WIPO Second Domain Name Process

WIPO2 RFC-2

REQUEST FOR COMMENTS ON
ISSUES ADDRESSED IN THE
SECOND WIPO INTERNET DOMAIN NAME PROCESS

1. This is a Request for Comments on the substance of the issues to be addressed by the World Intellectual Property Organization (WIPO) in the Second WIPO Internet Domain Name Process (WIPO2 RFC-2).

2. The deadline for the submission of comments on this WIPO2 RFC-2 was December 29, 2000.

Introductory Remarks

3. WIPO formally commenced the Second WIPO Internet Domain Name Process on July 10, 2000, with the publication of the first Request for Comments on the proposed terms of reference, procedures and timetable for the Second Process (WIPO2 RFC-1). That Request was intended to seek comment from all interested parties on the proper scope of the Process, including the principal issues to be addressed therein, as well as on the suggested procedures and timetable for the Process.

4. WIPO2 RFC-1 was made available to the public through WIPO's web site and through transmittal by electronic and regular mail. Interested parties were requested not to address the substance of the issues described in the terms of reference, but to address only whether the issues mentioned were appropriate for the Process, whether they were adequately described, and whether any further issues should be included.

5. By the date of the deadline for comments, September 15, 2000, WIPO had received more than 185 comments on WIPO2 RFC-1, which were submitted by a sectorally and geographically diverse range of participants. Following the deadline, an additional number of comments were submitted, bringing the total to over 200. All comments received have been posted via WIPO's Electronic Commerce web site. A summary of the comments is also available on the same web site.

Background

6. The Report of the first WIPO Internet Domain Name Process (The Management of Internet Names and Addresses: Intellectual Property Issues) (the Final Report), published in April 1999 1, acknowledged that its recommendations targeted only the most egregious problems caused by the tension between domain names and trademarks, and that other issues would require further consultation 2. Since the publication of the Report, the Internet Corporation for Assigned Names and Numbers (ICANN) has adopted a number of the recommendations contained in it, including suggested best practices for registration authorities and the establishment of a mandatory and uniform dispute resolution policy for the generic top-level domains (gTLDs). In particular, the adoption by ICANN of the Uniform Domain Name Dispute Resolution Policy (UDRP) on December 1, 1999, has demonstrated -- through the very substantial number of cases filed -- that an administrative procedure for rightholders to resolve their domain name disputes is of great value to the Internet community.

7. On June 28, 2000, the Director General of WIPO received a request from 19 of WIPO’s Member States to initiate a new study to address certain issues involving the recognition of rights and the use of names in the Internet domain name system (DNS) where uncertainty and concern remains 3. The request calls upon WIPO -- through a consultation process similar to the first WIPO Process -- to initiate a study of, and to develop recommendations on, these outstanding domain name issues, which it is suggested should include, inter alia, the "bad faith, abusive, misleading or unfair use of:

• personal names;
• International Nonproprietary Names (INNs) for Pharmaceutical Substances;
• names of international intergovernmental organizations;
• geographical indications, indications of source or geographical terms; and
• tradenames."

8. The request specifies that "this activity should take full advantage of WIPO’s prior work and build on existing and ongoing discussions while allowing for a process of consultation with WIPO Members and all interested stakeholders." Further, it directs that the "findings and recommendations should be submitted to the Members of WIPO and for consideration by the Internet community (including the Internet Corporation for Assigned Names and Numbers)." It also states that, "in undertaking this process, it would be beneficial if any information received or collected concerning technical solutions to domain name collision control was collated for the information of WIPO Members and the Internet community."

9. Since the time of the first WIPO Process, discussions have continued in various fora, particularly at the meetings of ICANN, in respect of the management of the DNS. WIPO intends that the Second WIPO Process should take full account of, and build on, the substantial progress that has been made in the course of these discussions, insofar as they relate to the intellectual property issues to be addressed in the Second Process. WIPO will cooperate closely with ICANN throughout the Second Process to consult and to coordinate developments in this area. In particular, any assessment of the issues to be addressed in the Second Process should take into account, as a number of commentators have suggested, new developments in the DNS including the possible introduction of new gTLDs, which ICANN is considering.

10. A report on the commencement and progress of the Second WIPO Process was recently presented to the Member States of WIPO at their September 2000 annual meetings. The Member States expressed their support and encouragement for WIPO to continue its proposed work on domain names and intellectual property.

Comments on WIPO2 RFC-1

11. Many of the comments on WIPO2 RFC-1 addressed matters of substance, although interested parties had been requested to restrict their observations only to the question of whether WIPO RFC-1 encompassed and properly defined all of the issues to be addressed by the Second WIPO Process. Such comments will be given full consideration at the stage when the comments on this WIPO2 RFC-2 – which lists for substantive comment the finalized issues to be addressed in the Second Process – are considered.

12. Similarly, a number of commentators used the comment procedure as a forum to express views on the UDRP and the decisions thereunder. While the Second WIPO Process is not intended to be a forum for the assessment of the UDRP, such comments will be taken into account, to the extent that they reflect a view that caution should be exercised, and further consideration given to the UDRP, before recommending any measures that would affect the scope of the UDRP as it currently applies to the ".com," ".net" and ".org" gTLDs.

13. Finally, many commentators expressed the general view that the Second WIPO Process should not move forward too quickly to consider questions involving the protection of rights and interests beyond those of trademarks rights, which were addressed in the first WIPO Process. Still other commentators suggested, conversely, that the Second WIPO Process should extend its scope to consider new areas or issues in addition to those listed in the first RFC.

14. All of these comments will be taken into account during the ongoing consultations of the Second WIPO Process. The Second Process will be conducted in a balanced and transparent manner, with the aim of achieving consensus among all stakeholders of the Internet on the issues concerned. WIPO recognizes the need to provide sufficient opportunity for all interested parties to consider adequately and respond to the issues to be addressed by the Second Process. The Process is conceived so that a thorough and comprehensive assessment can be made of the issues to be addressed, without moving too quickly to arrive at any results. Further, it should be noted that the nature of the rights and interests involved in each of the areas of the study are quite different, and therefore might lead to different findings, conclusions and recommendations.

15. A complete summary of the comments received, discussing the points mentioned above, is available. On the basis of the comments received, WIPO has prepared the list of issues set forth below, to elicit comments on each of the areas to be addressed in the Second WIPO Process.

WIPO2 RFC-2 (Terms of Reference)

16. This document is a Request for Comments on the substance of the issues to be addressed in the Second WIPO Internet Domain Name Process. WIPO invites all interested parties to comments on the issues listed herein. The Second WIPO Process will explore, and develop findings and recommendations in relation to, issues raised in the DNS, inter alia, by bad faith, abusive, misleading or unfair use of:

• personal names,
• International Nonproprietary Names (INNs) for Pharmaceutical Substances,
• names and acronyms of international intergovernmental organizations,
• geographical indications, indications of source or geographical terms, and
• tradenames.

17. A different set of considerations, based on the nature of the rights or interests involved in each of these areas, may be brought to bear on the questions of whether any protection should be accorded, and, if so, in what circumstances and how. Therefore, the lists of issues provided below for the purpose of eliciting comments in each area are not identical.

18. While undertaking to develop findings and recommendations on these issues, the Second Process will also investigate the availability of any technical solutions that might serve to reduce the tension between domain names and other protected rights. A list of issues to elicit comment on this question is also set forth below.

19. In view of the scope of the Process, WIPO requests interested parties to confine their comments to the identified areas. On the basis of these comments, WIPO will prepare an interim report which will be posted on this web site, and public comment on that report will also be sought.

Personal Names

20. Interested parties are invited to comment on whether any protection against abusive registration as a domain name in the gTLDs should be accorded to personal names and, if so, in what circumstances and how.

In formulating their comments, interested parties may wish to consider the following illustrative list of issues:

International Nonproprietary Names (INNs) for Pharmaceutical Substances

21. Interested parties are invited to comment on whether any protection against abusive registration as a domain name in the gTLDs should be accorded to INNs and, if so, in what circumstances and how.

An "INN" is a globally available, unique name used to identify a pharmaceutical substance or active pharmaceutical ingredient (e.g., ampicillin). INNs are recommended by the World Health Organization (WHO) in order to promote and protect the safety and health of patients worldwide, by providing a single, globally available name for each such substance. WHO maintains a list of recommended INNs, now numbering approximately 7,500. To qualify, INNs must be distinctive in sound and spelling, so as not to be liable to confusion with other commonly used names, and must be in the public domain and therefore freely available for the sole purpose of identifying the pharmaceutical substance in question.

Note: Manufacturers producing the pharmaceutical substance for which an INN is created, are allowed to market the product in question as follows: "[INN] [name of manufacturer]". The reason for this is to promote the use of generic names. As a result, domain names registered and used by the manufacturer of the pharmaceutical substance as: "[INN] [name of manufacturer]" are not necessarily to be considered in bad faith, abusive, misleading or unfair.

In formulating their comments, interested parties may wish to consider the following illustrative list of issues:

Names of International Intergovernmental Organizations

22. Interested parties are invited to comment on whether any protection against abusive registration as a domain name in the gTLDs should be accorded to the names and acronyms of international intergovernmental organizations and, if so, in what circumstances and how.

Names and acronyms of (notified) international intergovernmental organizations are currently protected against use and registration as trademarks by the Paris Convention for the Protection of Industrial Property (Paris Convention) and through the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement).

In formulating their comments, interested parties may wish to consider the following illustrative list of issues:

Geographical Indications, Indications of Source or Geographical Terms

23. Interested parties are invited to comment on whether any protection against abusive registration as a domain name in the gTLDs should be accorded to geographical indications, indications of source or geographical terms and, if so, in what circumstances and how.

Geographical indications receive protection under the Paris Convention, the Madrid Agreement for the Repression of False or Deceptive Indications of Source of Goods, the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (Lisbon Agreement) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement).

"Geographical indications" are defined in Article 22(1) of the TRIPS Agreement as "indications which identify a good as originating in the territory of a Member [of the World Trade Organization (WTO)], or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin."

An "indication of source" is an indication of the country or place of origin of goods.

A geographical term may be considered to be any word which describes or refers to any geographical entity or locality such as

• a region of the world,
• a country, or
• a region, town, city or other subdivision of a place in a country.

In formulating their comments, interested parties may wish to consider the following illustrative list of issues:

Tradenames

24. Interested parties are invited to comment on whether any protection against abusive registration as a domain name in the gTLDs should be accorded to tradenames and, if so, in what circumstances and how.

A "tradename" is a name adopted, whether registered or not, by a business enterprise to distinguish itself, as a commercial entity, from other enterprises. Unlike trademarks and service marks, tradenames operate to distinguish a business on the basis of its character, independently of the goods or services that the business offers. Tradenames receive protection under the Paris Convention (Article 8), without the obligation of a filing or registration.

In formulating their comments, interested parties may wish to consider the following illustrative list of issues:

Technical Solutions for Domain Name Collision Control

25. Interested parties are invited to present information on the development and availability of any technical solutions to reduce the tension between rightholders and domain name registrants, and to comment on whether such technical solutions may offer realistic options for the DNS.

In the first WIPO Process, comments were sought, in the context of the prevention of domain names disputes, on the following aspects:

"The requirements of any domain name databases (including the type of information to be stored therein) that may be developed to allow domain name applicants, holders of intellectual property rights, and other interested parties to search for and obtain information for purposes of evaluating and protecting any potentially related intellectual property rights. These requirements may include, in particular, the need to make the information accessible through a common interface and to interlink databases that may be maintained by various registries and/or registrars in order to permit single comprehensive searches.

The possible use of directory and listing services, gateway pages or other methods aimed at avoiding trademark and domain name conflicts by allowing identical names to co-exist, thus overcoming the technical requirement that each domain name be unique."

In the intervening period, new technical solutions may have developed that could serve to reduce the tension and prevent conflicts between competing interests in each unique domain name, principally where the competition is between persons or entities with good faith interests in the name.

In formulating their comments, interested parties may wish to consider, in particular, whether technical means are available for enhancing the DNS WHOIS look-up services (which provide contact data for domain name registrants), including the availability of a searchable database that would operate on a variety of platforms and be compatible with all relevant DNS registration authorities.

Procedures for Second WIPO Process

26. The Second WIPO Process will consist of the following steps, culminating in a final report to be submitted to the Member States of WIPO and for consideration by the Internet community including ICANN:

a. Publication of WIPO2 RFC-1 containing the proposed terms of reference, procedures and timetable for the Second Process (completed);
b. Publication of the present WIPO2 RFC-2 seeking comment of the finalized terms of reference (listing issues to be addressed), as well as setting forth the procedures and timetable for completion of the work;
c. Preparation of a draft interim report on the basis of all comments received on WIPO2 RFC-2;
d. Publication of the interim report as WIPO2 RFC-3;
e. Regional consultations to receive comments on the RFCs; and
f. Preparation and publication of the final report on the basis of all comments received during consultations and on WIPO2 RFC-3.

27. The Second WIPO Process will be conducted through a combination of Internet-based discussions and in-person consultations. The three Request for Comments, including this WIPO2 RFC-2, will be made available to the public through publication on the web site and through transmittal by electronic or regular mail 5. In order to ensure that interested parties have the opportunity to present their views on the issues to be addressed by the process, WIPO will also continue to hold a series of regional consultations. The date and location of these meetings will be determined with a view to ensuring wide geographical representation, and will be announced shortly on WIPO's web site. The views presented at these meetings will, in addition to the comments on the RFCs, serve as the basis for WIPO findings and recommendations.

Timetable

28. The following timetable reflects the various stages in the Process.

Request for Comments

29. This WIPO2 RFC-2 invites interested parties to submit comments on the topics specified in paragraphs 20 through 25, above.

30. Comments can be submitted by the following means:

a. Through the Submit Comment form that is available under the Comments section of the web site. We recommend that you choose this method for the submission of your comments;
b. By electronic mail to the following address: process.mail@wipo.int;
c. By regular mail to the following address: WIPO Internet Domain Name Process, World Intellectual Property Organization, 34 chemin des Colombettes, P.O. Box 18, 1211 Geneva 20, Switzerland.

31. All comments must be received by December 29, 2000.

Footnotes:

1. Report of the WIPO Internet Domain Name Process (April 30, 1999), WIPO Publication No. 439(E).

2. See Report, Executive Summary, First Steps and Outstanding Issues, pp. 8-9.

3. The request is made in a letter from the Minister for Communications, Information Technology and the Arts for the Government of Australia, in which WIPO is requested by the Australian Government on its own behalf and on behalf of 18 other member States to initiate the new study. An attachment to the letter indicates that the following States and the European Union endorse the request: Argentina, Australia, Canada, Denmark, France, United States of America, European Union. The attachment also states that the Government of Brazil will communicate its support through its diplomatic mission in Geneva.

4. An "exclusion" is a practical prohibition against registration enforced by all registrars and thus "excluding" a name or other item from the possibility of registration.

5. WIPO reserves the right not to post any comment that is racist or offends fundamental human rights and values or otherwise clearly fails to constitute a contribution relevant to the discussion of the issues raised in the RFCs. While WIPO will not issue any specific responses to the comments it receives, all comments will form the basis for the findings, conclusions and recommendations to be developed.