't know what they are like over here in Australia, but they are mean in New Zealand. In terms of prices these are in New Zealand dollars so we are very, very cost effective, I was going to say cheap. But in terms of our service we are very cost effective our average price is lower than the States for instance, as well in terms of the .com names and they have reduced their prices some while ago. So, we actually provide very high service, high quality service for a low price. But the reason we do that is because we have got very efficient Processes. We don't have lots of people looking at names and checking on policies and doing all sorts of things to it. If you want to implement that type of system, price has to go up to support the staff and the Processes.
In terms of payment, just to give you some sort of idea the things on the top left in red, those are peoples debts that used to be three months old and if you go back twelve months I think our average age debt was about six months old. You have just got to think about this. I would say we are one of the better performers in terms of payment. You can see what we have done is put a lot of changes through and right now on the right hand side nearly 80 per cent of our people pay on time. But that still leaves 20 per cent that don't. So, the notion is that people pay before they get service. That you would say, well how does that fit in to that graph? Well, bearing in mind that many of our customers here that come to us directly or through an agent. And an agent is almost like a wholesaler to us and the wholesaler we have to provide a line of credits to him. So, we have got issues in terms of how the thing is structured. Just to say you have to pay up front, there are some structured issues you will have to deal with as well.
So, in concluding the Internet is just another media, press, television, paper, Internet is just another media. IP rights should be media independent. We don't believe this should be something specific for the Internet. IP issues are matters of fact and law. Registries are not competent to deal with those issues I have to say. The registry can codify things, clarify things, contractualize, communicate. Do all the right things in terms of each country. But we don't believe it should really get involved in disputes. There is a role to play for sure. The issues really rest with the claimants and the registrant and WIPO framework good in terms of a complimentary offering. I would be delighted to say on our website that if you have a dispute here is a whole bunch of things you should do and one of them is to perhaps have a look at WIPO and see if that is an option for you. As I understand it if there is a dispute in High Street Auckland and High Street Auckland it is easier and more cost effective to get Lloyds in Auckland to sort it out. So, it is different horses for different courses. The WIPO option could well be complimentary, but not, and I stress not, not compulsory on country registries. And I think on that I will just end on that and thank you, thanks very much.
(Mr. Francis Gurry): Thank you very much Patrick and just before I open the floor may I just make one comment. Just to say that we certainly agree that if there is a system of dispute resolution that WIPO would be a service provider and not the service provider, we certainly agree with you on this. One of the tricks however, is in so far as the generic top level domains are concerned, how to introduce a uniformity with many service providers. Uniformity so as to avoid foreign shopping so that some domains don't become safe havens for cyberpirates. May I ask you one question about your pre-payment system or your payment system. You do not require pre-payment as I understand and one thought that is being expressed frequently in our Process is that there ought to be a suspension of the activation of a domain name until such time as payment is received. Its a good idea in theory but in a world in which there are multiple registrars and as you point out the ISPs are acting as agents and ISPs may be having deposit accounts with registrars out of which the fees are paid and then it is the ISP that seeks payment from its client. How could a system of pre-payment work?
(Mr. Patrick O'Brien): It is a really interesting question and I tend to think that youre pushing it uphill to try and do that. Let me give you an example. We have big companies in New Zealand, big ISPs so we will sell to them, they will come to us to register names. But because they are so big they have smaller ISPs hosted off them and those smaller ISPs may well host web designers and people go, when you have got an idea of a website you might as well go to your web designer. And if you are going to inflict a chain on us that we will only take the work when the fee is paid, you have got about four or five steps of the chain to do it. So, I think it is a great notion and as a registrar I would love never to give any service before I got the money. Why? Because I can stop having people employed to collect money, so I can keep my customers delighted. If you could swing it, great. But practically, I think you really have to rethink it in terms of the distribution structure in any particular country. As I say, if you can do it great, but I doubt if you are going to get it through.
(Mr. Francis Gurry): So, are there any questions or comments from the floor?
(Mr. Patrick Fair): I just wondered how you enforce your second-level domain policies in relation to who you let into different classes, if the registry take such a stand-off approach to registration. Do you actually have criteria and what do you ask for to establish that criteria? Do you ask for it to be verified? And what do you do if you suspect something is not quite in order.
(Mr. Patrick O'Brien): Yes, good question. The answer is, we do for some and we don't for others. There are four domains that are what we call moderated. For .gov we have someone in the Government that tells us whether we should accept a name. In .mil we have someone in the military that tells us whether to have it. The .ev is a bit of an issue and because we can't even get EV issues resolved amongst the EV, so that is a kind of funny one. And .cri, again someone in the old Crime Research Institute moderates whether it should come in or not. All of the other domains, if you feel you should be in that domain you can go there. For instance, we had a big debate a year ago, just over to do with say .school. Do you have a .school domain here? We have .ac and .school, some countries have .edu for just education. The issue was, we had flying schools, the Australian drinking school or something, music schools, ballet schools, private schools all sorts of schools wanted to be in .school because they felt they were schools, and who might well argue. We had another point of view, which is the Governments they said, oh no, that is only for the schools that we have. Now, what you are actually doing if you go down that route is you are actually creating a monopoly for that school. We were investigated by the Commerce Commission which is similar to your ASCS over our monopoly powers fifteen months ago. So, we are very mindful about the notion of monopoly and we felt we did not have a strong enough argument to stop all of these other people going into the domain names, if they felt that they were a school. So we opened up a whole bunch of domains, we published them, and if you want to be there you can be there. So we actually simplified the problem. Where there are some specific rules that can apply then we pass the responsibility for that onto a moderator. So many governments, so many military, so many in Maoridom, so many in the Crime Research Institute, so we are conduits to pass the information and we will get a check back which says yes or no. And if it is declined, we will go back to the person, the applicant and explain why it has been declined, if they don't like it we will put them in touch with the moderator. Just a pragmatic approach.
(Mr. Francis Gurry): Thank you. Any other comments or questions?
(Mr. Leni Mayo): Patrick, Im interested in the comments related to the searchable database if names that are registered are on the .nz. There are some comments earlier relating to the fact that people want to be able to search the database for names that may or may not conflict with the trademark and on your slide you said that there was a searchable database. Now, I am just curious whether that was a query of one name at a time sort of thing or whether that means I can suck the entire database down and do my own queries, I think are appropriate, to determine whether there is a trademark conflict or not. Now, depending on the answer to that, I guess the follow-on question would be, how do you balance the legitimate needs of the trademark community to these searchers with other concerns like if I suck the database down then I can spam everyone who has got a domain name. And what is sort of the policy Process that built such an outcome.
(Mr. Patrick O'Brien): Good question. A bit like the tight-rope walker. We very much walk a tight-rope and it is our job to make sure we walk the right side. We have a searchable database. If you have a domain name, you can go in there and see it, put in the name and take it off. So, you can get the details if you so choose. During the day we put in on our side of the names that are in for new name registrations, changes and cancellations. And now in New Zealand a number of trademark attorneys look at that every day to see what new names are being registered. So, the name that is being registered on the day is up there. Once a month, there is a list out of the names registered during that month. So, you can actually go and see the name that was registered and there is some minimal contact information. So, we are mindful of people wanting to know. We are also mindful of privacy, confidentiality. We have a Privacy Act in New Zealand, I don't think you have got one here yet in Australia to the same degree. We have also been investigated by the Privacy Commission, we have been there and they have done that, and I think we have been found okay. We are just going through the last stages of that, its taken thirteen months to go through that Process. And they are quite comfortable with us publishing basic contact information. We don't publish what is called commercial information, who we bill, we don't publish anything like that. But, basic contact information for the purposes of being what we are, a public registry. Just like a company's house, you can go into a company's house database and find who the key directors are of a company. We take that approach. I don't think you can go to a company's house and suck the whole lot down and we don't intend to let people suck the whole lot down either. We don't think that is the purpose of the service that we offer.
(Mr. Francis Gurry): Thank you, the gentleman at the back please.
(Mr. Anthony Alvi (?), Integrated Options): I like to put a couple of ideas to you for your comment because I am very interested in the way it is structured. I was interested, there are two groups of people who don't seem to be here today and one of those are search engines and the other are those people who make browsers. And one of the things that came up this morning was the question of consumer trust. And to a certain extent what we are talking about is providing people with trust, that the domain name they see has relevance to the person who is either using it or who might own the name that is described by it. To a certain extent, I wonder whether what would be better would be for search engines or for browsers to provide users with, as soon as they click on to a domain name, a way of actually accessing the data that is reflected for that domain name, and you have a registry and a database. So, when I click on that I can see that it belongs to Johnny's Pizza Store in Aukland or whatever, or I can see that the product that I have looked on belongs to Johnny's Pizza Store. And it seems that, that comes back to this question of the extent to which rules or law are more important. And I suspect that from a users point of view, rules are far more important because it comes down to that fundamental issue of trust. Now, I understand that by using particular ISPs, consumers feel that they can achieve trust and from the way you are structured there is some trust component in what you do. Do you have some comments on that and perhaps could you comment on whether or not you think it would be relevant for the major global search engines and some of the browser manufactures to be looped into this discussion with WIPO or whether legislation and doing things legally forensically after the event is a good way of projecting us forwards into the future?
(Mr. Patrick O'Brien): Interesting questions. Lets try and answer them by way of example. In New Zealand you get on these televisions you know, all these numbers calling Visa credit card. Now, when it comes over on the television, do we think about the notion of trust and what is behind the company that representing itself? When we buy our paper and you see these adverts in the classified, do we need to get involved in issues of trust there. So, why on the Internet, if people expect when you see something to trust it? It is a normal by the way stuff must take place. If browsers want to get involved in that, well I think that is fine and dandy, but should they have to? I don't think so. It is not a hypothetical tale, its a true tale. About 20 years ago in Dublin, about 20 - 25 years ago, they launched Playboy it might not sound a lot to you, but in Dublin that was a kind of a risqué thing to do. You all know what Playboy is, I knew someone who bought a Playboy who related to me they were very disappointed because they had bought Playboy in England and they had bought Playboy in Ireland (they were Irish by the way and it wasn't me), and they were disappointed because in the first edition of Playboy in Ireland there were nude women sitting legs crossed like this, and all you could see was some nude flesh. It was not what they thought Playboy was in the U.K. I mean, they only had a notion of trust in terms of what they were purchasing. That is why I related it to you. So, on the web I would say normal commercial rules apply. I understand Playboy is much better in Ireland, if better is the right word to use.
(Mr. Francis Gurry): Any other questions? Ken Fockler please.
(Mr. Ken Fockler, Former Chair and President, Canadian Association of Internet Providers): Thank you very much. I appreciate your view of the registry and its abilities to do things. And I need to put a "what if" question. We have been wrestling with these famous names and my understanding is the trademark community still wrestles with it, but if such a database could be created, to what extent do you see a registry could be proactive at the point of a registration? Would you look for a moderator similar to what you do in some of the other cases? Would you just inform the registrant that, be aware you just registered something that flounces into the famous names so you may be in difficulty, or would you stop? Have you given any thought to that kind of a situation?
(Mr. Patrick O'Brien): Good question. The non-intervention is New Zealand's way. We talked about codified wisdom on our website. We would advise people that this good database existed and how they go and do it. And it comes back to the distribution structures. Well, 95 per cent of our names come to us, not directly, but come to us through service providers. So, you have to educate your service providers to put the information on their screens, to put the links through as well and you will find some ISPs will try and differentiate themselves by being good and great and they may well pick that issue up. But, I certainly would not see the registry getting involved in making decisions. The legal advice we have in New Zealand and we have talked about this in terms of should we search databases and so on. They come back and say well, what if you search the database and they find it is a trademark name and they still go ahead, and you have some knowledge of it. And they give us the argument that you can't be heartbroken, you either are or you aren't. So, we use safe practices I guess in the .nz registry. We know what side of the line that we are on.
(Mr. Patrick Fair): I just have a follow-up question on my earlier question I suppose and a new question. The new question, is what do you do about cybersquatting? Have you got any rules that prohibit people taking a large number of names, I don't think you mentioned that. And the second is, with this open policy that you have got on some of your classifications, do you actually publish guidelines and say to potential applicants, before you register, think about whether you are more suitable for this or that and this is what we are trying to suggest by the category, or do you just leave it up to them to work out what the categories mean?
(Mr. Patrick O'Brien): Two good questions. Second one first, we have quite a comprehensive website if you can wade your way through it. And we do give some issues about what we call choosing the right community of interest. That is how we would describe the second of the domains. So, we go as far as to advising of the issues, if you want to establish a presence on the Net what are the things you should be thinking about. Certainly, if there were these databases, we would put that in as well to make people aware. Second part of that, how many people read our database when they apply for a domain name? They go through ISPs, that is the normal channel, so there is quite an extensive education thing you want with your ISPs and ISPs come and go. Web designers come and go and many of them are on very thin margins, they have not got time to put on all the staff and spend time educating their customers who want it right now.
In terms of cybersquatting we had an interesting case four months ago. Someone came and bought about 240 domain names, Peters.co, Shipley.co, Prime Minister.co, all of the major politicians. Kind of cunning really. And they tried to sell them and clearly Winston Peters wasn't at all happy about that, because there is not a lot you can do. There are a lot of folks in the phone book called Peters, quite a number of folks called Shipley, so if they had a Shipley they are perfectly entitled to that. What we did is, we negotiated with an exit price for them and we got the names canceled. Because clearly, there are a number of issues arising and as a, not necessarily a mediator, we spoke to the person to say, look, you have done this, these are the issues that arise. And we talked about the options available to them and in the end, they chose to exit from their arrangement, but not before we got some money off them for doing that, because we do work to actually register names. So, when we see cybersquatting going on, we sometimes get involved because that was potentially litigious and it just keeps us out of the jail as well. We don't own the problem, but we certainly talk to people and we know who is registering what on our domain names.
(Mr. Francis Gurry): So, how do your terms and conditions support that Process? I mean do you have a right to do that once you granted somebody a name under the contract or not?
(Mr. Patrick O'Brien): The terms don't deny us the ability to talk to our customers and if the media start to call us about so and so and if trademark attorneys start to call me about a particular domain name, then I have a right to talk to the name holder and say look, do you know what is happening here? There are all these people lining up against you. And that is the issue of just providing that communications channel to names holders. If they go and take a hundred names and no one ever has any complaint about it, we are not going to do anything at all. The other thing in terms of cybersquatting, our policy says that if you choose a name and then don't pay for it, which is what a number of them do, once that name is cancelled then it goes back into the pot after 14 days. We used to have a 60-day wait period, so typically you could tie a name down for quite a long time. So our policy now gives us the ability when someone squats, does not pay and then cancels, to actually bring that name back into production at a much quicker pace.
(Mr. Ken Fockler): So, do I understand that correctly you really don't have any contractual rights to stop a cybersquatter, it is only that you talk them out of it. So, a cybersquatter is much softer in New Zealand than they are in the U.S.?
(Mr. Patrick O'Brien): Well, we try to talk them out of it. Well, I mean you can talk to people and many of them will keep them, that is their call. What we can do is explain the issues that they face. It is their call, their own problem if they want to go to court with these people its fine, we will stay out of the loop in that.
I would just like to make one final comment. The substance of my talk is on our website down the bottom there in Domainz.newstand.wipo.2. It was up there last night so it should be there now. It is an Internet Conference, so you just take the domain name and whatever. And I guess from my point of view, everyone talks about domain names being the real search engine. In my experience, most folks get URLs, either they see them in the paper, they will see them on a screen or they will come in an e-mail. I don't know how many of you will just sit there all day trying to guess up names and putting them into the Internet. Its most often you will just get it written to you and you will just write it up.
(Mr. Francis Gurry): Fine. Patrick O'Brien, thank you very much for having come and made the effort to be here and for the excellent presentation. So, we move now to Melbourne IT and Professor Peter Gerrand please, the CEO, as you all know, of Melbourne IT.
(Professor Peter Gerrand, CEO, Melbourne IT): Good morning everyone. I found Patrick's talk particularly helpful. You will see in the talk that I am giving today that the highest growth area of the domain space in Australia, the commercial areas have actually been governed by quite strict eligibility policies and which leads to some different results, but they have a part and I find myself agreeing very strongly with the conclusions of Patrick's paper. Now, this talk is going to be just a brief history of the Internet, the history does not go very far back. Again a bit of bench-marking, bench-marking of how this .au compares internationally, then this important issue of policy versus non-policy domains, tactics for minimizing disputes and some conclusions. My full paper was published last month in the Telecommunication Journal of Australia. For copyright reasons, I have not put that on to the web. But those who would like a copy of this, just send me an e-mail at PG@MelbourneIT.com.au and I will be happy to send you back a copy. I have got a dispensation from the editor and chief of that Journal. Thank you.
Just a brief history. From 1990 to October '96 in Australia not only the administration .au itself, but also of second-level domains, was entirely carried out by part-time volunteers. During that period, some 10,000 domain names were registered, another 10,000 was registered in com.au. In the subsequent six months, when Melbourne IT as a fully owned subsidiary of the University of Melbourne was asked to take over this responsibility and set up a proper commercial service, on a free-service basis. The other second-level domain net.au, which had acted very much as a surrogate for .com.au back in '96 when there were very long delays and getting .com.au registrations, then got a heap of an avalanche of requests since they were still free and within three weeks they had followed suit by charging fees. But they charged an additional $25 premium ever since and consequently the take up of net.au tends to run 6 per cent of the Australian market, where the com.au has almost been consistently 80 per cent. We have a very desegregated hybrid system, with part time volunteers managing the other second-level domains and for the last couple of years there has been a bit of a policy limbo in terms of trying to get much integration in the way in which policies flow across them. There was an attempt at industry self-regulation over the last 18 months, we were setting up the Australian domain name administration, but because not all the stakeholders chose to join it, there have been major limitations on its ability to act on behalf of the Australian Internet community. As a result, in April this year as a Director of ADNA, I wrote to NOIE, the National Office of the Information and Economy seeking their assistance in developing a much better self-regulatory system and the culmination of many weeks of effort, particularly by Erica Roberts from NOIE, we are all very grateful, is going to take place this Friday in Melbourne, the first .au Summit.
Some international bench-marking. I am just going to take a few dimensions, participation rates, the product brand pricing competition, the important issue of policy rich versus non-policy domains, performance and the dispute resolution Process. Now, one of the interesting things about matrix on the Internet is that it is not simple and I have noted Patrick's Maori searches last week came up with different figures ranking Australia third rather than fifth. I think the difference is the total of .au, rather than just the com.au. But the fact is, that you actually have to know a lot about the detailed structure of the Internet to get sensible measures. In some countries, businesses can get names at the second-level. At others at the third level, at others at the fourth level, so the matrix can be quite different, as well as of course the ranking order changing from day to day. But, given that we have got a much lower population in Australia compared with the U.K. and Germany and Japan and others, it seems quite a high take up of domain names here. I have not got a slide but in terms of per capita we tend to be about fifth, the dynamic of smaller Scandinavian countries and Holland tend to come to the fore.
In terms of product range, of the total .au products 70,000 at the moment, there are 56,000 .com.au., .net.au just got 6 per cent, at one stage it had an open policy on acceptances an open slather, if you like, on the .com principle. But, then for reasons that I have not fully understood, they swung out some months back to almost exact mirror of the .com.au policies. All the different .au domains in fact, whether administered by the commercial bureaus or by volunteers, have had quite tight eligibility criteria. One of the benefits of that has been quite a lot of weigh behind .au. Its virtually impossible, unless people have been fraudulent, to acquire a domain name under .au unless you are an Australian entity of some form, including an overseas company that has actually registered to trade in Australia.
In terms of pricing, the matrix here depends upon fluctuations in exchange rates and before Friday, when Patrick and I were both saying we will have to get together in terms of checking some of these figures and also Willie Black from the U.K., but on the figures we are working on our exchange rates at the beginning of this week, the South African domain name seems to be the cheapest in the world (on an annualized basis these were in Australian dollars). I guess the broad implication is that some countries like Australia and New Zealand are pretty cheap and others like Japan, Germany are pretty expensive.
In terms of competition. Externally, the Australian businesses got quite a wide palette of possible choices in order to have a domain name to give them visibility on the Net. com.au competes with both public domains such as net.au, the .coms, but also a number of private domains such as .au.com, and I notice we have a speaker today associated with using a lot of the au.com names. I tend to call these surrogates for .com.au because they are clearly being pitched to simulate the .com.au while still being private domains and therefore subject to the fortunes of the owner of that particular private domain over the years. Internally, within .com.au we currently have got 294 signed up registrars of .com.au. They compete with each other and with the central .com.au registrar so its possible, and indeed it is a fact that about half of the registrations on .com.au are done directly to the Northern IT or Internet Names Australia website. In fact, the signed up agents receive 20 per cent commission overall tracking the ISPs acting as agents for others. A total of 80 per cent of sales of .com.au occur through agents and only 20 per cent from direct end-users. The actual retail price varies from the $125, if an agent passes the registry fee right through without any margin, through to $600 typically this year. I think the record was $1,400 back in 1977.
Now, the interesting issue of unregulated versus regulated domains, or policy free versus policy rich domains. I found it useful to use a McKenzie-type diagram of a space in which on the top you differentiate between whether there is a restriction on eligibility, what kind of entity is allowed into this domain. Versus on the Y axis, is there an actual naming policy once that entity has been accepted? So, if you look at the top left hand corner, to give a .com or .net or a .org, all you need is to be able to pay US$70 for your two years licence. You don't need to pass any other tips whatsoever. And from what we have heard today from Patrick, there is so much state of affairs for .co.nz and I believe that is the same with co.uk. Whereas if you go down to the bottom right hand corner there is another domain under U.K.Ltd which has very precise eligibility criteria on both the name and the entity. That the name has to exactly coincide with the registered company name either stripped of any characters which aren't allowed within the Domain Name System. Within Australia, virtually all the second-level domains are in that bottom right hand corner, being regulated both by entity and a naming policy. I believe there is a real need to have some out on that top right hand corner. And indeed, through Adler and others have been pushing to have a new domain which will be available for entities, that is eligible Australian entities to be able to reserve a domain for any name they intend to use for products or services well in advance of whether they decide they want to trademark it or register in any other way. And there are other domains like id.au, which are also being suggested without a requirement test on people's birth certificates, but let people use whatever nom de plume they want in that category. But the facts are at the moment, the .au space is entirely heavily regulated, a policy-rich version and its interesting to see that, that has not deterred take-up of those names on the available evidence from the OECD, which tends to be many months out of date now. But from other anecdotal information it would seem that Australian businesses have gone to the gTLDs, the .com etc, there are somewhere between 10 and 12,000 that is distinct from about 60,000 within .au.
The .com.au policy is to be eligible the applicant must be a legitimate business registered to trade in Australia. One of the things we found in the last two years is the amazing and colourful range of different industry registries from everything from cemeteries through to charitable hospitals, through to the six or so States of Australia, separate State Government registries, through to the basic Federal Registry of Companies. To get a domain name under .com.au, the domain must be closely related to that registered business name or registered company generally a proper subset of that registered name. And this of course is an area where it differs totally from the .com or from the .co.nz that we have heard earlier on. But it has clearly been a cause or factor, in the fact that there have been no intellectual property disputes on names that have gone through the courts in Australia.
In terms of excluded words, we don't allow unqualified Australian place names, we don't allow generic names for goods and services or industry sectors etc. And wherever possible, we try to use externally defined authoritative lists of these names to actually minimize any subjective judgement on the part of their own registers.
Lastly, we do require under warranty that the applicant ensure that the domain name does not contravene third party intellectual property rights. And in the last five months, we have actually put things in place in our website to assist people to ensure that they don't unwittingly contravene others' intellectual property rights.
Just briefly in terms of performance, you can measure performance in different ways. Turn-around time and customer support. It is very infuriating to end-users if the only way they can deal with a registrar is through their website and they are not getting the assistance they need. .com.EU is possibly unique in the world in offering a guaranteed turn-around time. You get your money back and you still get Processed if we exceed those times. 8.30 to 5.30 help-desk support on all business hours and our help-desk operators that are dealing with more than 2,000 telephone calls per month this is an addition to all the e-mail calls and requests. Right from the beginning when we set up our service we put in place a dispute resolution Process and I would actually like to thank our Counsel throughout this, Daniel Reckman who is with us today, who has guided us throughout to avoid the need for either Melbourne IT or the applicants for our domain names or third parties to have to actually resort to the courts and much more expensive and slow Processes. In the last six months, we have implemented a facility on the Internet Names Australia's site so that people can test the domain name they want. Our software checks through up to 17 databases internal and external. One of them is Ross Wilson's Australian Trademarks registry, through which we can warn the applicant of potential trademark infringements. That is up to the applicant, but if they then go ahead and use one of these names which is already been identified as already registered, we then require a signed statement that the applicant is aware of the risk that they are incurring.
The dispute resolution Process. We need this, as domain name administrator we are getting about 3,000 applications per month. About a 1,000 of these get rejected for noncompliance on the first try. Now, the majority of these are the people not filling in the information completely or properly and our system provides a feed-back to the applicants to improve their scores. In general, we get about of the order of 10 appeals per month. I might add, the feed-back is often, and apart from telling whoever had not competed the score correctly, drawing their attention to parts of the policy. We get about 10 or so appeals each month and of those 10, simply by providing concrete examples of where they failed to comply, we don't hear further from those applicants. We probably have about 3 per month who still remain quite unhappy and in that case we refer them to an independent commercial arbitrator. We have suggested one on our website, there are about four such organizations around Australia. We would readily agree to use any of them provided they have got an office convenient to both the parties.
There are two different kinds of dispute basically. There are disputes between the applicant and the domain name administrator and we have had two of those which have gone to courts in Australia in the first six months in which we set up our commercial bureau service. These were not disputes on intellectual property infringement, although both disputes were about the right of the domain name administrator to set and implement policy. In one case, someone appealed to the Small Claims Tribunal in Queensland and they got knocked back with costs against them. And in the other case, an ISP in Perth decided to appeal against Melbourne IT's right to actually charge renewal fees. That got to the threshold of the Federal Court and no further. There have been no disputes whatsoever in Australia on intellectual property infringement of domain names and I would say there is plenty of evidence that, that has been through a combination of the strict policy control, which really minimizes opportunity for cybersquatting, cyberpiracy etc., plus the existence of a dispute resolution Process. Now, to my knowledge the external dispute resolution Process has actually never been used. There has certainly been lots of negotiation with us, which usually amounts to our providing the facts of the situation as our policy, and not to act as an arbitrator. But it would seem that the mere existence of a dispute resolution Process can take a lot of the steam out of potential disputes.
Summarizing a point I made a few minutes ago. Only two disputes have been taken to courts so far and both challenged the right of the DNA to implement the .com.au policy and both failed. No disputes have gone to court on intellectual property issues. Now, about a year ago, Ross Wilson as Australian Trademark Registrar convened two public consultation sessions in Melbourne and Sydney, on the issues arising from the IP community, well represented here today, on trademarks. And the result of those sessions was that when Ross asked the audience to vote on a few proposals, there was a large support for variation of .com.au policy to accept domain names that were equal to a trademark when you registered in Australia for owners of those registered trademarks. There was also some support for creation of a .tm.au, but mainly if the first proposal was not implemented. ADNA, the Industry Self-Regulatory Body of which I am one of the Directors, wouldn't agree to that at the meeting, I think that was the final point at which as far as Melbourne IT was concerned ADNA was ceasing to function and that was the point at which we appealed to NORITA to help us move forward, which I have got great confidence we will do it at the .au Summit this Friday. Having been stopped on that score because Melbourne IT does not have policy control of domains that we administer, what we decided to do is be proactive instead and since June we have provided tests on the trademark database for those applying for com.au as I mentioned. So, if we can't cure it we can at least try and prevent the illness happening.
In summary, in the two years that we have been running this com.au domain as a commercial service, we have registered 48,000 third level domain names using policy regulation which we automated as far as we can. We have been particularly keen just to avoid the embarrassment of inconsistent subjective judgements. We have implemented strict policies which are part of our license conditions. These have clearly restricted opportunities for cyberpiracy and IP infringement. And finally, the existence of a dispute resolution policy has itself diffused pressure for disputes. Over 12 disputes have been notified to us, mostly with third parties objecting to an existing licensed com.au domain name, but none have proceeded to arbitration. And if any of those actions led to the second party, well that is not actually quite correct there have actually been about three cases when the second party did agree to hand over the domain name to third party and facilitated that Process. Pretty small out of a total of 48,000, but obviously extremely important for the companies concerned.
So, that is the end of my prepared talk, but just in response to some of the other points just taking another 15 seconds. I believe it is very important when developing Domain Name System policy, whether it is at the international level for ICANN or the Australian level, for a new industry self-regulatory body to give great weighting to the needs of end-users. Its surprising how little real market research has been carried out around the world by domain name registries and others into end-users needs. We commissioned some independent research last December, it was extremely valuable in terms of improving our service to end-users. The second point, following from that is that given that end-users do travel around the world, they do, do business globally increasingly, for the sake of end-users being able to understand how the international Domain Name System works. it is very important to try and achieve some harmonization between country code top-level domains. And lastly, in the creation of additional generic top-level domains, I think it would be actually useful for ICANN to conduct a limited period of genuine market research into this area and not just assume that the gurus or national representatives or others who come into the body have got all the good ideas with them as to what new domains should be opened up. Thank you very much.
(Mr. Francis Gurry): Thank you very much Peter and thank you also for having submitted your presentation as a comment on our website. Yes Philip Argy please.
(Mr. Philip Argy): Philip Argy from Mallesons Stephen Jaques and the Australian Computer Society. I think the two presentations we have had Mr. Chairman really do contrast nicely two different approaches. We have seen New Zealand in the top left hand box, if you like, with neither eligibility nor name policies, and over in the bottom right hand box it really does raise this question now of why Melbourne IT wants to make a rod for its own back by being so interventionist if you like or proactive. What is the policy logic? And I guess as one who has found I must say Melbourne IT quite helpful in resolving disputes since we deal with many famous names. Why do you think it is better to do it the way you do it rather than the way say New Zealand or the U.S. does it? Why not leave the regimes that are there outside the domain space to resolve those issues? Why do you see the need to have a parallel mechanism for resolving name disputes?
(Prof. Peter Gerrand): Several answers to that question I guess. Firstly, just to be factual Melbourne IT is not in a position to control the policy. Part of our licence conditions was, excepting an initial one, on the basis that we could obtain amendments to that if we could demonstrate we had enough Internet Community support and we have gone through that Process a couple of times first with the Internet Industry Association and then later with ADNA. But that is just the factual situation. I will have to say that having gone through this Process that I have seen the benefits to the Australian business community. It may not be beneficial to some members of that chain that provide names all the way throughout. Certainly on ISPs it requires some effort in actually training the staff and we try to minimise that through automating the testing Processes, giving more feed-back, without a doubt there is a greater training cost and load than if you had a open slather policy. The beneficiaries from .com.au would seem to be very much the end-users when once the business has got that .com.au domain name and stays in it. We have seen no inputs from those already having .com.au domain names for those eligibility policies to be relaxed. But I am fairly agnostic on this, I think that it is going to be important with whatever succeeds ADNA (ADNA plus is the new Australian self-regulatory body) that A, it has got a good balance of representation from end user groups truly representing business and those that act as agents for business through E-commerce to get their views on this and let that guide any change in policy. While the policy in the first place was invented by Robert (Elks ?) and I don't know to what extent that he was looking at other models or whether independently thought this was useful. Clearly one of the things Robert was trying to do is to try to find someways in which excluded words would align with the type of words which might be excluded by State Government Offices of Fair Trading or the Australian Securities Investment Commission Register of Company Names. I guess his additional contribution was of excluding generic products and services, on the basis that Robert thought it was an unfair advantage for the first pizza supplier in Australia to get Pizza.com.au and this of course is the hardest one for us to administer. And then we bring in lists from Yellow Pages, from an Australian and New Zealand combined list of goods and services which we used for customs purposes and a range of other lists, but the nature of products and services is that they do keep changing each year. And needless to say this is the year in which it is virtually impossible to automate, it is the year where most unhappiness arises when people can't get exactly the name they want. I might add though, contrary to some advertisements from one of the competitors to .com.au, some of the names which are claimed that couldn't be achieved for the policy were merely names that couldn't be achieved because they really had been allocated to others. So, there are quite a lot of the myths about the difficulties.......(end of tape)....
Like I said, it does not actually seem to have been in use, but it is there to be used. I think that given the whole point of .au is to provide an arena in which Australian entities can operate and therefore be bound by Australian law, it is extremely important that whatever dispute resolution Process that we have in Australia has got some general alignment with that environment. Thank you.
(Mr. Francis Gurry): Thank you Peter. Now, unfortunately we have run out of time before our lunch, .................... (interruption)................. Well, ladies and gentlemen I am sorry.
First of all let me apologize for the delay in starting this afternoon's session it was beyond our control really. I suggest we start with another five minutes or so with Peter Gerrand and then we were going to going on to Brian Fitzgerald, Gail Evans and then Jane Perrier and then Spiro Pappas. Peter, can you join us, and there were a couple of questions that were outstanding at the end, please.
(Mr. Marc Hughes, Effective Business Applications): I am Marc Hughes, I guess I am representing a feudal group. I am also, along with Peter, one of the Directors of ADNA. I would like to follow-up a couple of issues which were raised really this morning and I think were well highlighted by Peter's presentation following on from the Domains New Zealand one, and that is the issue of control. Because it is quite clear the difference in approach in Australia with the quite strong controls over the Australian domain names versus the New Zealand one. And I believe quite strongly that in the end that is what the discussion is all about, control. We have this rather large amorphous thing called the Internet and most of it has very little controls and then there are some areas where some groups of particular trademark owners want more controls than they have at the moment. And most of the issues we have been talking about whether its things like, oh! we have to control cybersqatting, other people out there will say, what is wrong with that, you don't need controls over that. Whether we want to have control to say the country code domain structure should mimic the global ones. There are some people who would say, well that is a valuable control, others would say it isn't. And so almost everything we are talking about is some sort of control. My concern is, I think we may possibly be approaching the problem in the wrong way and also in a way that is ultimately doomed to failure. I know from many discussions with Peter, that both he and I believe there are areas in the Internet that should have controls and perhaps other areas where there shouldn't be. And I think it is really appropriate to try and come to grips with that and look at the controls that are appropriate. If we look at the Internet in about another 10 years, and given that the domain names are really driven by the worldwide web, rather than the development in the Internet and that is sort of about five years ago when it really kicked off. About 10 years from now, I think it is fairly clear there is going to be about a million people, and I am going to use McDonalds as my sort of example here, because it is a well-known major brand. It also happens to be a very common surname, especially in places like Scotland. And we look about 10 years down the track it is going to be about a million families in the world who have got their own website and they are all going to have an Internet domain name with McDonald in it. I can tell you that your surname is McDonald, you really don't want one with Hughes in it like my name, you are going to want McDonald. They are going to find someone who is going to give it to them. So, if you look down the track, the problem for companies with trademarks is going to be a huge proliferation, unstoppable for domain names that have those names in there. And the only way to stop that would be to put the sort of controls on the Internet that it is highly unrealistic to expect-the sort of controls that is going to come in an area that is largely uncontrolled today. Most of the areas of the domain name administration don't have controls. Australia is probably the exception in terms of the tightness of its controls. So, we are going to have to live with that I think, in the same way that it is not illegal to have a surname McDonald and it just co-exists with the restaurant chain McDonalds. The same thing is going to happen on the Internet now. That may not be a lot of fun for the trademark owners, but its pretty well inescapable. But there is possibly an alternative solution that I don't think is really being pushed hard enough. The Internet domain real estate is, unlike a physical real estate, a bit more expandable. And if we think that the existing part of domain name space does not have enough controls to enable us to build the trust that we want. That is, I don't know which McDonald this is. It is really quite an easy task on the Internet to take a new section of the Internet, expand the real estate and build that section of the Internet with the controls we want. To effectively do what I guess the trademark owners would have liked to do, if we thought about it six or seven years ago, we would have got there very quickly, and that is, carve off a section of the Internet and build into it the integrity and the trust and all the controls you like and say you don't have the problem. And that would then become known as, quite easily recognized as a place where the controls and the trust are there. At the global level you might put in .tmk, at the country code level you might put in .tm.au. And those areas would be reserved specifically to trademark owners, and would in fact be administered by the trademark organizations world wide and they would very rapidly be known as a place where there was inherent trust, because all the controls would be there. And so, that option is there, is available to us now to take a new part of the domain name space and to create an area with the controls that people would like, because I will guarantee that you might get some controls over some bits of the existing amorphous Internet, but you are not going to get enough controls to solve the problem.
One other point worth considering is that it is an opportunity or a strategy that might be worthwhile because it changes the way you look at the existing part of the Internet. The more we decide we want to build an area with integrity and trust. That is actually what you get with controls in the same way that .com.au has controls, and therefore it does have some integrity and some trust in it. We know there are no fly-by-night operators in .com.au because the rules of getting in there are quite straight. So, we go and build an area of trust, it is actually an incentive to take the existing part of the Internet, the existing global top-level domains for example and lower the level of controls, the level of trust in those to increase the level for example in .tmk. And the easiest way to solve the problem of things like cybersquatting would be to create another couple of thousand global top-level domains. Because that would make it such an amorphous area that the public would very soon learn not to go looking in there and expecting trust and they would in fact all go over to things like .tmk to look for Sony and McDonalds etc. So, I meant to toss that up as another way of looking at the problem. Rather than the difficult problem of trying to put controls into the existing Internet space with its problem of partly global, partly country and different countries wanting different things, is actually to approach it differently, create a new area and build into it the integrity you would like.
(Mr. Francis Gurry): Well, thank you very much. Peter would you like to comment on that?
(Prof. Peter Gerrand): Yes, I would. I support most of what Marc is advocating and my perspective is that the Internet itself is still in its infancy, only about 29 years, and electronic commerce has barely started. And we should perceive some of these initiatives. I again feel that if ICANN can ensure through its structure that it is driven by users needs, that will lead to specialist top-level domains as well as specialist second-level domains and country codes to meet the deep requirements. Lets try them out and see if they work. And as another perspective, I think it would be wise to proceed with innovation of new names at the level of which the general Internet users could cope with understanding them and within a system where the structure made sense. I would not be in favor of introducing a hundred or a thousand nw top-level domains, even if the Internet technology could cope with that. But I was reminded that probably 20 years ago there weren't one eight hundred numbers, the one three numbers in this country. And nowadays telephone calls to those numbers account for more than 50 per cent of all national traffic. And they were set up with a specialized meaning attached to those numbers which now the general public understands as being global and not specific to a particular part and in the case of one eight hundred numbers the one party does not have to pay. So, I think it is just as with the telephone system which has been going for quite a bit longer, with the Internet when we create new top-level or second-level domains we have got to have a simple semantic to go with them. Simple meaning so that they can be understood by general users. Clearly this is why we very much need also an integrated approach to policies across both the top-level and within country codes. So, that people can understand the choices which for the most part need not overlap too much in that palette of alternatives. Thank you.
(Mr. Francis Gurry): Thank you Peter. Ken Fockler I think you had some observations you want to make. Fine, Okay. Any other questions while we have Peter Gerrand? No, okay well thank you very much Peter for your presentation. So, Professor Brian Fitzgerald and Ms. Gail Evans I think you are doing a tandem?
(Professor Brian Fitzgerald, Dean and Professor, Southern Cross University Law School): Yes, if that is okay. I will speak briefly and Gail as well. Good afternoon everybody, Brian Fitzgerald and I am from the Southern Cross University Law School which is based in Lismore. I have not come digitally enhanced like other people today. My day job is running a law school and I only get to research and write about cyberlaw I suppose after hours, so this is very much done on the run, a lot of notes scribbled down during the day, but I feel it is totally necessary to come and talk about some of these issues. As I say, I have written a fair amount on issues relating to law on the Internet. I just mentioned two things that I would recommend as having an Australian focus, a book that I am the co-editor of that was released recently called 'Going Digital; Legal Issues for Electronic Commerce Multimedia on the Internet'. It is published here in Sydney by Prospect and a journal that will be launched tonight, the University of New South Wales Law Journal, Special Edition on E-commerce which is launched by Richard Alston tonight at Mallesons. I have got a couple of articles in that, one of them being on domain names, co-authored articles at that. But, that would be an influential addition of that Law Journal particularly relating to electronic commerce.
That said, let me move into some of the issues I have raised in the statement. As a preliminary remark I must say that I am extremely disappointed that the gTLD-MoU has been somewhat buried over the last year, under first the Green Paper and I suppose somewhat resurrected under the U.S. White Paper. But that was a very detailed document that I think has started us along the route to actually dealing with many of the issues that have to be dealt with. Another preliminary remark is that this is not a small issue and this is not a narrow issue, this is a big picture issue. I mean all the "isms are here, internationalism, informationalism, globalization, economics and whatever else you want to put into it are all wrapped up in the question that we are here to talk about. I see the allocation of domain names as not just being a coal face activity of administering who will have a domain name, but as being one of the building blocks of the information economy, and the whole legal structure that will motivate that economy. On the back of that I have to say in response to some of the comments I have heard, and I very much enjoyed Peter and Patrick's presentations, but some of the marks I have heard made about intellectual property move me to make some comments. I think the whole background of the domain name issue is all about intellectual property. The whole issue, the whole reason we have intellectual property laws is to commodify information, to make it valuable so you can sell it in the market place. If intellectual property wasn't an issue in domain name allocation we just would not be here today. There would definitely be no IP lawyers here, but if the information was free we just would not be interested in these issues. So, I see intellectual property as being really the primary concern here or the primary value if you like. And it is interesting, I really latched on to two things that the previous presenter said. Peter said and talked about policy rich, I don't know what the other one was. One was policy rich and one had no policy at all, .com versus .com.au. Saying that there is a policy behind the allocation in Australia. The value, or I might even call it value laden, the value laden policy in Australia seems to be that intellectual property rights are important. It is probably not that strong, but it certainly seems to be moving that way. The American approach has been and the New Zealand approach seems to be that there is no value laden policy and that intellectual property is out there somewhere and that issue is resolved somewhere else. So, I think there is certainly this choice that has to be made, do we believe in intellectual property, should we protect it or don't we believe it? If we do believe it, should we protect it and how strongly do we believe it should be protected? In a nutshell, my view is that if you don't have a law that commodifies and protects information and when you are in an information economy, you are actually in a very dangerous position. Your market won't work and you wont to be able to sell your products. So, I believe firmly that we need laws, whether you call them intellectual property laws, information laws or whatever, E-commerce laws that will help the information economy work. They are my preliminary comments and I will speak very briefly to the substantive comments I made in the statement. It was a very brief statement, but I will speak briefly to those and then hand over to Gail.
There were three issues that are raised in the statement. One was to deal with the expansion of gTLDs, the second one was to do with resolution of competing clients and the third one was to do with adequate governance structures. On the first issue, expansion of gTLDs. And these are simple issues that are raised but I think they need to be raised and at least considered. They certainly were in the gTLD-MoU and I feel that they have been somewhat buried in recent times. A crucial decision I think is whether we need gTLDs or just ccTLDs and I think that has already been raised in a number of the papers. Should the U.S. be forced to use .us. Very difficult, I can hear the moans here, very difficult indeed. I think it is inevitable though that in an age of global informationalism we will seek to have a generic top-level domain or generic top-level domains and I think that problem will sort itself out. But there is an initial question, should we just have country codes? Should there be an international gTLD? If so, why so? My answer would be because this whole global informationalism economy will require it. The next issue obviously then is how many new gTLDs do we have? Do we have five as the Green Paper suggested? Do we have seven as the gTLD-MoU suggests? How many? Why and on what basis would we expand? I think close attention needs to be given to the task and function of those new generic categories. You know one question from an IP angle is, are we going to create forty odd new gTLDs to mimick the classification system in trademark law. No one suggested that yet, but the seven new domains that were suggested by the gTLD went some way towards that. No one I don't think has really given us a clear indication of what is the basis of the new and expanded gTLDs. Why expand and on what basis?
The second issue is to do with resolution of competing claims. Obviously the initial disputes were over domain names and trademarks and they come under that title of cyberjacking or cybersquatting. I think and I can't be certain about this, but I feel that the IP lobby has started to move the debate much further than a simple dispute between a domain name holder and a trademark holder. And that the new problems or the big issue for the future will be the one that was raised just a minute ago, about the competition between trademark holders. I mean I think we saw in the gTLD-MoU a clear indication that the trademark holders would be given some sort of difference much more so than in the NSI policy. So, I suppose the big issue for me in terms of resolution of disputes is not going to be domain name versus trademark holder, but it is going to be trademark holder versus trademark holder. I mean we could potentially have a McDonalds in every country in the world, in every trademark classification in the world you would have an infinite number of people wanting to register McDonalds.com. So, the real issue is, how do we resolve this fierce competition that is going to come from Italy and the U.S. and wherever, to have some of these more popular domain names in the .com domain or the expanded domains. The last issue which I would like to pass over to Gail Evans my colleague from Southern Cross really relates to adequate governance structures and I think I will leave it to her to elaborate on a few of those issues.
(Ms. Gail Evans, School of Law and Justice, Southern Cross University): As Brian said, my name is Gail Evans. My research is in the area of intellectual property and the international legislative process, as exemplified by the making of the TRIPS Agreement. So, I am going to address the third issue in our statement, which is adequate governance structures. The governance and administration of domain names should not be approached or regarded as a peripheral issue. Cybercommerce and trade will increasingly become a major sector of the global economy. It is therefore inevitable that States, as major actors in international society, will become involved in governance directly. We submit that what is needed is a system of multi-level governance which is inclusive of both public, and let me emphasize, private entities. With respect to both rule-making and decision-making, both public and private entities can participate. The debate concerning governance today has assumed that domain name administration should go with either public or private administration. A dichotomy between either the UN, WIPO, municipal Governments or the corporate sector private entities. However, multi-level governance encompasses a hybrid system, in which both public and private entities are appropriately involved according to their respective capacities and capabilities. My research into the international legislative Process under the WTO, in particular the making of the TRIPS Agreement, shows that in the making of the TRIPS Agreement producer associations, corporations, were involved in the rule-making Process. States will become involved in domain name governance due to the future magnitude of cybercommerce and due to the fact that States are still major actors in international society and within the international legal system. With respect to governance and the legal system there are problems, difficulties with a private system of arbitration referable to courts at the municipal level. First, there is a problem of jurisdiction. Private entities have no jurisdiction, nor can they invoke jurisdiction. Secondly, private entities cannot make rules for Governments. If domain name governance remains exclusively private, that is private rule-making and decision-making, we will not build up a body of jurisprudence thus creating an orderly administration and certainty. And giving rise to, to borrow Peter Gerrand's phrase a policy rich Domain Name System. I will conclude my remarks there, but refer you to our statement which will be posted to the web. Thank you.
(Mr. Francis Gurry): Thank you very much Gail. So I would like comments or observations to either Brian Fitzgerald or Gail Evans. Ken Fockler please.
(Mr. Ken Fockler): Just clarification on your last comment. Will you post that to the WIPO site or on your site?
(Ms. Gail Evans): Yes the statement is with WIPO and I just mentioned to Ken that in the statement we refer to our respective publications on these matters.
(Mr. Francis Gurry): Yes, I confirm it is. It is posted on our website which is http://wipo2.wipo.int. Roger Hicks please.
(Roger Hicks): Yes, I would like to make an observation, maybe Brian could respond to it. Going back to one of your comments, Brian, about domain names being crucial and key to the future of E-commerce. If I can make just an observation, as I say. Numbers are difficult to remember and one explanation for domain names was that they have become a lot easier to remember than straight numbers. However, I would suggest that domain names actually aren't as easy to remember as trademarks. Looking forward, do you see maybe the issue is that there will be other technologies and given the rate of change, these might not be so far off. Where in fact the debate about domain names as being a long-term issue, in fact is an irrelevant debate.
(Prof. Brian Fitzgerald): I would like to think so, because I think to a large extent we are being waylaid or delayed on the issue of domain name allocation. It would be far simpler and far more efficient if it was an easy allocation system. I think the complicating factor is, as I have tried to reinforce, is being that there are intellectual property rights and information is not free in our society. Large chunks are and large chunks are not. Because intellectual property law exists it has caused this issue and I am not saying that is good or bad I am just saying the issue is here. If we come to a point where trademark holders can feel that their valuable information is not being misappropriated, I think we will be at a point where we can allocate domain names without any fear. But at the moment, I think the trademark lobby is so strong and maybe rightfully so, that they feel that the goodwill and the value that they have actually created is being unfairly or unjustly taken by others. So, I see intellectual property as the barrier at the moment and rightfully so. The point I am trying to make and I will make it again is that from a lawyer's perspective, I would not go into the market place and sell my information or product with no legal protection, because it would be worthless. So, that is the issue and I think trademark holders are right to raise these issues, its just such a difficult issue to resolve. But I thought the gTLD-MoU was a great starting point and I hope that has not been buried.
(Mr. Francis Gurry): Thank you Brian.
(Mr. Patrick Fair): I thought it would be useful just to make this observation. Reflecting on why there is that link between the domain name and the trademark. One of the important characteristics of the domain name is that if you put it on the back of a bus, you say to the public, this is a place on the Internet, and without having to say we have a site or you can visit us through this, the actual domain name carries with it quite a lot of additional information because of its format. The format itself has become distinctive to the public of representing a place on the Internet where you might be able to do E-commerce or you might be able to get more information. And what it does is it actually enhances the trademark and tells a person in a single line that there is this Internet location and you can go there. And that really is the powerful link between the trademarks and the address. And one of the reasons that this future that some people see, where Internet addresses don't have significance may actually not eventuate because companies will not choose some longer, less efficient way of telling people that this is a website. And it is hard to see anything more efficient than just having the domain with the distinctive elements. So, I think we are probably stuck with them for longer than people think. And that combination is quite important and the link between the mark and the address is quite important.
(Mr. Francis Gurry): Thank you. I went to the cinema the other night and one of the advertisements that came on before the feature film consisted essentially of three friends, three pictures. The first picture was a man going up an escalator you viewed the upper part of his body and you watched this. The second friend was the same man viewed from behind walking along the shopping mall which was quite busy without any trousers on. And the third friend was just a blue screen with www.levi.com. There was no jeans in the advertisement and there was no mark, just the domain name. Are there any other observations?
(Mr.................): from the Internet Industry Association. I hope Patrick does not take this as speaking against what he just said. There are technologies that are emerging, I mean this is a classic of, I suppose, regulatory blockage in the Internet. And what the Internet typically tends to do is to wrap around that and we are aware now, is anyone aware of the website Netword in the U.S? There is a site now where you can actually go and register a word, any word you like and then with that word you also register a URL and what they are promoting themselves as is a place where you can go, type in a word and get taken to any website. So, that in a sense undermines a lot of the argument that we are having here today. Although, I mean there are going to be regulatory issues that arise there and I do have procedures in place and dispute resolution mechanisms and so on. But for instance if I was Levis, it would not really matter who has got www.levis.com. I could just go to Net registry and register the word Levis and primarily it is on a first come first served basis, which is why they have this dispute resolution procedure there. But then anyone, all they need to do is go to Net registry, type in the word Levis and get taken to whatever menu you are on or might be. So, in that sense the domain name becomes irrelevant. If we went a step further and looked at what would happen if the browser companies bought up Net registry, you are then looking at a situation where a user won't need to type in a URL according to the terms and tradition of domain names, they will just type in a single word in the location bar and get taken to the site. So, I hope that the discussion is not irrelevant, but I am mindful of the fact that in two or three years time we may look back at all the effort that is going into this debate and just wonder whether we ought not have just allowed the market to develop a solution. Having said that, I have got to concur with what Brian says, that we are looking at a fundamental tension here between traditional ownership concept and the Internet which so efficiently undermines that and we are not just looking at trademark owners, we are looking at governments and any established power structure is really looking at its authority being undermined here. And what is being undermined is the right of trademark owners to extort maximum value out of what has been a propriety right. So, anyway, that is just an observation.
(Mr. Francis Gurry): Thank you very much for your observation, but may I ask you a question on it? This Netword acts therefore, as in a certain sense, a guarantee of trust and confidence, because when you type in "Levi" for example, what is there to say that you are going to get Levi jeans as opposed to Claude Levi or something else?
(Mr....................): In the first instance nothing, but, as I said, there is a complaint mechanism where Levi Strauss and Company goes to the Netword within the relevant period and says, well look, we have actually a trademark here. They have got mechanisms for actually transferring that word across. I did not say it is going to solve the problem, but all it does is it removes it one step back perhaps and later a cleaner solution. The other point that Patrick made about there being some caché in having www.com before your name. I mean that is true in 1998, but it was certainly very true in 1997. I would have thought that at the rate of the E-commerce update in the U.S. and particularly in Australia increasingly, but in five years time, everyone is going to be on the Internet so the issue then might not be the www.com, but rather a simple word that people would have to take them to your site.
(Mr. Roger Hicks): Just a follow-on comment from that about Netword. If people aren't aware, there is a country code domain which is used as a global domain which is aimed particularly at providing a directory of trademarks. So, if you go to www.trademark.io, you will find you will flip direct to the trademark holders site if there was only one trademark of that type. If there are more that have been registered with it, then you will actually get a web page with all those trademarks with an identity as to which one is which, from which you can then select. This was set up entrepreneurially by a U.K. organization which was aimed particularly at providing an answer to this problem of what you would do about multiple trademarks with national jurisdictions across an international media like the Internet.
(Mr. Francis Gurry): Thank you. Fine, well thank you Brian Fitzgerald and Gail Evans and may we move now to Jane Perrier please from Telstra.
(Ms. Jane Perrier, Deputy IP Counsel, Telstra Corporation Limited): Now, Telstra would like to thank WIPO for the opportunity to participate in the international Process to make recommendations on questions concerning the relationship between Internet domain names and intellectual property, including dispute resolution. Very briefly, Telstra is the leading supplier of telecommunication services in Australia and a growing supplier of telecommunication services internationally. Our business is supported by a significant number of trademarks which are both important identifiers for our customers and key corporate assets. Telstra is also keenly aware of the commercial opportunities the Internet presents for our business. As far as the trademark owner and Internet, user Telstra is therefore conscious of the complex inter-relationship between Internet domain names and intellectual property rights and supports the efforts to simplify the relationship and resolve disputes in an equitable manner.
This paper is intended to very briefly address the four key issues raised in the explanatory material distributed for this consultation. The first of which was dispute prevention. Telstra believes that one of the key objectives of the effective management of Domain Name System and the protection of intellectual property rights, is the prevention of disputes between domain name owners and domain name and trademark owners. To this end, Telstra makes the following brief submissions.
As a preliminary point, Telstra believes there should be international recognition that any Domain Name System will impact on trademark rights. And that trademark rights must be one of the factors taken into consideration when domain names are issued and reviewed. The Processes and criteria for domain name registration should be uniform and consistent and include at least the following factors: The registration of a trademark should be one of the grounds for supporting an application for registration of domain names. Any application to register a domain name should be accompanied by details of the applicant, including its legal title and physical address. It should be accompanied by a registration fee and a statement that the domain name is intended to be used by the applicant in relation to specific goods or services, much as business or company names in Australia require you to specify the type of business that you intend to carry on.
Finally, a statement that the domain name is not a famous or well-known mark and that reasonable enquiries have been undertaken by the applicant to ensure that the domain does not infringe third party rights including intellectual property rights. The applicant for registration of a domain name should agree to arbitration of disputes relating to the registration or renewal of the name in a specified form and by a nominated decision maker. Any application for registration of the domain name should be subject to an advertisement and a reasonable objection period, during which time third parties should be given an opportunity to make submissions as to why registration or renewal of the name should not be effected. Domain name registrations should be recorded on registers accessible on the Internet.
Finally, registration of a domain name should be renewable at regular intervals subject to the payment of renewal fees and accompanied by a statement that the domain name is currently used in relation to specific goods or services. If ongoing use of the domain name cannot be sustained, the registration should not be renewed.
On the question of dispute resolution. Telstra believes that it is important to bear in mind that disputes concerning domain names are of equal importance to naming disputes which arise in the real world. They therefore warrant the same safeguards and controls as any other type of commercial dispute. Obviously, preventing the escalation of disputes by the use of alternative dispute resolution mechanisms should be intended to reduce costs and provide parties with commercially attractive alternatives to litigation. However, ultimately the courts must be the final arbiters in disputes between domain names and trademark owners.
In relation to dispute resolution Telstra makes the following submissions: Disputes relating to the registration or renewal of a domain name should be referred to an appropriate central, probably online, authority for the particular domain name for a hierarchy. The central authority should have both intellectual property and Internet expertise. Both parties should be given an opportunity to make submissions and to respond to submissions made by other parties. Factors which the authority should take into account when making its decisions include; adherence to the domain name registration Process as outlined above, the scope of the proposed use by the domain name owner, the scope of the trademark owners rights including registered rights, rights by virtue of use and issues such as dilution. Finally, the likely impact on both parties and consumers if the domain name is registered or if registration is refused. The authority should issue a written decision and the authority's decision should be appellable to an appropriate court.
On the question of protection of famous or well-known marks, Telstra strongly favors a single uniform system for dealing with famous and well-known trademarks, including a central WIPO register published on the Internet for the record of such marks. The same system and criteria should be applied to both the intellectual property and domain name communities. Marks accorded the status of famous or well-known should not be registerable as domain names or as part of domain names, other than by the trademark owners.
And finally, the question of new gTLDs. Telstra recognizes the commercial attraction of introducing new top-level domains. However, it must be understood that the introduction of new top-level domains will increase the likelihood of disputes between domain names and trademark owners, and increase the likelihood of consumer confusion. Accordingly, proposals to introduce new domains should be carefully considered, particularly the motivation for establishing new top-level domains. In relation to the latter point, I am going to disagree with one of the comments that was made earlier. I don't believe that top-level domains should be intended to function as a pseudo or a de facto trademarks register. The registration of domain names should enhance the opportunities for doing business or communicating on the Internet. They should not be intended as a new means of protecting trademarks, which is the role of the international trademark laws and procedures. Therefore, proposals to introduce new top-level domains for the protection or identification of trademarks should be viewed with some skepticism. Telstra thanks the WIPO for the opportunity to make the comments.
(Mr. Francis Gurry): Thank you very much Jane. I open the floor for observations or questions. Patrick O'Brien please.
(Mr. Patrick O'Brien): I think I have got two questions. First question, do you have 0800 word numbers here in Australia?
(Ms. Jane Perrier): Only a few.
(Mr. Patrick O'Brien): So, on that question, do your rules apply on trademarks to 0800 word numbers? That is the first question. The second question is, what is to stop Telstra as a service provider or registrar introducing all of those rules to your direct customers, i.e. not putting the responsibility on the central registry? And how do you think you might survive in the market place if your rules were as tight as you would like, versus some of the other ISPs who might want to take a slightly more flexible approach?
(Ms. Jane Perrier): I think the slant of this type is obviously from an intellectual property view point and from Telstra's role in that respect. I would say very much the view that it is up to the registrant and the client to try and resolve the issues themselves and it is really not the registry's job to try and do that for them. The mechanisms I guess I am suggesting are trying to open the means of communication for disputes to be resolved. So, the preliminary questions of who has my domain name and where are they registered, can be looked at before the thing can be referred to some sort of arbitration.
(Mr. Patrick O'Brien): In terms of 0800 word numbers,do you think these rules should apply to those as well?
(Ms. Jane Perrier): I have no comment on that at this stage.
(Mr. Francis Gurry): Thank you Jane.
(Mr. Athony Alvi, Integrated Options): I certainly agree with what you said that domain name registration should not take the place of trademark registration and there are existing international trademark agreements to look after that particular issue but ............... (end of tape)...................I would like to relate to what you said to, what Peter has said. I hold in my hand, and I am not doing a Neville Chamberlain here, I hold in my hand a small item called a Palm Pilot, which is in fact possibly going to make these conversations irrelevant within the next two years and I will explain the reason why. Not because it is a Palm Pilot, but because it is mobile computing. The estimation is that Internet access by the year 2002, only 40 per cent of it will occur from the desk-top. Most of the moves by people who have commercial intention to the Internet is to move to a far more iconic type of screen real estate. And by that what I mean is the actual use of the trademark emblem itself as the denominator or the link or the method of accessing the particular companies. So, for example, if we going back to talk about Levis, either the name Levi or the trademark Levi or even a picture of jeans for that matter as a method. And if you look at the software development that most of the people in the mobile computing area are coming out with, they are looking at doing deals for example with search engines and that particular Netword site. What you do is you download to your mobile computing platform the icon which is effectively the link which connects you via whatever your mobile computing platform or your mobile computing supplier is to the site in question. So, to a certain extent it is irrelevant what we are discussing because within two to four years the paradigm of the user and the interface confronting the user will be, as it always is in this in this environment iconic as opposed to word driven. Therefore, back to Telstra's point, the relevance of the international trademark agreements and the importance of those as a way of protecting the value of the iconic trademark becomes even more crucial to the Internet and far less the nomenclature or whatever other method you want to describe it for defining the domain name. So, I think although this is an admirable Process it may in fact be important for us to envision the direction in which the technology is going from a users point of view. And I know that this has been brought up a couple of times today and for us perhaps to be less hung up on the question of which words will we use, but more how will we facilitate users recognizing and participating with trademarks in a virtual, rather than a physical or territorial environment.
(Mr. Francis Gurry): Thank you very much Anthony. Jane would you like to make any observations? No. Okay.
(Mr. Leni Mayo): Leni Mayo, hello Jane! I guess there are three questions which I would like to take one at a time if I can. Firstly, experience has shown on the Internet that its much more difficult to keep information current, fresh and up-to-date than it is to gather it in the first place. It seems to be quite easy to gather information and much more difficult to keep it fresh. So, with respect to the suggestion that domain name registrants declare the purpose to which they intend to put the domain name, I wonder how that information is going to remain up-to-date and certainly my experience as a registrar is that often people register a domain name and not quite too sure what to do with it. So, I guess that is the first point which I would be interested in hearing your comments.
(Ms. Jane Perrier): I guess I would say the renewal system is having some point to play there if the renewal is twelve monthly or two yearly or whatever it is. Then it is just simply an updating of the status and again the domain name owner can make an assessment at that time as to whether or not it still wants the domain name. It may have well registered, as you suggest, because it had a good idea of the time, but that has changed. So, it cleans up domain names just sitting there.
(Mr. Leni Mayo): Indeed I agree, that is why the renewal system is there. Asking people to pay money is an excellent way of keeping the system clean. The second point is that I am not too sure what it is with lets say the way telephone numbers work, but certainly as an individual person I have a home telephone number and I would be concerned if someone could simply look at that telephone number and on the basis of that telephone number find out exactly where I live. That is a privacy concern that I just have on a personal basis. So, taking that over into the domain name world, I wonder how you see the debate moving backwards and forwards between the obvious interest that the trademark community has in lets say, an address for service for process, and people who are concerned about the privacy side of things?
(Ms. Jane Perrier): I think the registration of domain names is in itself a public act, and it has public ramifications. And as such, I don't think a requirement to have a minimal standard of public disclosure is too onerous on the applicant. Presumably the intention of registering a domain name is that you will actually be doing something on the Internet, you will be communicating, you will have a page, you will be selling goods and services. If you are not doing that, then you should not have registered in the first place. Now, if that is what you are doing, it may well be that your IP rights are going to be in conflict with someone else that is in the public domain. I don't think simply disclosing who you are goes too far in a privacy direction. It is simply a fact of being able to contact them. Other registrars presumably need to do that in any event.
(Mr. Leni Mayo): Okay. And the third question is, sorry for taking up so much time here. The third question is the issue of new generic top-level domains. Currently, let us say that there are two very popular generic top-level domains that are .com and .net. .Net is experiencing some spillover from .com. But, on the other hand we have in Australia 42 classifications for trademarks. So, I am wondering whether as if we have got 42 trademark categories squeezing into let us say two generic top-level domains, add in the jurisdiction issue from all over the world, where there is in some sense there is a vision that adding more of generic top-level domains may in fact ease the burden from the trademark owners perspective. And just another additional comment there, given that we have got let us say, 20 or 30 per cent of country code top-level domains being sold and marketed as generic top-level domains and that the dispute resolution policies there are rather non-existent or extremely different. Is it not in the famous and trademark communities interest for there to be new generic top-level domains that are subject to a dispute resolution prevention framework as we expect to see in the outcome of the WIPO Process.
(Ms. Jane Perrier): I don't see introduction of new top-level domains as being advantageous to trademark owners. I mean our principle reason for being on the Internet is to do business. So, the figures of "48 per cent" of people being in .com seems to bear that out. People actually want to be there because that is where they know they can buy and sell goods and services. I don't see the introduction of 42 top-level domains as being the answer. In fact, you don't have to have a registered trademark. If you have an unregistered trademark you are not subject to classification at all. I think it is simply a means of trying to narrow down or eliminate if you like disputes, so that people with business names, people with company names, people with trademarks, people with domain names at least give some indication of the industry they are interested in or the goods and services that they are interested in. So, that if the thing goes to dispute that can be one of the issues that is sorted out between the two parties. I mean it may well be that the trademark owners are not at all perturbed by somebody who is not in the same industry as them. But a blanket registration of a domain name effectively, if you like, covering all of those 42 classes makes it very difficult for both consumers and trademark owners to differentiate between the trademark owners goods and services and the domain name owner.
(Mr. Francis Gurry): Thank you very much Jane. We can take two more questions and then we will move on.
(Prof. Peter Gerrand): Jane, I remember about 15 months ago that Telstra was the first Australian company to sign up in support of the gTLD-MoU, part of which was a proposal to introduce 7 new top-level generic domains. My understanding is that ICANN is intending to support in that order, might be 5, 6 or 7 as well. Has Telstra's approach changed at all in the last fifteen months in terms of support of additional top-level domains?
(Ms. Jane Perrier): I am not in a position to comment on that specifically. As I said in the paper, I don't think Telstra is opposed to the introduction of new top-level domains. I think it is inevitable and I think it is commercially desirable, but I don't think a thousand is necessarily desirable and I don't necessarily think a .tm is desirable. So, I think that any introduction of new gTLDs needs to be looked at. But in terms of the specifics of that, the paper is really more of an intellectual property feint I guess.
(Mr. Francis Gurry): Thank you. The gentleman here, the last question.
(Mr. Larry Bloch, CEO, Net Registry): (audio difficulty) My name is Larry Block, I am the CEO of Net Registry. Just a couple of comments on some of the things you mentioned. You did say that Telstra believes that any dispute arising out of domain name issues should be resolved by the claimants. Is that correct? Do you find that this is at all inconsistent with having a policy whereby domain names can't be registered prior to an approval process. Essentially, I see if you are going to put a notification up that the domain name has been requested and allow people to object to that you are essentially forcing a central body into a position of having to make a possibly arbitrary decision on who has the validity in that claim. I think that ultimately what we have to do, is to move towards a system where names get registered and those registrations then stand and disputes take place at a later date.
(Ms. Jane Perrier): I guess we are looking for the most cost effective speedy resolution. If things can be resolved without having to go to arbitration then that is going to be cheaper than arbitration, which is cheaper than litigation. If a potential domain name application can be notified and the dispute can be resolved before the domain name is granted, the site is set up, people start trading etc., presumably that is going to be more cost effective than afterwards. But, not all trademark owners can afford to spend their days scanning acceptances of domain names if you like. So, I guess the two things work in tandem.
(Mr. Larry Bloch): I would agree with you that it is difficult to scan all registrations of domain names, particularly with the introduction of new gTLDs. However, I believe that each player provides that role and I am aware of a couple in the U.K. who do just that. The thing that I had an issue with is putting on hold every single registration, by every single individual or company that requires the domain name, because there is the odd chance that some of them may result in a dispute. And I think that just in terms of the amount of time taken and wasted by having names on hold would lead to, and I mean that people do agree with me and I know that Dr. Black and I had experiences in the U.K. where there was a Process of approval by a committee, and that actually ended up being approved and workable and in many ways projected the U.K. domain name registration for dispute for Nominet.
(Mr. Francis Gurry): Okay, thank you. Jane your observation?
(Ms. Jane Perrier): I guess the only comment I would have there is that I don't see the Internet as being anything special. I mean, if you register business name, it takes a full ten days. If you register a trademark it takes two years. If the waiting period is three days, seven days I don't think that is unreasonable.
(Mr. Francis Gurry): Okay, thank you very much Jane Perrier and thank you to Telstra for its submission. Spiro Pappas please from Mallesons and then we will take a coffee break.
(Mr. Spiro Pappas, Senior Associate, Mallesons Stephen Jaques Solicitors): Okay, good afternoon everyone. My name is Spiro Pappas. I am a solicitor with Mallesons Stephen Jaques who has prepared a draft statement and the submissions today are from this draft statement. The final statement will be going on to the WIPO Internet site by the end of the week. Mallesons has prepared direct responses to WIPO's Request for Comments and these responses are mainly concentrated on the area of dispute prevention and basically I have got some considerations and suggestions here today which I will be submitting, which basically Mallesons have become aware of through acting for certain clients in some disputes. At the outset I would like to say that Mallesons does represent a broad range of clients. These include clients with interests in both the fields of technology and the Internet, as well as clients with large trademark portfolios. So, consequently, Mallesons does understand that there are competing interests between these clients and at the same time recognizes that if the Internet is going to continue to be a forum for international commerce, these interests have to be recognized in a Domain Name System and have to be balanced in a Domain Name System. I will turn straight to the specific questions that WIPO has listed in their Request for Comments. As to the elements that should appear in a domain name registration contract, Mallesons does believe that there should be a public record showing sufficient details of the domain name registration including the proprietor's name, address, the jurisdiction which the entity is registered, a registration number if applicable, address for service of notices. I suppose that is one way to keep, I know a colleague of mine earlier on, Philip Argy was discussing Mallesons view point that dispute resolution should be, or the registrar and registries should be kept out of dispute resolution Processes and I suppose this is one way to keep the registry out of resolution Processes. If this information is supplied up-front by registrants then there is no need to involve registries in trying to obtain this information at a litigation stage.
On the question of waiting periods prior to the activation of domain name registrations, if this is what the gentleman here was asking about a few minutes ago, Mallesons does not believe that it is desirable to impose waiting periods prior to activation of registrations. It is a type of imposition that could unjustly prevent a party from carrying on a legitimate business. We have this publication system that the various trademark registries use, and that does serve a useful, well if we put a system, a publication across into the domain name area it would serve a useful purpose in placing third parties on notice of domain name registrations. However, that system should not be introduced to the extent that a domain name registration is suspended until the dispute is resolved. As I said, you can encourage anti-competitive behavior and it could be used by parties to prevent a legitimate party from getting its product onto the market. The publication system that we have for trademarks really works because a trademark applicant can still use its trademark in a period in which a mark is being imposed. And so, if there is a system, it is desirable to impose some sort of system of putting third parties on notice and objecting to a domain name registration. And it should still get through to registration and a registrant should be allowed to use the domain name and any objections to it and a disputes arising from that objection should follow the registration and be decided afterwards.
Mallesons also believes that it is desirable to suspend the activation of domain names until payment of registration fees has been received. It is just a further action that deters cyberwarehousing and just makes it a bit more costly if one particular cyberwarehouser wants to go ahead and file 200 or 300 domain names. As for measures to mitigate warehousing of domain names, Mallesons would encourage any measures which would mitigate warehousing of domain names. There is the policy that Peter Gerrand was referring to earlier, the com.au Domain Name Allocation policy, which states that only one domain name is licenced per registered commercial name. And this can indirectly discourage warehousing, a potential cybersquatter will have to obtain different business name registrations on which to base a domain name application and this can be quite costly. Although, there is also the argument on the other hand, that parties should be allowed to register more than one domain name, especially parties which may have various trademarks and there is a question there, whether they should be stopped from doing that simply because they have only got one business name registration. As to a more direct procedure which could discourage warehousing of domain names, there is a procedure under the Trademarks Acts of various countries where a mark can be removed if it is not used for a certain period of time. And that could be a procedure which could be introduced in a Domain Name System. There is the .tb domain in Belgium and under the terms and conditions of that domain there is a procedure where applicants agree with the registry that if they don't make regular use of an assigned domain name for any period of 90 days or more, they will on request from the registry relinquish the domain name to the registry and that makes it available for other parties to register anew. So, if measures like that can be introduced that would discourage warehousing of names. By forcing a cyberwarehouser to use a domain name obviously they are susceptible to that action for removal. But also, cyberwarehousers are more open to actions under trade law in Australia for trademark infringement, misleading and deceptive conduct under the Trade Practices Act and passing-off. It is a difficulty under the current laws and there is a question there which is not helped by the fact that there haven't been any decided cases in Australia. But, these three actions which I have just outlined require an element of use and the disadvantage in respect of a cyberwarehouser is that they are not using the mark and that makes it more difficult to bring an action against them.
The next point is the desirability of requiring a trademark or similar searchers to be performed prior to registration of domain names. Mallesons does not believe that it would be desirable to make these trademark or similar searchers prior to registration mandatory. It would be a very costly and possibly difficult measure to implement. There would be questions which would arise such as what type of search would have to be contacted. Would it have to be an exact type of mark search, would they have to contemplate marks that may be a bit similar to a domain name. There is also the question of what trademark registers would have to be searched. Obviously, the trademark registers have well defined physical boundaries and the Internet does not, and that is one of the major problems of what we are discussing here today. So, in that case does that mean a applicant in a .com domain would have to search every register in the world before they could make an application for a domain name?
Another point is that some countries do recognize that rights to a trademark can be established through use under the common law. So, there might be parties out there which do have trademark rights, but a search of the register would not necessarily bring up that party and a searcher would not be aware of these trademark rights. In closing on that particular point, we would like to say that these comments should not be taken as an indication that trademark searchers or other searches should not be encouraged, or that links which allow domain name applicants to carry out the searchers should be removed. And in this regard we do commend Melbourne ITs present link to the Australian Trademarks Office Register which does make it quite simple for parties to do a quick check of the Trademark's Office database.
To the Request for Comment on the requirements of any domain name databases that may be developed to allow parties to access information, Mallesons believes that the development of these databases containing various details and databases which can be linked would be very desirable. The databases could be developed to contain the details that I referred to earlier on and these databases could also be used to publish the registration of domain names in the various registries.
One particular point which is from the experience that Mallesons recently had, is that the databases may also be set up to allow a conduct of particular searches. In a recent couple of cases Mallesons acted for two separate clients which threatened proceedings against a particular business. This business had registered a couple of domain names and these are two separate occasions which were very close or if not similar. I was not actually acting on that case, but they were very close to the trademark of our clients and when the second matter came to Mallesons attention, we attempted to discover whether that business had registered any other names, to obtain an indication of whether it was a chronic cybersquatter. And I am told by colleagues of mine that they did make enquiries with the relevant people in Australia and were told that those type of searches were not available. These searches are available under the trademarks system and they are also available under the Australian Securities Commission system. Where you can do a search that would give you an indication of all the trademarks or all the company names to which an individual is related to or has some involvement in. And so, databases which can allow that type of search would be quite desirable.
As to directory and listing services or gateway pages, these would be very desirable. As we have seen today, one of the biggest problems of the Internet and Domain Name System is that there are parties which have legitimate claims to the same trademark. This is a problem which is a little more easily rectified under the trademarks system because of the 42 classes in which goods and services are divided. However, one possible solution would be the gateway pages and a domain name applicant could certify in a contract with a domain name registry that it will introduce a link to a third page or submit to some type of gateway page arrangement if a third party comes along later in time and says that it has a genuine claim to the same domain name. Now, in this regard, there are already some examples. I have one example here, the companies AC Nielsen and Nielsen and Media Research can be linked from the same page, even though neither entity holds the Nielsen domain name as a sign now. We can't get any connection to the Internet today, so, I will just give you the domain name where you can access that and have a look for yourself and it is at www.nielsen.com. And that provides an example of a type of solution that could be used in the situation of genuine competing clients.
As for the other three areas in which WIPO has requested comment, I don't have too many comments today. As for dispute resolution, as my colleague Philip Argy has already pointed out, Mallesons is desiring of dispute resolution procedures, but procedures which minimise the involvement of the registry. Procedures which don't require registry involvement and leave it to third parties to make decisions. As for famous and well-known marks, we believe that protection should be afforded to famous and well-known marks. I recognize the comments that Paul Twomey was making earlier today about the concerns in that area. On the other hand, there are companies which have built up a massive good will in their trademarks and they do need some sort of protection on the Internet.
Finally, on to the addition of the generic top-level domains and other related intellectual property rights. Mallesons does not really have a position on whether or not new generic top-level domains should be introduced or not. But it does suggest that if they are to be introduced, .at should only be done after amendments have been made to the current Domain Name System and the effects of these amendments analyzed and the new top-level domain names should only be introduced after the effects have been assessed.
(Mr. Francis Gurry): Thank you very much Spiro. So, I open the floor to observations or questions.
(Mr. ...........................): There is a question, you mentioned about the problem of warehousing. The fact that there might be introduced some analogous system to non-use of a trademark. Is this issue of trademarks and non-use usually in relation to a particular category of goods and the non-sale of goods in that particular category? Given the relationship to trademarks for specific goods, how would you use such a system in relation to a domain name?
(Mr. Spiro Pappas): I suppose the point I would be making is that in a domain name sense it would not be used in respective goods or services but it would be used in that domain name. So, basically putting up your site and having some sort of material put on the site. So, "use" in that respect, use as opposed to physical use outside the domain name area. So, if that was not clear sorry.
(Prof. Peter Gerrand): Thanks, Peter Gerrand from Melbourne IT. I would just like to respond to a couple of your recommendations Spiro. Firstly, I entirely support your stance against waiting periods for registrations. I just think that is quite against the needs of a range of businesses to get their web site up for a particular event. Particularly for fairly ephemeral events like a sporting event or some celebrity coming from overseas putting on a concert. Earlier this year, an ex-Prime Minister of this country, who I wont name, was wanting to give a particular speech and statement. His thought it would be a great idea to have a web site up with his name or his surname, .org.au. They wanted it up in twenty-four hours, they could not get it through .org.au, they came to us but a legitimate business already had that surname under .com.au. But what came out of the fact was that particular ex-politician was going to make a significant speech, be reported in brief in the newspapers and he quite rightly wanted people to be able to read the whole speech conveniently through the Internet. So, I think that this is proper and appropriate use of the Internet and to have anything like the 60 or 90 day waiting periods which were originally envisaged in the gTLD-MoU, is really not very realistic and certainly not on a national basis. I don't think it is appropriate to constrain the use of the Internet on the international level in that way either.
On the other interesting point you made, about trying to recirculate, relinquish unused domain names, was the Belgian example. When Melbourne IT started administering com.au, it inherited some of its own files with some 9,000 domain names allocated. We became very aware that the database was very patchy and a lot of the details of the people who had registered those names in the first days were very sketchy. And what we decided to do, which was very controversial at the time, was actually to supply commercial discipline, give people lots of notice initially three months extended to twelve months, and say, okay, you will have to pay to renew these. And what we found was that over 2,000 of those 9,000 were not renewed and probably in about two thirds of the cases we could actually track the original person who licenced the domain name. But they had no longer sufficient interest in that to pay the, I think it was a fee of $90 at that stage, to renew it for two years. And with others it just became impossible to actually trace them, despite using snail mail and telephone calls and everything else. So, I suggest that just a simple commercial discipline of the normal fees of the domain names is enough to flush out whether there is much serious interest in retaining them. With the Belgian example, you suggested that their Process of having a rule that if a domain name is not active for 90 days it should be relinquished. That kind of rule would not really work, because someone wanting to warehouse say a 1,000 names could implement them all on the same IP address on a computer server. So, there would be no particular extra cost to them to keep those domain names normally active on a particular server during that time. So, I suspect that this issue of where the domain names are kept in circulation should be dealt with the same way as telephone numbers. You just have a regular time in which the person has to pay that rental fee again. If they really want it they will, if they don't, it goes back to the pool. Thanks very much.
(Mr. Francis Gurry): Thank you Peter.
(Mr. Spiro Pappas): I would just like to make one point. Peter's observations are quite good. One difficulty about the renewal or the fee payment system, well in the example that I have given, is that there is a three-month period and on this fee system you are talking about there might be a twelve-month renewal system. So, that would make it a bit difficult for trademark owners but I suppose that is something that could be looked at and there is competing interests at both ends.
(Prof. Peter Gerrand): If I can just respond to that one. I think that is a different issue. If there is a real dispute of a third party claiming that name, that should then go through a dispute resolution Process which could lead to a decision by the arbitrator to hand over the domain name. That could happen in much less than twelve months.
(Mr. Henry Kerry, CEO, Australia E. Commerce p/c): My name is Henry Kerry, I am Deputy Chairman of Australia E-Commerce. I wouldn't mind making a couple of quick comments here in relation to a number of the reactions. The reason I guess, I come from a marketing background and I like to use the business system. I find that quite a few of my clients want speed, they want flexibility, they don't want constraints. They go into business with their eyes open, if they don't, they pay the penalties. And you take quite a few names, this is one of the things I think the Internet can do for commerce and business generally around the world. Just lets take a name, for instance say Southco, now what does Southco as an Australian name mean to you in the room? They have got a whole basket full of different products and services under their umbrella. And the problem with the Internet is, if you simply have constraint, all you are doing is transferring the same, if you like, business constraints across the Internet. And my clients would prefer to register names such as whatever their products or services are, because that is what they are really marketing. Their business name does not reflect the service and products that they deliver and that is a historical thing, it comes about because of mergers and takeovers and it also, to a certain extent, is very expensive for them to go through a change of name or register a number of names to actually directly reflect that. So, I support a totally open system. I support generic names wherever possible, top of the mind easy to remember. I fully support speed, there should be no constraint. For example, I had a meeting with my clients and we just had a wham bam idea and we wanted to get it registered and hurtled up very, very quickly, because these days, sadly, a lot of walls talk and we have got to tighten things down damn quick otherwise our ideas get pinched and they go elsewhere. Basically I think it has got to be looked at from the commerce point of view. I don't like rules and regulations that stymie business, therefore we have got to look at the users, we have got to look at what they need and that any of the rules and regulations blend in and provide support to that theory. Thank you.
(Mr. Francis Gurry): Thank you Kerry. Spiro any observation on that?
(Mr. Spiro Pappas): Well, the system I am proposing here is one with speed. The fact that Mallesons is proposing that there not be any suspension or waiting period until the domain name is registered, that has all got to do with speed and making it easier and cost effective for parties to get on to the domain name registers. But at the same time, I personally anyway feel that there should be some sort of rules at the domain name registry level to prevent disputes.
(Mr. Francis Gurry): Thank you very much. We have two more questions and then we will take the coffee break.
(Ms. Gail Evans): Thank you. Spiro, to my mind what you have been doing is shadowing the trademark system with respect to domain names and, in so far as you have been doing that, to my mind it simply underscores the point that what we need to do is integrate domain names with the present structures. The present well established structures for the administration of intellectual property at the municipal level and also at the international level, those existing structures within WIPO and the WTO, thank you.
(Mr. Francis Gurry): Thank you Gail.
(Mr. Spiro Pappas): Well, to an extent I agree with that. The trademark system does present a lot of examples that can be used and transferred over to the Domain Name System and at least considered. And at the end of the day, there is the argument that a trademark and a domain name serve a similar purpose in indicating a badge of origin.
(Mr. Patrick OBrien): Just picking up what you said. There seems to be a conflict between what a domain name is. I mean in a .com. domain, it is the name of the commercial organization not the name of the product. So, is that what conceptually we want as an industry, that there be a descriptor or a categorization, or do we want a product gTLD?
(Mr. Francis Gurry): Just one moment. Okay, we will keep on this question and I will come back to you Patrick.
(Mr. Larry Bloch): I think that the fact that Australia has taken a regime whereby domain names and company names have a close co-relation, is relatively unique in the world and certainly in terms of numbers, the vast majority of domain names don't of necessity have any co-relation to the entity registering those names. My personal belief is that to create that explicit link is inflexible and prevents companies from representing themselves where they want to represent themselves. Ultimately a domain name is an element of the company's corporate ID, as is a brand. And a brand does not necessarily need to reflect the company name. I think that domain names are similar to brands in that sense and they are not necessarily part of all company names.
(Mr. Francis Gurry): Thank you Larry, Patrick O'Brien and then ........ (interruption)
(Mr. Patrick O'Brien): I guess New Zealand just comes from the very strong commercial focus and a marketing focus. We both have got red ties on, by the way, I noticed. An issue you raised before, I was going to mention it before. That image of Levis, obviously it was a powerful image for you, seeing Levi.com and I suspect you are associating with the trademark. But it would be no different if what had flashed up there was Levi jeans.com or Levi Strauss.com or 501.com. It is an issue of how the company markets itself. The notion I hear often, particularly by trademark people, is people sit in front of their PC and say "let me guess the name." It has to be that companies use that to brand themselves to market it like Patrick saw it on the bus out there today, what the name of the bus company was. It could have been the Red Bus Company and you go and find that. So, once you are aware of the name you will then use it on the Internet. It is very much a strong branding marketing issue from a company's perspective, not to rely just on the trade name, it is a marketing issue. If I can be tongue-in-cheek rather than pose a question. If we believe in CER and the Australasian market, then you should come and register in .nz, because it is open and it gives you the facilities that you want with tongue-in-cheek.
(Mr. Francis Gurry): Fine, we take one final observation or question before coffee. Patrick Fair please.
(Mr. Patrick Fair): Thank you Mr. Chairman, I just wanted to make two quick observations. One was in relation to the comment Kerry Henry made about believing that you should be able to throw open the generic names to the market basically and have anybody register wines.com or shoes.com or those very generic names which IANA does not allow. I mean, I think there is a middle ground there and that is, those names ought to be given to open directories that anybody can participate in and certainly it moves the Process away from into a kind of directories role that perhaps other web sites would do better. But the problem with the issue that is identified there is that, if one wine company gets wine.com or a proprietary interest gets that as a directory, then you are excluding others or you are creating a pseudo monopoly where you have to pay to get into the dominant directory. Now, that may or may not be a legitimate issue, but it certainly is a concern to any businesses. The second thing I want to comment on quickly is, it has slipped my mind, I might come back to it I think.
(Mr. Francis Gurry): Fine. Okay, so lets take a coffee break until 4 o'clock and then the proposal is that we come back and we are going to hear from Greg Crew who is going to give us an update on ICANN and I think Larry is going to speak. Thank you.
(coffee break and end of tape)
(Mr. Francis Gurry): Mr. Greg Crew has kindly volunteered, under some pressure, to give us an update on ICANN. Then if it is possible, what I would like to do is to take some of the main issues and see what the feeling of the room is on those issues, so as to finish about 5 o'clock if that is possible. Greg, can we start with you perhaps to say a few words on where we are or where you are on ICANN.
(Mr. Greg Crew, ICANN): Most of my fellow directors on the ICANN Board are in the same position that I am, that is, we have very little background on this Process of establishing a body to take over the administration of the Internet Domain Name System and everything that goes with it. It came to me as rather a shock when this nomination came forward and I had to do a little bit of digging and rapid learning and certainly I appreciate the opportunity to attend this meeting, because it is part of my learning Process.
Let me give you a little bit of my thoughts looking back on where the Internet has come from. It seems to me that the Domain Name System has been administered by a group of volunteers around the world under the guidance of Dr. Jon Postell, and that these people managed by very low-key Processes and very easily achieved consensus on what was best for the unhindered development of the Internet to allow the enormously rapid growth to go forward. I think Jon Postell recognized that, as the size of the Internet grew and the economic importance of the Internet grew, that it needed some more structured administrative Process and I guess he also recognized that individuals are not immortal. So, he I think for the second time went forward with the Process to pass over the administrative control handled by IANA within the University of Southern California to another body. And after a lot of debate and discussion over many months came up with a proposal to create a not-for-profit corporation called the Internet Corporation for Assigned Names and Numbers, incorporated in the state of California as a non-profit organization, as I said, with a set of bylaws which he developed with assistance of the counsel employed to seek approval from the U.S. Government to take over the administration of the Domain Name System. A number of people were drafted from around the world who were prepared to take on a difficult, thankless task for no reward. And the only indication that we were at all sane is that we agreed that we were going to get off this Board as soon as we possibly could. The current status is that we have had a number of phone meetings and we had one face to face meeting in New York just two weeks ago. We elected the Board and we adopted a number of administrative resolutions, purely so that certain Processes could go forward. But we did not adopt the bylaws. We have all become aware of the concerns that have been expressed by a number of people, particularly two groups, the Boston Working Group and another group called the Open Route Server Committee. And they have obviously gained the ear of Ira Magaziner, because he has indicated to ICANN that he wants some accommodation with these groups and their objections before he is prepared to allow the negotiations with the Department of Commerce which would arrange for the transfer of authority to ICANN. We have had a telephone conversation with those groups last Sunday morning our time in fact, Saturday afternoon in North America. Their concerns have been expressed by other groups and have been noted by the ICANN Board and I might add that we have already made some changes to the bylaws and we would probably make some more before we take them to the Department of Commerce and say these are the bylaws we believe we should go forward with it at this point. Not that they will be frozen, but we are really entering into a Process likely to last at least twelve months. As an Interim Board, and I emphasize Interim Board, to set up Processes whereby ICANN can develop policy for the governance of the Domain Name System and of the technical aspects of the Internet around that and of the appointment of directors and also the retirement of directors.
An issue is that of membership, and I can tell you that all of the ICANN directors agree that some membership structure is appropriate and we are looking for ways and means of establishing that. Accountability of the Board is an issue, we have made or gained some changes to the bylaws, but certainly my view is that if there is a membership which elects directors and the directors end up being accountable to the membership and that really ends up satisfying that requirement as long as due Processes are put in place. Representation is an issue. Clearly, the existing Interim ICANN Board is not widely representative. It's been put together, let's hope, by people who want to see a system that will work and will do its best to carry on the tradition that Jon Postell and his group of colleagues around the world managed to put into place and very successfully. And we need time to do that and to put in Process a system which can elect the full Board . We also see that, as time goes by and certain things are agreed, that other directors will join the Interim Board and end up being sort of formal directors of whatever the final Board structure happens to be. The power of the Supporting Organizations is another issue, and that is something that the Board is considering. My own personal view is that you need a body which is often responsible for the actions of this organization that has to be the Board and that can't be captive to other bodies' decision-making Processes. So that the Board has to have the ultimate authority to agree or disagree and in fact, if necessary, to initiate and to consider policy suggestions from other sources. As again, I emphasize it is a personal view at this point in time. So, there is still quite a lot of work to be done, but having visited IANA on my last visit to the States two weeks ago, it is a group of four people based in the University of Southern California Information Systems Institute. They are working away and as they always, have they are still using the moral authority of Jon Postell to issue instructions to root server administrators around the world and having their instructions accepted. But they said to me that they are concerned that with the loss of Jon, that if their authority to do that is challenged, where do they go? They do need a formal authority to back up their actions. I think it is very important that the U.S. Government recognizes this and pass authority to a body as soon as possible, whether it is ICANN or some other one is up to them. But it needs to be done pretty rapidly so that there are no glitches in what has been a very successful operation of the Domain Name System.
So, I think the intention is that we would seek approval from the U.S. Government to go ahead. We would accept that bylaws still need to be reviewed and certainly the Processes under which ICANN will operate need to be put in place. And to do that we need the support of experts, like your own for example, the ICANN Board is not going to be second guessing legislation or Processes that have been established over time by experts. It is going to look to those bodies to advise ICANN as to how they are applicable to the Domain Name System. And I envisage a series of working groups that would come together, seek views and put in place recommendations for the Board on issues such as membership structure, the method of electing directors, the method of developing procedures and also the hand over of the IANA functions. There has been a draft agreement reached with the University of Southern California whereby they will loan IANA resources, including the people, to ICANN for a period of time. So, that there is no sudden interrupt in the current administration and it will be a smooth handover. But, what is really needed is that there is a point of authority for people to refer to if there should be any challenge to what the IANA people are doing. We are proposing a series of open meetings. We have an open meeting in Boston next week-end on the 14th of November. I think there are one or two arranged for Europe, and I am currently trying to arrange a date and place for one in Asia-Pacific early in the New Year. And any comments I would be very appreciative of. So, with that I think that is the current status of ICANN, any questions or comments would be appreciated.
(Mr. Francis Gurry): Thank you very much Greg. May I just ask you one question. As I understand, the set of bylaws that you started with was the so-called Fifth Iteration that was published on the IANA website. Have you established an ICANN website? And you mentioned some modifications have already been made. Have they been published?
(Mr. Greg Crew): No, they haven't. Because we still have not finished the version that we would like to take to Commerce pending the discussions that we had. In fact, I would think we are pretty close to the point where we believe that the changes that are being made and possibly with a few others that we might have to look at, go a long way to at least allowing flexibility to consider the concerns of the groups as they have expressed them. Rather than as they feel that they have been too formal in excluding, for example, a membership structure or whatever. You know, we are saying we will establish a membership structure instead of as I think it originally said the Board will consider whether a membership structure could be, we made it mandatory that we will and a few other things around accountability
(Mr. Francis Gurry): And what is the vehicle for publication?
(Mr. Greg Crew): Well, we are published and we are using the IANA website. ICANN has no money at the moment, but we are using the good offices of IANA to do that.
(Ms. Erica Robertson): Greg, I am interested, is there an agenda available of the IP meetings you are planning in Boston and subsequently in the Asia-Pacific?
(Mr. Greg Crew): It should be available pretty soon. I even put some thoughts on that yesterday morning in fact. It will basically be to have a discussion on, I think, the three prime concerns that have been raised, membership, representation and accountability and openness. But, I would also like to see a start, this is again reverting to a personal view, a beginning of a discussion on establishing Processes for ICANN to follow. I would like to get the community thinking about how we go forward, rather than worrying about what the bylaws are and how do we get to them. Given that the bylaws do satisfy the concerns that have been expressed.
(Mr. Francis Gurry): Thank you. Any other questions? Okay, thank you very much for this up-date Greg. Larry Bloch who is the CEO of Net Registry. Larry, five minutes is that okay?
(Mr. Larry Bloch, CEO, Net Registry): Yes, that is fine. I did not actually come here with a prepared speech so I am just going to see if some of my experiences in Australia and in the U.K. and France are of any relevance. Just to give a bit of background, Net Registry is the owner of the .au.com domain space. Now, Net Registry is a private company and therefore the .au.com name space is a privately owned name space. We provide a first-come first-served registration service along the lines of that supplied by Nominet or perhaps Network Solutions in the States. And I think that our experiences in Australia are relevant to this discussion to the degree that, depending on what regulatory regime one comes up with for domain names, the market is essentially going to reassert itself in one way or another. And I think that what we have seen in Australia is that of fairly serious rules that place requirements on domain registration entities, and essentially the development of au.com has been very much in response to that. I think ultimately what one needs to look at and what we all need to focus on is, what are the requirements of the people buying domain names? Now, by and large the vast majority of domain name buyers, and excuse me if I do tend to drift towards the demand side of the industry, but the vast number of domain name buyers are unlikely to get involved in any trademark dispute. And I think that part of the policy to understand how protection is to be extended to domain names, owners should take into account that the vast majority of domain name owners shouldn't be unfairly penalized by trying to protect those few instances in which dispute occurs. And I think that certainly my personal feeling about the com.au name space is that this is very much the case. So, really what I am saying is that, as a registration company and a company that offers registrations to anybody, what I would like to see happen is a complete separation between registration function and the legal issues surrounding trademark protection. Essentially, as a registration organization, we say if you want a domain name and its available and its not profane or obscene you can register it subject to certain conditions. These conditions allow us to deactivate that name on, you know if it is proven that there is some sort of third party trademark infringement. But, essentially we believe that it is up to the legal industry to define what that infringement means. And that we as a registration entity will just follow whatever the ruling is. So, I know that there is a definite co-relation and a definite joining forces of the legal community, and I would like to open the to the floor whether they think perhaps that is the best way to go and the only way to go.
(Mr. Francis Gurry): Thank you Larry, does anyone want to address any questions or make any observations?
(Mr. Patrick Fair): I remembered the point I was going to make and it is related to this. Well, one of the points that was raised in the discussion we had before the break was that of course the Internet names policy in Australia is very restrictive and it does prevent marketers, for example, from being able to get any market they want. And it is interesting that it is driven from a completely different direction, that is presumption, that the people who have the names in the real world have the first right to them. So, you are just preventing somebody from taking those names and thereby precipitating the conflict. I think that it is easy to talk of the registries being disconnected from that, within the ccTLD space. Because you have got a single jurisdiction usually, and it is easy to resolve what the registry should do based on the local law. I don't know if that is really the puzzle for WIPO. The puzzle for WIPO is the gTLD space and how you reconcile the possibility of having a registry at NSI, the trademark owner in Switzerland and the infringer in Japan. And what would fool the registry would be, if the Japanese court and the Swiss court decide differently. And I am not sure that in this discussion the view that Mr. Bloch is putting, you know it helps a lot, but I would be very interested in your views on whether the registries at the gTLD level can really be separated.
(Mr. Larry Bloch): The problem of course is that we don't have a world Government and its not going to happen in the short-term, much as we might like it in this particular sphere. I think you are quite right that within gTLDs claimants from different countries are subject to different jurisdictions. It is very difficult to find a way to resolve disputes. I am not saying that I don't think there should be a dispute resolution policy enshrined as part of the registration entities terms and conditions or terms and corporation. I think that is proper that, that is the case, but essentially I don't think that the people that run the Domain Name System and run the DNS ought to be the ones deciding on or being completely involved in the actual dispute itself, I think that is a separate issue. And I think that another thing that is commonly not recognized and something that we as a company registering on behalf of a lot of our clients realizes that domain names and trademarks are completely different things. A domain name is an address, pure and simple an address. Now, I am not saying that there is no potential for dispute with trademarks and domain names, but ultimately one has to create that separation and understand that as Dr. Black pointed out www.Levi.com is an instruction to go to an address very much like the address of this hotel is, and I am not sure how that necessarily affects the intellectual property associated with that domain name.
(Mr. Francis Gurry): Well, just one brief observation. There is a difference, is that the address of this hotel is simply a street number unless you mention the name of the hotel. It does not tell you a great deal until you actually take the trouble to get there and see what is there.
(Mr. Larry Bloch): The point is taken, yes.
(Mr. Francis Gurry): Okay, well look, with your permission what I would like to do in the remaining time and there is not much, is just to go through some of the issues on a selected basis and please feel free to challenge my selectivity if you think that some of the assessments on the basis of which I am making the selection are not warranted. But, we have four issues and the first of the issues (and these are directed at the gTLDs, unless I make specific reference to the ccTLDs), the first issue is the issue of dispute prevention. I must say that today I have not heard anyone suggest that measures directed at reducing disputes, measures by way of appropriate contact details and the making available of those contact details in a database which gives you more information than is currently available in the databases concerning the registrations in the gTLDs. I have not heard anyone suggest that this is a bad idea and nor do I think I have heard that throughout the whole of our Process either on the Internet or in the physical consultations to date. However, there are one, please Peter Gerrand.
(Prof. Peter Gerrand): Thank you. For the business use of the Internet for E-commerce, I think everyone seems to agree that, yes, it is very important that some of the contact details be provided, from where legal responsibilities can be shared at home if necessary. But I remember that people raised an issue of privacy which I think probably only pertains to individual private use of it. If someone wants to use a new .nom gTLD for a nom de plume, it might be completely reasonable that they not have to give a physical address of some procedures of giving a post office box number or something like that. So, there is probably some distinction on that between (interruption)...........
(Mr. Francis Gurry): Youre quite right, I think you are absolutely right and I think your precision is well taken.
(Mr. Leni Mayo): Indeed I was also going to raise the privacy issue in the context of those comments and the other issue which I alluded to in the context that, that is the exact nature of the access to the database. There are a number of different means of accessing this database and the the precise nature of access to the database needs to be specified very clearly, keeping in mind the factors such as privacy and also spamming issues.
(Mr. Francis Gurry): Thank you very much, I think that is another useful clarification on the general proposition that measures designed to reduce the number of disputes by way of contact details are useful. But, there are one or two points I would like to ask your views on selectively. The first is waiting periods. This is an idea that has been around for a long while and I must say that the comments that I have heard today, it seems to me to have been expressed against waiting periods. May I ask, is the general view of the meeting that waiting periods are an unnecessary measure?
(Mr. .................): I would just comment on that. Provided that there has been payment up-front. I think the issue is, if it is combined with payment upfront then the waiting period is less of an issue.
(Mr. Francis Gurry): Well, that was the second point I was going to raise and the problem that I have with upfront payment is, I think it is a very good idea as we have discussed, I think Patrick O'Brien made an observation on it, it is a very good idea. But how it works in a world of multiple registrars in terms of dealing with multiple ISPs and in turn dealing with multiple smaller ISPs, is something I think we have to give some thought to. How mechanically you can make pre-payment work? Let me just give you this example. We run an international patent registration treaty, and patent agents around the world have deposit accounts with us, the same thing for trademarks. So, they just send an order to us and say please deduct any application coming from us please take the payment out of the deposit account. So, it is conceivable that a large ISP might do that with a registrar. And then the issue really is for the ISP to recover contractually from the applicant. So, how the pre-payment can be made to work in such a way that the registry knows that a payment has been made and therefore act on the basis of the domain name, I am not quite sure mechanically.
(Prof. Peter Gerrand): If I can just inject a practical perspective, having tried to get payments upfront in a more exact sense, initially it really fell through our having to recognize the realities of the ways in which large and small businesses work with the invoicing systems and things like that. If Ross's point of payment upfront is interpreted as payment within a short period, like within a month and if payment does not happen, a domain name then becomes free. Then I quite agree, though one could not agree on a literal interpretation which should force a system where every applicant would actually have to provide their money before the actual date, it just does not mesh well enough with commercial organizations.
(Mr. Patrick O'Brien): Another spin given that .nz is a monopoly, is if you try and enforce people to pay up-front or else you don't get service, you will get lots of negative publicity about being a monopoly and again it would happen the same here. And just following on from Peter's point of view, if we think IP lawyers are lagging a little bit in terms of where the Internet media is, try getting money out of accountants in major companies. The person who purchases the name is often the person that does not have the cheque cutting ability. In an organization they are very, very separate things. And we spend a lot of time chasing an organization to find out who pays the money and not who is making the order. So, some very real practical issues here.
(Mr. Francis Gurry): Thank you for that observation. The first one I think might be a problem in the gTLDs. The monopoly question has, the Process is being solved and Peter did you want to make an observation?
(Prof. Peter Gerrand): (The observation was not audible)
(Mr. Francis Gurry): Yes fine, thank you.
(Mr.....................): Since the practical dimension of that is almost unrealistic then we should weigh on the side of expediency and then allow for recovery where there are damages awarded.
(Mr. Francis Gurry): Thank you. Leni Mayo is going to tell us that you can have voluntary waiting periods.
(Mr. Leni Mayo): Well, that was an excellent guess Francis, but not quite right. Moniker has some thousands of pre-registered customers sitting on their database with names and credit card numbers, none of which have been charged on my Net. Having expressed interest in the new generic top-level domains and willing to take their turn in the round robin that concerns the allocation of those new top-level domains. I have not seen the final figures, but the last time I looked at it, which is about half way through our collection, over 95 per cent of people did not opt for the 60 day waiting period. In fact, we think very few of them even read the legal agreement. I might also add that our company was one of the few co-registrars to actually force the customers to look at the legal agreement. So, I think very few people are actually going to participate in that.
(Mr. Francis Gurry): Thank you. That is very interesting information, very interesting statistics.
(Mr. Leni Mayo): The second comment is on pre-payement. I think the pre-payment issue needs to be understood in the context of what is the business model of the registries and the registrars. The CORE business model was that the registry would not bill the customer. The registry would only deal with the registrar and the end-user was the registrar's customer. So, that end pre-payment was required from the registrar allowing a diversity of business models between the registrar and the end-user. The idea was to push as many functions as possible out to where there were subjective competitive forces and not to centralize a function such as billing. So, we felt that indeed to make the registry as thin and small as possible and we believe that, that model is workable.
(Mr. Francis Gurry): Thank you Leni. So, it seems no support for the waiting periods with a reservation concerning pre-payments coming from Ross Wilson and the question of the mechanics of pre-payment to be investigated. Can I ask your views on gateway pages or portals that we mentioned on several occasions today in passing. This is the idea of reducing disputes by having a common page where you have a name such as, for example, United and you can go to a gateway page and you receive all the United addresses and from that you have further information which will enable you to identify exactly which United you are seeking, whether United Airlines or another. This is system is being used in some domains. The problem that we have with it is that a gateway page is a very good solution when two or more parties agree to use it. But can you force parties with similar names to use a gateway page? And many of the large trademark owners are very attached to the idea of unique addresses. Are there any observations on this that can assist us?
(Mr. Larry Bloch): First, I would say that gateway pages are at best a road sign to the real identity of the companies involved and you quite rightly state that if two companies or any number of companies agree to cooperate on a gateway page then I see no reason for them not to agree to come up with a legal agreement that would enable them to put that into place. But, I think the relevant point about domain names is that they are viewed by companies as part of their identity. And it is not just a web address we are talking about. We are talking about e-mail services, and others. So, I think ultimately one can't force the companies to do that, because they are not going to want to have their entire Internet identity shared with other companies.
(Mr. Patrick Fair): I think the concern that arises about that possibility becoming part of the system is what you would do where somebody with an established page, for example say United Airlines has the page and is quite happily trading with that address and then the domain name administrator comes along and says, I have had an application from a new courrier company who would just love to have everybody who puts United in a directory page that raises their name when they intend to go to United Airlines. It will be a very difficult puzzle for the registry to work out which are legitimate pre-existing businesses that should be granted that facility, and which are interlopers who were just trying to trade off the good-will of established web pages. So, we came to the conclusion that it wasn't a practical solution and pretty much agreed with the view that if parties want to agree in a settlement that would be fine. But primarily, names should be unique and on a first-come, first-served basis.
(Mr. Francis Gurry): Fine, thank you very much. I think that is very useful. I mean this is the tendency of our way of looking at the matter, is that two adults can agree to do anything they like really, so if they want to agree to share a page they can, but forcing them to is a completely different question.
(Mr. Derek Minus): Can I just add a personal view on that. I agree with what is being suggested, that there should not be a directory. But for users and I see myself more as a user of the system, when you know that you are looking for a name like United, but you can't seem to find it, you end up with a search engine and finding all sorts of things that you don't really want. Is it possible as a subsidiary service that some part of the organization can make a directory service available for simply names. So, you don't have to use it, but if you were looking for a name and you knew it was United you weren't caught between guessing, is it United.com.au, or trying a search engine-so that there was an intermediary system like a directory where you could simply go which held these names.
(Mr. Francis Gurry): I think there are many directory services.
(Mr. Derek Minus): I am talking about an official one as opposed to a commercial one if that is possible.
(Prof. Peter Gerrand): Attempting to analyze this in the context of the utility of existing search engines. People are probably aware that search engine techniques are soon to be remarkably more accurate. Particularly, things like Dublin Coach is being developed. So, I think in the medium to longer term that is going to be less of a problem. But certainly we support the view that mandating our presence in gateway pages isn't the way to go.
(Mr. Francis Gurry): Alright, thank you very much. Then finally if I may just raise one point on dispute prevention. One of the issues is whether there is desirability of encouraging registries in the ccTLDs to adhere to policies regarding intellectual property issues associated with domain names. I should make it clear that of course our Process is concerned only with the gTLDs and that we have no competence over the ccTLDs which fall into the various separate countries. The only reason we raise the question in this context is to establish whether there is any interest in the longer-term in promoting good practices or encouraging good practices such as those that have evolved in, for example, Appendix B I think it is of the gTLD-MoU, the Melbourne IT's requirements and the warranties which I think has been taken up in various other places.
So, with that clarification let me go on to the issue of dispute resolution and ask a couple of questions. One of the things we did ask about dispute resolution, and I am excluding here the specific case of famous marks, that is a special procedure for famous marks, was the desirability of uniformity or consistency. And I should make it clear also that we do not mean exclusivity there. We do not mean that any dispute resolution services should be exclusively provided by one administering authority. However, if there are certain procedures available, is it considered that these should be uniform regardless of whether the services are being provided by the Australian Institute of Arbitrators, WIPO, the American Arbitration Association or not? The general view is that they should be uniform across the gTLDs. The idea of uniformity being, of course, to avoid forum shopping and to avoid having domains which are easier for pirating than others. Also on the question of dispute resolution, can I take it that the general view expressed in this meeting is that the registry or the registrars should not be involved in the administration of dispute resolution services?
(Dr. Willie Black): I just wanted to clarify, I think you meant administration. You probably meant that, making the judgement, because I would have thought that any registrar or registry gets involved in the administration. Because you have to pass the addresses back and forward, explain to people who have registered what and we certainly copy a lot of correspondence. So, its an involvement of administration, I think you probably meant not involved in the judgement.
(Mr. Francis Gurry): Not quite. I probably meant in between the two. The registry would have to cooperate in the administration of the dispute resolution service, but should it be the registry that appoints an arbitrator or a mediator or should it be an independent dispute resolution service provider?
(Prof. Peter Gerrand): Thank you Francis, I am sure that by the time I leave at 5 o'clock for the airport you will have my name down for tea. I would like to echo Willie's remarks about this practice of domain name administration. Apart from Willie's point that the registry obviously has to get involved in supplying factual information to the external arbitrator or whatever. It has been our experience I think, that of other national registries, that a lot of disputes actually get diffused at an early stage just by the administrator sort of responding to the dispute, if you like, by providing additional information. So, again it is an interpretation of words of how the principle was put in. I think none of us as domain name administrators or registrars want to get involved in the disputes if we can help that, but there is a positive and corrective role there for trying to diffuse it by just being reasonable and trying to bring out additional information that can guide the unhappy party.
(Mr. Francis Gurry): Thank you, I think it is a very useful clarification also.
(Mr Brian Fitzgerald): It would seem that there would have to be a policy for domain name registration to start with and that the registry would have to actually have to make a preliminary decision as to whether registration was to occur. It would seem that, that initial policy, we have seen two models today. One is the open policy which is not value-laden and the other one is the value-laden policy that I think Peter just spoken about. So, it would seem fundamental that if you chose to take the route that .com.au takes there is a value judgement or preliminary decision that has to be made. If you take the New Zealand route, you seem to say we won't make any value decision on whether you are infringing intellectual property rights. So, I think the registries are tied to their policies. If their policy is value-laden they must be proactive in the decision-making.
(Mr. Francis Gurry): Thank you for that. May I raise another issue about a uniform dispute resolution system. In the White Paper when this was put as a termed reference, it was expressed to be a uniform dispute resolution system for cases involving cybersquatting or cyberpiracy. We therefore, raised the specific issues as to whether such a system ought to be so limited to cyberpiracy or cybersquatting, or should it be available more generally for any parties that find themselves in dispute over a registration of a domain name. One of the reasons we raised that question or opened the mandate as it were, was that it seemed to ask whether there were real practical difficulties with the administration of a dispute resolution system which was limited only to cases of cyberpiracy or cybersquatting. Because the first issue then in any case would be the issue of competence. Is this the question of every case that would be raised? Is this a case of cyberpiracy or cybersquatting before the merits of the dispute were considered? Is the general view of this meeting, as it has been elsewhere, that such a system of dispute resolution ought to be available for any disputes or should it be limited to cyberpiracy? No objectives to this?
May I raise just three other issues then concerning dispute resolution system. One is the question of suspension of the registration of a domain name in the event that there is a dispute which is put to such a dispute resolution system, be it arbitration or mediation, formally as opposed to informal discussions with the administrator. Is there anyone in favor of suspending the domain name in these circumstances? Well, the question is if you had a challenge of a domain name registration, should the domain name registration be deactivated by virtue of that challenge? Is anyone in favor of suspending it in this way? Nobody, so everyone is against suspension, thank you.
(Mr. Larry Bloch): I am not sure if this falls within this question but should we discuss whether powers should include the forcing of an entity that is subject to such a third party claim to make a prominent link to that third party's existing site and in preparation for hearing and for finalizing, for example, the dispute?
(Mr. Francis Gurry): Well, it is an idea, but just one immediate reaction to it is that supposing you challenge Disney.whatever, you force then Disney to make a compulsory reference to your site, as an example.
(Mr. Larry Bloch): There has to be some sort of reasonable criteria to prevent vexatious situations like that.
(Mr. Francis Gurry): Okay, can I move on to the idea that a domain registration would be considered after the lapse of a certain period of time, for example five years, as no longer subject to challenge by an alternative dispute resolution procedure?
(Mr. Leni Mayo): Just on that specific point it strikes me that five years............(end of tape)may be a little long given that the, well it just seems to be a little long. I am not exactly sure what the number is and I am not sure how one would arrive at a number either. But just to return to your earlier point about the uniform dispute resolution policy, just to put that in context. We are talking about, well as of the network wizards January '98 host count survey, we are talking about the Internet presence of roughly half of the world and we are talking about how disputes relating to that Internet presence are managed. So, it is a very significant issue and it is also politically charged in the .com.org context. So, that I will just add one thought to that, that it has got to be a dispute resolution policy that we all agree with.
(Mr. Francis Gurry): Absolutely yes, I have conveniently ignored this. Of course we know the characteristics of such a policy that it must be fast, cheap, readily accessible and usable by everyone. But, then actually translating that into real terms is a task.
(Mr.....................): My observation on that point is that we don't think we should mandate a time period, and that upon registration or registration it should be relatively unassailable if the application for it is in order. But of course where it comes to light that it is not in order, then it should be challengeable no matter when the inaccuracy comes to light. And secondly, where there is a dispute between the maintenance of trademarks, that it should always be monitored and if not maintained, rendered the domain names subject to challenge. So, that there should be a time period that as a device to the use of the trademark attempting to apply that against the world. But as to the correct form of the application whether it is in order that should not be subject to a time limit (interruption).
(Mr. Francis Gurry): Thank you. Can I raise one point about the ccTLDs? I reiterate what I said one moment ago, that we have no jurisdiction in this Process to make any recommendations concerning ccTLDs. But there is this problem practically, and that is that for around about $8,000 you can get registrations in something like over 80 domains around the world, and that can create a significant legal problem for an enterprise or an individual for that matter. That is to say, that if someone got in 80 domains with your name you would have to at present basically undergo 80 different separate national court actions in order to do something about it, which would obviously be a very costly Process. Second difficulty in the current situation is that some national court systems are dysfunctional and some national court systems even on a fast track, you can't get an injunction to stop or to close a website in less than twelve months. And twelve months is of course a lot of time, in which there is a lot of damage and you might be operating out of the smallest domain in the world, but you still have the same access globally as if you were in .com or any other domain. So, is there any interest in the idea of encouraging voluntarily the possibility of the ccTLDs adhering in some way to a uniform dispute resolution system, at least in so far as it would permit the consolidation of similar actions?
(Dr. Willie Black): I need to just point out something about the jurisdictions that we are talking about for the country codes, that have to deal with the contract for registration. If somebody in a particular country, say somebody in the U.K., like One in a Million, have to register domain names that infringe my trademark or potentially could infringe my trademark which is exactly the case in one in a million, in .com which they did, in.co.uk., in .nz, in .au or whatever. I don't sue them in each of these jurisdictions, because that is merely a jurisdiction in which the contract of registration exists. You sue them in their own home territory, namely London because they are in the U.K., so you sue them in the U.K. and the court in the U.K. orders them as U.K. citizens or subject to that jurisdiction to free up the domains. So, I am not quite sure that it is bad as you would make it out to be on these facts.
(Mr. Francis Gurry): Yes, provided that they are located in a jurisdiction in which you have a functional judicial system.
(Dr. Willie Black): You have the same problem in trademarks anyway, somebody can go out and register a trademark in some jurisdiction for trademarks that might be slightly....... (interruption).
(Mr. Francis Gurry): Yes, but in the case of trademarks you have an opposition procedure usually, either pre-ground or post-ground opposition. Any observations on the question of ccTLDs?
(Mr. Leni Mayo): I think any of the country code top-level domains that are being operated as generic top-level domains are simply legitimate commercial operations and I would suggest that for many of those parties, the dispute resolution policy is more of a fixed overhead cost rather than a source of revenue. So, it would seem that the desire to educate and perhaps lets say, evangelize, some consistency amongst those policies is not incompatible with the prospective commercial gain. One of the things that I have been encouraging, with a limited degree of success, is the proposal that free software and registration services are made available under some sort of public domain licence. And were that type of software system to be available to these country code registries that, for example, supported an interface to whatever dispute resolution policy came out of the WIPO Process, that may indeed facilitate the type of thing that you are looking for.
(Mr. Francis Gurry): Thank you Leni. Let me move to the question of famous marks if I may, just to get some observations on it. I think that I should say that Ross Wilson can, and I stand to be corrected by him, but as I understand the position by Member States of WIPO including Australia, there is a specific desire not to create an international list of famous marks.
(Mr. Ross Wilson): That is correct. There's two tests, one is 9 in the relevant sector and in that case the criteria that they are looking at is who are the clients or potential clients, what do the distributors know about that and what are the business circle studies. There is some criteria to pull back to see if it is a name in the relevant sector. To be a well-known mark itself there is about 6 or 7 criteria that is going to be proposed. It has been cut down from about 16, but basically it is looking at, is the well-known mark, let us have a look at the geographical extent of its use, the duration of its use, the amount of advertising that has gone on both geographically and the duration of that. Whether there has been registration or not whether there has been disputes and how they have been resolved and also what is the commercial value of that mark. So, the member countries are looking at providing a competent authority which is probably a court, to say in the individual circumstances here are some factors to take into account. Now, based on that, I don't believe that people can easily produce a list of well-known marks. Having said that, I know there are some countries and there are trademark offices have volunteered I think to come up with a list of, in Japan of 500 well-known Japanese trademarks, based on what criteria I don't know and how well-known, what is the relevant sector. So, I think you will be seeing there was a proposal discussed in July and will be discussed again in January next year to try and resolve this. The intention is for the Member countries to achieve agreement that guidelines should be introduced in those Member countries on what is a well-known mark, with the potential for it to move to a treaty and of course that then adds another five years or so. But as you can see, there is no intention for a list because it is just too difficult to come up with a list that is clearly black and white, you are either in or out, it is just too gray, you will have to look at all these factors. And so, I don't believe that there will be any list at all, but that we are looking for the countries who adopted either those guidelines or the Treaty, that they will take action if the courts decide or some competent authority decides yes that is a well-known mark and it is being infringed by either another mark or a business identifier, a business name or by a domain name. And they will be seeking the registrar to remove that registration and they will also be seeking to prohibit its further use. So, that is the sort of protection that is being looked at, at the moment.
(Mr. Francis Gurry): Thank you Ross. Now, that said, that there is no desire and therefore we take it that its outside the possibilities in this Process to recommend that a list of well-known marks or famous marks be established. That said, the term of reference that we did have was not to establish a list of famous marks that would require protection, but to make recommendations about a mechanism or a Process or a procedure for protecting famous marks. So, it is envisaged for example, just by way of example, that there could be a special procedure which would be available for the owners of famous marks and pursuant to which they could, for example, go to a panel and get a ruling that they qualify for these purposes for the status of famous mark or well-known mark and that therefore, all others ought to be excluded from registering that word as part of the domain name address, as part of the domain name. There are several questions that would arise. First of all, is it desirable to have this special form of protection for famous marks? Secondly, if there is such a procedure giving them a special form of protection, then what criteria are used by the panel to decide whether a particular mark qualifies for this status? And the criteria could be either non-expressed and it would be left to the panel to make its own judgement in a particular case, or they could use the criteria that were mentioned by Ross on the basis that these will be evolving as they are refined. Or they could develop special guidelines, which would seem to be somewhat inconsistent with the exercise that is going on that was mentioned by Ross Wilson. So, may I ask just as a first point, whether there is interest in a specific mechanism for the protection of famous marks?
(Mr. Brian Fitzgerald): Coming back to the point I suppose I have been trying to make all day, that would seem to suggest or raise the fundamental question whether you believe that the trademark holder should trump domain name holders as a general policy question. You are not clearly asking that question, but wouldn't that question be..........(interruption).
(Mr. Francis Gurry): Not quite, because there is already an obligation in the Paris Convention for the protection of industrial property for Member countries, Member States to protect well-known marks, that already exists. The problem is, the Paris Convention does not define what is a well-known mark. But, it does oblige Member contracting parties to accord protection to well-known marks whether they register or not. Therefore, this special protection does exist. The question now is, do you extend that specifically in the area in relation to domain names by creating a particular mechanism that would assure that protection in the context of domain names?
(Mr. Brian Fitzgerald): I think to some extent 620 (3) of the Australian Trademarks Act protects trademarks against some form of misappropriation, it is unclear as to what extent, in line with the Convention that you mentioned. But, it still would be a positive step to say that domain name registration must implement the Convention and must support that legislative enactment. I still think that is a clear policy judgement to say that intellectual property rights in the form of trademarks have to be protected in domain name registration. And I think that is what the gTLD-MoU did and I think that was a positive move.
(Mr. Marc Hughes): I guess I would just like to follow on to that. I think it is a valid question, that question whether the trademarks trump domain names or not. And the law might say that the countries have an obligation to protect trademarks, but again going back to my earlier analogy, the fact that McDonalds has a registered trademark does not mean that everybody has to stop using their surname McDonalds. It does not mean that people can't walk down the streets singing 'Old McDonald had a farm', it does not mean they can't write a book called Burger McDonalds and sell it in a book shop. In fact trademark owners have very limited rights at the moment, only in certain areas and the crux of this matter is, are we going to say when it comes to domain names in fact they have rights which they don't in fact have at the moment in general society, that is, complete control over the use of that name. So, I think that Brian's question is absolutely right, that is the crux of the matter. Are we going to say that trademarks will trump domain names or not? That is, are we going to give them power which they do not have at the moment?
(Mr. Francis Gurry): Well, except with specifically in the area of well-known marks as opposed to ordinary trademarks.
(Mr. Marc Hughes): It is the same thing. You are still saying, are we going to say to well-known marks they will have the power which they do not have at the moment.
(Mr. Francis Gurry): Well, I think they have it.
(Mr. Marc Hughes): It is certainly true that owners of well-known marks can't stop somebody from using, for example, their surname which they have at the moment and people use that. And they may use that to register Internet domain names in many areas of the world today. So, in fact that is exactly what we are saying, there is no security around it. People do have the right to use those names even though they are well-known marks.
(Mr. Francis Gurry): Yes. I think you will run into a bit of trouble though, if for example you register McDonalds and the content of the website was hamburgers and the sale of hamburgers............(interruption).
(Mr. Marc Hughes): That is a separate issue, that is passing off, I have no argument with that. If somebody is going to pass off then absolutely they have no legal right to do so. But the law does not say that because you have a well-known mark that nobody else can use that word and that is exactly the point that we are discussing here and now. Are we going to give it to one sub-class of trademark owners or indeed all of them right in the Domain Name System? The Telstra proposal said that. The Telstra proposal we heard earlier today said that it should be such and such a way and if somebody has a registered trademark nobody else anyway can use that name in any part of their domain name, that is exactly the issue.
(Prof. Brian Fitzgerald): If I could just clarify what I was really saying before is, the question is, the domain name registration in itself, can it infringe a well-known mark? I think it is arguable that under section 123 of the Trade Marks Act and under the American Dilution Statutes that use however determined that can actually be an infringement of a well-known mark. So, I must defer I suppose back to the Chair. The point really is, are we obligated under even Australian law under section 123, to protect those well-known marks. And if you take a very broad view of that section, any domain name registration of a well-known mark could be an infringement of a well-known mark. It is certainly the case in the United States, but not clearly here.
(Mr. Francis Gurry): Don't defer to the Chair, defer to the Registrar of Trademarks.
(Mr. Ross Wilson): Well, the only thing I wanted to add is that there are limitations there as to the goods and services and I think what Marc is saying is, it is not blanket. And yet you read a lot and you hear a lot of discussion that yes, they want a trademark to dominate the whole of the Domain Name System. But their trademark is often in regard to a specific classification. I think people have to be very, very careful in that regard and I think there is something between what you are saying, you have to limit references to the Trademarks Act and not quite in the bit that says in regard to those goods and services. And I think that is the very point that Marc is saying, that too often we generalize and that comes through in our discussions and hes saying you have got to be more specific. And so maybe the McDonalds thing is complicated by the fact that there can be co-existence of identical trademarks in their identical categories. So, it does get quite complicated. So, someone with a McDonalds surname would have been making hamburgers for the last 50 years, they would be able to co-exist with McDonalds despite McDonalds disliking that. There would be a possibility that can co-exist. So, it becomes very complicated and I think Marc is simply saying, let us be careful, let us not generalize. And I think when you are quoting the Trademarks Act we also have to say with respect to those goods and services.
(Mr. Francis Gurry): Thank you very much Ross for that, and then may I raise another problem which is, let us just suppose for a moment that there were special mechanisms for protecting famous marks. And let us suppose that, that mechanism gives rise to an exclusion, no one else can use it. Is that actually going to be an effective, practically effective device anyway? Let us take the case of Intel who testified at our San Francisco consultation that there are around about 20 porn sites on variations of Intel, for example Intle. So, if you do get an exclusion and it covers your name exactly, is that going to be in any case adequate, effective protection? Because what do you do after that? Do you have to seek an exclusion on all variations of it, which is rather difficult to imagine as a practical matter to administer beyond anything else, and I don't know whether there are any observations on this dimension of the problem? Okay, then may I just ask, is there any interest in an issue, I mentioned at the outset this morning, that perhaps also in tackling this problem just for the purposes of discussion, perhaps we are also focusing wrongly on trying to cure a problem of cyberpiracy or cybersquatting by granting protection to a special class and not addressing specifically the problem of cybersquatting or cyberpiracy. Is there any interest in approaching the problem from that angle, rather than the angle of protection of famous marks? Any observations?
(Mr. Derek Minus): I would just like to make the observation, because I have not heard anybody else make it, that market forces will eventually win out. When we talk about these major or famous marks, they are famous as Ross pointed out because they are spending a lot of money on advertising and where a McDonalds hamburgery co-exists in a place where McDonalds wants to come in, they often will simply buy out that user. That is always open to these famous marks, the more we try and accommodate them, the more rules we put in place I think the more difficulties we create. The real difficulty that you just alluded to is where there are attacks on these famous marks because somebody goes in and registers around the world in different domains so many of similar names. And if that was the focus, not trying to separate and give these famous marks an opportunity they should not have over other uses that might be a better place to focus attention.
(Mr. Francis Gurry): Fine, thank you. No other observations? Can I just ask generally moving to the last issue, the addition of new gTLDs. The observation that I have heard in this respect today is a plea and I think it came from Peter Gerrand, a plea that this decision be based on at least on proper market research. That it not just be made on the basis of theory or considerations. Would anyone like to add any observations on the question of adding new generic top-level domains? Because frankly, methodologically, for us it is a difficult question. One could say that all we are supposed to do in the Process is to evaluate the effects on intellectual property of adding new gTLDs. And one might say in response to that just by way of example, that if there are improved dispute prevention procedures and if there is an effective and efficient cost effective dispute resolution system that is uniform across the gTLDs, then it is easier to imagine the introduction in a controlled manner of new gTLDs. But this is an observation that anyone could make.
(Mr. ..................): I think for a man like me in research, we would say yes, we move forward with the expansion, but it has got to be down the road. I think if you continue, there is a lot of people just trying still to get used to the Internet and it really depends on what your agenda is. If the agenda is to bring the Internet to the world and the masses then I think you have got to limit change. So, yes lets get it right now, lets get the model working efficiently and then segmentation can occur down the track as the needs of the consumer or user determine.
(Mr. Francis Gurry): Thank you. Any other observations on new gTLDs?
(Prof. Brian Fitzgerald): It seems inevitable that there will be new gTLDs. I mean I have raised the point to see if I could stir debate on the issue. As under the gTLD-MoU, it was suggested that there should be seven new gTLDs. If we move to seven, that is still a long way short of the 42 classifications that we have under the Trademarks Act. Now, a number of people have said today that they don't think that having 42 gTLDs would be productive. But it seems inevitable that once we go to seven the number won't stop there. So, I think there is a fundamental question that has to be asked, which I raised before, which is why would you expand to seven? What is the rationale of the new gTLDs that you are going to? And how different are they from the 42 classifications?
(Mr. Francis Gurry): Yes, I think that is a very valid point. If you are adding new gTLDs why are you doing it? What is the purpose for which you are envisaging new gTLDs? And this has not become entirely clear at this stage.
(Prof. Peter Gerrand): I would have thought that there are probably two immediate answers to that. One is, you can use a band width analogy that you are reducing congestion. But of course the downside of that is that you have got more categories in which disputes can occur. Perhaps the relevant middle way here is to see whether there are places that are genuinely uncatered for at the moment, where there is a demonstrable need and that maybe based on market research that would balance that. We agree with the notion that we should take things slowly, but they certainly will be out in due course, but when they are they should be subject to controls and very clearly spelt out criteria.
(Mr. Ken Fockler): It is getting towards the end of the day so, I maybe I can make a few comments, go beyond my scope. In this question I always like to almost think about it as the question why the chicken crossed the road, and maybe the simple answer is to get to the other side, which is to get to where you want to go. I sometimes like to kid some of my friends at NSI who own .com that it is a total waste plant and maybe that it has to disappear sometime. And the reason for writing top-level domains and I went through this consultation with the Canadian Government, that is why I am sort of able to talk about it, is because you want to get to where you want to go. So, if you have rules and procedures and other things, you may not be able to implement them in .com. Maybe this is a North American point of view, because .com is what we deal with and lot, and .net and .org in that presentation seem to say you don't have as much of the problem. But, in order to solve the problem and get to some good procedures and the way to do it is to then have some new top-level domains. Logically, you could look at it and say we don't need them, but to get to where you want to go you may have to implement them.
(Mr. Francis Gurry): Thank you Ken.
(Mr. Leni Mayo): Indeed, that was going to be exactly my comment. The long Internet history has shown that operational experience is worth lots and lots of studies. And I guess I had a question more than an observation which is, I just have some confusion about how market research would shed light on the relationship between new generic top-level domains and intellectual property rights.
(Mr. Francis Gurry): Well, I understand that in this context, and it is one of the things that we asked for in the RFC, is in order to make an assessment about what the effect of new gTLDs would be on intellectual property rights, you have to have some idea of the impact of existing gTLDs on intellectual property rights. So, we asked for as much evidence as possible from parties as to the way in which, if at all, their intellectual property rights are being affected in the existing environment. Armed with that empirical information we felt that we would be in a better position to be able to make an assesment of the impact of new gTLDs. So, market research is, that is how we understand that in this context of intellectual property. I think when Peter Gerrand was speaking he was addressing more generally the policy question of new gTLDs, rather than our limited perspective for the purposes of this Process. Sorry, Marc Hughes, and then I think we will be finishing.
(Mr. Marc Hughes): A quick question of Leni, Leni do you know how many people registered with the CORE members for wanting new domain names in those new seven gTLDs, if they were to go ahead? Any gut feel for approximately how many have registered?
(Mr. Leni Mayo): (The remarks were inaudible)
(Mr. Marc Hughes): In terms of market research obviously all those people who registered with Moniker and with others at Market Research, they obviously wanted it. So, one of the reasons of course in reissuing new gTLDs is because people want them.
(Dr. Willie Black): How many people though rushed in there because they were worried about losing them? Not because they really wanted them. And I have no position on this, I am just saying its an alternative view point. If a million people rushed in to pre-register, it may not be because they wanted them at all, but because they felt they have no option but to reserve them in case somebody else got them.
(Mr. Francis Gurry): Thank you Willie.
(Mr. Ken Fockler): Ken Fockler again, maybe I am kind of repeating the last point but the market research, if done, might be based on what if you have top-level domains that operate and follow certain procedures, and they might not be the names that facetiously come over .pure, .rational and .good guy and I follow the procedures and the seal of good-house-keeping seal of approval for registries. People might respond to that and say many of the topics we discussed today will be followed by these registries and therefore that might get a rationale under which an impact caused one way or another on trademark issues could be examined, and the desirability of people who want those top-level domains.
(Mr. Francis Gurry): Thank you Ken. Fine, well ladies and gentlemen let me thank first of all Ross Wilson and his other colleagues in the other departments of the Australian Government. But, particularly Ross for all of the work he has done in putting this meeting together. We are extremely grateful to you Ross. And let me thank all of you for having made the effort to come today and to express your views. We are extremely grateful to you for your patience and for having done so and we would certainly encourage you to participate in all remaining stages of the Process up until the final report is issued. Thank you very much and with that I close the meeting.