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WIPO Internet Domain Name Process

Transcript - part 5: Brussels regional consultation

September 29, 1998

23 September29 September1 October6 October7 October13 October19 October22 October22 October1 November4 November
San Francisco, California,
Washington, DC,
Mexico City,

(Spanish only)
Cape Town,
South Africa

(Spanish only)


(Mr. Francis Gurry): Thank you. I think fortunately it is not one of the aspects of the process that WIPO has to deal with, the structure of the DNS system as a whole, although it obviously does have an impact on certain of the questions. Are there any other observations or comments or questions to Willie Black? If not, first of all thank you Willie very much, and then I wonder if we may proceed to use the rest of the time to the coffee break and then I think that we will conclude the meeting at that stage.

Just to informally go through some of the questions that are in the RFC-2 and what I would like to ask you is an informal and non-binding, of course, show of hands just to see where the feeling of the meeting lies on certain questions. I won't deal with all of the questions and if anyone wishes to qualify specifically the showing of hands on any particular issue, please feel free to do so or to make an observation or a clarification.

So, I turn first of all to the question of dispute prevention and I will ask a number of questions which may appear to be rhetorical or to have an obvious answer. But I would ask the general question, is the feeling of the meeting in favor of the existence of some form of dispute prevention measures in general? All those in favor yes. Is anyone against? One is against? No.

Then moving on to the contact details. Uniform contact, there is a feeling of the meeting in favor of the existence of having uniform contact details and here we are speaking of course of the gTLDs and I shall be referring only to the gTLDs unless I specifically mention the ccTLDs. Those in favor of uniform contact details? Against? Nobody, so clearly in favor.

The system of verification on the part of the registrar or registry. Should any onus be placed upon the registrar or the registry to verify any details? Is anyone in favor of placing such an onus that will interfere with the automated nature of the registration process. Will it place a burden which does not exist at the moment on the registries and the registrars? Is anyone in favor of such a verification system? One sole person. Would you like to qualify us Keith?

(Keith Gymer): Well I think I can appreciate no instant requirement, but I think there should be an obligation to act if it turns out they are not accurate. And so, if the registry becomes aware that they are not accurate then it has an obligation to do something. I don't see it having an obligation to go out and walk up the street and say, is that name on the door.

(Francis Gymer): Let me ask you how the registry comes to know that there is some difficulty?

(Keith Gymer): That sort of issue I think would arise in the case of a challenge where the people come up and say, hold on, the information that’s here is clearly false, this address does not exist, this person does not exist or what have you and then you can put people on own notice to verify. But that is after the event thing rather than a prior issue.

(Francis Gurry): Fine. That seems to me to be the general feeling of the meeting. Who is in favor of requiring the applicant to warrant certain things, namely that to the best of his or her knowledge the domain name does not infringe the rights of third parties. Is anyone against such a proposal? Thank you.

Waiting periods. Is there anyone who is in favor of imposing a waiting period after an application for registration has been deposited or sent? Nobody is in favor of a waiting period. Thank you.

Who is in favor of suspending any activation of a domain name until such time as the registration fee is paid? Just one moment Willie, let me just see where we are before the comment.

(Dr. Willie Black): Let me say how we work in the U.K. and I am certain that other registries will work this way. We give a credit account to each of our members. So, in fact when we register a domain name it immediately goes against their credit. The fact that they may pay that a month later en masse for all their customers is an interesting point. Because I don't know whether then the name is being paid for, because it has been put on their credit and they are entered into a credit agreement with us that they are obliged to pay. I can see how it would apply to direct applicants where the end customer is paying possibly before you activate it. But there is a problem in knowing when you have a registry system with members who have a credit facility with the registry (interruptions).

(Mr. Francis Gurry): Well, then let me ask you. An ISP has a credit facility with you, deposits money as a deposit account and you deduct automatically from that deposit account each time an application is made by the ISP. If the ultimate customer, the ultimate applicant for the domain name does not pay the ISP, then the problem exists between the customer and the ISP does it not?

(Dr. Willie Black): Yes, that is an agency problem. We believe that when we have been paid, either by the agent or by the registrant directly, then it has been paid. So, if the agent pays us in their normal credit process, then it has been paid for. But of course, because we don't take deposit accounts we give them credit accounts. Because the members are using it as a cash float until they get their money in, they are meant to be paid at the point where I raise the invoice to the member. So it is an interesting one. I just mention the complications, I don't know how you can change the question or not.

(Mr. Francis Gurry): It is a complication. For patent applications we use a deposit account. That is the agents put the money in before hand and it is deducted from the agents each time the application is made. So, assuming that there is a direct relationship between the registrar or the registry and the applicant, should the registry be obliged not to activate a domain name until such time as the payment has been made? Or is the question not clear? Is there anyone in favor of requiring registries not to activate until such time as the payment has been made? Is there anyone against such imposition? Yes, Marcel may I ask you as the administrator of .ch to explain?

Mr. Marcel Schneider, Manager, Domain Name Registration, SWITCH, Switzerland): We have actually studied this thing quite a bit, because we of course as a registry would actually like to have pre-payments, of course it is much easier. But there are several things, involved which speak against it. One of them is that it takes a lot of time until people pay. You have to sift out invoices and need time until people actually, are able to pay. The other thing is that it is a bit unfair when you have a certain policy putting domain names on hold or a waiting period until payment is received. It is a bit difficult when certain parties apply and the one which has a shorter time to pay, meaning an easier paying method or whatever than this party, would win and this would be quite unfair of course.

(Mr. Francis Gurry): So, its largely the practical considerations of the administrator of the domain that you have in mind that makes it very difficult to distinguish between cases of non-payment and those of payment, and you feel that you will be unfairly prejudicing?

(Mr. Marcel Schneider): Just one point is that people would not accept this time lag between application and actually receiving the domain name.

(Mr. Francis Gurry): And may I just ask you one other question? If you find out, or when you find out that an applicant has not paid what action do you take at that stage?

(Mr. Marcel Schneider): Well, probably you take the domain name away and this probably would also be disputed again and then you would have to put the domain name on hold for some certain amount of time and it’s again a very difficult thing.

(Mr. Francis Gurry): Yes. Geert please.

(Mr. Geert Glas): I think the issue is, do you think those practical concerns, which I think also Willie raised, do we have to weigh them against using the payment as an extra criteria somehow to weed out the serious from the not so serious applicants? I think you need to put those two in balance.

(Mr. Boudewijn Nederkoorn): I think that in general in European registries payment is not such an issue. There are many more barriers to face an applicant than just the payment. I think that especially in the White Paper it’s mentioned because there was not such a strained relationship between the applicant and the .com registry. And the result was this remark especially in the White Paper. As far as I can see, in the ccTLDs in the European region it is certainly not an issue.

(Mr. Francis Gurry): Thank you. But it may be in gTLDs in which there are registrars without any limitation of number. Willie Black please.

(Dr. Willie Black): I think that’s a good point. I think this should apply very much to gTLDs, but in general you have got to take the view of the business arrangement that you have with a customer in normal commerce. You decide whether or not you are going to give somebody credited on the basis of whether you think they are creditworthy or not. You take that chance. Once you have given them credit, it then becomes a matter of their having entered into the contract, they owe you the money, its a non-repudiatory breach of contract not to have to pay. We can't just say, you have not paid, therefore I am going to repudiate the contract. You have to put them on notice. So we give them notice and we say to them, we give you adequate notice, like a month, if you don't pay within a month then we will cancel the domain name. So, I think that is one issue.

The second issue is that, at twenty pounds a time which we are charging our members, the people who are going to register all these names in a pirate mode don't have to put their hand in their pocket for too much money to register quite a few names and build up a small portfolio, we have seen that happen also. So, we know that pirates have paid for the domain names and fairly quickly.

(Mr. Francis Gurry): Yes madame please. May I just ask you to give your name please.

(Ms. Fabrice Westerink, Adlaw Legal Advisors): I would like to add to this particular issue about payment. If you want to find a pirate, you have to try to be able to do something about this piracy. I think that another way to do this is to obligate people to use the domain name which they register. Paying is one thing but another thing is that you could also try to set a period of time, and within that period a registrant needs to use it on the Net.

(Mr. Francis Gurry): Thank you very much. That is a practice in some countries in respect of trademarks and it’s a controversial practice in that area. I see we have three persons wishing to comment on your suggestion. Paul Kane may I take you first please?

(Paul Kane): Would you please define what "use" is - it is very difficult to determine what "use" is.

(Ms. Fabrice Westerink): I mean, activating the domain name, for example, by exploiting a web site or, for example, by using e-mail addresses with the domain name in it.

(Paul Kane): The big problem, of course, is it is very difficult to determine whether or not a web site is in use. Some people could just be using it specifically for e-mail. As a registry, you have no way of knowing whether or not that is "in use." It could say, you have come to the home page of xyz company, which is being held for a client which could in turn be use. If a registry is taking a view that you have to actually be selling goods or you have to be promoting your wares, that’s an area possibly that registries should not get involved in.

(Mr. Boudewijn Nederkoorn): There are quite easy criteria that are applied in the Netherlands, that "in use" means that the domain name system is activated and that means that the postmaster at domain name .ml is reachable. That is the criterion in the Netherlands.

(Ms. Fabrice Westrink): The main reason I mentioned it is because in Dutch law you cannot do anything about piracy if they don't use the name. So you can easily register the names of your opponents without using them and thereby prevent them from getting a name.

(Mr. Amadeu Abril I Abril): Based on our experience with the registrations in courts, we decided first that no name will be registered until the registrar gets paid. The second thing is, we have a clause whereby the registrant, the applicant, says that he will be using the domain name in 30 days. Let me say that both mechanisms have a real effect on the good health of the Internet in the prevention of piracy and cybersquatting. They have no effect on the business practices of registrars. Our experience is that cyberpirates and cybersquatters are the ones that always pay and they really have some use the domain name. They always put up a very nice note saying, perhaps it is for sale, and changing that once a week or something like that. On the other hand, domain names are not trademarks. The fact that a domain name is used or not has nothing to do with the possibility of bringing ADR and applying the same rules. So, I really don't think these two concrete issues help solve the problems, probably they only help to make business life more complicated.

(Mr. Francis Gurry): Thank you very much. Willie Black, a last comment on this point perhaps.

(Dr. Willie Black): Three things came to mind on this, and I will try to be very brief. The first one is that we do have a regulation in the U.K. that you must have two operational domain name servers functional at the time of registration, that can be checked. The next day, the servers could disappear. Again, it is a non-repudiatory breach of contract. It means that you can't just repudiate the contract straight-away if you discover that the name servers are no long up. All you can do is to put people on notice that they have to fulfill this requirement, and let’s bet that within five minutes of receiving that note they will somewhere be up.

That gets me to the second point. Usually when the ISPs register on behalf of a client, they know that our regulations are such that there must be something there. They will put up a holding web page that says, this is registered for xyz. Is that in use or is it not? Because it then becomes a matter subject to judgement on the facts. And so, these are just some of the practicalities of trying to implement that. It is good in principle, but difficult I think in practice to deal with it.

(Mr. Francis Gurry): Thank you very much. Well I conclude that there is no conclusion on the issues of either pre-payment or use at this stage. In so far as pre-payment is concerned, while the idea in principle is thought to be a good one, it seems that it is necessary first of all to make a distinction between the ccTLDs and gTLDs and secondly, it seems that it is essential to trace the legal relationships that are created in the course of a registration process and who is involved, whether there is an ISP as an intermediary.

Fine, may I move on then, still in the area of dispute prevention, and deal with two other questions in that area. The first is gateway pages or portals and the possibilities of gateway pages. Now, there were some discussion on this, this morning and there was also some discussion to which I was privy over lunch. It was pointed out in the latter series of discussions that amongst friends one can do anything. So, if voluntarily two enterprises, or two persons, wish to share a gateway page then this is possible both technically and legally it would seem. The question really is, whether there is any sense in having a gateway page as a mechanism which would be automatically brought into being upon the registration of two similar domain names, or request for registration of two similar domain names. Is the general feeling of the meeting that gateway pages are an interesting idea to be explored? There is clearly much in favor of that. Is any one against it or would like to say something against it?

(Mr. Harald Alvestrand): As you mentioned, friends can do anything and people who meet for arbitration can agree upon anything, including the sharing of a portal page. But, I think that it is a mistake for the registry to impose requirements that such a solution be the favorite solution or the mandatory solution when there is a conflict. That requirement I think is not something we should explore further.

(Mr. Francis Gurry): Thank you Mr. Alvestrand. Mr. Abril.

(Mr. Abril I Abril): I should like to agree completely with what Harald has said. I would add also that for most people here, I only know their e-mail addresses and some of them their faces, but in most of other cases I have never been to their web pages. Portals, may be useful only for web pages, but are completely useless for e-mail, SDP and other international services.

(Mr. Francis Gurry): Thank you for your clarification. There are four other observations on this point.

(Mr. Constantinos Popotas): First of all, I should put down a question mark because in the document the question is slightly inverse. It is the question about requiring or imposing measures. Now, I am afraid that if we have this portal page, we are more or less creating what we are trying to avoid, confusion in the minds of users. But the association between the people sharing this portal page, that is what I am against.

(Mr. Francis Gurry): Thank you Mr. Popotas. Mr. Philip Sheppard I think you wish to say something.

(Mr. Philip Sheppard): Again, just an observation. Beside the fact that the concept of gateway pages sounds a little bit like the judgement of Solomon, I think my concern is one of perspective. It is an eminently practical solution given the sort of restricted group of domains we have now, and therefore seems to be sensible as a short term pragmatic solution, but it should not allow us to lose sight of concepts we have had before in terms of wider directory listings etc. which are by for the more elegant longer-term solution.

(Mr. Keith Gymer): I think I am probably going to make the same sort of point that Paul might make, because I think that sort of closed view shouldn't exclude the potential for a new gTLD, for example, being operated on a purely shared basis ab anitio. Then we can see whether that commercially that is attractive or useful or not. I think I entirely agree that you probably have to look very closely before you decide that you are going to enforce a solution which says thou shalt share. I always hope that if you are providing unique domain names, provided you provide this differentiation, that sort of sharing is going to be reduced. But equally, on the other hand, you might want to have a look up and you might want to put yourself, in a .dir and share yourself because that is one way customers look for you. And I don't think you should exclude that option of operating a shared TLD ab initio in a way that .io is being operated. I think there are very good aspects to .io.

(Mr. Alvestrand): I agree 100% in that if you want to provide such a solution within a limited space that's a very much good thing to do. But, what I was objecting to was the idea of imposing this requirement on all spaces for which we are trying to suggest rules.

(Mr. Francis Gurry): Thank you Mr. Alvestrand. No other observations? Thank you. Then let me deal with the last question that I would like to raise and some others may wish to raise other questions on the area of dispute prevention. We have spoken about uniform contact details and we have spoken about the uniform warranty statements and the possibility of using other devices in the gTLDs. One of the questions in the RFC and RFC-2 is 14.9 and it is the desirability in encouraging registries in the ccTLDs to adhere to policies that are elaborated for the gTLDs in this area. Is this seen to be, remembering that the wording is "desirability of encouraging" as opposed to imposing, does this seem to be a suggestion that is useful to the meeting. Do you agree? Is anyone against? Mr. Abril.

(Mr. Abril I Abril): As a matter of fact I am not against, I am completely for. But many people in the city or in the area don't like being advised as to what they have to do, and this raises jurisdiction and national sovereignty. My perception is that if you provide a good system, a reliable system that really reduces the conflicts and the cost of conflicts when they appear and you must instill this, the ccTLDs will follow. Now in Mexico I think there is a request to WIPO to apply something like this for the disputes. And if we provide a good system, I am sure that many of them will follow. But requesting them or trying to force them could be seen as external pressure that they don't like.

(Mr. Francis Gurry): We are entirely at one there the process.

May I move to a second area of dispute resolution, and ask a very general question to get the feeling of the room. Are you in favor of the existence of alternative dispute resolution procedures, the availability of alternative dispute resolution procedures in the gTLDs? Is anyone against? So, we have unanimity on that point at least.

Now, to the harder questions as to its nature. Are you in favor of alternative dispute resolutions, the available alternative dispute resolution procedures being uniform or consistent? And let me explain a bit my question. We are not talking about exclusivity and the provision of dispute resolution services. It may be that dispute resolution services would be made available by many or a few institutions throughout the world. But the services that they would make available would be uniform. So, are you in favor of uniformity in this sense, in the available alternative of dispute resolution procedures? Yes again, and is there anyone against such uniformity? No. So there is a clear desire not to have differentially accessible gTLDs in domains.

Let me ask you a general question. Should the alternative dispute resolution procedures that are made available be restricted to cyberpiracy? Let me rephrase it, who is in favor of restricting alternative dispute resolution procedures to cases of cyberpiracy? Nobody. So, I take it that the feeling is that alternative dispute resolution procedures being, after all, an additional procedure which does not close recourse to litigation. I can see that it is considered that they should be available for any form of dispute involving domain names.

Are you in favor of the separation of the provision of dispute resolution services - that is, we are talking about an institution which would administer an arbitration or a mediation, for example, that would make the decision - are you in favor of the separation of the provision of dispute resolution services from registries and registrars? Yes. Is there anyone that is not in favor of such a separation? Dr. Willie Black who is an outstanding mediator please come and tell us.

(Dr. Willie Black): I simply just wouldn't want it to be mandatory and that's all. Because I think that if you have got a uniform practice there, it is not unreasonable for a not for profit registry who has many registrars to do that function for its TLD, that's all. There should be an alternative, it shouldn't be mandatory if there is a separate body that does the work.

(Mr. Francis Gurry): Thank you. Then if I may move to some questions concerning the procedures and the first is, will you have an objection to the registration of a domain name as a result of the initiation of an alternative dispute resolution procedure? Are you in favor of providing for the suspension of the domain name? I’ll repeat the question. The question is this, a domain name is registered and a third party objects to that registration and initiates, for example, arbitration. Should there be a possibility or should there be an immediate requirement that the domain name registration be suspended for the duration of the proceedings? I think it is perhaps too difficult to answer the question so generally phrased. Paul please help me out in the formulation of the question.

(Mr. Paul Kane): Sorry, just a question of clarification really. Are you saying that within a specific time period of the application being received? Because I think that is quite important and I think possibly if that can be incorporated it will be easier to gain consensus, which is important.

(Mr. Francis Gurry): Thank you Paul Kane. There are a number of variables involved. One variable is the initiation of an ADR procedure within a certain period of time from the registration. Another variable is whether the suspension should be automatic or whether you have to go through a procedure to get the suspension. In other words, the suspension is a discretionary remedy available which may be administered by the dispute resolution body, the arbitrator or whatever the other procedure. So, if I can take the two parts. First of all the remedy of suspension, should it be automatically available if an ADR procedure is initiated within a designated period of time which would be short? All those in favor of automatic suspension? All those against automatic suspension? So, the majority is against an automatic suspension.

Should suspension be a discretionary remedy that may be administered on hearing both sides in certain circumstances? Those in favor. Yes. Those against? So the majority favors the discretionary availability of suspension as a remedy. Thank you.

Let me move to appeals. Let me just say by way of background that the two most common alternative dispute resolution procedures are mediation and arbitration. In the case of mediation you have a solution only if both parties agree to the solution and they are not obliged even to proceed with the procedure, let alone to agree to any solution. In the case of arbitration of course the arbitrator has the power to impose a binding decision on the parties. Normally, in arbitration the decision of an arbitrator is not subject to appeal on the merits. The parties may appeal only for reasons, broadly speaking, of procedural unfairness, fraud and so forth. So, the normal rule in arbitration is, no appeal on the merits, on the substance. Are you in favor of providing for an appeal in the domain name area? Of allowing appeals or providing for appeals? Those in favor of appeals? Those against appeals? So, I think the majority is probably in favor of appeals, which would be a departure from normal practice in arbitration. This is the case.

(Mr. Christian Schalk, Member of Trademark Department, Schering Aktiengesellschaft): But I think if you would give place to an appeal, then we should also introduce a timetable even for the whole procedure, I think. So, if you for example, go to a trademark office in order to find a decision, sometimes it takes months and even years to get a decision. The Internet is a very fast medium, so for everything we should have fixed time limits which can be stopped if there is some place for the registrations or some kind of cooling-off period. Maybe the WTO dispute settlement could be as a guideline.

(Mr. Francis Gurry): Thank you. It is not particularly expeditious, the WTO State Dispute Resolution, for obvious reasons it involves more negotiations perhaps. May I raise the possibility of barring claims, that is, saying that after a certain designated period of time, for example three years or one year, it should be impossible to bring an action against a domain name or to initiate an alternative dispute resolution. Are you in favor of the introduction of a time bar? Against? That is if you raise your hand, you would think that it is desirable that after a certain period of time the registration of a domain name may no longer be challenged pursuant to any alternative dispute resolution procedure.

(Mr. Keith Gymer): I would just make a comment there that I think the issue might be relevant in that case as to whether there has been any change of use or assignment of the name to a different entity, which I think would be relevant. It is appealing and I think reasonable that challenges under an ADR procedure should be stopped after a certain period in the absence of any other changes of significance. So, I can foresee cases where there are changes of significance. I think they ought to reopen the period again if something has changed fundamentally. Otherwise I think the domain people should, after a time, expect to have to go to courts and do it through the courts.

(Mr. Francis Gurry): It is an important nuance. Yes Mr. Schaft you wish to make a comment?

(Mr. Schaft): I would see a problem in the time limit because it would be the same or very similar in trademark matters, also in domain cases, I would be obliged to observe the filing of new domains. This would require much more work for the people who are dealing with it. And for this I think the development goes too fast. Very often you find out the cybersquatting by accident, so I think there should be more flexibility.

(Mr. Francis Gurry): So you are not in favor of a statute of limitations or prescriptions? Who else is not in favor of a statute of limitations or prescriptions? So, the majority favors not having such a system. Yes please Geert Glas.

(Mr. Geert Glas): In most European countries a distinction is made in trademark matters on the statute of limitations between good faith and bad faith situations, and that may also be an analogy which could be studied here.

(Mr. Francis Gurry): I am sorry, I have been told that I have been unclear once again. I said that the majority is in favor of not having a statute of limitations or a time bar to bringing a challenge. Thank you.

Costs. May I raise two further questions in the area of dispute resolution costs. Dealing with costs, are you in favor of the dispute resolution body, the arbitrator for example, having the power to award costs against one party? The normal rule, for example, in some jurisdictions is to say that the winning party does not have to pay the costs of the procedure. The losing party has to pay the costs associated with the procedure. Are you in favor of such a rule or such a discretion residing in the decision-maker, the arbitrator, the power to award costs? Is anyone against the power to award costs? Fine, okay everyone is in favor.

Now, we have not spoken at all about the possibility of dispute resolutions on-line. So, if I may say briefly one or two words about it. You may be aware that the WIPO Arbitration and Mediation Center has developed an on-line system. It is not a system which is intended to completely replace all aspects of an alternative dispute resolution procedure in person or as it happens in the real world, but to provide a means whereby certain of the steps in a procedure can take place on-line. Given that, in the area of domain names, many of the disputes can be resolved on the basis of documents alone as it were and there is usually not a necessity to hear vast numbers of witnesses. Do you think it is a good idea in this area to explore further the possibility of the use of on-line dispute resolution procedures? Is anyone against? Everyone is in favor.

Okay, may I move to famous marks and the third general area and pose the general question. Are you in favor of a separate mechanism for the protection of famous marks? If there was arbitration as an alternative dispute resolution procedure available for any dispute, for example, then, the owner of a famous mark could use arbitration. Arbitration would not exclude the possibility of a challenge by the owner of the famous mark. However, it might also be possible, as the CORE system imagined, to develop a separate procedure. In the case of CORE, it was the Administrative Challenge Panels, whereby in certain circumstances the owner of a famous mark might be able to obtain certain remedies, such as an exclusion remedy, whereby nobody would be permitted to use that name, that famous mark in that particular gTLD or any other gTLDs. Are you in favor of the deployment of a separate mechanism which would be available only to the owners of famous marks? Who is against the existence of such a separate mechanism? So, it is about evenly split. Would anyone like to make any comments on this? Please Madame.

(Ms....................): How would you define a famous mark?

(Mr. Francis Gurry): I was going to come to that.

(Ms....................): Will you do that before we vote?

(Mr. Francis Gurry): Okay. Please Michael Schneider.

(Mr. Michael Schneider, Chairman, Electronic Commerce Forum (eco e.V.)): Thank you. It is only a short question. It is not only the question of how you define the famous marks, it is an additional question, has it to be a famous mark on a worldwide basis or only in one region? Because gTLDs, talking about gTLDs we are dealing with registrations on a worldwide basis not only within a country. I think this is very hard to do. We had a case in Germany concerning one famous mark however, I don't think it is famous in the U.S. or in Africa.

(Mr. Francis Gurry): Yes. You are absolutely right and I think that the legal practice is different in various countries.

(Mr. David Tatham, International Trade Mark Consultant, representing UNICEF): It is not only the question of a definition of a famous well known or a famous mark and within the WIPO Standing Committee we have been struggling with this for a number of years now, instead of reaching a conclusion. It seems to me, if you are setting up alternative dispute resolution procedure, what is going to be different between a dispute between a famous mark and a non-famous mark? It seems to me it is going to be exactly the same procedure, so why do you need to have something special for what is supposed to be some special sort of mark? That is my only point.

(Mr. Francis Gurry): Indeed, if I may just make an observation on that. Perhaps nothing is needed. Perhaps there should be no special treatment, but one thing that could be different is the remedy. For example, under the CORE system it was envisaged that in the case of a famous mark or something similarly internationally known mark, that it would be possible to get the remedy of an exclusion. Whereas arbitration otherwise would operate with effect only between the two parties to the dispute, the winning party would have the possibility of having transferred to it or assigned to it or cancelling the other party’s registration and any award made by the arbitrator would have no effect in relation to third parties to the dispute. Whereas a mechanism for the protection of famous marks might, it is a possibility only, might provide for a different form of remedy.

(Mr. Verbatess): What I am trying to figure out and I am trying to formulate is the fact that what we want to perfect is famous marks for the needs of domain names, and in view of doing that we need a separate procedure that is more expensive, that is more guaranteed, that is something like a voluntary submission for the registering parties. Suppose, instead of having .com you have .mrk for mark and people who want to be in this domain and be recognized as known marks for the purposes of domain names more or less expose themselves to a more detailed procedure, whereas we have a registry that details everything and makes extensive searches which are more expensive and a more bureaucratic system in order to protect famous marks, that are forced to be recognized as famous marks.

(Mr. Francis Gurry): Thank you. Well I see that views are clearly divided and may I just make this comment. I think these views are clearly divided on this issue and some feel incapable of answering the question until they know what the question is talking about. And so, may I ask this question, who considers that until such time as there is a clearly accepted international definition of famous marks, there should be no separate procedure or mechanism of protection for famous marks in the domain name system? Is the question clear? Who considers that until such time as there is a clearly agreed international definition of famous marks there should be no separate mechanism protecting famous marks?

(Mr....................): Even if that is a definition for famous marks for the purposes of the Internet?

(Mr. Francis Gurry): Just let me ask the question for one moment if I may. Who considers that, despite the absence of a clear international definition of famous marks, there should be a separate mechanism? Well I think the majority is clearly in favor of not providing for a separate mechanism, for as long as there is no clearly accepted international definition of famous marks. Mr. Keith Gymer.

(Mr. Keith Gymer): I think that I am a little confused as to why people don't see a difference between the protection a famous mark might want and what the protection an ordinary mark might afford. Because I think it is the difference between a section 10.1 case in the U.K. and a section 10.3 case. And maybe, whilst you would have no difficulty in getting a dispute if someone else took bt.telecom, we might have more difficulty with bt.cars. On the other hand, Kodak might not, and I think Kodak might have reasonable grounds for objecting to kodak.cars by expecting a wider range of protection than might be afforded to other marks which were less famous. I am a little confused by the people who think that famous marks would not want a slightly different remedy.

(Mr. Francis Gurry): Thank you. Madame, je vous en prie.

(Ms.........................): Could I speak French it will be easier for me. I don't think that we are not making clear distinctions between well-known marks and the others because we have a problem with the bottom line. I think that you are asking your question from a procedural point very strictly and I don't think renowned trademarks should have a special procedure or a special jurisdiction. But, what I think you are drawing the attention to is the consequences and the requests that could be put to litigation by renowned trademarks. So, I think the question should be asked in a slightly different way. I don't see why ordinary trademark holders could not also ask for claims or for remedies within the framework of the arbitration procedure. You did not ask us about the decisions this jurisdiction, this arbitration body, would be asked to make. We did not go to the bottom line I think, about what kind of claims would be allowed by holders of trademarks or renowned trademarks. Will the claims have to be different and will renowned trademarks get additional rights to claim than the others? Will they be mainly seeking damages or remedies and also what will be the scope of the arbitration? You said that the scope of the arbitration would be relative in terms of ordinary trademarks and be absolute in terms of renowned trademarks. I think that we need to clarify these issues, and its probably because of that, that we find it hard to answer your question.

(Mr. Francis Gurry): To express it. In the case of arbitration, unless it is foreseen that any arbitration service provided in the area of domain name disputes should be different from the body of law that has been built up for over the course of decades, then the decision of the arbitral tribunal binds only the two parties to the case to the dispute. And this because the authority in the arbitral tribunal comes from the contract between those two parties, which passes to the arbitral tribunal the power to decide the dispute between those two parties. The arbitral tribunal has the power normally to award any sort of remedy. There are exceptions, in the case of Italy for example, the arbitrator cannot give an interim injunction and so forth. But in general, there is no limitation on the remedy and therefore the possibility of awarding damages in an arbitration.

One other point on the arbitration is that arbitration would be available for all forms of disputes involving domain names. Whether one is talking about famous marks or ordinary marks. It may be that the award of damages, if any, might be more significant in the case that severe damage was done to a famous mark than in the case where it is a mark which has only just started to gain some acceptance in the marketplace. In the case of a separate procedure, because in the history of the previous discussions concerning this question, it was envisaged that there might be a separate procedure which would be available only for famous marks, (and I use famous marks in a very loose sense, because the actual description that they used in the documents was for an internationally known mark or for a mark that was internationally known on the Internet) there were varying formulations. In this case, it was envisaged specifically because of the problem of cybersquatting in relation to famous marks. That there should be a relatively straightforward administrative procedure whereby the owner of a famous mark could apply and receive from a panel an award which said that this mark is recognized as famous, nobody may register this mark in this gTLD or in all gTLDs except the owner of the mark. And effectively, registries would be bound not to register that mark. And so it is a separate procedure which would have a separate remedy that would not be available ordinarily in an arbitration procedure. So, with that explanation, shall I just re-ask the question. Who is in favor of exploring the possibility of a separate procedure for famous marks? Who is against such a possibility? So, we now have a majority in favor. No explanations for the against?

(Mr. Alistair Breward, Attorney, Taylor Joynson Garrett): I think it would be interesting to have some information, and there are some people here who may have it, as to the cost associated with defending a mark like Exxon or Kodak compared to the benefits of the mark and the general turnover of the entity, when compared perhaps with a number of smaller marks. I think that I have not heard any compelling reason either here or anywhere else for procedures that streamline and protect these marks in a way that is qualitively different from the protections that are available to lesser-known marks. So, trying to do that, absent any evidence and I don't believe there is evidence, that they spend a higher proportion of their effort defending their marks than lesser ones, I see no compelling reason to introduce what is inevitably a whole extra tier of effort at the administrative level trying to define where one draws the line. There is a point that Philip made earlier, some marks come and go very fast. I think it is a red herring and I think that there are more important fish to fry.

(Mr. Francis Gurry): Thank you.

(Mr. Roberto Gaetano, IT Projects Coordinator, ETSI): I have to say that I am not a lawyer so probably this reasoning is something that may sound a little bit odd to lawyers, but I think that famous marks and less famous marks, as long as they are competing in the same domain space, they should obey the same rules. Now, if we would be talking about a different domain space like .trademark, then it would be perfectly understandable to have a different set of rules, to build a short-list of famous trademarks, specific criteria to be defined about what is a famous trademark, and a completely different application procedure in order to register in that different domain space, be it .trademark or whatever you want. And in that case the different procedure should have a justification. But otherwise, from the layman’s point of view I don't see why.

(Mr. Francis Gurry): Thank you.

(Mr. Philip Sheppard): I just voted in favor of the proposition and perhaps after the remarks of the last two speakers, I would like to say that I am entirely in sympathy with the logic in which you are thinking in terms of what procedures should work and be sufficient for everybody. But speakers before me mentioned the point about the competitive marketplace and unfair competition, and this is precisely the point. Famous marks are the ones that have been subject to unfair competition in the form of cyberpiracy and the earlier suggestions came up because of that, and because of the particular exposure of famous marks to piracy there may be a different procedure for them more than others. If a mark is insufficiently famous, piracy does not occur per se.

(Mr. Francis Gurry): Mr. Verbatos, Marcel Schneider.

(Mr. Verbatos): If I could make just two more comments. Having voted in favor of the maintenance of the pilot procedure, I should put forward these contradictions to the fact that up to now we have been refusing to get inspiration from the trademark domain and all of a sudden now we have it with the acceptance of these pilot procedure, and then I should say that the pilot procedure is very good if seen statically. But we should reason a bit what happens when one known famous mark that has not been submitted to the pilot procedure all of a sudden requires an upgrade of registration into being a famous mark in a domain where there are conflicts. Should these registration of famous marks expel the other users who have registered the name?

(Mr. Marcel Schneider): Just speaking from our experience, we have found that it is very important to have a dispute prevention mechanism for famous marks, because disputes are very often encountered. What we do actually is stress to the people, we issue warnings also when we encounter what we call a famous name, just to make people aware that they cannot have any name in the world. And this usually is quite efficient.

(Mr. Francis Gurry): Thank you, that was very interesting suggestion. Michael Schneider now.

(Mr. Michael Schneider): I should like to point out that the two questions you have asked are complementary. First of all, you said should we consider a specific procedure for well known or famous marks and the other question was, should we wait with the implementation of this procedure until we have worldwide acceptance of world famous marks on a uniform basis? And therefore, I think both questions are relative and should be asked again for the record. Additionally, I insist we should find a procedure to deal with conflicting famous marks. Let’s take the case of the Colchester pistol, and for the City of London Telecom, this is not famous in Europe currently; however, it might become famous in a few years because this company is growing very much. And if those marks would conflict what are we doing with that? Are we allowing the pistol manufacturer to use it or the City of London Telecom? I think we have to find procedure to deal with that. And, by the way, although the European Colt Company is less known that the U.S. one, on the Internet they are better known because they are providing Internet services. I think these conflicts have to be dealt with and we have to find procedures how to do that.

(Mr. Francis Gurry): Thank you. I think that I agree with both of your observations, that I would propose that we move to try to get them a little closer to each other and would say that frankly, as I understand it there is a general feeling in favor of the interesting nature of the possibility of having a separate mechanism for protecting famous marks. There is also a general feeling that we don't really know how to clearly define internationally a famous mark. That means that if one were to introduce a mechanism to protect famous marks now, then a decision would have to be taken as to what criteria should be applied to determine what is a famous mark in the absence of a clear definition. And one approach to this question in the past was substantive guidelines that would be applied by a decision maker and the substantive guidelines would form the basis of the law, if you like, which would be applied by the decision maker to determine whether a famous mark existed. The problem is that the normal procedure for elaborating norms is a State function. Or, on the international level, a Member State function in a governmental organization. An alternative approach would be to wait until States determine, in this case in the course of discussions at WIPO and the Standing Committee on Trademarks, what a famous mark is. So may I ask for just some views on how you feel we could go forward with the question of defining what is a famous mark? Does anyone have any suggestions on this question?

(Mr..........................): I should say that part of my antipathy to famous marks stems from a time when I was General Counsel of a company that had a mark that was registered in about 30 jurisdictions, but our use was very low and our resources were very stretched and the general feeling was that we got no benefit from this and yet perhaps we were one of the most deserving cases. I think the only definition of famous marks that can possibly stand up is some kind of definition that says it must be so obvious there can be no question whatever and that may mean that there must be an international panel appointed from God knows where all of whom regard it as a pointless debate to entertain. Coca-Cola passes, but there are very few that do. Colt doesn't, and if one starts to get into gradations one ends up talking all night. May I make one point, on cyberpiracy. I think Philip's point is valid, that cyberpirates currently target major corporations. But it is like Neighborhood Watch, if the major corporations put up barriers around their communities then the pirates will move to the next neighborhood which will be the smaller, less important, less deep-pocketed trademark holders.

(Mr. Francis Gurry): Thank you. Yes, Madame please.

(Ms Fabrice Westerink): Perhaps we can find some solutions in the American case law. Here I am referring to the Federal Trademark Dilution Act, since there have been a lot of cases around this new Act and it’s extra protection for the lessening of the capacity of a famous mark to identify its goods or services. So, there are already several cases and perhaps in these, there are some criteria already.

(Mr. Francis Gurry): Thank you very much for that reference. Well, I suggest that we leave the question, but I would encourage you to submit comments on this issue to give us some guidance as to how we can tackle it. And Michael Schneider you have given us already some

very valuable suggestions. If I may just move to the one, we are late for the coffee break, but I thought that we might as well finish now, with your indulgence, and then proceed to coffee.

If I may move to the other area, the last area of the new gTLDs and frankly, this poses certain problems for us also, namely how to tackle the issue that is being put to us on the effects on adding new gTLDs on intellectual property rights. How does one methodologically go about tackling this question? We have made some suggestions, but it is really only a beginning, in RFC-1 and RFC-2. And we thought that certainly one body of evidence which would be very relevant to an evaluation of this question was the existing experience of problems in the gTLDs between domain names and trademarks, So we would encourage you to share your existing experiences or problems. I think it is very difficult to formulate a question that I might put to the meeting to get some indication of their feeling. May I suggest the following two questions and then you can shout me down if you feel that they are unacceptable. The first would be, who sees an irrevocable problem in adding new gTLDs? Who sees an insurmountable problem in adding new gTLDs? And the second question might be, who sees that adding new gTLDs in a progressive manner or a staggered manner, or Willie Black what was the word that you used? a controlled manner, would not be a problem provided that there are associated with the new gTLDs adequate dispute prevention measures and an adequate dispute resolution system? So, do I have your permission to pose each of those questions? So, the first would be, who feels that adding new gTLDs is an insurmountable problem that should be avoided at all costs? Nobody. So, there is a general feeling that it might be possible to go ahead with new gTLDs. It is a possibility.

Then may I ask the second question. The second question is, do you agree that it would be a good idea to add new gTLDs on condition that it is done in a controlled manner and that there are associated with the new gTLDs adequate dispute prevention and adequate dispute resolution procedures? So it is possible under those conditions, those three conditions of control, dispute prevention and dispute resolution. And there are many qualifications to come, we start with Mr. Abril.

(Mr. Abril I Abril): Regarding the controlled manner, I voted for that and you may persist with the gTLD and when you process this you know the surprise. I want just to explain one thing, for some people believe that the best way to move forward is adding one gTLD at once. So, one now, one in six months, and nothing happens, then one in one year, one year and a half something like that. I would advise very strongly not to do that. The problem is not of having one, two or three, but that I think that more would be needed. And with the kind of experience we have as registrars taking prior registrations for these supposed new seven gTLDs, people tend to choose, 75% to 80% of the people choose one or two TLDs when they want to win. When they learned about the Green Paper and they knew that probably less TLDs were going there, everybody called or sent a message to us asking which are the TLDs, because now we want these TLDs. You want one TLD at a time, everybody will try to register that even if they don't feel any need for having an additional TLD and we would just replicate at CORE because perhaps this is the last one. And the next time you add another one you will have exactly the same problem. We are replicating the same mistakes from the past. So, I know it is difficult to plead that question in a trademark forum but I would say that adding some, a few, a small number but more than one, more than two and probably more than three TLDs at a time has some strong educational purposes in itself. (end of tape)

(Mr. Philip Sheppard): Really it is a question of clarification. It was enticingly easy to vote for the word "controlled." Do we mean to differentiate it from what we heard earlier from different speakers?

(Mr. Francis Gurry): Well, I was posing the question at the most general level because I fear that it is a very difficult subject and we are only slowly moving forward on it. So, I would propose that you would make any observations you would like to make, and that I don't ask any further questions from here on the matter unless you really wish me to. But that we hear observations as we have heard during the day on the controlled introduction and differentiation of gTLDs. So, I just propose that you say now what you may wish to say and then certainly encourage you to submit comments on the issue to assist us in going forward.

(Mr. Philip Sheppard): Okay, thank you for that Mr. Chairman. I think I would just like to stress how fundamentally important we feel that it is that any expansion of top-level domain names must be differentiated. And without that, simple numerical control is not at all the solution and that would be destructive of everything I think we are trying to do here.

(Mr. Francis Gurry): Thank you. Keith Gymer please.

(Mr. Keith Gymer): I am essentially going to say very much what Philip said, and I will agree with him that if you are simply going to add one gTLD and people are registering name.gtld, that is not going to work. But on the other hand, you might be considering name.differentiated sld.gtld, and that might be an option that's worth considering. Again, it is the differentiation issue which is key. And to pick up on a point that Amadeu said about people wanting to rush and register in these undifferentiated gTLDs which came out of the gTLD-MoU, I can perfectly well understand that and we have heard some of the rationale for why a lot of people want to go and register in that way. Because if you ask them the question, would you like to have bt.web, they say, yes of course. You ask the question would you like someone else to get bt.web and you not to be able to get it, ah! well that is a different question. You get a different answer.

(Mr. Francis Gurry): Thank you for that. Fine, are there any other observations? Would anyone like to make any observations on the subject that we were just dealing with or more generally about the process or any of the other issues before we close the meeting? Mr. Abril.

(Mr. Abril I Abril): I would like to reply to what Keith Gymer said, we will do that after over the coffee. I just wanted to make one point about the outcome of this process. We are all in favor of uniform rules, perhaps applied by different bodies. Let me say that from a registry point of view this is quite disturbing. CORE for instance has spent lots of money, I really mean lots of money building the interface to allow the WIPO process to get direct access to the data base and to do the changes following the ICP decisions. Why? If this is not owned directly by WIPO we will risk that the whole ADR is moved for nothing. And the local courts where the database is sitting are the places where people will litigate, because they are able to tell the database operator do that, don't do that, execute that or not. And from the other side, from a registrar’s point of view I would feel quite uncomfortable telling people who sign the contract with the registrar, you know you are abandoning yourself to arbitration by any of these 800 possible arbitration bodies of the world, depending on who the challenger chooses the day they want to challenge you. And perhaps it will be the German Arbitration Association that tend to do arbitration in German, so better learn some German or hire a German lawyer. This is quite difficult to implement, because if you try to do that afterwards, you know, to make things agreed to afterwards, this only will serve for the cases where there is no real conflict or good will to solve the conflict. But, the most important cases are where one party will never be willing to play by the rules, so he has to be somehow forced into ADR at one time. This cannot be arbitration, it must be something different. You need to think about the cost, the incredible high cost that this may bring to the system. And although I am sympathetic to the idea and the principle, I am simply trying to raise the question that, because we always think that uniqueness is equal to monopoly we are probably leading to a little bit more difficult solution and more expensive.

(Mr. Francis Gurry): I thank you Mr. Abril I Abril for your comments. Are there any other observations? This not being the case, then let me thank you very sincerely and very warmly for attending this hearing today. Certainly from our point of view and I am sure I speak for all of my colleagues up here, it has been extremely useful. We will make the transcript available on our web site. We do hope that you will submit, in addition, written comments and that today's discussions have at least served to advance us a little way down the track of pointing us in the direction of those issues that we should be thinking about. Finally, let me thank the European Commission and the experts who have joined us today and I suggest now that we conclude the meeting. Thank you.