Reportof the

WIPO Internet Domain Name Process

Genesis• USG White Paper, June 5, 1998:

– “The U.S. Government will seek international support to call upon the World Intellectual Property Organization (WIPO) to initiate a balanced and transparent process, which includes the participation of trademark holders and members of the Internet community who are not trademark holders, to (1) develop recommendations for a uniform approach to resolving trademark/domain name disputes involving cyberpiracy (as opposed to conflicts between trademark holders with legitimate competing rights), (2) recommend a process for protecting famous trademarks in the generic top level domains, and (3) evaluate the effects, based on studies conducted by independent organizations, such as the National Research Council of the National Academy of Sciences, of adding new gTLDs and related dispute resolution procedures on trademark and intellectual property holders. These findings and recommendations could be submitted to the board of the new corporation for its consideration in conjunction with its development of registry and

registrar policy and the creation and introduction of new gTLDs.”

The Process

• “international support”– decision of WIPO member States (171), September 1998

• “balanced and transparent process”– web site in three languages (E, F & S), 1358 subscribers from 74 countries– open meetings with audio and text records available (17 in 15 countries and 5 continents

with 1264 participants)– list server (420 subscribers)– three RFCs in three languages– 332 comments on RFCs; altogether comments and presentations from:

• 40 governments• 4 international organizations• 74 professional, industrial and academic organizations • 181 corporations and law firms• 183 individuals

Summary of Results

• Minimalist approach– trademarks only (other

problems exist)

– cybersquatting only (not more general problem of intersection of multijurisdictional medium on territorial systems)

• Findings indicate

– significant problem

– wasteful diversion of resources

– condemned by all

Registration Practices

• Purpose– functionality and registrar protection– transparency and fairness– conflict avoidance

• The open gTLDs are undifferentiated (no use restrictions)• Reliable and accurate contact details

– horizontal issue– coincidence of interests between intellectual property, consumer

protection, prevention of fraud and other public policies • Notice and consent• Takedown procedure where contact impossible• Recommend further study of practicality of non-commercial, use-restricted

domain

Uniform Dispute-Resolution Procedure

• Administrative procedure

• Limited to abusive registrations (cybersquatting)

• Mandatory submission by domain name applicants

• Rapid and cost-effective

Definition of Abusive Registration

• Limited to trademark abuse

• Three cumulative conditions:

– domain name identical or misleadingly similar to mark in which complainant has rights

– domain name holder has no rights or legitimate interests

– domain name has been registered and is used in bad faith

Famous Marks

• Protection under the Paris Convention (152 countries) and the TRIPS Agreement (134 countries)

• Exclusions as means of giving expression to that protection

• Public adjudicatory procedure

• Exclusions for exact name only

• Evidentiary presumption in anti-cybersquatting procedure

• Possibility of complete or partial cancellation

IP and New gTLDs

• IP one of multiple perspectives

• Need to avoid repetition of experience of last five years

• Can do so if

– improved registration practices

– efficient dispute-resolution mechanism

– exclusions

– controlled introduction

Outstanding Issues

• Report adopts a minimalist approach

• Examples of issues not treated– other intellectual property rights (geographical indications,

personality rights)

– internationally (and nationally) protected names and acronyms (States, UN organizations)

– INNs

– non-commercial, use-restricted domain

"It is manifest that the differences of thoughtand feeling and selfish desire which separatenations in general have to be dealt with inparticular in the multitude of controversies whichare sure to arise between them and between theirrespective citizens in a world of universal tradeand travel and inter-communication. …

In this way the nations founded upondifferences have been gradually rescuing from thefield of difference and controversy, andtransferring to the field of common understandingand agreement, one subject after another ofpractical importance in the affairs of the world.The process is in the direction of that unity ofthought and feeling, the absence of which hithertohas caused the failure of all schemes and effortsfor the unity of mankind."

Elihu Root, 1922