THE MANAGEMENT OF INTERNET NAMES AND ADDRESSES:
INTELLECTUAL PROPERTY ISSUES
WIPO Internet Domain Name Process
April 30, 1999
4. THE PROBLEM OF NOTORIETY: FAMOUS AND WELL-KNOWN MARKS
245. Fame brings with it attention in many forms, amongst them imitation, by those who wish to benefit from its perceived advantages; association, on the part of those who wish to share in its perceived benefits; and criticism, by those who wish to question the status given to the one who enjoys fame. Not surprisingly, therefore, on the open and efficient medium of communication that the Internet is, fame attracts attention and provokes various forms of reactions.
246. In the commercial area, fame is most often manifested in reputation, and reputation is most often attached to the expression of identity of the enterprise: its trademarks. Famous and well-known marks have been the special target of a variety of predatory and parasitical practices on the Internet. The consultations held throughout the WIPO Process and the submissions made in them have confirmed the singular nature of these predatory and parasitical practices with respect to famous and well-known marks.
247. Because of the special attention that fame attracts, famous and well-known marks have for a long time been considered in intellectual property laws to warrant special protection, over and above that accorded to other, ordinary marks. That special protection is well established in widely accepted international agreements on the multilateral level.
248. In the WIPO Interim Report, it was recommended that the international norms for the protection of famous and well-known marks should be given expression in the DNS through a mechanism whereby the owner of a famous or well-known mark could obtain an exclusion prohibiting any third party from registering the mark as a domain name.
249. The proposed mechanism for exclusions was widely supported in the commercial and intellectual property sectors as an appropriate means of reflecting established international principles in the DNS. Many commentators from these sectors viewed exclusions as an indispensable safeguard in relation to the expansion of the DNS through the addition of new gTLDs. They feared the repetition of the experience of the last five years, in which 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.
250. On the other hand, a number of commentators opposed having any mechanism for exclusions. They regarded exclusions as extending the protection accorded to famous and well-known marks and feared the erosion of the DNS through the removal of large numbers of names from its ambit. They considered that the owners of famous and well-known marks had sufficient resources to defend their interests without a systemic mechanism for that purpose.
251. In this Final Report, WIPO maintains the essence of the recommendations contained in the Interim Report, namely, that a mechanism for granting exclusions to famous and well-known marks should be established. The basis for the final recommendations and their details are set out in the remainder of this Chapter.
INTERNATIONAL PROTECTION OF FAMOUS AND WELL-KNOWN MARKS
252. The international protection of famous and well-known marks is recognized in two multilateral treaties: the Paris Convention for the Protection of Industrial Property (the Paris Convention), to which 154 States are party, and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), by which 134 States are bound.
253. The protection of famous and well-known marks in the Paris Convention is provided for in Article 6bis, section (1) of which provides as follows:
"The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark 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 or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith."
254. Four features of the protection provided for in Article 6bis of the Paris Convention may be noted:
(i) The protection accorded to famous and well-known marks is a protection against the registration and use of a trademark that constitutes a reproduction, imitation or translation, liable to create confusion, of a well-known or famous mark or an essential part of such a mark.
(ii) The protection in Article 6bis extends only to trademarks, that is marks that are used in respect of goods, and does not extend to service marks which are used in respect of services. By virtue of the Trademark Law Treaty (TLT), however, the provisions of the Paris Convention relating to trademarks are extended to service marks. The TLT was concluded only in 1994 and, while an increasing number of States are manifesting their interest in becoming party to the TLT, at the present date only 22 States are party to it.
(iii) The protection extends to registration or use in respect of identical or similar goods. This feature is usually known as the "principle of specialty," a principle of trademark law under which protection for a trademark extends only to the same or similar goods as are covered by the registration or use of the trademark.
(iv) Article 6bis is silent on what constitutes a well-known mark. The appreciation of whether a mark is well known is left to the "competent authority" of the country where the illegitimate registration or use occurs.
255. The provisions of Article 6bis of the Paris Convention are confirmed and extended by the TRIPS Agreement. Article 16.2 and 16.3 contain the following provisions:
"2. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark.
"3. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use."
256. Three features of Article 16.2 and 16.3 of the TRIPS Agreement may be noted:
(i) Article 16.2 builds on the work of the TLT in extending the protection of Article 6bis of the Paris Convention to famous and well-known service marks.
(ii) Article 16.2 of the TRIPS Agreement provides a non-exhaustive guide to the competent authorities of countries in appreciating whether a mark is well known. In this respect it provides that, in "determining whether a trademark is well known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark."
(iii) Article 16.3 of the TRIPS Agreement provides for protection that extends beyond the normal protection under the principle of specialty. It provides for the protection under Article 6bis of the Paris Convention to apply to goods and services which are not similar to those in respect of which a trademark is registered on two conditions: first, that the use of the allegedly infringing mark in relation to those other goods or services would indicate a connection between those other goods or services and the owner of the famous mark, and, secondly, that the interests of the owner of the famous mark are likely to be damaged by such use. This extended protection reflects a distinction that is made in many national laws between, on the one hand, famous marks, which represent that class of well-known marks that are so famous that they require protection against infringing use in respect of any goods or services, and, on the other hand, well-known marks, which require protection against infringing registration or use in respect of the same or similar goods or services for which the well-known mark is registered or used. The terminology and practice relating to this distinction differ somewhat around the world. For this reason, in this Chapter, except where a distinction is deliberately made, the collective term "famous and well-known marks" is used, since it is in any case agreed that well-known marks are the subject of a special form of international protection.
THE IMPLEMENTATION OF PROTECTION FOR FAMOUS AND WELL-KNOWN MARKS IN CYBERSPACE
257. In considering how the international protection for famous and well-known marks can be given expression in respect of domain names, there are four areas of conceptual difficulty that need to be borne in mind.
258. First, it is to be noted that the provisions of the Paris Conventions and the TRIPS Agreement are directed at the protection of famous and well-known marks against the registration or use of other infringing marks. Domain names, of course, are not the same thing as marks and are used for many purposes other than the identification of a producer or seller of goods or services. They are, however, also used as a means of identifying goods and services with the producer or seller of those goods and services.
259. Secondly, the protection of famous and well-known marks under the Paris Convention and the TRIPS Agreement extends to those countries where the competent authority considers that the mark is famous or well-known. Where is where in a gTLD?
260. Thirdly, while there is an international obligation to accord protection to famous and well-known marks, there is not an established treaty definition of what constitutes such a mark. It is left to the appreciation of the competent authority in the country where protection is asserted. As noted, however, Article 16.2 of the TRIPS Agreement provides some guidance as to the criteria that such a competent authority must take into account in forming its appreciation. In addition, such criteria have been developed in national case law and regulatory practices and decisions around the world.
261. Fourthly, while the protection of famous marks has increasingly been implemented at the national level by laws directed at prohibiting any use of famous marks by third parties that dilutes the integrity and reputation of such marks, the protection of well-known marks exists often only in respect of the registration or use of a confusingly similar mark in relation to the same goods or services as those for which the well-known mark is registered or used. At the present time, the gTLDs are largely undifferentiated. Insofar as some differentiation does exist, there is no enforcement mechanism to ensure that those who have registered domain names in open gTLDs confine their use of the domain name to the broad purposes of the gTLD. Thus, one can have a domain name registered in .com without undertaking any commercial activity, or a domain name registered in .net while undertaking commercial activity that is completely unrelated to the provision of Internet or network services. There is a lack of connection between the underlying theoretical foundations of differentiation in the registration and use of trademarks and differentiation in the registration and use of domain names, since differentiation is intended to serve a different purpose in each case.
262. We consider that the administrative procedure in respect of bad faith, abusive registrations of domain names, which was discussed in the previous Chapter, should provide an efficient means for suppressing many of the predatory and parasitical practices to which famous and well-known marks are subject. The administrative procedure is, however, rightly available to all and does not give expression to the separate international protection that already exists for famous and well-known marks. The ensuing part of this Chapter addresses two mechanisms designed for this purpose, which seek to take into account the conceptual problems in implementing protection for famous and well-known marks discussed above and the comments received throughout the WIPO Process. The two mechanisms are:
(i) a mechanism for obtaining and enforcing an exclusion of the use of a famous or well-known mark; and
(ii) an evidentiary device for ensuring that the protection afforded by an exclusion can be extended to misleadingly similar, as well as the same, domain name registrations.
MECHANISM FOR EXCLUSION OF FAMOUS AND WELL-KNOWN MARKS IN OPEN gTLDs
263. The main thrust of the two bodies of opposing views on the establishment of an exclusive mechanism is summarized above. The preponderance of views favored the establishment of the mechanism and, both for this reason and because it seems correct in principle that famous and well-known marks are recognized in international law as being subject to special protection, the recommendation in favor of the mechanism is being maintained. We also consider that it could be highly economically wasteful, in view of the experience in the existing open gTLDs over the past five years, to add new open gTLDs without any safeguard against the grabbing or the squatting of famous and well-known marks by unauthorized parties in those new open gTLDs. Nevertheless, there were two comments or criticisms that were frequently voiced by the opponents of an exclusion mechanism that, in the interests of transparency and fairness in the Process, need to be articulated and addressed.
264. The first such comment stems from the fear of the erosion of the domain name space. Here, some commentators expressed anxiety about the lowering of standards for obtaining an exclusion over time, with the result that exclusions would be granted for less than famous or well-known marks and that the total number of exclusions would be in the tens of thousands. These commentators pressed for quantitative limitations on exclusions in order to give assurances against the erosion of the domain name space. Two such quantitative limitations were, in particular, suggested.
265. The first was a suggested quantitative threshold number of trademark registrations around the world which would need to be shown in order to qualify for the right to request an exclusion. For example, an applicant could be required to show 50 trademark registrations in order to be able to proceed with an application for an exclusion.
266. While we sympathize with the desire to ensure that standards for assessing whether a mark is famous or well-known are not lowered, we consider a quantitative entry criterion in terms of numbers of registrations to be wrong in principle. A mark is famous or well-known because of its notoriety or reputation, not because of the number of countries in which it is registered. It is for this reason that both the Paris Convention and the TRIPS Agreement establish protection for well-known marks whether or not they are registered in the country in which the protection is asserted. A mark may be famous or well-known even if not registered in numerous countries. A mark may also not be famous or well-known even if registered in over 100 countries of the world.
267. Criteria for the assessment of whether a mark is famous or well-known are given below. One of those criteria is the "duration and geographical area of any registrations, and/or applications for registration, of the mark, to the extent that they reflect use or recognition of the mark." It is considered that this criterion (in conjunction with the other criteria) deal appropriately with the role of numbers of registrations: they are one of the indications to be taken into account in assessing notoriety and reputation, not a fixed standard.
268. The second quantitative limitation suggested was in the form of a quota of exclusions that could be granted. For example, the quota might be established at 2,000 and no more than that number of exclusions could be granted. The quota might be reviewed from time to time in light of experience.
269. We appreciate that the absence of a single list of famous and well-known marks causes apprehension as to the number of such marks. But we consider that a quota could operate in an entirely arbitrary manner. The selection of the level of the quota would, for a start, be arbitrary. The level could work arbitrarily against marks which become suddenly famous, whose owners might be prejudiced by the previous filling of the quota. Such marks do exist. If the mention of a so-called "lifestyle" drug which received great publicity in the last two years, or the mention of a very popular website associated with the sale of books, brings a name automatically to the mind of the reader, these might be examples. Furthermore, rather than control the standard for assessing famous or well-known marks, we think that a quota may have the opposite effect: it might cause a rush on the part of all and sundry to obtain an exclusion rapidly before the quota is filled and prompt a deluge of applications.
270. The second comment frequently voiced by opponents of exclusions was that exclusions extended the existing protection available for famous and well-known marks; that, in other words, they created new law. The main basis for this argument seems to be that the "protection" afforded by an exclusion extends across an undifferentiated space. As mentioned above, our view is not that exclusions extend such protection, but that they give expression to it in the DNS.
271. Protection for well-known marks, however, affixes, in the first place, to infringing marks that are used in respect of the same goods or services as those for which the well-known mark is registered or used. By virtue of Article 16.3 of the TRIPS Agreement, and corresponding provisions in national laws, it extends beyond similar goods or services to other goods or services provided that the use of the infringing mark in relation to those other goods or services would indicate a connection between those goods or services and the owner of the famous mark, and provided that the interests of the owner of the famous mark are likely to be damaged by such use. An exclusion for a famous or well-known mark would constitute a form of protection that applies more broadly than simply protection for the goods or services in relation to which a well-known mark is registered or used. This consequence seems unavoidable while the open gTLDs are undifferentiated as to activity, or, at least, for as long as any differentiation is not practically enforced.
272. A further basis for the criticism that exclusions would extend existing protection might be that the gTLDs are not geographically specific and that an exclusion thus operates across an undifferentiated physical space, whereas protection for famous and well-known marks exists only in those jurisdictions in which they are famous or well-known. On the other hand, a domain name registration gives global access, including in all those places where a mark is famous or well-known.
273. These are difficult questions. If they were to be resolved on a case-by-case basis, the assessment of the activities, if any, performed on a website would give an answer to the questions whether a domain name registration of a famous or well-known mark indicates a connection between goods or services dealt with on the website and the owner of the mark, whether the interests of the owner are thereby damaged, and whether the integrity or reputation of the mark is thereby adversely affected. An exclusion assumes an answer to those questions or, at least, suggests that the potential for action created by a domain name registration is too dangerous, in the light of experience of the use of that potential, to allow.
274. We consider that the best safeguards against the fears of the opponents of exclusions are twofold. First, discipline and rigor in relation to the criteria for assessment of entitlement to an exclusion, which are discussed below, are required on the part of all and, particularly, the panels which will be responsible for that assessment and the owners of marks. It must be understood that not any mark will qualify. Secondly, in view of the undifferentiated geographical space of the gTLDs, it is considered that, in order to qualify for an exclusion, a mark should be famous or well-known across a widespread geographical area and across different classes of goods and services. The policy that may ultimately be adopted in relation to the structure of any new gTLDs may require a review of the last point. To take one example, if 500 new gTLDs were created (and it is not suggested that this is a possibility), the degree of differentiation and the means, if any, of enforcing compliance with domain descriptions (such as "com" or "net") may warrant that exclusions be granted also to marks that are only well-known for goods or services corresponding to those domain descriptions. This is not the case at the moment, however.
|275. 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 widespread geographical area and across different classes of goods and services.|
Brief Description of the Mechanism for Exclusions
276. It is suggested that the mechanism should function by way of administrative panels of experts, appointed from time to time, in response to applications from the owners of allegedly famous or well-known marks, to make determinations on whether an exclusion should be granted in respect of a particular mark in some or all open gTLDs. As indicated below, it is suggested that the administration of the panels be centralized. An internationally representative list of persons who would serve on the panels should be drawn up and the names and qualifications of those persons should be published. In response to a particular application, an ad hoc panel of three persons from the list would be appointed to make the determination. The costs of the procedure, in both instances, would be borne by the applicant for the exclusion, since it is the applicant that stands to gain the benefit of an exclusion and, thus, the expression in the domain name space of the special protection afforded to the applicants famous or well-known mark. An exclusion would be granted in respect of either some or all open gTLDs and would be granted indefinitely. However, third parties would be free to apply to have an exclusion cancelled in respect of any of the gTLDs for which it was granted (for example, if an exclusion were granted for all open gTLDs, it is conceivable that a third party might prove a legitimate interest in being able to register a domain name, as an exception to the general exclusion, in one particular gTLD). In the case of applications brought by third parties to cancel an exclusion, it is suggested that the costs of the procedure be borne by that third party. The exclusion would be granted only in relation to a string that is identical to the famous or well-known mark. Furthermore, the exclusion mechanism would apply only to new open gTLDs. Finally, exclusions that are granted under the mechanism would not have any retroactive effect, i.e., if a party had registered a string as a domain name in relation to which an exclusion is later granted to another party, the first partys domain name would remain unaffected by the exclusion (but the other party could seek to obtain its cancellation through the administrative dispute-resolution procedure). These proposed features have received wide support among the commentators favoring the establishment of an exclusion mechanism.
Implementation of the Mechanism
277. In order to implement the mechanism for obtaining and enforcing exclusions, it would be necessary for a policy to be adopted by ICANN allowing for such exclusions and providing, through the chain of contractual authorities from ICANN to registration authorities, for the direct enforcement by registration authorities of any exclusion granted under the mechanism.
|278. It is recommended that:
(i) ICANN adopt a policy providing for a mechanism for obtaining and enforcing exclusions in open gTLDs for famous and well-known marks; and
(ii) Registration authorities agree, in the chain of contractual authorities from ICANN, to implement determinations made for exclusions of famous and well-known marks in gTLDs.
279. The mechanism for obtaining and enforcing exclusions for famous and well-known marks should have the same characteristics as the administrative procedure insofar as the procedure should be expeditious, conducted, as far as possible, on-line and lead to determinations that are directly enforced within the DNS. There are, however, three differences from the administrative procedure that should be adopted with respect to the mechanism for obtaining and enforcing exclusion for famous and well-known marks:
(i) Since the potential result of the mechanism (an exclusion), as opposed to the result of the administrative procedure, affects third parties (indeed, all users of the domain name space would be prevented from registering a domain name corresponding to the exclusion), it is considered that notice of an application for an exclusion and the determination should be made publicly available by being posted on a website.
(ii) Again, since the potential result of the mechanism affects all users of the domain name space, provision should be made in the mechanism for the participation of any third party with a legitimate interest (for example, a competing interest in the use of the name) in the proceedings. Such participation could take the form of allowing an interested third party to file a submission in favor of or against the granting of an exclusion.
(iii) In contrast to the recommendation concerning competition in dispute-resolution service providers for the administrative procedure, it is considered that there are distinct advantages in centralization of the administration of the mechanism for obtaining and enforcing exclusions for eligible famous and well-known marks. It would be of advantage to interested users of the domain name space to be able to access one website where information about all actions concerning applications for exclusions and all information on exclusions granted or refused is available. Consistency in decision making will be of paramount importance and, in this respect, there seems to be an advantage in the maintenance of a published, centralized list of well-qualified decision-makers, as opposed to allowing different lists of decision-makers to determine whether exclusions should be granted. WIPO would, consistently with its mandate, be available to provide the centralized administration of the mechanism.
|280. It is recommended that the mechanism for obtaining and enforcing
exclusions provide for:
(i) publication of any application for an exclusion and all determinations on a centralized website;
(ii) the maintenance of a published list of well-qualified decision-makers and the appointment of ad hoc panels of three persons from that list to make determinations in respect of any particular application;
(iii) the participation of interested third parties in proceedings on an application for an exclusion; and
(iv) the centralized administration of the procedure.
Relationship of Determinations to the Status of Marks Outside Cyberspace
281. In the WIPO Interim Report, it was recommended that determinations on granting or refusing exclusions of famous and well-known marks should be made only for the purposes of the efficient administration of the DNS. Any determination to grant or refuse an application for an exclusion, therefore, should carry no implication for the status of the mark that is the subject of the application as a famous or well-known mark more generally. Determinations would thus not be binding either on national or regional industrial property offices or on national courts. This recommendation received wide support among commentators.
|282, It is recommended that determinations on applications for exclusions for famous or well-known marks should have no binding effect on national or regional industrial property offices or national courts in their implementation of international norms for the protection of famous and well-known marks.|
Criteria for Making Determinations
283. As mentioned above, international norms provide for the protection of famous and well-known marks, but leave the appreciation of what constitutes such a mark to the competent national authority. The TRIPS Agreement, in Article 16.2, advances this situation by requiring competent national authorities that are bound by the TRIPS Agreement to take into account, in the assessment of whether a mark is well-known, "the knowledge of the trademark in the relevant sector of the public, including knowledge in the [country] concerned which has been obtained as a result of the promotion of the trademark."
284. Work on the determination of a list of factors that should be taken into account in determining whether a mark is well-known has been undertaken under the auspices of WIPO over the past several years in a Committee of Experts on Well-Known Marks and, more recently, in the successor to that body, the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (the WIPO SCT). At its last meeting, in March 1999, the WIPO SCT adopted the following list of factors as the recommended non-exhaustive criteria to be considered in determining whether a mark is well known:
"(a) In determining whether a mark is a well-known mark, the competent authority shall take into account any circumstances from which it may be inferred that the mark is well known.
"(b) In particular, the competent authority shall consider information submitted to it with respect to factors from which it may be inferred that the mark is, or is not, well known, including, but not limited to, information concerning the following:
"1. the degree of knowledge or recognition of the mark in the relevant sector of the public;
"2. the duration, extent and geographical area of any use of the mark;
"3. the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
"4. the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark;
"5. the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by courts or other competent authorities; and
"6. the value associated with the mark."
285. The list of non-exhaustive factors in paragraph (b) in the preceding text was drawn up with reference to well-known marks in general and without particular reference to problems encountered through domain name registrations. In order to accommodate the specificities of the protection of famous and well-known marks in relation to domain names, it is suggested that a further factor be added to the list given in the preceding paragraph:
"7. evidence of the mark being the subject of attempts by non-authorized third parties to register the same or misleadingly similar names as domain names."
286. The foregoing list of factors were recommended, in the WIPO Interim Report, as the basis on which decisions on applications for exclusions of famous or well-known marks should be taken. This recommendation was well received by those commentators who favored a mechanism for exclusions. Certain of them, however, considered that they were too judicial in nature and that simpler, quantitative measures capable of easy administrative application would be preferable. We consider, however, that careful consideration needs to be given to determinations on exclusions, which will have effect indefinitely, even if this means that the processing time for applications for exclusions is slowed as a consequence.
|287. It is recommended that decisions on applications for exclusions of famous or well-known marks in open TLDs be taken on the basis of all the circumstances of the application and, in particular, the non-exhaustive list of factors set out in paragraph 284, above, together with the further factor set out in paragraph 285 above.|
EVIDENTIARY PRESUMPTION RESULTING FROM AN EXCLUSION
288. As a means of giving expression to the protection of famous and well-known marks, exclusions suffer from an important limitation. They provide protection only for the exact name of the famous or well-known mark. They are thus not effective against close phonetic and spelling variations of the famous or well-known mark that are registered as domain names in bad faith in an endeavor to benefit from the reputation of the famous or well-known mark. In respect of such close variations, the owner of the famous or well-known mark would be obliged, even after obtaining an exclusion, to resort to either litigation or the administrative procedure in order to seek to cancel or otherwise remedy the damage being done by the close variation that is registered as a domain name.
289. In order to reduce the impact of this limitation, the WIPO Interim Report recommended that consideration be given to the introduction of an evidentiary presumption resulting from the granting of an exclusion which would operate in claims brought under the administrative procedure by the holder of the exclusion against the holders of domain names that were allegedly identical or misleadingly similar. The presumption would work in the following way. The holder of an exclusion for a famous or well-known mark would be required, in any administrative dispute-resolution procedure initiated by it, to show: (i) that a domain name was identical or misleadingly similar to the mark that is the subject of the exclusion; and (ii) that the domain name was being used in a way that was likely to damage the interests of the owner of the mark that was the subject of the exclusion. Upon such a showing, the burden of proof in the procedure would shift to the domain name registrant to justify that its registration of the domain name was in good faith and to show why that registration should not be cancelled. If the domain name registrant were unable to make such a showing, the registration would be cancelled. The evidentiary presumption would be available in respect of any gTLD in which an exclusion had been obtained.
290. Commentators who were in favor of the exclusion mechanism supported this recommendation. Those who opposed exclusions viewed the proposal as an illustration of the way in which the rights of trademark owners would be extended to the detriment of other Internet users, for example, those exercising rights of free speech. Since it is now proposed that the scope of the administrative procedure be limited to cases of abusive registration, we consider that the interests of those exercising recognized rights of free speech are not likely to be affected in any way adversely by the evidentiary presumption. It is recalled that the definition of abusive registration of a domain name, which it is recommended, above, be applied in the administrative procedure, requires that the holder of a domain name have "no rights or legitimate interests" in respect of the domain name before the registration of the domain can be considered abusive.
|291. It is recommended that the granting of an exclusion give rise to an evidentiary presumption, in favor of the holder of an exclusion, in the administrative procedure in such a way that, upon showing that the respondent held a domain name that was the same as, or misleadingly similar to, the mark that was the subject of an exclusion and that the use of the domain name was likely to damage the interests of the holder of the exclusion, the respondent would have the burden of justifying the registration of the domain name.|
OTHER FORMS OF EXCLUSIONS
292. Two comments were submitted on the WIPO Interim Report by intergovernmental organizations, which are specialized agencies of the United Nations, that request that certain classes of names and abbreviations be assimilated to famous and well-known marks and eligible for exclusions in the open gTLDs.
293. The first comment was submitted by the International Telecommunication Union (ITU), which pointed out that the names and acronyms of a number of intergovernmental organizations had been registered as domain names by speculators. Numerous variations of "United Nations" have, for example, been registered by third parties, and the domain names itu.com and wipo.com had also been registered and were being offered to sale by the same party.
294. The need for protection of the names and acronyms of international intergovernmental organizations from unauthorized commercial exploitation is recognized internationally in Article 6ter of the Paris Convention for the Protection of Industrial Property and through the TRIPS Agreement. Article 6ter of the Paris Convention requires the 154 countries party to that Convention "to refuse or to invalidate the registration, and to prohibit by appropriate measures the use, without the authorization by the competent authorities, either as trademarks or as elements of trademarks," of the abbreviations and names of international intergovernmental organizations, where these have been communicated to WIPO.
295. The second comment was submitted by the World Health Organization (WHO), which has the constitutional mandate to develop, establish and promote international standards with respect to biological, pharmaceutical and similar products. Pursuant to WHO resolution 3.11 on Nonproprietary Names for Pharmaceutical Substances (adopted in May 1950 by the Third World Health Assembly), the Organization collaborates closely with national nomenclature committees to select a single, nonproprietary name of worldwide acceptability for each active substance used in pharmaceutical preparations. In this regard, WHO has been made responsible for selecting and promoting the protection of International Nonproprietary Names (INN) for Pharmaceutical Substances, in coordination with national authorities worldwide.
296. The underlying reason for ensuring that no party can claim any proprietary rights in INNs is to protect the safety of patients by allowing them to identify a specific pharmaceutical substance under one single, globally available name. After their selection, INNs are adopted by the national authorities of WHO Member States, which means that such INNs may not, in principle, be registered as trademarks. INNs are published in the following official languages: English, French, Latin, Russian and Spanish.
297. Although as opposed to trademarks INNs are in the public domain, WHO considers it important that their free availability is used exclusively for its intended purpose in the public interest, i.e., for the identification of a specific pharmaceutical substance. The Organization is therefore concerned to learn that like trademarks INNs have been registered as domain names.
298. The predatory or parasitical use of the names or acronyms of international intergovernmental organizations as domain names is clearly offensive to the States that have established those organizations. Where the domain name is used as an identifier for commercial purposes, it offends the policy upon which Article 6ter of the Paris Convention is based, which is to prohibit the use of those organizations names or acronyms as trademarks or elements of trademarks.
299. The predatory or parasitical use of INNs as domain names offends a carefully established public health and safety policy by attributing to the domain name holders rights that are increasingly akin to proprietary rights, since the registrations of domain names are effectively bought and sold through transfer agreements.
300. We consider that there are two ways of dealing with the problem. The first way would be through the extension of the exclusion mechanism. In the case of the names and acronyms of international intergovernmental organizations, the exclusion mechanism would seem appropriate, especially since litigation in the courts of one particular member country is not, in general, considered appropriate as a means of enforcing a treaty-established status. In order to avoid the attribution of any form of proprietary rights to INNs, the exclusion mechanism could also be appropriate for INNs.
301. The second way of dealing with the problem would be through the extension of the definition of abusive domain name registration to include abuse of the names and acronyms of international intergovernmental organizations and of INNs.
302. We consider that both possible solutions warrant very serious consideration. It is recognized that it is outside the scope of the present WIPO Process to recommend an immediate solution, since the terms of reference of that Process, in their relevant part, were directed at dispute resolution for intellectual property violations and a mechanism for protecting famous and well-known marks. We believe that the questions should, however, be the subject of further reflection and consultation by ICANN with a view to achieving a suitable solution, especially before the introduction of any new gTLDs which would be likely to compound existing problems.
|303. It is recommended that ICANN initiate a process designed to address the problem of the abusive registration of the names and acronyms of international intergovernmental organizations and of International Nonproprietary Names (INNs) before the introduction of any new gTLDs.|
[Chapter 5 follows]
 See discussion in paragraphs 318 to 320 of Chapter 5.
 See Comment of Bell Atlantic (February 26, 1999 - RFC-3); Comment of Government of Japan, Ministry of International Trade and Industry of Japan and Japanese Patent Office (March 3, 1999 - RFC-3); Comment of International Trademark Association (March 12, 1999 - RFC-3); Comment of America Online (March 12, 1999 - RFC-3); Comment of United Parcel Service of America (March 12, 1999 - RFC-3); Comment of American Intellectual Property Law Association (March 12, 1999 - RFC-3); Comment of Time Warner (March 13, 1999 - RFC-3); Comment of AT&T (March 4 and 17, 1999 - RFC-3); Comment of International Chamber of Commerce (March 18, 1999 - RFC-3); Comment of Motion Picture Association of America (March 18, 1999 - RFC-3); Comment of European Community and its Member States (March 19, 1999 - RFC-3); Comment of British Telecommunications (March 19, 1999 - RFC-3); Comment of MCI WordCom (March 19, 1999 - RFC-3); Comment of Ford Motor Company (March 20, 1999 - RFC-3); Comment of KPMG (March 23, 1999). However, see also Comment of Government of Sweden, Swedish Patent and Registration Office (February 23, 1999 - RFC-3); Comment of Government of Hungary, Hungarian Patent Office (March 4, 1999 - RFC-3); Comment of Markenverband (March 4, 1999 - RFC-3); Comment of MARQUES (March 11, 1999 - RFC-3); Comments of Patent and Trademark Institute of Canada (April 2,1999 - RFC-3); Comment of Government of Australia (March 30, 1999 - RFC-3).
 See Comment of Singapore Network Information Center (February 25, 1999 - RFC-3); Comment of Mr. Milton Mueller (March 6, 1999 - RFC-3); Comment of Ms. Ellen Rony (March 8, 1999 - RFC-3); Comment of Italian Naming Authority (March 8, 1999 - RFC-3); Comment of Ms. Jessica Litman (March 8, 1999 RFC-3); Comment of CommerceNet (March 12, 1999 - RFC-3); Comment of Mr. Jonathan Weinberg (March 12, 1999 - RFC-3); Comment of Government of Sweden, National Post and Telecom Agency (March 12, 1999 - RFC-3); Comment of Domain Name Rights Coalition (March 10 and 20, 1999 - RFC-3).
 The list of States party to the Paris Convention is given in Annex X.
 The list of States bound by the TRIPS Agreement is given in Annex XI.
 Article 6bis also contains the following two provisions:
"(2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.
(3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith."
 See Article 16.
 In 1998, ten States became party to the TLT.
 See Frederick W. Mostert, Famous and Well-Known Marks (Butterworths, 1997), pages 19 to 21 and the authorities cited therein.
 See Network Solutions, Inc. Frequently Asked Questions: "Who can register a .com, .NET, .ORG domain name?" at http://www.internic.net/faq/tlds.html.
 See, for example, Comment of Ms. Ellen Rony (March 8, 1999 - RFC-3) and Comment of Mr. Jonathan Weinberg (March 12, 1999 RFC-3).
 See Comment of Mr. Milton Mueller (March 6, 1999 - RFC-3); Comment of Ms. Ellen Rony (March 8, 1999 - RFC-3); Comment of Ms. Jessica Litman (March 8, 1999 - RFC-3); Comment of Mr. Jonathan Weinberg (March 12, 1999); Comment of Domain Name Rights Coalition (March 10 and 20, 1999 - RFC-3).
 See Comment of Bell Atlantic (February 26, 1999 - RFC-3); Comment of International Trademark Association (March 12, 1999 - RFC-3); Comment of American Intellectual Property Law Association (March 12, 1999 - RFC-3); Comment of Time Warner (March 13, 1999 - RFC-3); Comment of AT&T (March 4 and 17, 1999 - RFC-3); Comment of International Chamber of Commerce (March 18, 1999 - RFC-3) Comment of European Community and its Member States (March 19, 1999 - RFC-3); Comment of British Telecommunications (March 19, 1999 - RFC-3); Comment of MCI WordCom (March 19, 1999 - RFC-3); Comment of KPMG (March 23, 1999 - RFC-3).
 See Article 2(1) in document SCT/2/3 (February 12, 1999). Notes on the definition are also available in the document.
 According to the WIPO SCT, the term "use" should cover use of a mark on the Internet; see Note 2.6 of SCT/2/3 (February 12, 1999).
 According to the WIPO SCT, this includes advertising on the Internet; see Note 2.7 of SCT/2/3 (February 12, 1999).
 See Comment of International Trademark Association (March 12, 1999 - RFC-3); Comment of America Online (March 12, 1999 - RFC-3); Comment of American Intellectual Property Law Association (March 12, 1999 - RFC-3); Comment of Time Warner (March 13, 1999 - RFC-3); Comment of AT&T (March 4 and 17, 1999 - RFC-3); Comment of European Community and its Member States (March 19, 1999 - RFC-3); Comment of MCI WorldCom (March 19, 1999 - RFC-3); Comment of KPMG (March 23, 1999 - RFC-3).
 See Comment of International Chamber of Commerce (March 18, 1999 - RFC-3); Comment of British Telecommunications (March 19, 1999 - RFC-3).
 See Comment of International Intellectual Property Alliance (November 6, 1998 - RFC-2); Comment of Motion Picture Association of America (November 6, 1998 - RFC-2); Comment of Ms. Shelley Hebert of Stanford University (San Francisco Consultation); Comment of Ms. Marilyn Cade of AT&T (Washington Consultation 1998); Comment of The Chanel Company (November 4, 1998 - RFC-2); Comment of Ms. Anne Gundelfinger of Intel (San Francisco Consultation); Comment of United Parcel Service of America (March 12, 1999 - RFC-3); Comment of Time Warner (March 13, 1999).