THE MANAGEMENT OF INTERNET NAMES AND ADDRESSES:
INTELLECTUAL PROPERTY ISSUES

Final Report
of the
WIPO Internet Domain Name Process

http://wipo2.wipo.int

April 30, 1999

2. AVOIDING DISJUNCTION BETWEEN CYBERSPACE AND
THE REST OF THE WORLD: PRACTICES DESIGNED TO MINIMIZE
CONFLICTS ARISING OUT OF DOMAIN NAME REGISTRATIONS

45. It is a truism that things happen quickly on the Internet. The increase in the number of persons desiring to have a recognized and easily located presence on the Internet is but one example. The estimated number of domain name registrations has increased from approximately 100,000 at the start of 1995 to about 7.2 million at the present time.

46. The DNS was designed for its own internal purposes: to ensure connectivity in a technically coherent manner and to do so in a way which was simple and easy for human users to understand and use. Over the same period as the DNS has demonstrated its outstanding success in achieving its design objectives, however, it has become a victim of its own success as the applications of the Internet have expanded into all spheres of activity and as enterprises and persons have begun to include their domain names in the standard identification apparatus that they use for the purposes of business and social communication.

47. In addressing the way in which to deal with the consequent conflicts that have arisen between domain names and other recognized forms of identifiers that are protected by intellectual property, the great majority of commentators in the WIPO Process have considered that the starting point should be the avoidance, rather than the resolution, of conflicts. Insofar as practical, an endeavor should be made to avoid having two autonomous systems that live in ignorance of each other––the DNS in cyberspace, and the intellectual property system of identifiers as developed before the arrival of the Internet.

48. It seems clear that the two systems have hitherto operated without sufficient attention to each other. Up until the date of this Report, in the open gTLDs, users could be assured of a simple, fast and relatively inexpensive process for the registration of a domain name on a first-come, first-served basis. There has been no requirement that the applicant justify use of a particular name; no verification process for any contact details provided; no provision for the settling of disputes when they arise; and no requirement that any payment be tendered and confirmed before the domain name holder begins to use the name. These registration practices have led to instances of registrations that may be considered to be abusive.

49. On the other hand, the same practices have played a very positive role in establishing low entry barriers––making domain name registration fast and easy, thereby encouraging the rapid growth of the Internet, new entrepreneurial uses of websites, and fostering the acceptance by businesses and consumers of the Internet as a vital new medium for an expanding digital marketplace. In endeavoring to avoid disjunction between the DNS and existing intellectual property rights, therefore, care must be exercised not to impede unduly the functionality of a low cost and highly efficient system with proven successes.

50. In Chapter 2 of the WIPO Interim Report published in WIPO RFC-3, draft recommendations were made on a number of domain name registration practices designed to reduce the disjunction between the DNS and intellectual property rights and thus to minimize resulting conflicts. The draft recommendations were made for the purpose of soliciting further discussion and initiating further consultation before being finalized.

51. In general, the comments that WIPO has received support the draft recommendations in the Interim Report. The approach of establishing best practices to reduce tension was endorsed by the vast majority of commentators. The differences of opinion that emerged did not concern this general approach, but rather the details of the implementation of the approach. The greatest differences of opinion concerned specifically the question of the provision of contact details by domain name applicants and the availability of such contact details. Here, as indicated below, there was a broad division of opinion between, on the one hand, those who considered the continued unrestricted availability of contact details to be essential for the suppression of deliberate violations of intellectual property rights, as well as for the support of other recognized public policies such as the avoidance of fraudulent commercial practices, consumer protection and the protection of minors, and, on the other hand, those who emphasized the multifunctional nature of the Internet and who feared that the continued unrestricted availability of contact details would facilitate the invasion of privacy and the harassment of political dissidents, with a consequent erosion of civil liberties.

52. The large measure of support for the approach of introducing practices designed to reduce tension between the DNS and intellectual property rights has been reflected in the adoption of many of the practices recommended in the WIPO Interim Report in ICANN’s Statement of Registrar Accreditation Policy of March 4, 1999.

53. In the ensuing part of this Chapter, the draft recommendations of the Interim Report are re-visited in light of the comments received on that Interim Report. References are included as to the way in which the draft recommendations have been taken up in ICANN’s Statement of Registrar Accreditation Policy. The final recommendations are divided into three parts:

– best practices for registration authorities;

– measures to deal with inaccurate and unreliable information; and

– the problem of uniqueness: technical measures for coexistence of similar names.

BEST PRACTICES FOR REGISTRATION AUTHORITIES

Formal Domain Name Registration Agreement

54. The domain name registration agreement defines the rights and responsibilities of the registration authority, on the one hand, and the domain name applicant, on the other hand. It is through the terms of this contract that certain practical measures can be introduced to alleviate some of the problems that have arisen from the interface between Internet domain names and intellectual property rights. In the WIPO Interim Report, it was recommended that the contractual relationship between a domain name registrant and a registration authority be fully reflected in an electronic or paper registration agreement.

55. Commentators expressed broad support for this recommendation.

56. Certain commentators pointed out that the legal framework governing the validity of electronic contracts was not fully developed throughout the world. Some jurisdictions have moved to ensure that the validity of electronic contracts is specifically recognized through legislation, but the swiftness of the advent of electronic commerce is such that legal certainty is not uniform throughout the world. It is the intention of ICANN to enhance the geographical availability of domain name registration services. It would be desirable to ensure that, where the validity of electronic contracts is uncertain in the jurisdiction of an accredited registrar, the registration agreement is reflected in a paper document, since, as indicated below, this agreement will serve as the basis on which registrars may take certain actions in respect of a domain name registration (for example, if the policy is adopted as recommended below, cancelling a registration because of false or unreliable contact details).

Contact Details of Domain Name Holders

58. As indicated above, the collection and availability of contact details concerning domain name registrants was the area of the draft recommendations of the WIPO Interim Report that generated the greatest division of opinion. Few commentators did not recognize the complexity of striking an appropriate balance between the various interests involved. The divergences of opinion related not to the non-recognition of opposing interests, but to the weight to be attached to those interests.

59. One body of opinion placed greater weight on the importance of contact details, in the context of a borderless and powerful medium, as a means, if not the only means, of translating public policies recognized in the world outside the Internet to the virtual world. They emphasized the difficulty of enforcement on the Internet brought about by its global character, the lack of a central point of authority and control and the fact that transactions and other interaction between persons take place without personal contact and often across distances that span national borders. They favored, in general, the collection and, ultimately, the availability of accurate and reliable contact details as a condition of presence on, and participation in, the medium through a domain name registration.

60. The opposing body of opinion tended to place greater weight on the potential of the Internet as a means of social communication and political expression that offered unparalleled opportunities for promoting civil liberties. Whether viewed from the perspective of the collection or the availability of contact details, they considered anonymity in relation to a domain name registration to be a legitimate choice that should be provided or preserved.

61. We do not consider that any valid analogy exists for the issues posed by this question. Some argued that anonymity is permitted with respect to telephone listings and that this provided an appropriate precedent for a domain name registration. We do not consider the situations to be comparable. A telephone number facilitates connectivity with one other person, unless a group consents to dial into, or by linked to, a conference call. The telephone is a unimedium. A domain name gives global connectivity and allows for multimedia transmissions.

62. Both of the two general perspectives have validity and draw upon sound foundations in international and national law and policy in the world outside the Internet. It is the Internet that causes their collision to be dramatic and that requires difficult choices to be made.

63. As signalled in the WIPO Interim Report, we consider that the choices are made less difficult, although never easy, by breaking down the larger dichotomy of publicity and anonymity into a series of smaller issues that can offer some accommodation of the various interests falling either side of the larger dividing line. Those smaller issues are the collection of contact details by registration authorities as a condition of registration; the scope of information concerning contact details that should be collected; the availability of contact details; the possibility of a non-commercial, use-restricted gTLD as a way of meeting concerns for anonymity as a safeguard to civil liberties; and other safeguards against misuse of publicly available contact details.

The Collection of Contact Details

64. In the WIPO Interim Report, it was recommended that the domain name registration agreement contain a requirement that the domain name applicant provide certain specified contact details. The collection (as opposed to the availability) of contact details by registrars is the least controversial aspect of the discussion on contact details. We consider that it is essential for the legitimate protection and enforcement of intellectual property rights, as well as for many other public policies recognized in the law, that contact details be collected. Without accurate and reliable contact details, the task of assigning responsibility for activities on the Internet is vastly complicated. Other means of assigning responsibility for activities on the Internet do exist. Where it is sought to enforce a criminal law, for example, the apparatus of the State can be activated to use tracing and other measures to determine the origin of activities, although, even here, the cross-border nature of the Internet complicates the task. In respect of civil law enforcement, however, the task of activating the apparatus of the State to identify responsibility for activities is more difficult.

65. ICANN’s Statement of Registrar Accreditation Policy adopts the draft recommendation in the WIPO Interim Report and requires registrars to oblige domain name applicants to provide accurate and reliable contact details.

Scope of Contact Details to be Provided

67. In the WIPO Interim Report, it was recommended that the domain name applicant should provide accurate and reliable contact details consisting of its name; postal address; e-mail address; telephone number; facsimile number (if available); and, where the applicant is an organization, association or corporation, the name of an authorized person for contact purposes. Most commentators agreed that these data represented the appropriate scope of contact details. ICANN´s Statement of Registrar Accreditation Policy requires registrars to obtain from domain name applicants these data, as well as certain technical contact information which is beyond the scope of consideration for the purposes of intellectual property protection. Three items relating to contact details, however, gave rise to differences of opinion.

68. The first item was the nature of the postal address required to be supplied. Some commentators, particularly those representing small business, considered that a post office box should constitute a sufficient post address, without reference to a street location. Others considered that the street location was necessary, especially for service of process (initiation of litigation), and stated that experience indicated that postal addresses consisting of post office boxes were often used by those who deliberately infringed intellectual property rights. ICANN´s Statement of Registrar Accreditation Policy leaves open this question, specifying merely that a postal address must be provided. Since voice telephone and facsimile numbers are to be provided, and since a street address can be as easily misrepresented as a post office box, we consider that the requirement of a street address is unnecessary, especially in view of the large number of small enterprises operating their businesses with the use of a post office box.

69. The second item was the possibility of requiring the domain name applicant to designate an agent for the service of process. In the WIPO Interim Report, it was stated that such requirement seemed unnecessarily burdensome for the large majority of bona fide domain name applicants and that the provision of accurate and reliable contact details appeared to be a sufficient safeguard of the interests of intellectual property owners without the need for requiring further legal formalities at the stage of registration. Most commentators agreed with this view, although some major organizations representing intellectual property owners maintained that the requirement of designating an agent for service of process would be useful. We do not consider that there is sufficient support for the latter view to change the draft recommendation that the designation of an agent for service of process should not be obligatory.

70. The third item concerned the possibility of allowing a domain name holder to remain anonymous on condition that it supplied the contact details of a designated agent or trusted third party instead. The WIPO Interim Report requested further comments on this possibility. Business groups and intellectual property owners almost universally opposed the idea. Some commentators, however, considered that a pseudonymous registration should be allowed on condition that contact details are provided to a trusted third party.

71. It was pointed out that there are a number of Internet Service Providers (ISPs) and other entities that provide the facility for persons wishing to remain anonymous to use sub-domains under a domain which the ISP operates. It was suggested that this possibility allows for an adequate safeguard of the interests of those persons who might fear violation of their civil liberties in having to supply contact details to a registrar. We consider that the existence of this possibility makes it unnecessary to provide any separate facility for a domain name applicant to designate an agent whose contact details would be supplied instead of the contact details of the applicant. In the open gTLDs, since it is intended that registration services be available on a geographically widespread basis, the use of a designated agent could lead to abuses, since the agent could be located in a jurisdiction that is an intellectual property haven or is inaccessible to normal legal processes.

72. It is also noted that ICANN’s Statement of Registrar Accreditation Policy recognizes the practice of ISPs in licensing domains to those that might wish to remain anonymous. We endorse the approach adopted in ICANN’s Policy in this respect, which requires an ISP that licenses the use of a domain to accept liability for harm caused by the use of the domain, unless it promptly discloses the identity of the licensee to any party providing reasonable evidence of such harm. An ISP licensing a domain thus accepts responsibility either for the harm caused by a licensee or for assisting third parties in remedying such harm.

The Availability of Contact Details

74. The WIPO Interim Report recommended that contact details of all domain name holders should be made publicly available and requested further comments on the means of access to those contact details and, in particular, on whether access should be unrestricted or through a form of filter.

75. The majority of commentators considered that the public availability of contact details of domain name holders was a key to the enforcement of intellectual property rights and strongly opposed any restrictions on the availability of data concerning those contact details. The majority of commentators also expressed themselves to be against filtered access to contact details, arguing that filters would add an administrative burden without any commensurately greater protection of privacy. In addition, most commentators that addressed the point were opposed to any requirement of notifying a domain name holder of any search performed on a database containing the holder’s contact details, considering such a requirement to be a way of shielding infringers and possibly obstructing intellectual property owners in defending their rights. As noted above, however, certain commentators argued against the public availability of contact details on the grounds of the protection of privacy.

76. It is noted that ICANN’s Statement of Registrar Accreditation Policy requires accredited registrars to provide public access on a real-time basis (such as by way of a Whois service) to the contact details which it is recommended, above, be required to be provided by a domain name registrant.

77. We consider that, for as long as the open gTLDs (.com, .net and .org) remain undifferentiated, in the sense that there is no use restriction on holders of registrations in those domains, the continued public availability of contact details is essential. The undifferentiated nature of the current open gTLDs means that any form of commercial activity can take place under a domain name registration in those gTLDs. In the commercial sphere, it is widely recognized that the publication of contact details is necessary for the responsible operation of a business. It thus seems appropriate, in this context, that contact details of registrants be publicly available in order to ensure that there is a straightforward means of applying the developed body of law concerning commercial practices. In addition, we consider that this requirement should apply to any new gTLDs, unless and until a policy is developed for a non-commercial use-restricted domain. We do not recommend the creation of such a domain at this stage, but discuss further its potential below.

78. We consider that certain safeguards exist to protect those concerned about the invasion of civil liberties by the public availability of contact details. One such safeguard is, as mentioned above, the licensing of a domain from an ISP which accepts responsibility for harm done on its domain or for assisting in remedying such harm. Other safeguards are discussed below.

79. We make no recommendations concerning the nature of the searchable database in which contact details should be made publicly available. It is considered that this is an issue relating to technical coordination, which thus falls outside this scope of the WIPO Process and is for the consideration of ICANN in establishing relationships between registry administrators, registrars and itself. In addition, any policy on the nature of a searchable database needs to take into account technological developments and not condition those developments. We note only that, for the purposes of ensuring adequate protection of intellectual property rights (amongst other rights), all contact details of domain name holders in the open gTLDs should be publicly available in real time.

80. The contact details that should be made available are those which it is recommended above must be provided by a domain name holder. In accordance with the observations of certain commentators, it is also recommended that the date of the registration of a domain name should be made available together with those contact details. ICANN’s Statement of Registrar Accreditation Policy requires, in this respect, that the expiration date of a registration be made available. The availability of the date of registration is useful as a means of protecting the interests of both the domain name holder and any third party that considers its rights to have been violated. For example, the date of the registration of a domain name may indicate that the domain name holder has established use of a name before any corresponding use or registration of that name as a trademark by a third party. In addition, as discussed in Chapter 3, it is recommended that an indication appear that the domain name holder has voluntarily opted to submit to arbitration in respect of any intellectual property dispute arising out of the domain name registration, where this is the case.

82. In the WIPO Interim Report, the importance of maintaining up-to-date contact details for domain name holders was recognized. It was pointed out that the currency of contact details could be verified at the time of re-registration of a domain name and that the cancellation of a registration for failure to pay the re-registration fee after a second notice or reminder appeared to be a sufficient check on the currency of contact details. ICANN’s Statement of Registrar Accreditation Policy, in this respect, obliges accredited registrars to require domain name holders to promptly update contact details during the term of the registration. The Policy also provides that a domain name holder’s wilful failure promptly to update information on contact details to the registrar shall constitute a material breach of the domain name registration agreement and be a basis for cancellation of the registration. The approach of ICANN on this question constitutes an improvement on the WIPO draft recommendations. In applying to wilful failure to update contact details, it provides an additional safeguard against those who might deliberately and in bad faith register domain names in violation of intellectual property rights and who might change contact details during the term of registration in order to avoid detection. This question is taken up again, below, in the section on the cancellation of registrations for false or inadequate information.

The Possibility of a Non-Commercial Use-Restricted Domain Where Anonymity May be Permitted

83. In the WIPO Interim Report, it was suggested that consideration be given to differentiation between commercial and non-commercial domains and to the application of differing registration conditions to any non-commercial domain. It was suggested that such differentiation might provide a means of accommodating the interests of those concerned that the availability of contact details might lead to an erosion of civil liberties.

84. The reactions of commentators to this suggestion were mixed. Some found the approach to be constructive and considered that it might help in accommodating the conflicting legitimate interests of Internet users. Many commentators were skeptical about the practicality of such a distinction. Others were vehemently opposed to the introduction of non-commercial domains with relaxed registration conditions, particularly relating to contact details, and believed that such domains would operate as safe havens for predatory activities.

85. We believe that this question requires further study and consultation and that its implications go beyond intellectual property protection, although intellectual property protection is one of the central issues involved in the question. We do not believe that the idea should be abandoned, but we suggest that ICANN consider initiating a further process on this question. Pending any such further process, the following preliminary observations are offered in respect of the issues involved in the question:

(i) Further consideration needs to be given to the way in which the distinction between commercial and non-commercial is conceptualized. The distinction between commercial and non-commercial is insufficiently precise as a basis for allowing anonymity. For example, the free and unauthorized distribution of proprietary software or copyrighted music or films is not a commercial activity and could take place in a non-commercial domain without violating a restriction against commercial activity in such a domain. However, the owners of software, music or films have a legitimate interest in being able to contact the registrants of domain names under which such unauthorized distributions take place, and anonymity would obstruct them from doing so. Instead of distinguishing between commercial and non-commercial, therefore, a better approach might be to envisage for any domain with different registration requirements that the uses or activities permitted in such a domain be carefully and precisely delineated by way of a series of use restrictions (for example, prohibition of any commercial activity, prohibition of any activity in violation of intellectual property laws, etc.).

(ii) The nature of the differences in registration conditions needs to be carefully considered and expressed. It would need to be decided what contact details should be provided by a domain name holder, under what circumstances and upon the basis of what information or evidence any contact details could be released, and to which class of persons.

(iii) The introduction of a use-restricted domain would change the nature of open gTLDs that has prevailed until now from one in which domain name holders choose themselves the domain that they consider to be appropriate without being bound to conform their activities to the description of the chosen domain, to one in which, at least for the use-restricted domain, holders would be bound to abide by restrictions on the type of activity in which they could engage in the domain. A mechanism for enforcing those use restrictions would need to be developed. In this respect, a take-down mechanism has been suggested, whereby, upon the production of evidence of violation of a use restriction, the registrar would be obliged to cancel or suspend the domain name registration. This mechanism requires, however, further consideration and elaboration in this context to ensure that it could not be used abusively to suppress legitimate activity.

(iv) The introduction of a use-restricted domain needs also to be considered in the context of ICANN’s overall policy for differentiation in the gTLDs and for the introduction of new gTLDs.

Other Safeguards Against Misuse of Published Contact Details–Proper Notice and Consent

87. Apart from the possibility of a non-commercial, use-restricted domain, the concerns of those who fear erosion of civil liberties through the continued public availability of contact details of domain name holders can be, to some extent, alleviated by limiting the purposes for which data on contact details can be processed.

88. It was recommended in the WIPO Interim Report that the domain name registration should make it clear that contact details are collected and made available only for a limited purpose. Many commentators considered such a requirement to be an essential safeguard, and ICANN’s Statement of Registrar Accreditation Policy has adopted it in requiring registrars to provide notice to each domain name holder stating the purposes for which data are collected from the applicant concerning natural persons and the intended recipients or categories of recipients of such data.

89. In the WIPO Interim Report, the limited purpose of the collection and availability of contact details was described as the purposes of the transaction of registration and of facilitating contact with the domain name holder where there is an allegation of infringement of an intellectual property right. A number of commentators argued that this description was too narrow, insofar as other legitimate reasons existed for seeking access to the contact details beyond the allegation of infringement of intellectual property rights (for example, a third party may wish to have the contact details of a domain name holder to explore the possibility of a voluntary transfer of the registration for consideration, or to explore cooperation in respect of a website). The objective of the limitation of purpose is to prevent practices that might constitute an unwarranted intrusion into the domain name holder’s privacy, such as data mining, where an attempt is made to download significant parts of a database, spamming or unsolicited advertising. ICANN’s Statement of Registrar Accreditation Policy does not delimit the purposes for which data may be collected and made available, but requires notification of the purposes that a registrar defines, and consent by the domain name applicant to those purposes. We endorse this approach, which emphasizes proper notice and consent as the safeguards to privacy.

Requirements of Use

91. The possibility of including in the domain name registration agreement a requirement that the applicant state that it has a bona fide intention to use the domain name was discussed in the WIPO Interim Report. No recommendation for the inclusion of such a requirement was made in the Interim Report, because of the absence of agreed standards as to what constitutes use and the difficulty of verifying whether use has occurred. Further comments on the issue were requested.

92. Many commentators agreed that statements of use were of limited value in the context of the DNS. Some representatives of the intellectual property community, however, believed that a requirement of a statement of intention to use, together with a representation that the domain name was not being registered for the sole purpose of re-sale, would help discourage domain name abuse.

93. It is difficult to see how any requirement of a statement of intention to use or representation that a registration was not for the sole purpose of re-sale could be effectively enforced. Furthermore, there are circumstances in which it might be considered to be entirely legitimate to register a domain name and to hold it without "use" for an indefinite period. An individual might, for example, wish to register a domain name corresponding to his or her child’s name without intending that it be used until some future date. Rather than requiring that an intention to use be stated, we consider that evidence of registration without any use, particularly in relation to a number of domain names that correspond to the intellectual property rights of others, is pertinent for the purpose of assessing whether registrations should be cancelled because they are abusive. Non-use, especially coupled with offers to re-sell and other appropriate evidence, is better dealt with in the context of the administrative procedure for cancellation of abusive registrations discussed in the next chapter, than by encumbering the registration procedure.

Payment for Registration

95. Several vices are perceived as flowing from the lack of rigor that has prevailed in enforcing the requirement of payment of the registration fee for a domain name. Non-enforcement of the requirement can lead to the hoarding of names which, by virtue of the first-come, first-served principle of registration, places the registrant in a position to offer the names for sale to others who might have rights or interests in the names. In the WIPO Interim Report, it was recommended that a domain name should not be activated by a registration authority unless it was satisfied that payment of the registration fee had been received. This draft recommendation received the support of virtually all commentators. It has also been reflected in ICANN’s Statement of Registrar Accreditation Policy, which, in its most recent amended form, suggests that charge to a credit card or other mechanisms providing reasonable assurances of payment will be considered sufficient.

Re-registration Fees

97. In the WIPO Interim Report it was recommended that domain name registrations be for a limited period and subject to the payment of a re-registration fee, and that failure to pay the re-registration fee within the time specified in a second notice or reminder should result in the cancellation of the registration. There was wide support for this recommendation, which was perceived as a useful measure to ensure that registrations are maintained by those with an interest in maintaining an active site and to avoid the hoarding of registrations for speculative purposes.

Waiting Periods

99. The possibility of a waiting period prior to the activation of a domain name registration has been discussed throughout the whole period during which the re-organization of the DNS has been under discussion. The purpose of such a waiting period would be to allow those who oppose the registration of a domain name on the basis that it constitutes an infringement of their rights the opportunity to take measures to stop the activation of the domain name. A waiting period has, however, been perceived as being at odds with one of the great strengths of the Internet, namely, the speed with which activity can occur.

100. In the WIPO Interim Report, it was recommended that a waiting period should not be required prior to the activation of a domain name. The clear majority of commentators agreed with this position. A number of them emphasized that a waiting period would not only cause delay, but could also drive up the cost of the registration of domain names.

101. In the Interim Report, it was also suggested that the concerns of those who favored a waiting period could be addressed through an expedited alternative dispute-resolution procedure for suspension of a domain name registration. This possibility is discussed in the next chapter, which deals with dispute resolution.

Searches Prior to Registration

103. The WIPO Interim Report recommended that the performance of a prior search for potentially conflicting trademarks should not be a condition for obtaining a domain name registration. Almost unanimously, commentators agreed with this recommendation, whether searches were to be required to be carried out by the registration authorities or by the domain name applicants themselves. Particularly in an international context, the requirement of searches prior to the registration of a domain name was generally considered to be unrealistic and conducive to unnecessary delays in the registration process.

104. At the same time, many commentators stressed the importance of encouraging voluntary domain name and trademark searches, on the part of prospective domain name applicants, to verify that the domain name that they intend to register was unencumbered and did not infringe upon the intellectual property rights of any third party. It was noted that a range of commercial and public search services existed for both domain names and trademarks. These commentators urged the inclusion, in the domain name application, of language encouraging voluntary searches.

Representations in the Domain Name Registration Agreement

106. The WIPO Interim Report recommended that the domain name registration agreement should contain a representation by the applicant that, to the best of its knowledge and belief, the registration of the domain name does not interfere with or infringe the intellectual property rights of another party and a representation that the information provided by the applicant is true and accurate. The purpose of such representations is to alert domain name applicants to the possibility of conflicting rights of intellectual property owners and to contribute to the reduction of tension between domain name registrations and intellectual property rights. The representations serve the ancillary purposes of protecting the registration authority from liability for contributory infringement and, where furnished inaccurately and in deliberate bad faith with knowledge of their inaccuracy, of providing a basis for liability or breach of contract on the part of the domain name holder.

107. This recommendation received broad support. Certain commentators, however, were of the view that the representation would place an unreasonable burden on domain name registrants, since it was virtually impossible for them to verify on a worldwide basis whether a registration would be infringing. We consider that this latter view does not take into account the nature of the representation. It is not an unqualified representation that a domain name registration does not infringe the intellectual property rights of others. It is a representation that the registration does not, to the best of the applicant’s knowledge and belief, infringe the intellectual property rights of others.

108. ICANN’s Statement of Registrar Accreditation Policy requires a representation from the domain name applicant that extends beyond the intellectual property rights of third parties. It requires the applicant to represent that, to the best of its knowledge and belief, neither the registration nor the manner in which it is directly or indirectly used infringes the legal rights of a third party. We consider this formulation to be superior to the one contained in the WIPO Interim Report. We confine our final recommendation, however, to the scope of the WIPO Process, namely, intellectual property rights, while recognizing the additional concerns which ICANN is addressing in its broader formulation.

Submission to Jurisdiction and to Alternative Dispute Resolution Procedures

110. Chapter 3 discusses the question of litigation and dispute resolution and makes certain recommendations in relation to each. Since these recommendations, if adopted, require implementation by agreement at the stage of the conclusion of the registration agreement, their consequence for the content of the registration agreement is recorded here.

MEASURES TO DEAL WITH INACCURATE AND UNRELIABLE INFORMATION

112. In the WIPO Interim Report, three measures were discussed as means of dealing with contact details that proved to be inaccurate and unreliable.

Verification of Contact Details by the Registrar

113. The Interim Report recognized that registrars should not be burdened with the task of verifying in any comprehensive way the accuracy and reliability of the contact details of domain name holders, since this would be likely to lead to unnecessary additional time and cost in the registration process. It requested, however, further comments on two automated devices for achieving a measure of verification: (i) the use of on-line data validation mechanisms in real time to ensure that a minimum of details were provided, and (ii) the automatic sending of an e-mail communication to the domain name applicant to verify the operational status of the e-mail address given by it.

114. These measures were considered by commentators to be useful and to reflect good practices for automated registration systems. Some commentators suggested further that the format of a US zip code could be automatically validated and correlated to the area codes provided for voice telephone and facsimile numbers, and that e-mails could be sent periodically to the accounts provided by domain name holders to verify their continued currency.

115. We consider that the additional suggestions indicate that the range of automated solutions for data verification is extensive and is likely to evolve further. We therefore confine our recommendation to the encouragement of the use by registrars of such data verification procedures in the registration process.

Requirement that Inaccurate and Unreliable Contact Details Constitute a Material Breach of the Domain Name Registration Agreement

117. In the Interim Report, it was pointed out that the purpose of requiring the provision of contact details would be frustrated if no sanction existed for the provision of inaccurate and unreliable information which did not permit contact to be established with the domain name holder. The appropriate sanction in such circumstances is the cancellation of the registration. In order to provide the basis for the imposition of this sanction, it was recommended that the domain name registration agreement contain an agreed term that inaccurate and unreliable information in the agreement should constitute a material breach of the contract and be a basis for cancellation of the domain name by the registrar.

118. Commentators broadly supported this recommendation. ICANN’s Statement of Registrar Accreditation Policy adopts the recommendation, with the additions that the wilful provision of inaccurate or unreliable information or the wilful failure promptly to update information shall constitute a material breach of the registration agreement and be a basis for cancellation of the registration. We consider the addition relating to the failure to update information to be an improvement of the draft recommendation in the WIPO Interim Report. We think that the requirement that the provision of inaccurate or unreliable information, or the failure to update it, be wilful is, however, problematic. In the next section, it is recommended that a procedure should be available to cancel registrations where contact cannot be established with the domain name holder. We think that the efficiency of this procedure would be jeopardized if it were necessary to show that the inaccuracy or unreliability of information resulted from the wilful behavior of the domain name holder. We think also that the domain name holder is protected against abuse of this procedure and cancellation for merely clerical errors or oversights, since it is unlikely that clerical errors or oversights would cause all the information provided to be inaccurate or unreliable so that it was impossible to contact the domain name holder.

Procedure for Cancellation of Registrations where Contact Cannot be Established

120. In the WIPO Interim Report, the means of implementing a sanction for breach of the domain name registration agreement through the provision of inaccurate and unreliable contact details were discussed. Two possibilities were considered: first, an adjudicated procedure in which an independent neutral would render a decision upon a complaint by an interested third party that the third party was unable to establish contact with a domain name holder because the contact details were inaccurate and unreliable; and, secondly, a notification procedure to the registrar, which, upon verification by the registrar of the inability to establish contact with the domain name holder, would cancel the registration.

121. The majority of commentators supported the notification and take-down procedure. Some commentators cautioned that it should be applied reasonably in order to avoid domain name holders being penalized through inadvertence (for example, during an absence on vacation). We agree with these latter concerns, but consider that it will be a rare instance that all contact details are considered inaccurate and unreliable owing to vacation. Nevertheless, it is entirely appropriate that proper safeguards exist to ensure that the procedure is not abused.

122. It is considered that the procedure for cancellation of a domain name registration should be available only where a third party serves a notification upon the registrar alleging: (i) that the domain name registration infringes an intellectual property right; and (ii) that contact cannot be established with the domain name holder because the contact details are inaccurate and unreliable. The notification should include the following elements:

– The notification should be in writing and have an electronic or physical signature by the third party complainant;

– The notification should include the third party’s own contact details, including name, postal address, voice telephone number, facsimile number and e-mail address;

– The notification should include a statement that the third party has a good faith belief that the registration and use of the domain name infringes its intellectual property right;

– The notification should identify the domain name and the contact details that were relied upon to attempt to contact the domain name holder;

– The notification should include a statement that the third party has made reasonable efforts over a reasonable period of time to contact the domain name holder using the contact details that were supplied by the domain name holder in the application (postal address, voice telephone number, facsimile number and e-mail address); and

– The notification should include a statement that the third party has a good faith belief that: (i)  the contact details are inaccurate and unreliable, and (ii)  no response from the domain name holder will be forthcoming within a reasonable period.

Upon receipt of the notification, the registrar should independently endeavor to contact the domain name holder using the contact details that have been supplied. If the registrar is unable to establish contact within a reasonable period of time, the domain name registration should be automatically cancelled.

THE PROBLEM OF UNIQUENESS: TECHNICAL MEASURES FOR COEXISTENCE OF SIMILAR NAMES

124. For operational reasons, a domain name is a unique address. This characteristic creates the difficulty that common words that form part of marks can be coveted as domain names by a number of different persons or enterprises. The difficulty is exacerbated in undifferentiated domains, since similar marks with common elements can coexist in relation to different classes of goods or services without confusion, whereas only one of the owners may use the mark or the common element alone as a domain name in a large undifferentiated domain. Examples of such common elements are "national," "united" or generic descriptions like "telecom."

125. There are several means that can be used to overcome the difficulty of uniqueness. Directory and listing services assist in ensuring that an interested person can locate the exact address that it is seeking, and many commentators supported the further development of such services. The gateway or portal page is also a measure that finds widespread support. Under such a gateway, a list of names using a common element is produced with links to the various addresses and information to distinguish the addresses and their owners from each other. These measures are deployed under the INternet ONE system, a directory service with a shared name depository, which enables entities sharing common elements in domain names to coexist on the Internet.

126. Measures which allow coexistence while providing users with the information to distinguish between the owners of the similar names represent a viable and useful way of reducing conflict. They are, however, voluntary measures that parties can choose as a means of resolving an intractable shared desire for the same name. They can also constitute a recommended solution for the consideration of such parties within the context of litigation or an alternative dispute resolution procedure such as mediation.

127. The WIPO Interim Report noted that there was resistance to making such measures compulsory. No recommendation was made for their compulsory adoption. This position was broadly supported in the comments received on the Interim Report. Many owners of marks clearly wish to preserve their unique identity and do not wish to countenance sharing it, even through a portal, with another.

[Chapter 3 follows]

FOOTNOTES