By Nick Patience
The long-awaited – and twice-delayed – final report from the World Intellectual Property Organization (WIPO) on issues arising from management of the domain name system recommends, among other things, that famous and well-known trademarks should have protection across some or all top-level domain names, preventing anybody other than the owner of the mark from registering a domain name that matches the mark exactly. In addition, the report recommends that the burden of proof for using a name that is very similar to a famous mark should be placed on the domain name holder, rather than the owner of the mark, when a name is being used in a way that is likely to damage the owner of the mark. WIPO does not suggest a way for determining what constitutes a famous mark.
That is likely to be the most controversial finding of the report, which was produced in response to a request from the US Department of Commerce last summer and whose findings were delivered to the Internet Corporation for Assigned Names and Numbers (ICANN) and the 171 members states of WIPO late on Friday. WIPO was founded through a treaty and is one of the 16 specialized agencies of the United Nations. ICANN will accept public comments on the WIPO findings between this week and its series of meetings in Berlin May 25-27, where the report will be discussed both in public and privately. ICANN is expected to adopt at least some of its recommendations as part of the domain name management policies. WIPO produced a draft report in November 1998 and accepted comments, held public consultations around the world and liaised with its 18-strong panel of experts before publishing its findings.
Some of the panel complained that they were not consulted in the last few weeks prior to the report’s proposal, while others praise the consultation process. Don Heath, chief executive of the Internet Society and one of the panel says, WIPO got significant input from the panel of experts, and describes its overall consultation process as brilliant. Michael Froomkin, another member of the panel and a professor of law at the University of Miami, praises elements of the report, but describes the treatment of allegedly famous marks as a baroque ad hoc quasi-judicial procedure based on vague (and in once case prejudicial) criteria, in his preliminary reaction to the report’s findings.
The other main recommendations that WIPO makes are that the collection and maintenance of accurate contact details for domain names is essential for IP owners to protect their rights and where contact details are inaccurate and contact cannot be made via the details, the registrar should be required to cancel the name’s registration. It also suggests that ICANN should adopt a dispute resolution policy that can be applied across all generic top-level domain names (gTLDs), but that the scope of is power should be limited to cases of bad faith, or cybersquatting as it’s more commonly known. The report also suggests that new gTLDs could be introduced, but only once the other recommendations regarding famous marks, contact details and dispute resolution mechanisms are acted upon and the introduction should be slow and controlled.
Finally, the report recognizes that there are other issues outstanding that require further reflection and these include the possibility of introducing a non-commercial, restricted-use domain where contact details are withheld for reasons of privacy; and cybersquatting that violates marks other than trade or service marks, including intergovernmental organization and the identification of specific pharmaceutical substances.
ICANN president Mike Roberts says its options are open regarding which of the recommendations it adopts, but notes that things like the requirement for clear and complete contact information were adopted after the interim report and are already part of ICANN’s policy. The remainder will be looked at in the contexts of the comments received between now and Berlin.
Ed Gerck, founder and coordinator of the Meta-Certificate Group, a non-profit internet security and certification body, argues that WIPO takes a far too simplistic approach to domain names, which are fundamentally different to trademarks. He says domain names are unique, valid throughout the world and not time- dependent, whereas trademarks have different meanings and values within different jurisdictions and therefore cannot be treated in similar ways, as WIPO has tried to do with this report, he argues. He describes it as a knee-jerk reaction, rather than a solution.
The call for protection of famous marks by WIPO is a familiar theme and widely expected one. In terms of the DNS, it harks back to the organization’s involvement in the International Ad-Hoc Committee (IAHC), a body established by the Internet Society and the Internet Assigned Numbers Authority (IANA) in the fall of 1996 to oversee the introduction of new gTLDs to compete with .com, .net and .org. WIPO was to oversee the resolution of disputes within a system called Internet One, which uses the .io country-code TLD (which represents the British Indian Ocean Territory) to direct users to web sites. Where more than one company or mark owner has registered a similar name, it displays the alternatives with a brief explanation of each registrant. The system has not really taken off and gets a few minor mentions in the report.
Despite the fact that there are currently 249 top-level domains, including the generic and country-code versions, WIPO recommends that its findings can only be applied to those gTLDs that are open and whose use is not restricted, which is just .com, .net and .org. The use of other gTLDs, such as .edu, .mil and .int are restricted to various degrees. Many ccTLDs are used as generic names and WIPO suggests that while it has no authority over their use, if a ccTLD has no restriction on who can register in it, it is functionally equivalent to an open gTLD so that the administrators of such domains may wish to consider applying the recommendations in the report, according to Francis Gurry, assistant director general and legal counsel at WIPO. The final report was due at the end of March but was put back to April 23 and delayed again until April 30. It’s at http://wipo2.wipo.int/
