This analysis was prepared by Cobbetts of Manchester. ContactGraham Wood, IT Partner, at graham.wood@cobbetts.co.uk.
The World Intellectual Property Organisation (WIPO), as its name implies,is an international body dedicated to the promotion of fair intellectualproperty rights throughout the world. In May 1999 it issued its final report onthe inter-relationship between Web site domain names and other intellectualproperty rights. The report is in the form of recommendations to ICANN (InternetCorporation for Assigned Names and Numbers) and it is intended that therecommendations be adopted by the various Internet naming bodies which‘report’ to ICANN as protocols to prevent the abuse of the readyavailability of domain names to subvert the value of trade marks.
It is shortly expected that there will be 30 of these domain-naming bodiesand if they all follow the recommendations in the WIPO report we will, at last,have some benchmarks on the inter-relationship between domain names and otherintellectual property rights, particularly trade marks. Having said this, therecommendations are only a starting point and no doubt over the next few yearsthere will be many more developments in this field.
Domain Types
In order to understand the recommendations within the report, it is first ofall necessary to understand two very basic points.
- Domain names are the user-friendly Internet addresses such as www.bbc.co.uk, as opposed to the numeric address which that user-friendly address actually points to.
- There are two main types of domain names; these are generally called generic Top Level Domains (gTLDs) and country code Top Level Domains (ccTLDs). There are 7 gTLDs; .com, .met, .org (which are known as open gTLDs in that there are no restrictions on who may register names in them), the other 4 gTLDs are restricted and they are; .int, .edu, .gov and .mil. These last four can only be used by certain official organisations. There are 243 ccTLDs at the moment which relate to the names of countries, e.g., .uk. These abbreviations are standard and are taken from the International Organisation for Standardisation (ISO3166). (It is important to realise that the WIPO report relates only to the open gTLDs and the ccTLDs.)
Regulation and Growth
The bedrock of the WIPO report is similar in approach to that of all otherreports on e-commerce and the Internet in that, whilst it necessarily regulatesthe Internet, it does so lightly so as not to prevent its continued rapidexpansion.
The speed of the growth of the Internet can be seen in the number of domainnames that have been registered. In 1995 there were a mere 100,000 but by 1999there were 7.2 million with various estimates constantly being released of thepredicted size of further expansion.
Domain Name Registration
Users are assured of a fast and inexpensive process in the registration ofdomain names on a first-come first-served basis. Inevitably this has been abusedby certain people who have rushed to register domain names which clearly hadnothing to do with them or their business and were obviously intended to be soldat a later date to people who would genuinely want to use them. These abusiveregistrations are dealt with specifically in the report, but are probably lessof a problem than other issues arising from domain names. In fact, abusiveregistrations of this type are more likely to fall within existing laws andrules relating to trade mark use.
WIPO proposes that, if someone wishes to register a domain name, they mustenter into an agreement with the registration body and that contractualagreement will give the registration body powers to strike out domain names ifthey are improperly registered. The registration body will also help theauthority to strike out domain names in certain other circumstances (forexample, non-payment of fees) but the report does not (and indeed could not)provide for the payment of damages to those who have suffered loss because ofinappropriate domain name registration.
Other Recommendations
The WIPO report makes recommendations in the fields of:
- the relationship between the registration bodies and the domain name registrants
- dispute resolution
- the problem relating to famous and well known marks
- new generic top level domains
The Contractual Relationships
There are a number of recommendations under this heading.
It is recommended that the contractual relationship between a domain nameregistrant and the Registrar in open gTLDs be fully reflected in an electronicor other enforceable agreement.
As stated above, it is intended that the regulation of this issue be done bycontractual means rather than by the imposition of new statutory regulation inthe jurisdictions of WIPO members (of which there are currently 171).
It is recommended that the Domain Name Registration Agreement contain arequirement that the domain name applicant provide accurate and reliable contactdetails consisting of the full name of the applicant, the applicant’s postaladdress, the applicant’s e-mail address and telephone number and, ifavailable, the name of an authorised person for administrative or legal contactpurposes.
It is recommended that these contact details be made publicly available inreal time.
One of the most difficult issues for anybody attempting to pursue a domainname trade mark infringer is, in fact, getting hold of their contact details sothat process can be served upon him. WIPO has recognised this problem in theabove recommendation.
It is not recommended that the Domain Name Registration Agreementcontain a statement of bona fide intention to use a domain name.
WIPO did not feel able to recommend that domain names be treated in the sameway as trade marks. There is no need for a domain name registrant to intend touse the domain name. Thus it will be possible for a domain name to be tied up bysomebody who does not intend to use it. Except in limited circumstances this isnot a policy available to trade mark owners.
We believe that this is unfortunate. One of the principal problems withdomain names is the fact that it is possible to register one domain name whichis then valid throughout the world no matter what the domain name registrantwants to do with it. Trade marks are not only limited as to territory (ie youregister them in each country that you intend to sell the product in respect ofwhich they are registered) but they are also registered only in respect of thoseclasses of goods in which you intend to trade. If trade does not in fact takeplace then the trade mark can be struck out and therefore used by somebody elsewho wants to use it.
It is not recommended that waiting periods be required prior to theactivation of domain names.
Again, it was suggested, particularly by Trade Mark Attorneys, that as withtrade marks there should be a period in which people who wish to object to theregistration of certain domain names could do so. WIPO again felt that thiswould hamper the rapid development of the Internet.
It is recommended that the Domain Name Registration Agreement should containrepresentations that to the best of the applicant’s knowledge and belief,neither the registration of the domain name nor the manner in which it is to bedirectly or indirectly used infringes the Intellectual Property Rights ofanother party, and a representation that the information provided by the domainname applicant is true and accurate.
It is recommended that the Registration Agreement contain an agreement on thepart of the applicant to submit to the jurisdiction of particular courts (seelater) or to submit to the dispute resolution procedure (see later).
It is recommended that Registrars should adopt reasonable automatedprocedures to verify data supplied by applicants.
This is a limited policing role given to the Registrars by which they willcheck such things as telephone numbers tallying with the addresses given byapplicants.
It is recommended that a domain name can be struck out if an interested thirdparty notifies the Registrar, and upon it being checked by the Registrar findsthat the contact details are unreliable.
The thrust of these four recommendations is to enable aggrieved parties topursue miscreants. If this is then not possible because the details given havebeen shown to be inadequate or wrong, the domain name will be deleted.
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Dispute Resolutions Before moving on to the specific recommendations in relation to global disputes, it is necessary to understand the background behind the need for WIPO to make such recommendations. WIPO found, while they were involved in their consultation process, that there was widespread support for an inexpensive, simple and effective method of resolving disputes in relation to domain names. In the past, trade mark owners in particular have experienced great difficulty having to file multiple suits in several jurisdictions in respect of domain names. In addition, the registration authorities often find themselves involved in litigation which is expensive and cumbersome for them. It was felt that domain name disputes presented a number of special characteristics:
This has led to considerable support for the development of an expeditious and inexpensive dispute resolution procedure. However, WIPO does not feel able to place complete trust in a new system and, therefore, the mediation system to which it refers does not exclude the use by complainants of the courts, where they believe this is more appropriate. It is therefore in everybody’s interest to devise and implement a simple solution to all of the problems that arise. However, in addition to its non-exclusive nature, WIPO has recommended that the scope of the mediation procedure is limited so that it is only available for deliberate bad faith, abusive domain name registration or cyber-squatting. It is not applicable to disputes between parties with competing rights acting in good faith. Although it is understandable that WIPO should attempt to address only simple problems, in reality this will lead to many other problems, indeed it probably provides only minimal support for the genuine disputes which will be growing exponentially in number, year by year. In addition, the mediation dispute will not extend to abusive registrations which violate other intellectual property rights than trade mark rights, such as personality rights. The recommendations in this area were as follows.
It is recommended that the domain name applicant be required to submit (without prejudice to other potentially applicable jurisdictions) to the jurisdiction of the courts of (1) the country of domicile of the domain name applicant, and (2) the country where the Registrar is located. The point of this recommendation is simply to give some certainty to the enforceability of the Registration Agreement.
It is recommended that a policy to make available a uniform administrative dispute resolution procedure be adopted for all open gTLDs in respect of abusive registrations (ie cyber-squatting) which WIPO defines as follows: 1. Registration of a domain name shall be considered to be abusive when all of the following conditions are met:
2. For the purposes of paragraph 1.(iii), the following, in particular, shall be evidence of the registration and use of a domain name in bad faith:
It is recommended that the procedural rules provide for final determinations on claims to be made within 45 days of the initiation of the procedure! It remains to be seen whether this will be achievable. It can be seen from the above that the WIPO recommendations have only a very limited application and, as they do not lead to the payment of damages, I believe that they will, in fact, be an additional cost. So as well as starting the administrative procedure in order to stop the cyber-squatting, it will also be necessary to have ‘normal’ litigation in order to achieve payment of damages or accounts of profits, etc. In effect, the procedures will probably most be used against cyber-squatters who are impecunious and therefore unable to pay damages.
Famous and Well-known Marks WIPO has felt it necessary to comment specifically on famous and well-known marks. Their marks are, of course, particularly vulnerable to third parties wishing to bask in the value of their goodwill. In the last five years the owners of famous and well-known marks have had to invest large amounts of human and financial resources in defending their marks against abusive domain name registrations. Such famous trade marks are, in fact, protected under international treaties (ie the Paris Convention and TRIPS). The Paris Convention for example providing: ‘the countries… undertake,… to refuse or to cancel the registration and to prohibit the use of a trade mark which constitutes a reproduction, an imitation or a translation liable to create confusion of a mark considered by the competent authority of the country of registration of use to be well known in that country… .’ WIPO has recommended that there be a mechanism for exclusion of famous and well-known marks in open gTLDs and has made the following recommendations.
It is recommended that a mechanism be established before the introduction of any new open gTLDs whereby exclusions can be obtained and enforced for marks that are famous or well known across a wide-spread geographical area and across different classes of goods and services. It is further recommended that ICANN adopt a policy providing for a mechanism for obtaining and enforcing exclusions in open gTLDs for famous and well known marks which the registration authorities will implement. It is also recommended that the mechanism for obtaining and enforcing exclusions provide for: 1. publication of any application for an exclusion; 2. the participation of interested third parties in proceedings on an application for exclusion. New gTLDs The final part of the WIPO report aims to evaluate the effects of adding new gTLDs. Again, WIPO suggests that there should be a concentration on clear cases of abuse, ie cyber-squatting. To re-state the problem, the introduction of a new gTLD means that all the domain names which are already registered can then be registered in the new gTLD as new domain names. This confuses the marketplace, as well as adding an onus on the owners of domain names to register their names in the new gTLDs. It was therefore felt that some comment should be made by WIPO about the potential for the new gTLDs to add to the intellectual property rights problem surrounding domain names at a stroke. WIPO’s conclusion is that the proposed improved practice for domain name registration referred to elsewhere in the report and the proposed administrative dispute resolution procedure, together with the proposed measures for the protection of famous and well-known marks, should be sufficient to allow new gTLDs to be introduced in a slow and controlled manner without causing any further significant problems.
Summary The WIPO report is, indeed, welcome. If it is implemented, and we see no reason why it should not be, it will provide some assistance in some cases. It must be understood, however, that the report’s recommendations will not be a complete solution to the problems of intellectual property rights owners, particularly trade mark owners, in relation to domain names, and that further measures will inevitably need to be taken as other such problems become more damaging. |
