Name: John Lewis Organization: British Telecommunications plc Position: Head of International Organisations Date: 19 December 2000 Subject: WIPO Internet Domain Name Process 2 BT has reviewed the contents of the requests for comments regarding the WIPO2 internet domain name process and offers the following comments as set out below. PERSONAL NAMES Paragraph 20 invites comment on the need for protection against bad faith/ abusive/ misleading or unfair registration and use of personal names as domain names with eight specific questions. 1) How do you define bad faith, abusive, misleading or unfair registration and use in respect of personal names? BT considers that primarily, bad faith use of a name tends to be use of a "famous" name for example, an actress. Given that then any system for preventing abuse of such famous names cannot necessarily be limited to those names because variants will also have to be considered. An individual should not be permitted to become a target of negative comment, abuse, ridicule etc either directly through use of their name or indirectly through use of a similar or inclusive name structure (eg xxxsucks.yyy) that clearly relates back to that individual. The type of activity which should be addressed should be anything which goes over and above mere review or praise of the individual concerned including anything offensive or obsessional in the content on the website concerned. Also, use of the personal name as a domain name in order to sell inferior or unauthorised merchandise relating to the individual concerned should also be discouraged by the application of appropriate registry/ ! registrar policies. Any such domain name which exists in a climate where the owner of the "legitimate" name website is trying to route all interested parties to that "official" information should also be considered as being in bad faith. Whose Names Should Be Protected? As proposed above, the "famous" name itself and obvious variations should be protected. Famous individuals such as public figures ranging from actors and actresses, business people, prominent academic, social, religious and non-commercial leaders and politicians should be protected. In these cases we have mentioned some of the criteria to be considered above and others there is a clear need from a public policy perspective to regulate use of those names by parties unrelated to the individuals concerned, especially during electoral campaigns etc. It makes little difference, from the policy perspective, whether the person whose name is being used is living or deceased except insofar as commercial activity surrounding the deceased person may be somewhat less and therefore in need of a lesser degree of protection than from a living artist/politician. The decision as to what represents a "famous" names is of course going to be a very difficult one to make in each case. Even though enshrined in the Paris Convention, it is still difficult to define with any certainty whether a particular trade mark can qualify as "famous" and each case must therefore be treated on its own merits. In the case of a personal name, the degree of fame is likely to be more transitory than in relation to a product name and perhaps may be less well known in some countries than others so there is a question of as to whether personal names need the same degree of protection as commercial/products names. 2. How do you deal with multiple incidences of the same name? The basic principle should be that any or all incidences of the name in question should be subject of a dispute resolution process, depending on the degree to which each one is unacceptable within previously specified criteria. It would be highly desirable for domains offering registration for personal namespace to have a well defined subdomain structure which could obviate the major risks for contention arising. 3. What provision, if any, should be made for dispute resolution with respect to disputes concerning personal names registered as domain names? Dispute resolution procedure based on the UDRP model is clearly desirable though modifications will be required to allow for the more "personal" nature of the name as opposed to the more "commercial" nature of names subject to the current UDRP process relating to .com, .net and .org domain names. For instance, one aspect of the current policy which will need modification is that it is possible for a party to use a personal name as domain name and for bad faith still to exist even if that person has no actual intention, for instance, of harming the business interests of the (famous) individual concerned. 4. Is existing legal protection under national law or under the UDRP, capable of adequately resolving any of the problems or abuses within the DNS related to personal names? National defamation and libel laws would appear to be generally satisfactory in protecting "famous" individuals against the type of abuses arising out of use and registration of "personal" domain names described here. However, the rights of the (non-famous) individual to own the domain name and to have freedom of speech must also be protected. Whilst the current UDRP model enables "famous" persons to force domain names into their possession and control, as do existing national defamation and libel laws, there is a danger that this could impact on the rights of the individual to own property and to exercise freedom of speech. It is therefore important to find the balance between enforcement of rights in the (famous) names and preservation of certain underlying rights for the (non-famous) name holder. 5. (Regarding the nature and type of domain name space). Regardless of whether a "personal" domain name sits in a .com or a .name or another registry, the same criteria should always apply in respect of what is and is not acceptable. 6. Consider whether and how many measures for protection for personal names might affect the interests of existing domain names registrants. In order to protect the rights of existing registrants the new processes should not be made entirely retrospective insofar as an existing name is used in connection with an honest business or, for example, a "fan site" and has gone unchallenged for, say, over three years, by the named individual concerned. Perhaps a compulsory purchase/compensation scheme could be considered whereby the (famous) named individual may be disadvantaged by an inability to obtain their own name as a domain name and therefore needs to wrest it from the (albeit legitimate) business that already has the name. This appears to be a difficult balance akin to the "reverse domain name hijacking" problem faced by large companies when trying to get their names back from individuals who have not already been doing anything untoward, merely being entrepreneurial. Alternatives that have been considered could depend on whether a domain is active or inactive, with the option of the registrar to reassign ownership on expiration, although this would not resolve the difficulties of reclaiming a name which is being actively used. 7. Would directory, listing or other similar services aimed at avoiding domain name conflicts concerning personal names be useful? Existing on-line "yellow pages" type directories already go some way in preventing domain name conflicts, assuming potential names registrants do refer to these directories. Perhaps something to be considered would be to link an existing Yellow Pages directory in the home country of the (famous) individual concerned to a Registry WHOIS look-up database. 8. Consider what would be optimal policy from the perspective of the development of the internet as a medium for communication and e-commerce. Simply put, the optimal position would be to provide personal names a similar degree of protection as commercial names except that any dispute resolution procedures should be adjusted to take account of the fact that the dispute tends to be between individuals and companies rather than between companies. THE INTERNATIONAL NON-PROPRIETARY NAMES (INNs) FOR PHARMACEUTICAL PRODUCTS While this issue has been referred from the pharmaceutical industry, it should be considered as a generic problem which may affect many industries and hence benefit from a common solution. Commonsense suggests that from a public health perspective these INNs should not be openly available to anyone for registration as domain names. Any potential registrant would need to be the subject of careful vetting (probably by WHO) to ensure they will have public health as a central concern (which would imply they would not put inappropriate or misleading content on any associated website). This is clearly different from the existing models that exist for general registration of domain names under other TLDs and would need careful consideration, and a clear policy framework. It has already been recognised that registration of a domain name in the form [INN][name of manufacturer] is acceptable. Registration of these generic INNs as domain names by individual manufacturers, without t! he above vetting process, should be discouraged. Also, the possibility of exclusion of a name from registration as a domain name would be appropriate in relation to INNs. NAMES OF INTERNATIONAL INTER-GOVERNMENTAL ORGANISATIONS Similarly, common sense would suggest that in view of the international nature of these organisations and the fact that they potentially affect millions of people and national and international government policies, this is a reason why associated domain names should be reserved for the body concerned and should not be registered by any other. There is a need for a full UDRP model process for recovery of domain names and one of the main differences between this and the existing UDRP model should be that it should default to a position whereby if a party has registered the domain name and that party is unrelated to the body that is legitimately the owner of the name, the registering party should be forced to transfer the name. GEOGRAPHICAL INDICATIONS, INDICATIONS OF SOURCE OR GEOGRAPHICAL TERMS Again as with INNs and Inter-governmental organisations, there should be a UDRP in place to protect consumer interests. The function of geographical indicators etc, in common with the function of a trade mark, is to guarantee the origin (and more often than not also to guarantee the quality) of the goods or services in question. This principle would be undermined if anybody was able to seek registration of these names as domain names if the parties with the right to use the name (usually incumbent companies/operators) do not have the ability to reclaim from the third party via a dispute resolution procedure. The criteria for judgment of what represents bad faith should be essentially the same as those for personal names. All geographical names should be protected - any "officially" recognised names pursuant to one of the treaties mentioned here. Associations and the Governing/Issuing Bodies concerned should have the standing to recover the names on behalf of the group (See also below regarding trade names) TRADE NAMES Although the RFCs indicate that these are not the same as trade marks, BT considers that this is an oversimplification of the model. Trade Marks serve to distinguish goods and services between undertakings. Trade Names serve to distinguish between the undertakings themselves. This principle is not so far removed from the principle of trade marks as to necessitate entirely separate rules. Indeed, the UK Trade Marks Act 1994, (itself based on the European Harmonisation Directive relating to trade mark laws) specifically allows for the registration of "collective marks" which are afforded similar protections to ordinary trade marks. With collective marks, the trading "association" is the proprietor of the mark concerned and the collective mark distinguishes goods and services of members of that association from those of other (non-member) undertakings. Geographical indications etc are specifically allowed for in the text of the 1994 Act relating to collective marks. Trade Names, whilst not, strictly speaking, trade marks can serve a similar identifying function and should therefore be afforded equivalent protection to an ordinary trade mark. An overriding consideration in terms of geographical indications is that they should be protected against "anti" sites as not only could this damage the association/proprietor due to mis-use of the trade mark, it could clearly cause substantial damage to the goodwill of the association/proprietor which needs to be addressable via a Uniform Dispute Resolution Procedure based on the existing model. TECHNICAL SOLUTIONS FOR DOMAIN NAME COLLISION CONTROL All top level domain registries should (via a mandatory instruction) put up a searchable WHOIS database to include names and full contact addresses of the registrants in order of the IP rights holder to evaluate any potential conflicts etc, within the context of applicable national data privacy laws. These should not preclude identification of registrant's contact details (eg business telephone number) although personal numbers could be made accessible only through the registrar, in the case or personal registrants. Any domain name entered in a search engine should have its WHOIS information accessible from any server, not just the home server concerned . There is only a need to ensure that software in the various domain name check sites automatically checks all of the appropriate databases. MILES BECKINGHAM JOHN LEWIS
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