WIPO Internet Domain Name Process
Transcript: Brussels regional consultation
Centre Albert Borschette (CCAB)
February 17, 1999
| 19 January | 22 January | 2 February | 10 February | 17 February | 10 March |
|---|---|---|---|---|---|
| Toronto, Canada | Singapore | Rio de Janeiro, Brazil | Dakar, Senegal | Brussels, Belgium | Washington, DC, USA |
Mr. Francis Gurry, Chairperson, Legal Counsel, Electronic Commerce Section, Office of Legal and Organization Affairs.
Good morning, my name is Francis Gurry from WIPO. Thank you all very much for coming this morning to the consultation. Let me start by saying that English and French simultaneous interpretation is available if you would like to use the earphones. And let me thank the European Commission, and in particular DG XV for its cooperation throughout the whole of this Process and for making available this splendid facility for us this morning for today's consultations. I would like to thank the European Commission not only for the physical facility, but also to the Commission and to its Member States for the support that it has given consistently to WIPO in respect of this Internet Domain Name Process, both, in according to WIPO a role in respect of the interface between trademarks and intellectual property rights and domain names, and its input at each stage in the Process which has always been extremely constructive and helpful to us. If I may, I would like to introduce my colleagues who are sitting with me on my left and right. Let me start with those members of the WIPO Expert Panel that we have convened for this Process. If I may take them from the left, my left that is, we have first of all Dr. Ousmane Kane who is the Executive Director of the African Regional Centre for Technology, which is located in Dakar in Senegal. Dr. Kane is a national of Senegal and he organized a very successful hearing that we held in Senegal just last week. It was the most recent one we had before today. Seated next to Dr. Kane is Professor Michael Froomkin who is a Professor at the Miami School of Law. Professor Froomkin is a very active contributor to our Process, and in particular he wanted me to mention this morning that he has done a personal critique of WIPO's Request for Comments 3 or its Interim Report which is available for those of you who would like to consult it on the following website, it's http://www.law.miami.edu. I think that is sufficient to get there isn't it? Well, /~imf to get you right to the updated version of the document. Professor Froomkin is coming in particular, although it is certainly not his only perspective, but in particular from the perspective of the protection of privacy. Seated next to Professor Froomkin is Mr. Philip Sbarbaro who is the Chief Litigation Counsel for Network Solutions Inc. NSI, and in that capacity of course has probably more experience in relation to domain name litigation than anyone else on the globe probably. Next to Phil Sbarbaro is Mr. Boudewijn Nederkoorn who is former Chairman of the RIPE CENTR, but still a very active participant in the CENTR's activities. Finishing with the experts if I may, two away from me is Mr. Mark Partridge who is a member of the Board of Directors of the American Intellectual Property Law Association. Let me move then from the experts to introduce my immediate colleagues from WIPO. On my right is Mr. David Muls, who works with me in the Office of Legal Organization Affairs in WIPO and in particular in the Electronic Commerce Section in that Office and who has been an active participant of course in this process from outside. And on the far right, my far right is Mr. (Leethan Shock ?) who is formerly of the Federal Ministry of Justice in Germany. That from the Federal Ministry of Justice we have temporarily stolen him in order to assist us on various questions including this one at WIPO. If I may move from my colleagues then to the European Commission. Unfortunately, Mr. Eric Nooteboom who will be known to many of you who is the Head of Unit in DG XV of the European Commission, who was here some ten minutes ago but then has been urgently called away, is replaced by his colleague Ms. Marianne Gumælius who is seated next to David Muls two from my right and who will be saying a few words on behalf of the Commission in one moment. We also have Mr. Victor (Sayes ?) from DG XV who is seated second from the far right, and also is involved in this area. Let me welcome additionally from the Coalition Christopher Wilkinson. I am not sure whether Christopher is still with us, he also was here and has been called away and will be coming back in the course of the day. And I think Christopher is known to many of you from DG XIII in the European Commission. And finally, in terms of introductions we have the pleasure and the privilege of having Mr. Frank Fritz Simons here, who is a member of the Interim Board of the Internet Corporation for Assigned Names and Numbers, ICANN. And Frank is seated just further here and we very much welcome his presence and of course the interest of ICANN in our Process.
Ladies and gentlemen, I won't spend much time on introducing the Process. I am sure that most of you are very familiar with it, if not over familiar with it and a little battle fatigued by the whole question of domain names and the interface between domain names and intellectual property rights. As you know we are now in the final stage of the Process. We started with the first request for comments last August which was on the terms of reference for this process and that was followed by a second Request For Comments which became available in the month of September on the issues that had so been defined in the terms of reference. And just before Christmas, we published on December 23 the Interim Report of the Process which is now being made available in terms of a third Request For Comments. And it is this Interim Report which will be the subject of today's consultations. As far as the procedure for today is concerned, in one moment as I mentioned Marianne Gumælius from the Commission will say a few words. Thereafter, we would like those of you who have as it were a formal submission, but please don't place too much emphasis on the word formal. But those of you who would like to address the issues in the Interim Report from the point of view of a as it were previously considered position, we would invite each of you to make your submission and after those submissions have been concluded we would propose if time permits and I think it will, to then go through the report or the main recommendations of the report as it were and invite any spontaneous comments on any of the issues and discussion on any of the issues. May I ask, so that we can just record it, if those of you who have a submission that you would like to make in the first part of the meeting could
please identify yourselves now so as that we may have an idea.
(Ms. ............................): (Comment is inaudible).
(Mr. Francis Gurry): Thank you very much. Are there any others who will be making as it were a formal or semi-formal submission? Keith Gymer is it? I am afraid I left my glasses in Geneva, so I am a little handicapped in identifying people from a distance. Keith Gymer. Are there any others? Yes please. Are there others? That is it. Okay, fine. If anyone would like to add themselves to that list for this stage of the proceedings, then they are most welcome to let us know. And otherwise we will then proceed to an informal discussion. In the course of the discussion if I may ask each of you in making comment to identify himself or herself for the purposes of the record as we will make available on our website, both a transcript of today's hearings and an audio tape of the consultations. So, with that may I pass the floor to Marianne Gumælius from the Commission please.
(Ms. Marianne Gumælius, Principal Administrator, European Commission, DG XV E2): Thank you Mr. Gurry. On behalf of the Commission I would warmly welcome the initiative taken by WIPO to arrange for this conference. And as Mr. Gurry just said, the Commission gives its strong support to this initiative taken by WIPO in this whole Process. The Interim Report has been discussed recently within the framework of the Council of the Working Group and it is absolutely clear that generally speaking it is a strong or a very positive approach to the Report and the proposals made in the report from WIPO's side. I have some general comments to make on the Report. As mentioned on several occasions, the Community and its Member States could agree to attach great importance to the principle that intellectual property rights are fully respected irrespective of the technological environment. It is also very important that consumers have confidence in electronic transactions and they should be able to rely on established brand identities, trademarks, trade names, and also of course to be absolutely sure of the original and the quality of products. The Commission supports the approach taken by WIPO by focusing on measures aiming to avoid conflicts rather than resolving them. It is also considered important that there is international consistency in the dispute resolution mechanism for all generic TLDs. This does not necessarily mean that the mechanisms need to be administrated by a single entity, but it is important that the same standards and procedures are applied by the various bodies that could be responsible for running them. It is also important to keep the administrative dispute resolution procedure quick and cheap. And therefore it is considered important not to have a possibility to appeal other than the usual making the dispute a case in front of a national court. The ADR service should have reasonable and uniform fees. It is also important to elaborate the procedure for registration of the domain name order in order to minimize the risk of conflicts. However, these procedures should not be burdened with unnecessary information. It is important to have a system for the providing of personal data to third party, that takes the interest of privacy into account. So, it is essential to protect famous and well-known marks from infringement by domain name holders and all measures within the WIPO document are therefore supported. However, it is important that the Community and its Member States to emphasize that other trademarks should not be forgotten in this Process. To what extent trademarks that are not famous or well-known that would need protection should be considered at a later occasion. The Community and its Member States share the view expressed in the WIPO document that it would be useful to further elaborate the question of differentiation of the TLD name space as means of accommodating both the protection of IPR and the expansion of the DSLs. And finally, in the first instance the creation of new generic TLDs dedicated to personal public service or non-commercial communications would permit the expansion of the Internet in that direction without prejudicing trademark interests. And secondly, the rationalization of the existing generic TLD registers should be a high priority. Some short words from my part.
(Mr. Francis Gurry): Thank you very much Marianne. So, ladies and gentlemen if I may suggest let us move to hear the three submissions and Ms. Fay Howard from the CENTR may I ask, or would you like to go a little bit later? Okay, fine. Keith Gymer are you ready to give us your wisdom? Or Philip Sheppard? Okay, Philip Sheppard from AIM.
(Mr. Philip Sheppard, Branding Affairs Manager, AIM European Brands Association): Last time I spoke to the WIPO consultation process in Brussels, I stressed the need something very important to my organization AIM, the European Brands Association. And that something was trust. Trust that is by the consumer in the brands they buy from brand manufacturers. And I am very pleased to see that the WIPO Process I think is moving rapidly to help sustain that trust as consumers move from conventional channels of trade or start to buy via electronic commerce. For example, there will be more trust if the WIPO proposals would eventually lead to preventing cyberpiracy are taken up. There would be more trust if the WIPO proposals would lead to the consumers more easily finding the website they want are taken up. And in general there would be more trust if consumers know that someone has analyzed the problem and proposed solutions. That someone is WIPO, and we believe on balance the solutions they propose are good. RFC-3 are small comments on new top-level domains and the position that they might think along with lots of industry is very simple. Firstly, there should be no new top-level domain names before the adoption of a dispute resolution process such as the one we are discussing today. And in this regard, the ICANN Board said in their Brussels hearing in this very building, that they expect to see domain name proposals to the DNSO to contain dispute resolution proposals as well. And we are quite comforted by that. Secondly, we believe along with the Commissioner I have just heard, new names should be differentiated in a directory style system. In other words not .com and .firm, but eventually .airlines and .books, along indeed with a possibility for personal gTLDs. But I believe if we look beyond the Process today, the real task ahead for WIPO is to rapidly complete this Process and then get by into it from the DNSO and from the ICANN Board to the final recommendations. Because, without that buy-in, the intelligent analysis and the good solutions we see before us will be wasted. And that buy-in I think is no means certain. As anyone who will be able to ship into the WIPO DNS e-mail list will know, there are many voices out there who seemed to view the Internet simply as a channel of communication, and we forget the need that we will have to trust whom we use the Internet as a channel of trade. That, by and by, the ICANN Board will be achieved I think by skillful communication from WIPO, and especially by supporting communication from the groups here today which endorse the Process. I believe we have the product, we have the means of trust and what we now need to do is to ensure its adoption within the governance structure of the Internet. Thank you very much.
(Mr. Francis Gurry): Thank you very much Philip Sheppard. I would invite anyone present to make any observations on the presentation that was just made or to address any questions that you would like to Mr. Sheppard. Is there anyone wishing to make any comments at this stage? No, fine. Then Keith Gymer are you now ready to, fine. Keith was formerly as many of you know with BT, British Telecom and he is now with the firm of Page Hargrave as an intellectual property adviser. Keith you have the floor.
(Keith Gymer, Trademark and Patent Attorney, Page Hargrave): Thank you Francis. My involvement in the Internet domain name issue has been quite extensive over the last couple of years and I am also as well as consultant to BT, a participant in the International Chamber of Commerce Task Force on Internet Domain Name Issues and a member of the International Trademark Association Internet Sub-Committee. And I intend to speak today from a provisional comments on the RFC-3 that the ICC Group has put together. I emphasize that at this stage we are still in the process of consultation within the membership and so anything I say here is provisional and not final. But I shall try to indicate where there is a large degree of consensus, although there are a number of areas where there are different views on what the solutions are and how the proposals in the WIPO document should be supported. The INTA is also going through its consultation process and I shan't be speaking for them at this stage. They have their position will be come clearer later. I like if I may, I don't know given that there aren't too many other speakers, perhaps I can take some time to go in some details through the comments on the RFC, although I shall try not to send everyone to sleep.
The WIPO RFC deals with the four principle issues and I will take them in order. The principles for trying to minimize the potential of conflict, dispute resolution when conflict arises, the protection of famous marks and the proposals for addition of new gTLDs and new TLDs. I will start with the first issue of minimizing domain name conflict. As most of the participants probably know the ICC did produce last year its own set of principles for an electronic commerce friendly domain name system in July last year. And one of the key things that we had in there was that we were looking to support the development of a domain name system which had sufficient flexibility to allow different legitimate claimants to the same mark, name or sign to exploit that as a domain name, whilst ensuring adequate means to differentiate between them. And I think that really takes up on the issue that Philip mentioned there of differentiation and appropriate structure. I will come back to that further later on. Going now to the RFC-3 in particular, we certainly very much welcome the efforts made by WIPO in this very comprehensive Report and it is clear that the Panel of Experts have had a very thoughtful and comprehensive discussions which have resulted in this very detailed report which asks a lot of very pertinent questions and makes very good recommendations in general. We certainly summarize our support that we support recommendations requiring accurate information in the domain name registration, recommendations that the registration agreement contain appropriate provisions on jurisdiction. Some sort of system whereby at least the registry is assured that payments are made for every domain name that is requested. This would not preclude I don't think registrars if they wished and I know some people have raised concern on this, offering free registrations for their customers. But it would impose an obligation on the registrars to pay the registries and therefore there might be some incentive on registrars to at least be exercising some care when they were giving away free domains or cheap domains. Limited registration periods. The process for renewal that is recommended I think has a lot to commend it for getting rid of deadwood. And policies for providing for special consideration and potential exclusion to an appropriate degree for famous marks which are the most commonly subject to piracy and abuse in the experience of our members.
Turning now perhaps specifically to the various recommendations. I don't know if relying on everyone having the paragraphs of the RFC-3, because our reference will be to the paragraphs in the RFC. I will try and refer specifically to the paragraphs that I am covering here. The initial recommendations at the beginning of the chapter two in paragraphs 46 and 50 relate to the formation of contractual relationships and provision of accurate details subjected to appropriate recognition of electronic contracts. We certainly support this area of proposals. It appears from a commercial perspective no reason to our members why a domain name applicant should not be required to provide the same sort of information as would be routinely required in any trademark registry around the world to be provided by applicants for registration of a trademark and certainly at least in any domains used for commercial purposes. On that point, recommendation 51 enquires whether it be desirable to allow a domain name holder to remain anonymous. Certainly the general view in ICC and INTA as far as I am aware is that it would be very undesirable to allow anonymity in any, certainly in respect of any commercially use domain and we feel that there must be further consideration given where there is a perceived need for anonymity perhaps in some areas of political free speech then no doubt there can be umbrella organizations which can operate and allow that without requiring anonymity at the level of registration of the domain name in the first place. But that is one which what we feel certainly strongly about in the commercial area there shouldn't be. As to the access of some of the ............ provisions 55, recommend registration an agreement contains restrictions on the use of domain name information. This has become a hot issue lately in view of the changes that NSI itself has implemented in the information currently provided on the whois database. And cause of significant concern to our members. We certainly again believe that the information needs to be readily available in the same way as details on the owners of trademark registrations are readily available. But then obviously it is legitimate to expect there to be restrictions to prevent wholesale use of that data for purposes not connected with the domain name registrations such as for junk mailing and such like. And obviously there would need to be provisions and controls put in place to prevent that sort of abuse.
In paragraph I think 55 there is a suggestion that the details should only be available where there is an allegation of infringement and that specifically would be very much against. Because in many cases the access to the information would be required to clarify whether there wasn't an infringement and it would certainly be contrary and would be a risk on the U.K. law for example to make allegations of infringement when you have no proof that there was any infringement. And therefore, we would strongly object to any requirement that you have to make a threat of infringement before you had access to information which would enable you actually to make a reasoned decision on that basis.
Recommendation 59 relates to submission to jurisdiction. And the ICC has certainly previously recommended that jurisdictional options should be preserved and jurisdictional choices shouldn't be restricted to the advantage or disadvantages of parties in any one country relative to those of any other country. There are I think however a number of issues which would be difficult to sort out in there because even if a contractual provision was made between a registrar or registry or a registrar and a registrant that wouldn't bind third party disputants in general anyway. Except where the third party disputant then attempted to seek a remedy under an administrative or contractual system. And from another perspective the issue of having different contractual jurisdictional provisions applying to the parties to a contract could be problematic for businesses involved in contracting with registrants or the registrars or the registries themselves if they find that their contracts are going to be interpreted by the laws of every different jurisdiction of their customers. And this is a problem that the European Union itself of course is facing in the area of e-commerce generally, which provisions apply to consumer contracts. And that is one where we feel further attention is going to be required. There are a number of provisions where a number of recommendations in the WIPO paper which talk about the provision of inaccurate or false information. And again our members are strongly supportive of the view that there must be some penalty for provision of inaccurate information. Although, obviously one would anticipate that any registrant would have an opportunity to correct any information which is alleged to be incorrect before any ultimate sanction was imposed because certainly it is our own experience looking at even NSI who is, that a lot of the data on legitimate registrants is not accurate and no longer up-to-date. But that is nonetheless a desirable objective that it should be. There should be some sort of incentive for it to be kept up-to-date. And to the extent that verification of details is possible and certainly there are already electronic authentication systems which registries use for their own registrars in many countries already where they have regular relationships. And to the extent that those could be extended generally, I think that option needs to be considered.
I have already touched on the recommendation that a domain name at the registry level certainly shouldn't be activated unless the registry is assured of payment for it. Some of the difficulties for example which NSI seems to have had with mass registration requests by serial cybersquatters would have been perhaps alleviated if the cybersquatters had been obliged to make non-refundable payments before those names were delegated. The ICC is still considering other recommendations in this area. We certainly believe that name registrant details should be published promptly and there should be provision for an appropriate rapid challenge by those who believe their rights may have been infringed by that delegation, that registration. We agree that searches of trademark, process of trademarks is probably impractical to have them compulsory, but it would be useful, as WIPO said, to recommend this if only to dispel the notion which seems to be prevalent among certain quarters that a first-come first-served policy in delegation of domain names somehow gives domain name registrants a priority over the rights of others who have been using the name in the real world beforehand and have trademark registrations and other rights already.
As I said before ................. of recommendation 88 certainly strongly support the view that a searchable database must be available and that access should be open to all, there mustn't be a filter on that. And specifically that there should be no automatic notice to registrants of enquiries regarding domain names. That, we don't see that as necessary. On the final recommendation, 106 in that section of the Report where WIPO recommends that portals and gateway page solutions shouldn't be compulsory, our members would certainly agree with that. We don't believe that it would be universally appropriate to have such solutions but we recognize that there is a potential in some circumstances that they could be helpful and useful.
Moving on to chapter three, which is the comments on dispute resolution procedures. And I hear that there have been some concerns expressed in some quarters about whether in fact recommendation 105 would actually be affective in all jurisdictions and that seems to me something that is obviously going to need further consideration. But the principle that parties should be free to use the courts is one which our members support. 119 again deals with the issue of jurisdiction. In principle certainly it appears that the proposal is a fair minimum requirement. Though as I have mentioned before, we see that there may be problems for the registration authorities and registrars with contractual arrangements with customers in different jurisdictions. And this is an area in which I think the ICC is giving further consideration because both in the interest of those who wish to challenge names and in the interest of those who are having the contractual agreements done with the registries that it is important that there is some degree of confidence in the contractual provisions, the jurisdictional provisions which apply, but there aren't any unintended adverse consequences of such provisions.
Again I think the ICC is happy to support the WIPO view that mediation and arbitration should be optional. The ICC is also supportive of the principle that we should be promoting consistent policies for dispute resolution across the gTLDs and ultimately in the so-called ccTLDs or ISO 3166 TLDs perhaps more accurately.
(Mr. Francis Gurry): Keith, may I make a suggestion? We will be going through each of the recommendations in the course of the general discussion and if you are going to go through each of them now, perhaps you might wish to delay that and then intervene each time we take up one of the recommendations, because I am sure there will be others who would also have comments on each of the recommendations.
(Mr. Keith Gurry): Okay, Francis. Yes, I am happy to do it whatever way you want it. I was just wondering we have got a lot here and (interruption).
(Mr. Francis Gurry): Then I suggest let's do it when we come to looking at each of the recommendations because I am sure there will be other contributors on it and then this way we can generate more discussion.
(Mr. Keith Gymer): Can I just make one (interruption).
(Mr. Francis Gurry): Please go ahead.
(Mr. Keith Gymer): (the beginning of the sentence is inaudible) ............... famous marks and new gTLDs which certainly support the view that famous marks do need to be appropriately protected by one means or another, there is still some ongoing discussion about what mechanism is best, whether it is appropriate to go as WIPO has proposed or whether in fact you need a simple administrative procedure for the administrative process of domain names, that is still an ongoing discussion. On the gTLDs we strongly take the same view as expressed by Philip that this needs to be subject to an acceptable dispute policy being in place and a sensible structure being there especially to provide for that distinction between the differentiation between use of domain names that I have mentioned according to the ICC principles originally. Thank you.
(Mr. Francis Gurry): Fine. Thanks very much Mr. Gymer and may I ask Ms. Fay Howard please if you would.
(Ms. Fay Howard, Project Manager, RIPE CENTR): Thank you. My name is Fay Howard, I am the Project Manager of CENTR. CENTR is the Council of European National Top-Level Domain Registries. Just briefly for those who don't know, we formed in early 1998 with 36 participants from registries in Europe voluntary funding. We are now in the process of incorporating and so far 19 registries have signed a Memorandum of Understanding declaring their intent to join CENTR. And to put this in context with the WIPO report, the registration policies of even the 19 let alone the 36 vary considerably. And I think it is true to say that there is no two that are identical. With this in mind, in addition to providing a focal point for discussion on matters affecting TLDs and presenting common positions, one of the key aims of CENTR is to collect information on current practices and to develop recommendations for the alignment of those practices.
And now to move to the brief comments on the WIPO Interim Report. The CENTR has now studied the document and we do welcome the WIPO initiative. We found the identification in section 1 of open and closed TLDs, we found this a useful concept, although I think it is true to say that there is no black and white there is a lot of shades of grey that we are experiencing between those. Most of the section two recommendations are already the practice of many CENTR TLDs, and as best practiced in registration policy is a key CENTR aim we welcome dispute prevention activities of WIPO.
Moving on to more generally to the recommendations in the definition of closed ccTLDs of which many CENTR members would have to be slotted, there is almost no issue. These ccTLDs have local jurisdiction and a much, much lesser need of global dispute resolution policy. Many CENTR ccTLDs allow registration only from legal entities within their own countries. Others allow registration from outside, but contracts are subject to local law. We even have a registry that does not allow the registration of trademarks, so there are many, many variations there. The ccTLDs can agree to look at a standard dispute resolution policy, but CENTR welcomes the recognition in the Report that parties do have the right to redress in local courts. And having taken the trouble to catagorize open and closed ccTLDs, one recommendation we would like to see in any future report is that the recommendations specify more specifically which registries are being targeted. Be that gTLD, ccTLD, open or closed. Thank you.
(Mr. Francis Gurry): Fine, thank you very much Fay Howard for your observations and thank you very much to CENTR for having studied the Report and for being willing to consider so openly its recommendations. Is there anyone else who at this stage would like to make some general observations on the Interim Report before we move to consider it in more detail? No. Then what I suggest is that before we have a coffee break we take up the issue which I believe is really the only issue in the first chapter of the Interim Report that requires some discussion. The issue that was just mentioned by Ms. Fay Howard, namely the distinction that is drawn between on the one hand open TLDs and closed TLDs. In this respect we were seeking to address the fact that anything that happens on the Internet, happens potentially globally. And in so far as possible it would be desirable to have a minimum standard of best practices if you like, and procedures available wherever a TLD is an open TLD. At the same time recognizing that of course the WIPO Process is formerly limited to the generic top-level domains and that any participation in its recommendations in so far as they are accepted on the part of ccTLDs would be a matter for the ccTLD itself to consider entirely independently. But may I invite any comments or observations that anyone might have on this distinction and the utility of pursuing this distinction in the final report. And we have heard from CENTR that it certainly would welcome the recommendations being more specific in the final report as to whether they are intended to apply to all open TLDs or the gTLDs or the ccTLDs. Is there anyone that would like to make any observations on this distinction?
(Mr. John Wood, KPMG): Good morning. We would feel that it is very important that there is consistency to the extent that it is practicable in order to create as much predictability. We recognize obviously that local jurisdictions and local policies and procedures may exist in specific jurisdictions, but however to the extent that it is possible we welcome the idea of there being best practices, policies and procedures. It enables across the board and we feel that this should be the case both with gTLDs and ccTLDs to the extent that is possible. That would be the welcome step forward.
(Mr. Francis Gurry): Thank you very much John. Are there other comments or observations on this issue or on the formulation of the distinction? I believe that Boudewijn Nederkoorn was instrumental in formulating or articulating this distinction between open and closed TLDs. Are there any other suggestions about any other way in which it could be formulated to more accurately say what I think we all mean or what we all think we mean? No other observations on this point?
(Professor Michael Froomkin): Just before we go off to the coffee break I just wanted to say that this Report that Francis was kind enough to mention about my personal views. I have brought about 30 copies and I will put them up on the table up-front in just a few minutes. I am sorry there is not enough, there is only so much I could carry on the plane.
(Mr. Francis Gurry): Fine, thank you. Good, well then what I suggest is that we take the coffee break now and immediately after the coffee break we go on to the question of the best practices and in particular the question of contact details and have a discussion on this. And I suggest that our coffee break lasts some 15 minutes. Thank you.
(coffee break)
(Mr. Francis Gurry): So, ladies and gentlemen can we commence perhaps. So, welcome back and I hope the coffee has loosened everyone's tongues and now let us take up chapter two in the session before lunch and we would plan to have lunch at approximately or to break for lunch at about 12.45 p.m. Let us go on then to the question addressed in chapter two broadly of trying to reduce the incidents of conflicts before addressing what to do when there is a conflict, and in particular the recommendations that are contained provisionally in chapter two concerning best practices in order to minimize the number of conflicts that there are.
Let me take them if I may one by one and start with a fairly straightforward question, namely the recommendation contained in paragraph 46 that there should be a formalized contractual relationship between a registrant and the registration authority in any open TLD. You will be familiar of course with the proposal published in I think December or so, by the European Commission for a Directive on Certain Legal Aspects of Electronic Commerce, and one of those provisions in that proposal of course is to require Member States of the European Union to recognize the validity of electronically consummated contracts as general measure to facilitate electronic commerce. Are there any comments that anyone would like to make about this particular recommendation here now, namely the one and two of the WIPO Interim Report that we set out that this should be clear and explicit terms set out in the contract between the registrant and registration authority? No comments? We take no comments to mean that you are in total agreement with the recommendation. Okay, then let us move to paragraph 50 where we set out the suggested details that should be furnished by a domain name registrant or applicant and I won't go through them. But, this is intended to be a minimum list of reliable and accurate contact details that it would be expected that every domain name registrant should supply pursuant to the contract. Are there any observations?
(Mr. John Wood): Thank you. I think I want to make two comments at this point. I think the first comment is to widen the scope of those that actually rely on this information, not just to those that are trademark holders, but also copyright holders who also utilize this information for the purposes of dealing with perspective infringes. The second thing is I think not only is there a need for accurate information, but it being provided in a timely fashion. It is important that information is kept up-to-date. That is very difficult and I think that there is obviously a recognition of a need between the burdensome requirement upon registries to keep it up-to-date, but on the other hand there should be at least an acknowledgment and a recognition that it should be furnished and kept up-to-date in a timely fashion. Thank you.
(Mr. Francis Gurry): Thank you John Wood. Let me elaborate on the first point. It has become apparent to us at any rate that as Mr. John Wood just mentioned contact details for domain name registrants are important not just from the perspective of trademarks. Contact details really are a horizontal issue once again, so many of these issues are in electronic commerce for all intellectual property rights holders. In other words, let us say you were the owner of copyright a large content provider and you find websites on which you believe there is infringing material, then you have to have some means of finding out who it is that is behind that website in order to deal with the alleged infringement. So, it has certainly been drawn to our attention as John Wood has mentioned that contact details are a vital method in tackling the whole question of infringement or piracy on the Internet for intellectual property rights.
Your second observation John if I may come back to it is the updating observation. Are there any other observations on whether the details that are reflected in paragraph 50 are too comprehensive, not sufficiently comprehensive? No other observations. Then paragraph 51 raises the question of anonymity. It raises it and asks for further comments on whether it would be desirable to allow a domain name holder to remain anonymous on condition that its supply contact details specified of a designated agent. Are there any observations on this suggestion? No comments. We request specifically further comments on this. No observations okay. Then dealing further with the contents of the registration agreement. Paragraph 53 deals with some representations that would be required. Representation first of all to the best of the applicant's knowledge and belief the registration of the domain name does not interfere with or infringe intellectual property rights of another party. And the representation that the information provided is true and accurate. They seem fairly standard they feature in a number of registration agreements already. Are there any other observations on it? No.
Limited purpose. And I believe this is one of the matters that you raised John Wood. It was also raised by Ms. Fay Howard in her presentation this morning. The recommendation in paragraph 55 is that the registration agreement contain an agreed term that contact details will be held by the registration authority for limited purposes of the transaction and for facilitating contact with the domain name holder where there is an allegation of infringement of an intellectual property right. Excuse me it wasn't Fay Howard, it was Keith Gymer who raised this point this morning, that the drafting of the limited purpose, of the circumscribing of the limited purpose is too restrictive. Are there any other observations?
(Mr. John Wood): If I may, I would like to elaborate on that following up from what Keith was saying, I think it is important to recognize as I made in my earlier reference to the issue of copyright holders, but here there are also issues of consumer fraud. Therefore, having a very limited scope to this ties in that. So, although obviously there is a need to recognize the privacy issues that were raised by the Commission and others there is a need to recognize that this is not just merely a case of straightforward trademark infringement. There are consumer fraud issues, there are copy (end of tape) .................. may fall into that wax that is at this place. Thank you.
(Mr. Francis Gurry): Thank you very much. You are absolutely right. It is also another matter that is dealt with of course in the proposal for a Directive on Certain Legal Aspects of Electronic Commerce and where it is suggested that precisely for the purpose of consumer protection or the orderly conduct of the mark that contact details be required of any one performing if I may use the loose terminology, anyone providing a commercial service, a commercial use of the website. Okay, then paragraph 57, consequences of inaccurate or unreliable information where it is suggested, and I believe this is a current term of the registration agreement for the gTLDs, .com at any rate. Namely, that if the information is inaccurate or unreliable that this constitutes a material breach of the contract and be the basis for the cancellation of the domain name by the registration authority. Any observations? None. Okay, fine.
Requirements of use. I am sorry paragraph 59 before that deals with submission to jurisdiction but I suggest that we deal with that when we come to chapter three. Paragraph 62, we have suggested that any notion of a requirement of use in relation to a domain name would be an extremely difficult notion to give any practical content and we do not recommend that there be any such requirement in the registration agreement. Are there any differing views to that recommendation?
(Mr. Keith Gymer): Not a differing view Francis, but just an indication that, and then again this is provisional and shouldn't be taken as representing a formal ICC view at this stage. But it would be desirable to have indication with intended use, but we recognize exactly the reservations that you have got there. But equally if you provide the structure and the differentiation at the TLD level itself and it becomes implicit as Philip mentioned earlier you have got .books, it is implicit but it is kind of a use for books. If it is not being used for books it could be a subject of an opposition procedure or something like that, that one could have to deal with it rather than requiring statements of use up-front. If it is .airlines it has to be an airline. If it is not an airline then anyone objecting to it would challenge it and you would have a procedure like that. So, that one could envisage that it wouldn't be, it would be implicit in the TLD identification or the differentiation used in the TLD or SLD or whatever rather than having a requirement to specify it in the application as it were.
(Mr. Francis Gurry): Thank you very much. It is a very interesting point. Of course the existing practice is to allow self identification in terms of use of gTLDs. There is no as it were policing requirement in respect of the similarity of the operations that are conducted under a domain name and the domain into which it falls. But you rightly point out that with much greater differentiation this may be a matter that needs to be looked at further. I wonder whether there are any other observations on this question. Remembering if I may think aloud for a moment that on the one hand, I think everyone acknowledges the interest in keeping the domain names system a very efficient system and not incumbering it too much. And on the other hand, once you do have differentiation, then is it a differentiation which remains self-defining or is it a differentiation which would be enforced in any respect. It seems that one way of looking at the question in addition to the one that you have pointed out Keith Gymer, which is that you envisage some form of strict adherence to differentiated domains. But another way of looking at it would be a distinction between commercial domains and non-commercial domains, recalling that in respect of the latter a non-commercial domain, it may be that you do not require such extensive contact details or to allow access to contact details for as long as the use of the domain name is entirely non-commercial. Are there any observations or comments on this? John Wood?
(Mr. John Wood): (The comment is inaudible)
(Mr. Francis Gurry): No other observations? Okay, let us move then to paragraph 64 which deals with the question of the designation of an agent for service. I think it is fair to say that generally the intellectual property circles are very interested in seeing in the domain name registration agreement a designated agent for service of process. We took the view that this would of course be very useful, however there are many, many millions of domain name holders who operate perfectly legitimately and in relation to whom there is no question of infringement. And requiring everyone to designate an agent for service of process might be taking the attitude that one treats everyone as a potential infringer and might be excessive. Particularly, if you have made provision for reliable and accurate contact details to be available. Are there any observations on this point?
(Mr. John Wood): We feel very strongly that there is no real implication in saying that you must provide an agent for process of service that implies that you have tacitly agreed to that you may be of that egregious characterization. But the fact is as a practical matter from the point of view of litigation, that it is essential that there is some mechanism and some way of ensuring that you can serve once an infringer has been identified. Maybe we should make some reference to the Hague Convention or whatever, but process of service is a vital part of the inevitable and unfortunate armory that has to occur for a trademark holder if they go down this sad and tragic road.
(Mr. Francis Gurry): May I just ask John, when you say we you are referring to whom?
(Mr. John Wood): Members of the Private Sector Working Group.
(Mr. Francis Gurry): You might like just to elaborate on what the Private Sector Working Group.
(Mr. John Wood): They are a group of which some of those that are here are members of 30 to 40 major global trademark holders that are part of an ad hoc alliance who are concerned with the issues of trademarks and how they are being impacted by this collision with the domain name system. And we are very keen to establish an effective legal and commercial framework that makes electronic commerce possible, creates the environment for trust for consumers and recognizes that this is a commercial space.
(Mr. Francis Gurry): Thank you very much John.
(Mr. Enzo Fogliani, Attorney, Naming Authority, Italy): Enzo Fogliani from the Italian Naming Authority. I think that this should not be a recommendation for international body, because it depends on the jurisdiction you are in. In Italy, for example, there is no need for such a recommendation and I think on many other European laws.
(Mr. Francis Gurry): Mr. Fogliani thank you very much. Any other observations? We have a clear division of opinion on the question. Fine, okay. Prepayment of registration fees. Paragraph 67 makes a recommendation that was a very clear recommendation if you recall also in the White Paper of the United States Government that domain names shouldn't be activated unless a registration authority is satisfied that payment of the registration fee has been received. The mechanics of that I think as we discussed at the Brussels hearing before Christmas last time round need to be further investigated and depend ultimately on how the system will be put in place by ICANN. I think the principle however, is relatively uncontroversial as we understand at any rate. Are there any observations?
(Ms. Fay Howard): One small one for the record that some ccTLDs do not charge for registration as yet.
(Mr. Francis Gurry): May I ask whether this is something that covers so-called open ccTLDs as well as restricted or is it (interruption).
(Ms. Fay Howard): It tends to be the more closed ones because the reason that they are in many cases are closed is because it costs a lot of money to, more money to be opened, and they do this as a public service usually from a university or an academic base.
(Mr. Francis Gurry): Thank you. Any other observations? No, re-registration fees. The recommendation in paragraph 69 is that domain name registrations should be subject to the payment of a re-registration or renewal if you like in loose language, fee. That implies of course that the domain name registration would be for a limited period of time. Are there any observations on this? No observations, thank you.
Waiting periods. Waiting periods is a question that has been discussed throughout the whole of the of the discussions that have taken place concerning Internet domain names over the last two or three years. It has at various stages been a controversial question. I think the arguments in favor and the arguments against are well-known. Against, its largely that the domain name system as it operates at the moment is a very high volume, highly automated process. One can only expect that the volumes will increase rather than decrease in the future as more and more people wish to operate under a domain name. And the waiting period could impose an unreasonable delay in obtaining a registration of a domain name on a medium which operates obviously at a very rapid speed. So, we have recommended in paragraph 75 that there not be a waiting period prior to the activation of a domain name. We instead feel that the objectives that it is desired to obtain through a waiting period can basically be dealt with by providing for an expedited alternative dispute resolution procedure for suspension. Are there any observations on this question?
(Mr. Claudio Locker ?, Italian Naming Authority): Yes, just a technical question. I am Claudio Locker from the Italian Naming Authority. From my experience 8 years ago, it happens very often that the domain name must be activated for the same day that it is requested. So, it will be nearly impossible to implement any waiting period at all.
(Mr. Francis Gurry): Thank you very much for that observation. John Wood again.
(Mr. John Wood): I don't think it is sort of uniform in the commercial sector. I mean there are some that recognize the impracticality bearing the dynamic of the Internet of having a waiting period. But there are others that have the view that prevention is better than cure. That when you do a trademark application that there is a waiting period facility and therefore suggest that, that might be a good way to go. So, I think it is a mixed bag there. But I do think that for the record that it should be recognized that there are some that would definitely feel that if we prevent these things, its better than going into the litigation mode and one of those aspects is clearly having a waiting period because then you can clear out some of the most obvious issues.
(Mr. Francis Gurry): Thank you very much.
(Mr. Philip Sbarbaro, Chief Litigation Counsel, Network Solutions, Inc.): A question for Mr. Wood. Then John if Prince PLC had to endure a waiting period what do you think Prince Sports would have done with that domain name?
(Mr. John Wood): Phil I think you know the answer to that one.
(Mr. Francis Gurry): I don't. Could I hear it please.
(Mr. John Wood): I think that the great David and Goliath fight which we successfully did would have probably come to a different result and I recognize that you know there is within this a certain dynamic that does facilitate and favor those that would regard themselves as larger players who the modus operanda would be far more suited to this. But I am talking more in terms of a principle rather than a valiant fight.
(Mr. Francis Gurry): Fine, thank you. Any other observations then on waiting periods? No. I think it is an issue that has been well laid and we note your observations and those of the Private Sector Working Group John, that there are some who in the best of all possible worlds might like it, but there is a recognition that this is not the generalized view.
There is a somewhat similar position as I understand it to the next question which is dealt with in paragraph 78, namely searching before registration of a database. And our recommendation in this respect is that we recognize the utility for applicants for domain names to voluntarily undertake their own searchers of available trademark databases, but we don't feel that there should be any requirements of mandating a prior search of trademark databases either on the part of the applicant or on the part of the registration authority. Are there any observations on this point?
(Mr. Philip Sheppard): I would just like to say that we feel this recommendation shows a great wisdom and an example of this may be that within the existing Community trademark system a search is mandatory. The resulting search as it comes from that mandatory system are incomplete and inaccurate and any industry who is concerned with these themselves conducts a voluntary search for service available upon the private sector which is faster and more accurate. So, I think this laying down the idea for voluntary searches is entirely correct.
(Mr. Francis Gurry): Thank you very much. Okay, let us move to an issue on which I hope you will all be extremely vociferous. There is a comment, I am sorry I did not see you.
(Ms. Katinka Tattersall, Trenite Van Doorne): My name is Katinka Tattersall and I do have a question. If a voluntary search is not necessary what's worth the representation of no infringement?
(Mr. Francis Gurry): My suggestion would be that it is a representation to the best of the applicant's knowledge and belief. So, that the applicant would be declaring himself or herself to believe that they are not knowingly infringing someone else's intellectual property rights. My colleague points out, of course for the famous marks this has some sense. It would be difficult for an applicant to suggest that he or she has no knowledge or belief that he or she is infringing a famous mark if the mark is genuinely a famous mark, that is a household name in the territory. Other observations?
Fine, let us move to the question now of assuming that registrants, applicants, have been required to provide the contact details that are specified. What does one do with the database containing these contact details. How does one make it available? And here paragraph 79 through to 89 discuss the issues that I think we are all familiar with of data protection and the protection of privacy on the one hand, as against on the other hand the need to be able to identify a person who is behind a domain name and who is responsible for the activities that are taking place under that domain name. The Interim Report suggests two alternatives. The first alternative is that the domain name database be made available on an unrestricted basis. That is, it could be consulted by anyone who would not be required to specify any particular reason for consultation. And the other alternative is to provide some sort of filtered access to the database. And then I think I heard this morning in one of the observations that was made a concern also to ensure even if access were unrestricted that it not be possible to as they say "mine" the database. That is to go in and download the whole database so as you can use this as a convenient method for sending unsolicited messages to anyone. Are there any observations then? The two recommendations that are made in the Interim Report is that, first of all, a searchable database containing contact details of domain name holders be made available. And the second is that further comments are requested on means of access, that is, should it be filtered, should there be a filter or should it be unrestricted? So, I open the floor to observations.
(Mr. John Wood): Going back and some of the comments I made a few moments ago in terms of obviously copyright holders, those that are concerned about consumer fraud as well as those that are trademark holders have legitimate reasons. With any kind of search like this and I know that always the defendant in any kind of suit will say fishing exercises, there is a certain degree of speculation when you initially do those searches. So, there are situations where there may not be a specific motivation for why a specific entity is being enquired of. And therefore to have restrictions which do not recognize legitimate concerns which may not be at that stage completely crystallized is something which would concern us.
(Mr. Francis Gurry): Thank you very much. Are there other observations please?
(Mr.......................): Yes, just possibly a third alternative which is what it is implemented in the .......... ccTLD which is, the database is open, but when you ask the data to be inserted into the database to the applicant you could give him the option not to appear in the database itself. So, it just has to cross-check in the applicant form and say my personal details should not go in to there. This is in ............ five years and up to now there is one up on 45,000 which requested this option on itself.
(Mr. Francis Gurry): May I ask what would happen if someone exercised the option to not have their details featured in the database and then there is an intellectual property owner, let us say, who is concerned of the possibility of infringement and who wishes to find out who is behind the domain name.
(Mr...........................): He simply contacts directly the registry, and the registry then gives the details and all the official documents behind it.
(Mr. Francis Gurry): So, the registry makes it available. Fine, thank you. Are there any observations from the point of view of the European Directive on Data Protection? Any informal observations on the impact of that on this particular question?
(Mr. Alfred Roos, National Expert, European Commission DG XV E1): My name is Alfred Roos, European Commission also DG XV. The Commission has already submitted some written observations. Maybe to further explain those observations it might be useful to pay few words of attention to Directive 95.46 which is a Directive adopted by the European Community in 1995 on the Protection of Personal Data. A Directive which has entered into force last year and which the 50 Member States should have implemented in their national law by October last year. This Directive applies to what is called processing of personal data. And processing covers collection, storage, transfer, access, searching, all possible acts related to personal data. It is called processing in a general term. So, it might not come as a surprise to you and this is a very relevant directive in the area of the whole project as set out in the third Interim Report of WIPO. On the most relevant aspects of data protection, as I said, the Commission has already submitted some observations and that concerns of course recommendation 51 on anonymity and recommendation 89 on the possibility of using a filter when granting access to the contact details registered in a, or maybe more databases set up under the envisaged system. Neither might come as a surprise that from a data protection point of view we favor alternative two, set out in proposal 87. Alternative two, the second option which limits access to those contact details to only those cases where it is really necessary for the purpose for which this database or more databases are established or set up. So, that's in a nutshell some of the data protection aspects. Maybe it is useful to point at the second point, of course the scope of this directive is limited in two ways. First of all, only personal data. When we were speaking about the anonymity, I can imagine or I assume I don't know exactly how percentages are, that many domain names are registered by companies, and maybe there are no personal data registered as contact details in a database at all. Then of course, there is no problem with the protection of personal data. That is one point, limitation. The second limitation of course the scope of the Directive is limited from a territorial point of view. However, the Directive also contains certain provisions under transfer of personal data from the European Union to third countries, and I think that's also a relevant aspect which I haven't seen so far in any of the observations or in the draft recommendations we are discussing right now. Because the Directive prohibits export of personal data to a third country where there is no guarantee of what is called an adequate level of protection of personal data. So, that is also a relevant aspect which might be considered in this framework. I will keep it to that and we may go into details later. Thank you.
(Mr. Francis Gurry): Thank you very much Mr. Roos. I know there are several people who would like to ask questions or make observations. May I ask two questions? The first is personal data as I understand it and the definition really is data relating to natural person. It has nothing to do with the use that a person maybe making of the data it seems. Now, in the recently published proposal for a Directive on Certain Legal Aspects of Electronic Commerce, if I understand it correctly it would be a requirement for Member States to establish the need for contact details for anyone who is providing a commercial service or operation or activity on the Internet. And how is this if I may just ask for clarification, how do these two directives sit together. Because presumably some people who will be providing services will be natural persons.
(Mr. Alfred Roos): Maybe because it was mentioned before we were speaking of the distinction between commercial activities and other, maybe we call it private activities was brought up. We should not mix up this distinction with the distinction between personal data and data relating to legal persons or companies. Personal data simply is data that reveals any information about an individual, a natural person. And that of course could also be a person that develops commercial activities, no problem. That is another question actually? Data which reveal any information about a legal person as to its sales figures or whatever, that's of course not personal data. So, there is no contradiction between what the proposal of a Directive of an e-commerce has on the one hand, and the general Directive on the Protection of Personal Data on the other hand. However, there are of course legal instruments and I refer for example to the directive on telecommunications which also foresee the protection of data which relate to legal persons. I hope this answers the question.
(Mr. Francis Gurry): Fine, thank you. Basically yes, of course there are two different distinctions which don't necessarily have any contact. I was more thinking of the requirement in relation to commercial communications to provide information and to require that the natural person on whose behalf commercial communication is made should be clearly identifiable and each relationship has a data protection Directive. My other question if I may, was you mentioned your preference and we are extremely grateful for your assistance in the formulation of our recommendations in this respect. You mentioned your preferance for the second option, the filtered access to the database, and under that alternative the second option that is that a third party then has to contact the registration authority in question specifying its own contact details and providing a justification for its interest in obtaining the contact information of the domain name holder. My general question if I may, is it would still be possible under this system really to obtain access to the database fairly easily? One could even invent a justification. If this is so, what value does the filter add to the process and what is its objective? Is its objective to provide a record of the interrogator and the reason for the interrogation which would be made available to the domain name holder, if the domain name holder so wished, or is there another objective just to prevent wholesale access?
(Mr. Alfred Roos): Yes, our preference has been made on the basis of actually three available alternatives. And which is the one which is in our view most friendly. If we would have to formulate a different alternative, maybe we would slightly amend alternative to second option. Because the idea would be that full access to contact details should only be granted if really necessary to achieve the purpose of this system. So, in many cases it is not necessary in our view to grant full access to all contact details, because it might be sufficient as a first step or a first level to find out if there is a domain name at all that infringes, or maybe infringes a possible registered trademark. Or maybe also I understand it is not quite clear if also copyrights might be involved. So, this would substantially limit first of all the number of people that finally would have access to all those details. Only those who pass this first barrier is there a comparable or infringing name or whatever, those would have further access. And a slight variation to this second option of the second alternative could be that you put an agent in between, for example. That is an option which has been mentioned in recommendation 51 and 50, the course to be used here. Because finally, the purpose is that it is possible to make contact or to communicate but it is not always necessary to do that directly. However, it is difficult for me right now to say if this would fit the needs of the trademark holders or if it is an impossible way to go with an eye to the purposes of the system.
(Mr. Francis Gurry): Thank you very much Mr. Roos. Are there observations please? There are a number. We start with Keith Gymer please.
(Mr. Keith Gymer): Thank you Francis. Certainly I would like to pick up on a number of the comments made there. And as I said in my earlier comments business would be very concerned if data protection provisions were used for the purposes of enabling individuals to hide their details and escape being identified in that way. I think the example I gave before, individuals presently register trademarks and their details are publicly available on a trademark register. We see no reason why it should be any different for a domain name registry at the same level of details necessary to establish legal contact should be provided. And there is nothing unfair about that. And whether it is a business or a private person, certainly if they are operating in a commercial domain they need to be readily identifiable and they should have appropriate contact details. There is also and I would point out in the data protection Directive in any event, I don't recall the precise parts of the Directive where it occurs, but certainly as it's been implemented into the U.K., there are clear exemptions which permit the processing of data for the protection of rights including international property rights. And I think that, that would be the exception that I would see applying here. If there is any filtering to be done it would be that the use is required for the purpose of protection of rights. And that is what people are using the data for now. That is what John has highlighted as the issue for identification. I think that is what we would see as being an appropriate exception. It is consistent with the data protection. It does not ask for any more than a reasonable fair identification details such as you provide already in patent and trademark offices around the world anyway including (OHIM ?).
(Mr. Francis Gurry): Thank you very much Keith. I have one observation from Michael Froomkin before Philip Sheppard.
(Professor Michael Froomkin): I just want to say that I am puzzled by the assumption that the trademark analogy is the appropriate one for domain names. I mean, a domain name is not a trademark, therefore it does not seem to me to be logically obvious that rules which are obviously appropriate for trademarks are necessarily obviously appropriate for domain names. And since in many countries trademark registration does not protect you against non-commercial uses of the mark, since it is important that the potential use of a domain name is expressive activity which is non-commercial. It seems to me in fact to be onerous to automatically and mechanically apply trademark principles. And why make these assumptions when everything else you says flows quite logically, but I was still wondering why the assumption came in the first place.
(Mr. Francis Gurry): Thank you very much. I am sorry Philip Sheppard, I was going to give you the floor, but Keith Gymer did you want to make a response to that?
(Mr. Keith Gymer): We can go into a debate about the conflict between trademarks and domain names but what I did specifically say was domains for commercial purposes and I think that's clear. And I also mentioned before that I think that one of the resolutions of the problems that we have in this conflict between the free speech and the non-commercial uses and the commercial uses is that to date that differentiation has not been enforced and you can't rely upon it in the existing domain name system. And therefore, that is one reason why I think Philip and others have said there must be some sort of separation of commercial. And what I am talking about here is principally the commercial areas. And there I think the analogy is much lesser.
(Mr. Francis Gurry): Thank you very much.
(Mr. Philip Sheppard): Yes I would like to endorse the earlier comments that Keith Gymer made in terms of transparency which is effectively the principle he was talking about. I would just like to make a comment on the alternative to filter access and the difference between options one and options two. To my mind the second option simply seems to be a slower version of the first. It is also highly labor intensive, with the slight difference that we have providing a justification. Now, unless you are going to have a serious system of adjudication of really what the justification is, that process as I think you were pointing out earlier Chairman, is going to be nominal and therefore meaningless. So, for my mind we are have an option of (a) an almost paper-based sort of human intervention system versus the filtered option one, combined also with instant information back to domain holders who is asking the question. Which strikes me as precisely the right speed of option, the right mechanism for it and the right transparency for both parties.
(Mr. Francis Gurry): Thank you very much Philip Sheppard. John Wood please.
(Mr. John Wood): Professor Froomkin, it is the reality that people when they are looking for, for example Microsoft, do say www.microsoft.com which is at the very heart of this that is commercial, but that is just the way that people think about sites and associate them. That is the natural historical legacy of what's happened over the last two or three years. I would like to explore with the European Commission official a scenario and ask how he expects us to deal with this scenario. The scenario is this. There is a U.S. copyright holder that has a subsidiary here in Europe. And in that situation they are aware of a site which they have identified through a domain name that has copyright infringed materials in the form of a recording. They are concerned that, that recording if they do not get to those people in a very short order will then be downloaded in a far Asian country and reproduced as a copyright infringement, say as a CD or whatever. What does the Commission see the position of how one would protect rights without in some way infringing the data protection. What practical steps could a U.S. organization take that has subsidiaries here, that has rights here in Europe, has rights in the United States where time is of the essence because it will have direct bottom line effects?
(Mr. Francis Gurry): Mr. Roos may I ask you to respond?
(Mr. Alfred Roos): Yes, as one of the other speakers already said and that is a statement you often hear is that, that protection act or that protection Directive prohibits processing of data, but that is not true, not at all. They only limit the processing of personal data to what is necessary to achieve a certain purpose. So, in the example you just gave, a United States based copyright holder with a subsidiary on the European territory, it might be very well justified that at a certain point contact details, be it through an intermediary or an agent, become available to the copyright holder that thinks there is an infringement of his copyright, and that wants to prevent this infringement or to undertake action or whatever. So, it is not that the Directive prohibits this, the only thing I tried to explain is that it is not necessary to grant access to such details to the whole world, it should be a limited access necessary to achieve your purpose which in itself of course is a very legitimate purpose. There is no problem with it. The data protection Directive allows processing of data as long as it is for a legitimate purpose which is specified before you start processing and as long as you limit it to what is necessary.
(Mr. Francis Gurry): Thank you very much Mr. Roos. Any other observations?
(Mr. Claudio Locker ?): Just a very simple observation that in many cases the data which are required to be registered to identify the holder of a domain name which is basically what is listed in .......... paragraph are not considered to be sensible data but any of the data protection laws enacting in many of the countries. Even the personal data which are in there, for example the telephone number of the applicant is not considered a sensible data at all. So, in many cases this kind of directory or laws simply do not apply. And provided the applicant has got a right to deny public access to this you give the applicant even a more flexible approach to the problem.
(Mr. Francis Gurry): Thank you (Mr. Locker ?).
(Ms. Daphne Yong-d'Hervé, Senior Policy Manager, ICC): Daphne Yong-d'Hervé of the ICC. Just in response to Professor Froomkin and DG XV's concerns about protection of the individual. I just would like to recall that in fact fraudulent trademark use is often fraud on the consumer, so I think that your concerns for protection of the individual's privacy have also to be balanced against protection against fraud, against the user.
(Mr. Francis Gurry): Thank you very much. Professor Froomkin, do you want to ask a question?
(Professor Michael Froomkin): Yes, I want to ask John Wood something. I was thinking about your example and it seemed to me that the party that you are really concerned about in a copyright case like that is the ISP, the party that is hosting the data. I mean to achieve at least the immediate relief of preventing the thing from being disseminated, you don't really need or want to know who the domain holder is because that person may be a bad actor and quite unwilling to do anything. But what you want to do is to get the thing off the machine and of course there is not at all a mechanical correspondence, one machine, one domain holder. So, would the quite legitimate interest you are describing be satisfied by a procedure which may be possible to get ISP contact details as opposed to domain name contact details?
(Mr. John Wood): I would like to go into this in more detail, but there are some of us that are sitting on the same side on this issue, that if I went down this conversation with every second word I will be in a lynching session. What I would say to you is that my question was designed to actually go into two areas which are very important, which is the issue of islands, exploring the issue of the U.S. in the Data Protection Act. And also exploring obviously the take-down provisions and the issues that happened last Wednesday. And so it was to try and follow a practical chain rather than the ISP. The ISP issue is come down to this take-down provision which, as you know, under U.S. law and in Europe there is a certain variance and certain conciliation. And I don't want to get off to that direction really Professor Froomkin at this stage. Suffice to say I was trying to really deal with data protection and the clear fact of three very different legal jurisdictions that have been accepted and looked at in difference ways of analysis by the Commission. And how in this very practical chain and just to emphasize in this very practical chain the disparity and the differentiation of treatment and how that is going to go forward as a practical matter coupled with the fact that in all of this is times of the essence. And if we are going to create another bureaucracy and another building and another set of procedures that slows down. Meanwhile the copyright infringer is merrily belting out copies left, right and centre. And yes, the ISP is part of that chain but let's not get into the liability issue there, because that is for another day and another issue.
(Mr. Francis Gurry): Thank you very much John. Any other observations then? Fine, well Keith Gymer you wanted the floor.
(Mr. Keith Gymer): Yes, sorry I can't resist following up on what John said there actually, because we are on the other side in one of those, its been for BT on the other side of one of those debates. I just want to clarify for Professor Froomkin's benefit one of the problems you have in a debate between the rights holders and the intermediaries like ISPs, very much surrounds around the issue of liability and identification of who is actually the primary infringer and so this is a sensitive area of debate. And I don't think you would find too many ISPs who will want to find themselves directly liable to content providers on this sort of issue. They would want to identify the specific infringer, the person who has done that and not be caught in the frame themselves.
(Mr. Francis Gurry): Fine, thank you then I think that we leave it on the basis that further reflection is required. We have heard the preferences that have been expressed in relation to means of access to the database. Let's move on and see if we can deal before lunch with the question of what happens when information that is being provided by a domain name applicant under the registration agreement is false or inadequate or it does not enable you to contact the domain name holder. The first matter dealt with is the question of verification of contact details by the registration authority and the recommendation in this regard in paragraph 92 is essentially that in recognizing the high volume, highly automated nature of domain name registration system there is no recommendation made for some form of verification on the part of registration authorities. However, further comments are requested on whether it would be useful and functionally practical to require online data validation mechanisms. Such as requiring a domain name applicant to fill out mandatory fields whether this assists in dealing with the problem of inaccurate or insufficient information. And secondly whether it would be useful to require registration authorities to have some form of automatic confirmation. For example sending an e-mail back to the e-mail address that has been specified by the applicant. Are there any observations on these two recommendations or questions? What does CENTR think of it? The utility or function or practicality of these?
(Ms. Fay Howard): Many of our registries are quite automated with these sort of forms and quite frankly they don't pass through if they are not filled in correctly. I don't see it as a real problem with CENTR members at all.
(Mr....................): Well, in practice the ................. registry was asking much more details to allow a registration by an applicant. They were asking in the beginning paper proof of the existence of the entity requiring the domain name or itself. Very recently we had to step back and to just ask for a sales certification for salesmen, that they actually are and what they intend to be. Only because it is not easy at all in many situations to verify in real time online that the details are accurate. As soon as they are available online from different registries, probably we will go back and verify it. But in many cases it is impossible to do it now.
(Ms. Fay Howard): There is an attempt by some of our registries to use both so that there is a human filtering of information and if there is any proof required, obviously it can't be done in real time, they need faxes, they need letters, copies of trademark registrations or registration of a company name. It is different for each one.
(Mr. Philip Sbarbaro): Just an observation that .it and a number of the registrars or registries or both, if they are serving both functions, don't allow individuals to register. So, it is a much easier system. Imagine a system where you have 10,000 registrations a day, so that you don't have 40,000 for Canada or 40,000 for Italy, but at the end of 4 days you have as many as both of them. So, I suggest that trying to confirm the quote "existence of the applicant," is a different kind of concept. I don't know how you deal with 10,000 a day.
(Mr........................): Well, just to be more precise we don't allow individuals, we don't have a commercial activity. So, my mother, for example, who retired cannot, but my father who has got or used to have an activity could do it.
(Mr. Francis Gurry): Fine, thank you. No other observations on this point. Then the question addressed in paragraph 93 is what do you do about keeping contact details up-to-date? And conscious of the need not to interfere too much with the functionality of the domain name system, we had suggested in paragraph 93 that it is sufficient if a domain name registration is for a limited period and if there is a requirement of a registration or a renewal fee, then this is a sufficient mechanism for ensuring that contact details are up-to-date. In that, the registration authority has to have reliable details in order to contact the applicant to ensure that the registration is renewed or re-registered. The alternative that has been suggested is that it should be possible online for a domain name registrant to alter his or her or its own details in order to ensure that they are kept up-to-date. Are there any observations on this question? No observations, Keith Gymer.
(Mr. Keith Gymer): Just to reiterate what I said before, that I think it is a problem, it's endemic that registration details are at best or what we should say is, inaccurate, and sometimes downright deliberately misleading. Certainly in the cases that I have been involved in we have had some very fanciful filling in of the forms whilst they may have been completed in the way necessary to get past the registries' gateway, what they are completed with is entirely fanciful and misleading. So, it is a serious real problem, one way of dealing with potential infringements in this area. But equally, as I said before, it doesn't just apply to the downright infringes there are plenty of errors on the even legitimate registrants. And I am sure that Phil would recognize that large numbers of the registrations and whose details are inaccurate and wrong anywhere, but purely because they are out of date. And so it is a matter of equity, we wouldn't want to see sanctions happen immediately without any registrant being given a fair chance to up-date and correct them on the basis of a challenge that I have not been able to contact. I have tried contacting these details, they don't work and there has to be some form of notice which says that there has been a complaint try and correct them please etc, etc. But I think it is a desirable objective as I said before that they should be accurate.
(Mr. Francis Gurry): Thank you Keith Gymer. Phil Sbarbaro do you recognize what you (interruption).
(Mr. Philip Sbarbaro): Indeed we do and for all present, what happens is truly let me suggest that you couldn't care less about the contact details. What you could care about is that if you want to serve someone with a complaint that you can find them, then you will find out who is really behind whatever it is. So, you couldn't care less what those details were as long as that person could be served. So, what Network Solutions does, and I don't suggest it's the right answer and obviously we are here to find a better answer, but if we are notified by a third party complainant that they cannot find someone, that they have used whatever it is they could use from Whois or whatever source and they can't find them and that the information in Whois is incorrect. Then we notify that domain name holder using all of the same information that you have, we have no other information. And notify them that their critical information is incorrect and that they have 30 days to correct it and if they don't their name is deleted. The registration contract is canceled. Now 30 days, I suggest, does not give you the remedy you seek, but some people take 60 days to be found. Some people are in Iran or Iraq or the Pyrenees or somewhere and believe it or not that is how long it takes. So, many courts will allow you 60 days to serve something. In the new case in Porsche in the United States the court has ordered that non-domestic foreigners to the United States were given 60 days to respond to that complaint. So, whether 30 days is right or wrong I suggest that (end of tape)...........
(Mr. Francis Gurry): (Tape 2 starts in the middle of a sentence) ............. the issue where we have made a specific recommendation on which we would certainly like to hear observations. I suggest we take that up immediately after lunch together with the final issue which is the question of portals and gateways. So we break for lunch now, there is a restaurant on the 5th floor of this building. There are a number of cafeterias and restaurants in the quartier around and let us resume please at 2.15 p.m. thank you.
(lunch)
(Mr. Francis Gurry): Well, ladies and gentlemen shall we resume? Fine, so we have quite a bit to get through this afternoon. We have two outstanding questions relating to chapter two, and then I think that if we break it down into roughly one hour per chapter thereafter, we should be able to finish the whole Report. So, may I come back to the issue to start with, may I come back to the issue of what are the consequences if someone who is interested in contacting a domain name holder finds that it is not possible to do so. Either because the information is incomplete or its simply inaccurate or its gone out of date. And the paragraphs 94 through to 101 of the Interim Report deal with this and they suggest the possibility of a take-down procedure. And the recommendation is that first of all, as we have already seen this morning, the domain name registration agreement should contain a term making the supply of inaccurate or unreliable information by the applicant a material breach of the contract. And secondly, that there be a take-down procedure implemented whereby upon service of the notification by a interested third party concerning the details that have been set out in the report, and upon one independent verification of the unreliability of those contact details, the registration authority would be required to cancel the corresponding domain name registration. And that recommendation we made in preference to a heavier procedure whereby the question would be submitted to an independent neutral or a panel before the take-down were implemented. Are there any observations or comments on this particular recommendation? Any objections to the recommendation? No, so it seems to be acceptable in terms proposed.
Fine, then let's proceed to the last question. Which is that as you are all aware there are various technical measures that you can introduce to allow domain names, two similar names to co-exist. You can have, and it is particular to the case for trademarks or brands that use as part of the trademark a common word, for example, United. And you can have a portal or gateway page which indexes all of the domain names which include this particular common element. We have said that we understand trademark interests at any rate to have the preference for the uniqueness of their own name and therefore, any obligation to share a gateway page or a portal page would be excessive. We suggest however, that users be encouraged to consider carefully the advantages of these measures as means of finding a solution to good faith disputes around names which share a common element. It is a voluntary, in other words recommendation. Are there any observations? I think it was touched upon this morning in at least John Wood's comments. No, fine. So, let's proceed then to the question of dispute resolution.
And going through the structure of this we have dealt first of all with court litigation. And we have suggested there in paragraph 115 as a start, that any alternative dispute resolution system, that is alternative to litigation that is adopted for domain name disputes ought not to deny parties access to court litigation as a means of resolving their disputes. This effectively means that we are not suggesting therefore, a compulsory system of binding arbitration. Because the effect of an arbitration clause of course a submission to arbitration is to exclude the jurisdiction of courts. Are there any observations on this?
(Mr. Enzo Fogliani): We think that this principle is not suitable for Italy. Because in our system and in general in the system where the court jurisdiction is very slow, in Italy it may take ten years to solve a problem like this one. Leaving the system open may lead to the fact that the one who wants to stop somebody who is in tort, then is able to escape from the ambiguation and to do whatever he wants with the domain name and so on. So, we think that the arbitration to work in a country like Italy should be compulsory, thank you.
(Mr. Francis Gurry): Thank you Mr. Fogliani. Well, it is a very interesting suggestion and of course in so far as .it is a ccTLD of course, it would be free to choose this as a policy for .it.
(Mr. John Wood): We agree in principle obviously with this, and I think the industry sort of view would be in that. And I think what is important is that although WIPO should take the lead in terms of its own dispute resolution procedures, there should be here the opportunity that there maybe alternatives as well plural not alternatives singular. There maybe other mediation and arbitration also non-binding which may provide service which for reasons of convenience and specific expertise with regard to the parties may also be there. What is important in any of this is obviously that the policies and procedures are consistent and uniformed and I think that's a role that WIPO is ably placed to provide and champion.
(Mr. Francis Gurry): Thank you very much, you are a bit down the track from us, but it's fine in so far as it is a general observation and we understand how it fits into the various recommendations. Thank you. Any other observations? No, then let's proceed to the question of submission to jurisdiction, which is a somewhat complicated one to say the least. What we have done and the recommendation is contained in paragraph 119 is to suggest that without prejudice to other potentially applicable jurisdiction, because it's of course the case that courts will assert jurisdiction on the basis of their assessment of the applicable principles of private international law. Regardless of that, we have suggested that it would be desirable if the domain name registration agreement contain provision requiring the domain name applicant to submit at least to the jurisdiction of the country of domicile of the domain name applicant and the country where the registration authority is located, provided that those countries are either party to the Paris Convention or bound by the TRIPS Agreement. This latter provisor being introduced as a sort of a minimum guarantee of a minimum level of intellectual property protection. Are there any observations on this question? The alternative of course would be to leave the question of jurisdiction entirely open and then the courts would apply their own principles.
(Mr. John Wood): I thought Phil was going to start this one.
(Mr. Philip Sbarbaro): Thank you. I guess my question is this. Had a little company, an ISP in England Prince PLC been required to do this, then they would have been sued out of existence in the United States by Prince Sports Company. So, I guess my question is, if the little person is the registrant and the third party complainant is a very wealthy company they can drag that registrant wherever they are all over the world back to the United States where litigation is a way of life. It is not just a system. So, I would be very interested if you think that, for example, 4 million domain names at the moment should be sued in Alexandria Federal Court in Virginia, United States, I suggest that, that is not the appropriate thing.
(Mr. Francis Gurry): You are doing this on the basis that the registration authority would be located in the United States. That's the relationship to the recommendation?
(Mr. Philip Sbarbaro): Well, unless of course ICANN wants to be the registration authority and then we can all sue wherever ICANN is.
(Mr. John Wood): I think this is a two-edged sword unfortunately. The one side which obviously is the back end is the enforcement issue, which as a practical matter means that wherever that database sits, if you are from a practical point of view you can either add, modify or expunge that record. You have got to be able to get some form of legal remedy there. But, yes Phil is absolutely right and it is not just small companies. The moral of the story of Mattel and Hasborough is, unless you have a million dollars each and you decided to go for a nice set of rather extensive battles and you don't even want to get into a court room, please have a million dollars. So, I don't think it is only limited to small companies. I think that most organizations outside of the United States can out the cost quite clearly before they enter the fray, whether it is in the Northern District of Virginia or any other part of the United States. It is a litigation fact of life and I think that, that is one issue which this section we really welcome because court battles are very expensive and very extensive whenever they involve and enjoin a party into the United States. I think another issue at this point that should be raised is this. However, in the United States the area of jurisdiction and all around that is far more mature than many other parts of the world. And I would recommend to WIPO and those looking into this that they should consider for example the Sleet Craft case in the 9th circuit and some of the other cases that are around as guidance. Also the decision in Pennsylvania in terms of jurisdiction, providing a scale maybe helpful in providing some form of analysis down the road. But, it is not the be and end all, and not all of us have a million dollars to go into a court room.
(Mr. Keith Gymer): I would like to pick up on something that Phil said there, because I am not entirely clearly why at the moment, it is certainly in relation to the domains that NSI deals with, why it is not logical to go and sue in Alexandria if that is where the database is, or in Virginia if that is where the database is. That presumably I think is the law of contract that NSI applies to its domain name registrations in any event. And as far as I am aware, Prince Sports did attempt to utilize and take advantage of that jurisdiction, but was stopped. Because actually it was clearly a circumstance of that case and because I think when it comes down to it, com is an open gTLD and I think this is where the difference between open and closed TLDs and how those TLDs are operated is going to play a significant part and is worthy of much more closer examination. When the U.K. court said we have jurisdiction here, its a U.K. company and a threat was made in relation to the U.K. and took action accordingly. The same, I mean other courts have assumed jurisdiction over com, net and org domains and they are not been in the U.S., I think certainly I can't imagine that any court would be too reluctant to assume jurisdiction over some of the so-called ccTLDs which are marketed as novelty domains like .nu for example, and wouldn't hesitate to say well, no that's been marketed in an open fashion, it is not been marketed in relation to its geographic origin. Whereas, you contrast the closed or the grey ones as Fay put it this morning where they are clearly associated with their national jurisdictions. And in those cases I think the case where other countries jurisdictions applying or seeking to be applied is much more contentious and needs more consideration.
(Mr. Francis Gurry): Let me add just one other comment to what you have said Keith Gymer and that is that we have used the term throughout the report for that matter of registration authority. And we have used that deliberately because we were waiting on pronouncements of course concerning the nature of the system from ICANN. And in particular, there is contemplated separation of the functions of registrars on the one hand, and registries on the other hand, or administrators of registries as I think is the terminology now used in the ICANN guidelines. And there is a deliberate ambiguity there in paragraph 119 when it says submission of jurisdiction of the country where the registration authority is located, which could be either the registry or the registrar.
(Mr. Philip Sbarbaro): Just in response to Keith's discussion. The issue again is where can you sue a domain name holder? And again I go back to the same thing. If you want to subject all domain name holders in an open gTLD back to the place where they registered, but then you can recommend that. That is not a basis of jurisdiction however, for a tort. And here is what I mean for the lawyers in the room. If Ms. Howard and I have a contract, our contract is based on whatever we have suggested and written in our contract and agreed to and that could be wherever it is we signed our contract. If however, Mr. Wood wants to sue based on an infringement of his trademark that has absolutely nothing to do with our contract and the provisions in our contract. And he can sue anywhere in the world he wants. What you are suggesting by your silence is that she is required if Mr. Wood so chooses, to bring her right back to Alexandria or Virginia and that is an enormous burden on her unless you want to do that. Now, it does not matter for certain things what one puts in a contract. If ICANN puts in there guidelines that they shall only be sued in Los Angeles, California that won't hold. If it is an issue of tort I can sue them anywhere in the world that I want. So, I am not bound by whatever it is they say is the only place for proper jurisdiction and venue. And we are not talking about what law applies, that is an entirely different issue. In Italy, if a .com domain name is an issue, what law applies? Italian law. If we are in Finland, what law applies? Finnish law. We send the registry certificate to that country and we say to that judge, do whatever it is you will with this total dominion control over this domain name and we will abide by that court order tomorrow. So, there is no issue of which law applies. But, if Keith sues in Virginia over a tort in England, I mean you can see the messes that you are getting into, it does not make sense. But as the plaintiff, I can cause enormous burden on this little person who is taking this domain name by forcing them back to the United States. And that is what I guess I am hearing here. And I can't imagine someone from Italy agreeing to that. How would they do it? So, you will have default judgements all over the place.
(Mr. Enzo Fogliani): I agree with Mr. Sbarbaro and I think that this recommendation in the Italian law and I think in some other European countries would be without meaning. Because a third party who would want to sue in tort is not bound by the contract made by the registration authority. Thank you.
(Mr. John Wood): Yes, I just wanted to make one further point on this, which is that jurisdiction may be afforded not just specifically on the basis of trademarks, it may be consumer fraud. And an analysis in France is more likely to lead to that kind of conclusion for consumer protection reasons. Where that is a far greater driver for a French judge regardless of what choice of law or applicable law is written on every single page of that contract and that should also be taken into consideration, that jurisdictions may be afforded for a number of different grounds and causes of action. And depending on also the jurisdiction, certain drivers will be "hot buttons" to certain judges. And you crafted in this in a certain way in one area may not be as effective as in another. So, I think that, that also needs to be recognized and taken into account.
(Mr. Francis Gurry): Thank you very much. Let us also recall that the proposal for a directive on certain legal aspects on electronic commerce has some proposals on jurisdiction also and location how to identify jurisdiction. And it is generally as I understand them by relation to the presence of the person within the jurisdiction, rather than the activity that is performed under the website.
(Mr. Claudio Locker): Just for as a purpose of real life examples. There have been recently at least five different cases in which the domain name was registered under .com. The actual machine performing not the violation or intellectual property right, but the criminal violation of the laws, was physically settled in the United States. It was a violation of the Italian law and the owner of the domain name was an Italian individual and the end of this was, that the Italian police is prosecuting the individual against the Italian law of course. So, whatever is written in the registration agreement does not matter.
(Mr. Francis Gurry): I would suggest that we qualify that by depending on the country. But it is a clear indication that jurisdiction, particularly in relation to the Internet is an exceptionally complicated matter. And one approach to it is to leave it to courts to sort out or to leave it to the sort of instrument that we have in the Brussels or Locarno Convention or any revision of those Conventions to leave it to instruments like directive, or to leave it until a more durable solution is found in a legislative framework on the international level. So, let us close on that issue I suggest, unless there are any other observations. It served I think to make us all confused on a higher level at least.
(Mr. Keith Gymer): I just want to clarify one point and I am not quite sure that what I was said was being misunderstood. I certainly wasn't suggesting that we should have multiple jurisdictions, but we need to be very careful about introducing them. That is my point, that there is a difference between whether you have multiple jurisdictions which might be applicable in cases of open TLDs, but shouldn't be much more careful about doing that for closed ones. Because I think, notwithstanding that anyone can bring an action for a tort in any country, I think when we are talking about transfers of domain names here, or actions for domain names specifically then I think whilst we know that NSI hands jurisdiction of coms over to any court anywhere to deal with, thats because an open TLD. I think you might find that national ccTLDs will be more reluctant to do that. I will admit that jurisdiction and agree to enforce a judgement, I might dispute the enforcement of a judgement made by a court somewhere else in another country outside of their jurisdiction. I think that, that would be much more contentious issue.
(Mr. Francis Gurry): Fine, let us move on, I suggest, to alternative dispute resolution and the proposals in this regard. And if I may just summarize them for you. What the Interim Report does is to say first of all there ought to be certain guiding principles for any alternative dispute resolution system, whatever its name. And they are set out in paragraph 122 and they deal with matters some of which have been mentioned already in the discussion. Namely, that it would be desirable that the procedure be expeditious, that it be low cost, that it contain nevertheless sufficient flexibility to enable the parties to battle over a considerable period of time if they each voluntarily choose to do so. That it must be procedurally fair obviously, and incorporate minimum standards of procedural fairness or due process. That they should be uniform or consistent in so far as possible. And I won't go through the rest. I think by and large these are principles that everyone can agree upon in the abstract more as principles. Translating them into concrete procedures is the difficulty. What we suggest in the Interim Report in this regard is the following. That the two most common and most widespread alternative dispute resolution procedures are of course mediation and arbitration. Mediation has, in this particular context, the disadvantage that one of the things we are trying to arrive at is an expeditious procedure that is going to give binding decisions within the system. And mediation of course is a wholly consensual procedure and the parties can walk away from it at any stage. We therefore, suggest that it is preferable to leave the mediation possibility available for parties that may wish to adopt it in order to have a facilitated negotiation as a means of resolving their dispute. And this they can always agree to do. And there are many examples one can think of with an acronym of the initials of well-known corporations located in two different jurisdictions. And the reality would be that each would be able to sue the other in its own jurisdiction so that it is an intractable legal problem and mediation is of course a very appropriate procedure for such difficult disputes. However, the parties can choose this and there is no need to impose it as a procedure on everyone who is registering for a domain name. Then, when it comes to arbitration. Arbitration of course has the advantage of being made for international disputes and operating within a well established international legal framework. There are however, three perceived disadvantages that we have heard at any rate in relation to arbitration as a compulsory method of resolving domain name disputes. And those three difficulties are the following. First of all, that the legal effect of a binding arbitration agreement is to exclude the jurisdiction of the courts. And we understand that there are many sectors that want to leave out the court possibility. A second perceived difficulty with arbitration is that it gives rise to a final decision. A decision which is not challengeable on the merits, but only on grounds of lack of due process or procedural fairness. And some parties are uncomfortable with the notion of a binding decision which would finally regulate and exhaust all of their possibilities. And a third perceived difficulty in this particular area is that we are all in the process of trying to construct a workable system. And arbitration, is in general, a confidential procedure between the parties to the arbitration. And therefore, in general, the arbitration award would not be published. And there is considerable interest in having the decisions of any alternative dispute resolution procedure publicly available so that everyone can evaluate how this system is operating and whether in effect low cost, expeditious, user-friendly and gives rise to quality decisions. For these reasons therefore, we recommend in connection with arbitration that the domain name registration agreement ought to contain provision for an applicant to submit voluntarily to arbitration, but equally the applicant could choose not to submit to arbitration. We also suggest that in so far as this option is made available to applicants that it would be desirable in view of the medium in which the dispute is occurring that the arbitration procedure be conducted online. Then, moving from that we suggest that in view of the perceived difficulties with arbitration it would be desirable to have available a procedure which is based on the model of arbitration, but which is not quite arbitration. And, we therefore make the recommendation that it be an obligation on the part of domain name applicants that they submit to an administrative dispute resolution procedure which will be modeled on arbitration, but which however would be different in so far as it would leave to any third parties the possibility to choose instead to go to court either instead of the administrative procedure, or indeed to challenge the results of the administrative procedure. We would hope that the administrative dispute resolution procedure proves to be a satisfactory option and one that produces consistent quality of decisions, so as that less and less people will feel inclined to have to resort to court as an alternative. It would also be distinguished from arbitration in so far as the results of the dispute resolution procedure would be publicly available and publicly scruitinizable therefore. So that in essence, are the recommendations that are contained in connection with the dispute resolution procedures and policies. May I suggest that first of all if anyone would like to make general observations on this scheme of how we have conceived it in the recommendations. Obviously on the basis of the input that has been given to us and that then we take briefly each of the main items in turn. So, first of all any general observations on the structure as it were and the thinking behind the structure? No. Well, then let us proceed one by one quickly to go through them.
Mediation. The recommendation in relation to mediation need not be a compulsory part of the system. It just be an available option for anyone to choose as they can. Any observations?
Arbitration. Then the recommendation is that there be a facility for a domain name applicant to submit on an optional basis to arbitration first, and secondly that this be online arbitration. Any suggestions, any recommendations in relation to this? Any observations in relation to this?
(Mr. Enzo Fogliani): As we already said, we think that mediation should be compulsory. Thank you.
(Mr. John Wood): Just one small point. Would it be envisaged there would just be arbitration online or that would be one of a number of alternatives? Going back to my small kind of company example that Phil likes to make reference to, you may have people that are affected by domain name dispute who may not be sophisticated enough to actually participate in an online procedure.
(Mr. Francis Gurry): Well, we have been a little more robust in the recommendation and we have gone straight to suggest that the arbitration procedure should be online. Why? Well, because the dispute occurs in an online context first of all. It is a reasonable assumption that the disputants both have the facilities to conduct the arbitration procedure, or to participate in the arbitration procedure online since it is a domain name dispute essentially first of all. Secondly, we feel that there are real cost advantages to be achieved by having the arbitration procedure conducted online in this context where it is unlikely that it is necessary to have physical hearings to hear witnesses. It is most likely that the dispute can be resolved on the basis of documents only. If the neutral arbitrator or arbitrators found themselves confronted with a situation in which it was necessary to have a physical hearing or both parties agreed that you should have a physical hearing, then in an arbitration the parties can agree between themselves anything. And you can in those circumstances adapt it. Thirdly, again to make reference to the proposal for a directive on certain legal aspects of electronic commerce. One of the aspects of that directive once again is to mandate the possibility to use online dispute resolution procedures for electronic commerce disputes within the European Union. So, that's our recommendation.
(Mr. John Wood): No, it was only a sort of consideration from the point of view of not wanting to close out where you do have a combative situation where there is in word merely having the documents without real ability to cross-examine. I hate to get into legalese, but to not be able to cross-examine etc, but it still being locked into that being the less expensive of the (raps ?) to go. That is my only concern there.
(Mr. Francis Gurry): Fine, okay noted.
(Mr. Mark Partridge, Member, board of Directors, American Intellectual Property law Association): I just like to make a comment on that because I think when you consider the recommendations as a whole, the problem you are talking about John, the parties have the option of going to court and having a full blown expensive procedure with witnesses and everything, so this does not foreclose the availability of witnesses in court.
(Mr. John Wood): I appreciate that.
(Mr. Francis Gurry): Fine, well then let's proceed if I may suggest to the administrative dispute resolution procedure which is the recommended option, because there are a number of very important policy choices that arise in relation to this procedure. The first recommendation which is contained in paragraph 142, is that the policy be made available uniformly throughout the DNS. I think as was said earlier today clearly this is something which is on the one hand, the WIPO Process is limited to the gTLDs and its recommendations have only, at the most, a persuasive value in the ccTLDs. We see the advantages in a multi-jurisdictional medium of having the policy adopted uniformly, but this would be a matter of choice for the ccTLD administrators. Are there any comments on this particular question? Uniformity?
(Mr. John Wood): Just to echo what you said Mr. Chairman in the sense that we agree fully with this, but would obviously like and encourage that this was uniform across both ccTLDs and gTLDs, because one of our concerns is obviously shopping of forums. And also again the need for consistency and predictability and outcome and recognition that there needs to be a fair and level playing field. That would be our only comment, but we think that this is great.
(Mr. Francis Gurry): Any other observations?
(Mr. Keith Gymer): Only to repeat again that I think how you apply these consistent policies certainly at gTLD level, but also in our view any so called ISO 3166 TLD if they are being operated in a way which is a pseudo gTLD, I think there is a strong case that it ought to be applied to them as well. Otherwise, as John said we would certainly like to encourage the adoption as consistent a set of policies as possible in all the major TLDs, but we recognize that that's not something that you can do overnight because some of them have as Fay has pointed out a lot of different policies and you need to adapt this in the cases of the closed TLDs. I think we recognize that we are in a slightly different ball game.
(Mr. Francis Gurry): Yes, and obviously very important in this respect will be the credibility of the system in its actual operation as a persuasive factor. Fine, then may I move to the recommendations contained in paragraph 145 which is that this and it is a very fundamental policy question. That this procedure should be mandatory. In other words that any applicant for a domain name would be required to submit to this dispute resolution procedure. we feel that if the question of cybersquatting amongst other things is to be dealt with effectively, then you cannot leave the choice to the domain name applicant not to submit to this procedure. Because, fairly obviously if someone is acting in bad faith and decides in bad faith to register as a domain name someone else's intellectual property right, they are not going to submit to a procedure which is cheap, expeditious and which is going to provide a relatively easy solution as opposed litigation. Are there any dissident voices on the question of the mandatory nature of the procedure?
(Professor Michael Froomkin): I don't want to be a bore about this, but in the paper which I have produced, I go into some great tedious detail about why it is you might not want to do this at least as a general matter. A part of the reasons for which I will get to later have to do with my belief that as the structure is currently created it turns out that for a person who looses one of these procedures, their right to go to court turns out to not be very meaningful. And I will put that off now, I just want to put into place where it turns out that the thing isn't as balanced as we hoped originally it would have been.
(Mr. Francis Gurry): Any other observations?
(Mr. Nicolas Ide, Attorney, Nauta Dutilh): I am Nicolas Ide from the law firm Nauta Dutilh. I had some question here. As Mr. Sbarbaro observed agreement will be between a domain name applicant and the registration authority. Now, the one initiating the procedure will in most of the cases be a copyright or a trademark owner. Now, how do you intend to make him choose this procedure? Do you have any proposals for this?
(Mr. Francis Gurry): Well, our understanding is that the choice would be left to that person for example the trademark owner, to either agree to the procedure, the dispute resolution procedure, the administrative procedure thereby consummating a contract with the domain name holder, or else to choose litigation in the alternative. And obviously the online procedure has to correspond to minimum standards of due process. There are some indications about this sort of matter in the European Directive that I mentioned earlier, which will be very useful to check against in finalizing these elements.
(Mr. Philip Sbarbaro): Following up on your question. If you read the words of paragraph 145 literally, I think you get to where your question was. I don't think we really mean any dispute because there are disputes between the registration authority and the registrant that's not covered under this. And there are other third party complainants such as administrative contacts that think it is their name versus the registrants and ISPs that haven't been paid and sue and there are a number of different kinds of disputes that I don't believe fall under this recommendation. So, I don't think we really mean any, and before any I think we mean third party.
(Mr. Enzo Fogliani): I think that under Italian law this kind of procedure would be defined also as arbitration. So, I don't know if for some country it would be useful to make this distinction between arbitration and this kind of procedure. Thank you.
(Mr. Francis Gurry): Thank you very much. I think it is a very useful observation, but it is a possibility. Any other observations? Fine, okay. Then can we move to the question which is again a fundamental policy question and it is dealt with in some length. In paragraphs 146 to 151, and that is should this procedure and it deals a little with the observation just made by Phil Sbarbaro about the any dispute. Should this procedure be available in respect of any intellectual property dispute concerning a domain name registration, or should it be confined to a particularly egregious form of bad conduct in relation to domain name registrations, namely cybersquatting. And the arguments in favour and against each approach are set out in paragraphs 148 and 149. And our recommendation in paragraph 151, the provisional recommendation is that the administrative dispute resolution procedure should be mandatory for any dispute concerning the domain name arising out of the alleged violation of an intellectual property right. In other words, the competence is for all intellectual property disputes in connection with the domain name registration. Any observations on this question?
(Mr. Thomas Rickert, European Internet Service Providers Association): My name is Thomas Rickert and I am speaking for the Electronic Commerce firm of Germany, and we think that WIPO should prefer the restrictive approach because we have to keep two fundamental factors of the administrative dispute resolution in mind. The first is that it is not mandatory. And the second is that all parties have the possibility to go to national courts after having gone through this procedure. So, if it is not mandatory and parties have the possibility to go to national courts perhaps in difficult cases they will look at what the panel says and if they don't like the decision of the panel, they will go to national courts. So, that is the decision of an Internet panel has the meaning of perhaps an interim solution. And this would be not good for the profile of administrative dispute resolution procedure, because the decisions should be predictable and reliable. And so, WIPO should restrict its recommendations to the cases that can really be finally decided by those panels. Thank you.
(Mr. Francis Gurry): Thank you very much. Any other observations, any other views on the question? No. Okay, fine. Then let us move on if we may to the question then of the remedies available under the procedure. These are discussed in paragraphs 154 to a 159, and the recommendation is made in paragraph 158 that remedies should essentially be confined to non-monetary remedies. That is to say they should embrace the possibility of suspension of a registration, cancellation of a registration, mandatory transfer of the registration from one party to another. And the only monetary remedy to be contemplated is the allocation of responsibility for payment of costs of the proceedings. Paragraph 159 requests further input on a related question, namely whether the decision-maker in the procedure should have the power to order other measures concerning the status of the domain name registration that might remove the grounds of the dispute. For example, should it be open to the decision-maker in the administrative dispute resolution panel to order the modification of a domain name registration or its assignment from one gTLD to another gTLD, or to mandate an indexing page. Should these be within the power of the decision-maker for granting of remedies. Are there any observations?
(Mr. Enzo Fogliani): I think that for those countries like Italy in which these disputes fall in arbitration, the arbitrator should be free to choose the best thing to do depending on the request of the parties and not limited to some other powers. Thank you.
(Mr. Francis Gurry): Thank you very much. Further observations? Okay, then let us proceed to the question of consolidation which is obviously a very important question. Some of you may have seen the litigation that was found recently in the Porsche case in the United States where "in rem" jurisdiction was claimed in relation to some 130 variations of the domain name registration of the word Porsche. Consolidation is obviously a question of great importance to trademark owners, whether they can consolidate and the various possible variables on the basis of which consolidation could be achieved. For example, the same holder, the same TLD, the same or different intellectual property rights are all set out in paragraph 161. The recommendation is contained in paragraph 163, and it is that the procedural rules, because this is where it would be dealt with for the administrative dispute resolution procedure, should provide for the possibility of consolidating into one procedure all claims by the same party in respect of the same domain name holder where the claims relate to an alleged infringement of the same or different intellectual property rights through domain name registrations in the same or different TLDs. So, the consolidation possibility would be you must have the same parties, that is the complainant. You must have the same domain name holder, and then if you have those two things that are the same, those two parties that are the same, then the claims can relate to the infringement of only one intellectual property right or several different intellectual property rights and it can relate to any domain name registration in any of the let's say, participating TLDs for the moment.
(Mr. John Wood): An important issue for us is the fact that you have a multi-national that has subsidiaries who have a registration. And obviously the parent company actually because of that territory allows them to have it. That there is got to be a facility that recognizes that commercial reality that the distribution of those rights. So, though ultimately they are owned by the parent, the fact is that by the way that the organization is structured there may be all sorts of multiplicity in an acquisition and merger situation, or a number of different sort of situations that mean that it is not as straightforward and it would be helpful to ensure that, that was recognized those kinds of commercial realities. There wasn't a sort of very simply applied, and simply understood. So, we accept and agree with the idea of consolidation, but what is important is recognizing that commercial reality.
(Mr. Francis Gurry): Thank you very much. Any other observations? No, fine. The next item that is dealt with in connection with the design of the procedure if you like, is the relationship with the national courts and the recommendations as set out in paragraph 165. In essence they are self-explanatory and they have already been covered in part in other parts of the report. They are first that the availability of this mandatory administrative procedure should not preclude recourse to the national courts. Determinations of the coming out of the administrative procedure would of course not have the weight of binding precedent in national courts systems. That is clear and regardless of even if we suggest that they did, they wouldn't have. And thirdly, that the parties should have the possibility of going to national litigation at any stage, either before or during or after the administrative dispute procedure. And finally, and again this is self evident, a decision of a court of competent jurisdiction, it of course is a weighted phrase, that is contrary to a determination resulting from the administrative procedure should override the administrative determination. Any observations? It is a summary of the various items that have been dealt with at various stages in the Report.
(Professor Michael Froomkin): Well, here it comes I guess, and I apologize if this takes a couple of minutes. In trying to work out how this would work out in practice, let me try to share with you my concerns. Let's assume that we have a complainant who succeeds in one of these procedures and therefore the domain name is transferred instantly as is proposed under this procedure. Now, let us suppose that you were the original registrant and you are unhappy about this. The first problem you face is in what court can you now exercise your rights? If the parties are in different countries, and the court in which the registrant will not have personal jurisdiction over the third party complainant, you must now not only be a plaintiff but you must be a plaintiff in a foreign court where ordinarily you would have been the defendant in your home court. So, it seems to be the principle of preserving rights has already been substantially altered in that way. You will now be in a foreign forum, have to hire foreign counsel, you will be perhaps in a foreign language and may also have to deal with foreign choice of law rules. So, we haven't in fact preserved your rights at all. It seems to me, and I am sort of thinking out loud in that, and have put this in some more detail in my document. One way to solve that problem might be to condition the receipt of the third party benefit in the original registration agreement on the third party agreeing to jurisdiction in the home court of the original registrant, in the event that the original registrant is unhappy with the decision. This will re-level the playing field. Unfortunately, this will not solve I believe all the problems that have begun to worry me. Let's assume we can solve the problem of jurisdiction either by this means or some other. Let us go then to the next problem. Is there a cause of action? Here, we must I believe separate the analysis between those jurisdictions which provide for judicial review of arbitration and those which do not. Let us begin with those jurisdictions that do provide for judicial review of arbitration. The first question we must ask is, is this an arbitration? Precisely the question which was asked in Italy. For if it is not an arbitration, and I honestly do not know enough about the legal systems in the world and would be very grateful for input from people here. If this is not an arbitration, would the review provision apply? Is this an arbitration under the relevant systems? We have heard that it is in Italy, that is one useful datum, but it would be useful to have more. Where is this procedure located? Where did it happen? If it is an arbitration, does the relevant arbitration act apply to this procedure which may be considered by the court to have occurred in some other place or in no place or in cyberspace. I do not know the answers to these questions and would very much like guidance on them.
Let me turn now to jurisdictions such as the United States which do not have a general jurisdiction for judicial review of arbitrations. It seems to me that in the scenario that I have just described, there are very serious questions as to whether there is any cause of action that the original registrant who has lost in my hypothetical could bring. In the United States, you need to have something that sounds in tort or in contract under a statutory right. It seems to me this person's contractual rights have not been violated. The person agreed to this procedure and has got precisely what was bargained for. So, there is no cause of action in contract. Furthermore, there is no contract with the third party, so if there was a cause of action in contract it would be with the registry or the registrar, so, that's out. There is no tort, the third party has not committed a tort. There is no statute. Therefore, it seems to me there is no case. Now, let me take the other version of the same story. Let us suppose that rather than a situation where the original registrant had no trademark interest in the name. We had a situation where there are perhaps conflicting trademark interests in the name. And indulge me by assuming that the arbitrator made a mistake. That in fact that we had two people both of whom had devowed registrations (end of tape) ............................ each of different sectors or both. And for whatever reason the arbitrator made a decision which the national court of the registrant would not have made. Found an infringement where there was not one. And now, the virtuous trademark holder wishes to go to a national court to reassert their right, to express this trademark interest in a domain. And remember my hypothesis, that was not infringement. A person cannot bring a trademark infringement action against a third party now in possession. Because just as the first party was not infringing, so too the third party is not infringing. And therefore, the very factor which made the original registrant deserve to win when the court make them deserve to loose. Now, I would love to be wrong about any of this. Help!
(Mr. Francis Gurry): Are there any observations or comments?
(Mr. Enzo Fogliani): I think that all these recommendations were made keeping in mind mainly American and English law. And probably they work very well with that kind of law. But I think that if we want to make recommendations which are well for Italy and I think for some other country in Europe which are continental law and then should be mainly the same as the Italian law. We shouldn't go in this particular level and keep it a bit more general, because in Italy we would have some difficulty to follow this kind of scheme of recommendation. Thank you.