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304. The final term of reference of the WIPO Internet Domain Name Process is to evaluate the effects of adding new gTLDs and related dispute-resolution procedures on trademark and intellectual property holders, such evaluation being informed also by studies conducted by independent organizations.
305. The recent history of the question of adding new gTLDs goes back to May 1996, when Dr. Jon Postel proposed in an Internet-Draft the creation of up to 50 domain name registries, each of which would have the exclusive right to register domain names in up to three new top-level domains, for a total of 150 potential new top-level domains. A revised draft in June 1996 received the approval of the Internet Society’s (ISOC) Board of Trustees, and the work in this area was soon thereafter taken up by the International Ad Hoc Committee (IAHC). The IAHC, which was organized at the initiative of ISOC and IANA, issued a final report, as noted earlier, on February 4, 1997, calling for the creation of seven new top-level domains.
306. In January 1998, in its Green Paper, the United States Government, through the Department of Commerce and the National Telecommunications and Information Administration (NTIA), sought, in cooperation with IANA, to scale down expectations to five new gTLDs, which would be introduced during the transition period for privatizing the management of Internet names and addresses. Comments on the Green Paper from the international community ultimately led the United States Government to conclude in its White Paper that it would not recommend the immediate implementation of new gTLDs, but that this decision should be left to the new, globally representative corporation to be based on international input.
THE DIVERSITY OF VIEWS AND PERSPECTIVES
307. It is not a secret that the questions of whether, how and when new gTLDs should be added have attracted a diversity of views, if not sharply divided views. At one end of the spectrum, certain Internet constituencies have maintained that the Internet should be an open system and that, at least in principle, any person should be able to introduce a new top-level domain, leaving the market to be the ultimate arbiter of its success. At the other end of the spectrum, some stakeholders have expressed strongly the view that no new gTLDs should be added, at least at this stage. Among the reasons in support of this latter position is a belief that there is currently no demonstrated need for additional name space and that adding new gTLDs will aggravate intellectual property problems and create consumer confusion. Proponents of this position also maintain that the availability of approximately 250 under-utilized country code domains should in any event provide the necessary space for additional growth, and that it may be more constructive to adopt measures to encourage use of these country code domains, rather than to dwell upon the need for new gTLDs.
308. Still others have taken a position that falls between the two described in the preceding paragraph. They observe that the Internet has experienced enormous growth precisely because few restrictions have been imposed on new initiatives, and that it would be misguided to ignore this when considering the introduction of new gTLDs. At the same time, those tending to this view recognize that the Internet has now developed into the central medium for electronic commerce, while at the same time being a diversified global medium supporting instantaneous communications and a wide range of other applications. They believe that it would be imprudent to expand suddenly and drastically the name space, as it would be impossible to foresee the consequences of such action. Instead, they suggest that the need for reliability and stability requires that the generic name space be expanded at a controlled pace, which allows the opportunity to observe the effects of such expansion and to draw appropriate conclusions that will serve to guide long-term policy.
309. One of the explanations for the diversity of views held in relation to the question of the creation of new gTLDs is the diversity of issues involved in developing a coordinated policy on that question and, consequently, the diversity of perspectives that may be brought to bear on it. The differentiation of the generic name space can be an instrument for many policy objectives.
310. In addition to the intellectual property perspective, there are technical, commercial, marketing and other legal ways of viewing the question:
(i) The technical perspective is apparent in the critical need for the DNS to continue to work with operational accuracy, stability, robustness and efficiency. A number of commenters in the on-going discussions have reflected this point as a first principle: do no harm. While some in the Internet engineering community believe that the DNS can support an unlimited number of top-level domains without encountering problems, others have noted that an immediate large increase in the number of gTLDs may lead into technically unknown territory. In this general context, the recently announced participation of five companies to act as registrars in the initial testbed phase of the new competitive Shared Registry System (SRS) for the .com, .net and .org domains represents an effort to assess, under controlled conditions, the reliability and robustness of the SRS technology used to allow multiple registrars to accept registrations in the existing open gTLDs.
(ii) The commercial perspective has focused on questions of competition and other commercial considerations. The move to introduce new gTLDs was, at least in part, motivated by the desire to increase competition in gTLD registration activities. The situation in which one entity acted on an exclusive basis as the registration authority for the most commercially successful gTLDs was viewed as requiring attention in this regard. Others, however, have urged that creating new business opportunities for a new set of registration authorities is not a sufficient reason for creating top-level domains. In any event, competition is now being introduced, as mentioned above, through the participation of competing registrars in the existing open gTLDs.
(iii) The marketing perspective has focused on the role of top-level domains in sending signals to the Internet user (e.g.,. .com denotes the premier international commercial space). This perspective is not limited to the gTLDs. Certain ccTLDs, owing to their associated ISO 3166 country code, are being marketed and used very much like de facto gTLDs. This trend merits careful monitoring. The ability of certain TLDs to transmit signals effectively to Internet users is a characteristic that distinguishes the functionality of a top-level domain from the classifications used in traditional trademark systems. While trademark classes are administrative devices which, as such, are not used as marketing tools, top-level domains play a more active role for the intellectual property owner and the Internet user. Any policy on the introduction of new gTLDs must take this into account and appropriately consider that certain top-level domains may be deemed more valuable than others, in line with their respective market-signaling power.
(iv) A variety of legal perspectives, in addition to intellectual property, have also entered into the picture, for example, competition law, consumer protection law, privacy law and the protection of minors. It has, for example, been suggested that differentiation in the generic name space might be used as a means of controlling activities considered harmful to minors.
311. As the WIPO Interim Report noted, in view of the variety of issues and perspectives involved in the formation of a policy on the creation of new gTLDs, it goes without saying that the intellectual property perspective is not the only one to be taken into account. In considering the formulation of recommendations concerning the addition of new gTLDs, therefore, the approach has been adopted of assessing what the past experience of intellectual property owners has been in relation to problems encountered in the current gTLDs, and using that experience as a basis for recommending how the particular interests of intellectual property owners can be accommodated within an overall policy on the creation of new gTLDs.
ILLUSTRATIONS OF PROBLEMS ENCOUNTERED BY HOLDERS OF INTELLECTUAL PROPERTY RIGHTS IN EXISTING gTLDs
312. Numerous comments and extensive testimony were provided at the regional consultations throughout the WIPO Process on the nature and extent of the problems encountered by intellectual property owners in respect of domain names. A number of illustrations of such problems are provided in this section. It is recognized that much of the evidence presented was anecdotal in nature and that few comprehensive analyses supported by empirical evidence are available. Nonetheless, the widely held view in the trademark community, based on the many experiences of those who have participated in the WIPO Process, is that the problems encountered are extensive, particularly for the owners of famous and well-known marks, and that these problems have been growing, in part because of increased activity in the country code domains. A summary of those experiences is given in the next paragraphs.
Lack of Visibility of the Full Extent of Problems
313. A significant number of disputes apparently never rise to the level of being reported. A large proportion may remain unresolved, or may be resolved informally pursuant to a settlement between the parties. A study commissioned by MARQUES, the Association of European Trade Mark Owners, for the purposes of the WIPO Process, found that 85 percent of those participating had experienced infringement on the Internet of their own or their clients' intellectual property. Moreover, 60 percent of those responding had negotiated for the purchase of their domain name through informal means. The same study concluded that a large number of cases simply remain unresolved. An additional comprehensive study was undertaken by the International Association for the Protection of Industrial Property (AIPPI). Published in May 1998, the study contains reports from the numerous national groups of the AIPPI that have focused, in particular, on the problems of the confusion that has arisen as a result of the interface between domain names and trademarks, and on how domain names can, when used in particular ways, infringe the rights of mark owners.
314. This latter point was also emphasized by speakers at WIPO’s regional consultations. One commenter indicated that "for each reported case, Panavision, Spice Girls, Burger King, British Telecom, there are a myriad of others that have to be resolved outside the court room, but at significant cost to the companies and to the consumers who buy their brand of products." As to the informal means by which the problems are often resolved, another speaker stated that:
"There is a fair market in cyberpirated marks. When I was in private practice, representing a client with many well-known famous trademarks for consumer products that you and I use everyday, the client was approached by a cyberpirate who said ‘I will sell this to you for 4000 dollars.’ The client’s marketing department wanted that name and they wanted it now and they said ‘OK, I can have it now for 4000 dollars or I can have it way later for God knows how much you are going to charge me.’ So, from a business point of view, it is easier to just engage in the private transaction and pay the 4000 dollars."
Focus on Clear Cases of Abuse
315. It would appear from the comments that the priority concern of the trademark community does not relate to conflicts between parties who claim to have competing legitimate rights in the name (for example, different companies with the same trademark in different product lines or operating in different areas of the world), but focuses on cases of clear abuse, often directed at famous and well-known marks. Owners of such marks have indicated that, in some cases, they are confronted with hundreds of such instances at any given time. A speaker at one regional consultation stated that "in less than a year, we have already had 579 matters in the existing gTLDs." Another alluded to similar experiences:
"We are encountering the same kind of volume that others are encountering and that is cases in the volume of 15 to 20 per month. In one particular case, someone registered ‘ATTT.com,’ which linked to a pornographic site. While this area may seem perhaps obscure to some, it is taken very seriously by those of us who have the brand recognition of the commercial players that are in this room… Among the other examples are the registration of ‘AT-T.com,’ ‘ATTT.net,’ ‘ATTworldnet.net,’ ‘ATTwirelessservices.com,’ ‘ATTcellular.com,’ ‘ATTweb.com,’ ‘ATTonline.com,’ ‘ATTnetwork.net,’ ‘ATTTCI.com, .net, .org,’ it goes on and on. We do think that it is important so, when we talk about volume, we think it is there and increasing…"
316. Another speaker representing a large corporation explained that they had been confronted by "several hundred Internet domain names that have been registered throughout the world using Porsche or a variation of Porsche [and that] the variations on domain names using Porsche is virtually endless, and is limited only by one’s imagination." Some of the domain names in question were registered under the registrant name "Misspellers Rescue Company."
317. Emphasizing the gamesmanship that is sometimes involved, still another speaker stated: "I probably have to send claim letters out and pursue people on a majority of the motion picture titles that we are coming out with and we have recently confirmed that there are growing numbers of people who watch the MPAA [Motion Picture Association of America], so that they can register domain name sites as soon as the MPAA registers our titles, which is months and months before those movies appear."
Predatory and Parasitical Practices
318. One clear source of the problems has been those persons who register domain names that are identical or similar to trademarks, with a view to selling them at a profit to the trademark owner. As a variation of this practice, one speaker explained: "One of the more interesting twists on speculation however was an offer within the past year...to purchase domain names containing well-known trademarks of our direct competitors. We were not interested, of course, but passed on the information to our competitors… " Other persons have registered domain names that are identical or similar to trademarks in order to create the false impression that the owner of the mark in some way endorses the goods or services the third party offers:
"In this instance the direct competitor has registered as domain names a slight, de minimis, non-substantive variation of several of our well-known and heavily advertised trademarks. These domain names are connected to the competitor’s website advertising directly competitive services. A consumer viewing the competitor’s website has no way of knowing that the services offered at that site are not our services."
319. Another speaker similarly testified that "[she has] received innumerable calls from such users, who are just confused on how they are to use the Internet to find our sites because they are misdirected so regularly."
320. Still others have registered domain names not to cause any confusion regarding the source or origin of the goods or services offered, but in an effort to attract increased traffic to their own websites to tarnish the reputation of a mark. Certain persons have also made it a practice to register domain names corresponding to trademarks in order to hoard them, thus intentionally frustrating the trademark owner’s desire to reflect its mark in a domain name. The following example was presented at a regional consultation as an egregious example of the actual problems encountered:
"In this particular instance I am referring to use of a second-level domain name for a porn[ographic] site where the domain name is made up of another's trademark, usually a well-known one, sometimes with an extremely minor variation on, or a misspelling of, the well-known mark… The current examples I have brought today are three domain names that currently are active. They are the www.intle.com domain name; as you can see the l and the e are transposed, the www.pentium2.com domain name and the pentium3.com domain name… The third one is...not only a porn site but a cybersquatter. You come to the first page of pentium3.com and you are instructed to click here ‘to see some fine ass nude celeb photos.’ If you do click there, it takes you to those photos. The other place that you can click on the front page indicates that the domain is for sale, ‘please click here for details,’ at which point you get to a page that...says ‘hello, you seem to have an intuitive mind like me. Just imagine how many hits this page will have when Pentium ships their new P III chips sometime next year. I am already getting 30 hits with no promotion at all. I am getting offers left and right for this site, so right now I am going to the highest bidder format. Current highest bid is $9,350…’ So, he is basically soliciting bids for the site on a theory that, when Intel ships Pentium III next year, this would become a very valuable site to Intel."
Need for Improvement in Registration Practices
321. Domain name registration practices in the gTLDs appear to have caused the occurrence of some of these problems. The relative ease with which the activity in question can occur, the frequent inability to identify the party at its source, the volume of abusive practices, the ubiquitous nature and the increasing globalization of Internet use together are claimed to challenge the ability of trademark owners to effectively police and enforce their rights. As explained by one speaker:
"In my opinion, in the past several years, there has really been an inordinate amount of time, energy and money spent by my company keeping the domain name register clear of names registered by others incorporating our famous trademarks… I know, for example, that in my legal budget in 1998 I am spending more money on Internet-related issues than I am on consumer products piracy in the United States, and that really is unbalanced in my view."
322. The lack of reliable contact details often is highlighted as a major obstacle in the resolution of the problem:
"As a trademark owner, [we have] the responsibility to track down domain name registrants one by one to assert [our] trademark rights. And here I would add…that we often do find that the registrant's information that is provided on Whois through Internic is completely unreliable. In many cases when I, personally, called those telephone numbers they don't get answered, they are inactive, they are out of service, etc. E-mail addresses are likewise very hit-and-miss on that activity. And that is the source of information that we have to rely on. So, if that information is inaccurate, then our next step would have to be to hire a private investigator to go and actually seek out that individual or that entity and try to find them. Once we have done that, the next step is to file individual challenges with Internic with the results and timing of those challenges being very uncertain. And again, we have to do this one by one by one. The proliferation of these registrations, which are now averaging several per week, mean that staff time and legal costs required to pursue these infringements are growing exponentially while the array of activities engaged in by infringers increases almost daily."
Resort to Defensive Practices
323. While numerous instances have been brought to WIPO’s attention where trademark holders, particularly owners of famous and well-known marks, have been the victim of domain name abuse, a number of other commentators have observed that trademark holders have resorted to defensive practices that those commentators find undesirable. This may occur in situations where a trademark holder, relying on its trademark registrations, seeks to interfere with the rights of a domain name holder who obtained the domain name under legitimate circumstances and does not use it in a way that would justify a claim of trademark infringement or dilution. It has been argued that the potential for consumer confusion has been ostensibly absent in some cases because of sectoral or geographical differences between the operations under a domain name and those under the trademark. Several commentators have stated that these sorts of practices, which have come to be called "reverse domain name hijacking," have detrimental effects on individuals and small business.
324. Some of the instances in which such domain name hijacking is alleged to have occurred include challenges to the following domain names: epix.com, cds.com, ajax.com, dci.com, ty.com, earth.com, juno.com, and, involving non-commercial domain name holders, pokey.org and veronica.org. In one case, Roadrunner v. Network Solutions, the holder of the domain name "roadrunner.com," a small Internet-based business, resorted to legal action to defend its right to use the domain name after it was challenged by the owners of the registered trademark "Road Runner." Commentators have emphasized the need for the domain name system to accommodate the diverse nature of the Internet’s users—who may register domain names for commercial, as well as political and social purposes—and to ensure individuals' freedom of communication. These conflicts may be seen as a consequence of the global reach of the Internet, where the rights of a trademark holder in one territory must coexist with the legitimate rights of other trademark holders or Internet users, employing the same or similar names, in different jurisdictions and for different uses.
325. Commentators have also emphasized that the suspension, transfer or cancellation of a domain name held by a small business owner could irrevocably damage its commercial interests. In this connection, evidence was put forward of the growing reliance of small businesses on the commercial advantages of the Internet. Testimony was also given regarding alleged unfair business practices involving demands upon domain names. A number of commentators emphasized the need to ensure that any recommended administrative dispute-resolution procedure would not allow potential reverse domain name hijackers to expose small businesses to unjustified threats of proceedings that might impose such high costs or risks of drastic remedies that they are coerced into relinquishing their domain names:
"One dispute was recently brought to my attention. A small Internet provider has received a domain name challenge from another company that is located on the other side of the United States and it is in a completely different business. They have already spent $40,000 to defend themselves and the case hasn't even gone to trial yet. I am talking about a company with six employees. Now, if my company, when I had six employees and had about 1,000 customers, struggling to keep up the growth, having to decide daily between paying our employees and buying new equipment, had then to face such a challenge, we would probably just have gone under."
326. Concerns about the inadvertent impact on small businesses and individuals are one of the factors that has been considered in revising the recommendation in the WIPO Interim Report so as to restrict the scope of the administrative procedure to cases of bad faith, abusive domain name registrations. However, one outcome of this limitation is that domain name holders may continue to be threatened by court proceedings and will be unable to use the efficient and inexpensive administrative procedure to protect their domain names against such alleged reverse domain name hijackers.
327. Some of the same commentators also disapprove of the practice by certain trademark holders of registering their marks in all top-level domains, thereby frustrating any third party’s legitimate desire to use the same name in one of the domains for unrelated or non-commercial purposes. A speaker at a regional consultation gave the following example:
"...if we take [name].com, '[name]' is for some unknown reason registered in all ccTLDs. Now, if one is wanting to contact the [company], you will use the domain [name].com. I see no benefit in [the company] effectively registering in all ccTLDs. Because what they are doing effectively is blocking out potentially other legitimate companies who have a right to trade under the name…from their national TLDs and possibly the new gTLDs."
International Scope of Problems
328. The problems encountered are not confined to the United States of America, but occur also in other regions and are likely to increase with the expanding use of the Internet around the world. A speaker at the regional consultation in India stated that "[In India], cases have been reported where domain names similar to prominent trademarks or names of famous personalities, like Amitabh Bachan, Sunil Gavaskar and so on, are usurped by Internet users as domain names." Another speaker at the same consultation further stated:
"[E]ven in a country like India, which has just begun its journey on the information superhighway, we have already begun to encounter things like ‘Internet Property Auction.’ Names sites have already been picked up and resold to the original owners, including BJP, which is the ruling party in India today, Srivansan, Times of India, VHP, ABCL, Tata, ONGC,... ITC Hotels Ltd, Welcome Net Ltd, …State Bank of India and a host of other corporates, which reads like a Who's Who. The minimum auction bid here is stated as US$1500, ...and the time of closing of the bid is five days thereafter––it is May 12, 12.00hrs GMT."
Dissatisfaction with Current gTLD Dispute-Resolution Policies
329. Network Solutions Inc. (NSI) has a Domain Name Dispute Policy to be applied to disputes between domain name registrants and third parties. While some commentators have expressed satisfaction with the NSI Policy as a means of providing swift and effective relief for trademark owners, others believe it is flawed in several important respects.
330. One of the major difficulties alluded to by commentators results from what is perceived as the Policy’s overly "mechanical" approach to the resolution of disputes. The Policy relies heavily on the ability of the parties to produce certain trademark certificates in support of their respective positions, without any review of the use of the domain name and alleged infringement. As such, it is stated that the Policy does not sufficiently allow for the consideration of all legitimate rights and interests of the parties (which are not necessarily reflected in a trademark certificate). This concern has been emphasized, in particular, by those who are not trademark owners and who believe that the Policy represents an unwarranted extension of trademark rights, as it may grant a complainant the effect of a preliminary injunction without requiring it to show a likelihood of success on the merits.
331. NSI understandably wishes to avoid situations where it would have to decide upon disputes by weighing all the relevant facts and circumstances, thereby assuming the role of a de facto arbiter or judge. This underscores the need for courts or independent neutrals to resolve disputes instead of the registration authorities themselves, and illustrates well the limits of any active involvement that such authorities should have in the resolution of domain name disputes.
332. Another problem raised concerning the NSI Policy is the requirement that a complainant must produce a trademark registration that is identical to the second-level domain name subject to the dispute. This has resulted in what has been described by commentators as frustrating situations where the NSI Policy could not be relied upon to obtain relief for trademarks that are virtually, but not perfectly, identical to the domain name. For instance, the owner of the trademark consisting of the word "CHANEL BOUTIQUE" accompanied by the CC monogram could not apply the NSI Policy against a person who had registered the string chanel-boutique.com. Similarly, the owner of the mark "PLAYSTATION" faced the same problem in connection with the domain name playstations.com.
333. Even when the NSI Policy applies, the result that it offers is to place the domain name on "hold." Consequently, a trademark owner who has obtained relief under the Policy is still required to resort to court or arbitration to obtain the cancellation or transfer of the domain name. This two-tiered approach adds a further level of complexity to the dispute resolution process, and, by insisting on a court decision or arbitral award for the final disposition of the case, requires a complainant to expend significant resources to resolve what are often simple cases of manifest abuse.
REGISTRATION PRACTICES AND PROCEDURES IN COUNTRY CODE TOP-LEVEL DOMAINS
334. In addition to continuing efforts to identify problems in the existing gTLDs, the WIPO Interim Report suggested that it would be useful to attempt to identify how practices in the ccTLDs are influencing the protection of intellectual property rights. In December 1997, a point was reached where more domain names were registered by organizations or individuals based in countries other than the United States of America than by the same entities located in that country. This internationalization of the Internet is also reflected in the increasing number of domain name registrations in the country domains. While the public in the United States of America has made only limited use of ".us" and, instead, has universally favored the gTLDs, users in other countries have availed themselves to a much larger degree of the opportunities offered by the ccTLDs. At the time of publication of the Interim Report, out of a total of more than 4,800,000 domains registered worldwide, over 1,400,000 were registered in the ccTLDs, with ".de" (Germany), ".uk" (United Kingdom) and ".dk" (Denmark) containing the largest numbers. Now, just four months later, there are approximately 1,860,000 registrations in the ccTLDs, and it is expected that the pace of registrations in these domains will continue to increase.
335. The differing approaches taken with regard to the management of the name space in the ccTLDs, and the related experience gained by the registration authorities, their clients and third parties, constitute a valuable source of information. With this in mind, WIPO has supplemented its consultations with a questionnaire directed to the administering authorities for 35 representative ccTLDs, which were selected on the basis of the number of their domain name registrations (both large and small) and their geographic representation. The questionnaire, which was sent out in January 1999, was intended to review the impact on intellectual property of the practices and procedures adopted by ccTLD registration authorities, and their experiences with any domain name disputes. The results obtained from responses to the questionnaire are set out in Annex IX and summarized in the ensuing paragraphs.
336. The survey revealed great diversity in the registration and operating practices of the participating ccTLDs. The responses also indicated that ccTLD administrators have had to develop practices on their own and that this has sometimes been a burden, particularly for the smaller ccTLDs and those in developing countries. In this respect, a number of registration authorities indicated they had expended considerable time and resources (e.g., the cost of legal services) to devise registration rules and procedures to address problems they had encountered.
337. Although virtually all of the participating ccTLDs (88 percent) indicated that they register names on a first-come, first-served basis, most (71 percent) also indicated that they operate "restricted" domains which impose limitations—such as the requirement of domicile, no transfer of a domain name registration, limiting the number of domains which any one applicant may register, or requiring official certification from a national authority—that, in effect, mitigate the potential problems arising from a first-come, first-served system. It was felt that these restrictions, as well as some of the procedural steps used, have created a regulated domain space that limits the potential number of registrations. Thus, some ccTLD administrators operating under such restrictions indicated that they are now in the process of revising their practices to establish a more open system, which might also lead to an increase in the occurrence of problems and disputes.
338. Other measures, such as using a formalized registration agreement, representing the accuracy of the information in the registration agreement and that the registration of the domain name does not infringe the intellectual property rights of a third party, were widely implemented by the administrators surveyed. It is notable that only 12 percent of the ccTLDs required payment of a fee before activation of a domain name registration, a practice that would go a long way towards preventing abuses. It is also notable that a majority of the ccTLDs (54 percent) indicated that they take steps, such as testing e-mail addresses on-line or requiring companies to present certifications of registration from the national authorities, to verify an applicant’s identity or that the contact details are correct. In addition, most of the ccTLDs (71 percent) require that such contact details must be kept up-to-date. Although 83 percent of the ccTLDs will make the contact details of registrants available in some circumstances, 46 percent of ccTLDs take some steps to protect confidentiality (such as contractual use undertakings). The use of indemnity statements and contractual undertakings by applicants is seen as an important underpinning for future action by registration authorities to rectify the register.
339. The questionnaire revealed that there is no coherent approach to dispute resolution among ccTLD administrators, although an informal conciliation role is often assumed in an effort to prevent disputes from escalating into litigation. The registration authorities indicated they are wary of becoming involved in dispute resolution and unaware of the full extent of the problems in their domains. At the same time, the implementation of remedies, such as cancellation or transfer, was viewed as an effective measure in almost all domains (with the notable exception of those domains (for example, .jp) where transfer is prohibited). Finally, it was observed that a number of ccTLDs operate an informal system of exclusions for famous marks within the ccTLD.
CONCLUSIONS, SUGGESTIONS AND REFLECTIONS
340. On the basis of the evidence presented so far in the WIPO Process, it may be concluded that intellectual property owners have experienced very considerable difficulties in ensuring the protection of their intellectual property rights in the existing gTLDs.
341. It is considered that the problems encountered by intellectual property owners in the existing gTLDs would be greatly ameliorated, without adverse impact upon legitimate practices, if:
– the recommendations made in Chapter 2 in relation to domain name registration procedures were adopted;
– an administrative procedure concerning abusive registrations of domain names, as recommended in Chapter 3, were adopted; and
– the measures recommended in Chapter 4 for the protection of famous and well-known marks were implemented.
342. We confirm the provisional recommendation in the WIPO Interim Report that, with these improved practices and procedures, not only would problems in the existing gTLDs be reduced significantly, but also it would be possible to contemplate the introduction of new gTLDs from an intellectual property perspective. However, such new gTLDs would need to be introduced in a slow and controlled manner in such a way that experience with the proposed improved practices and procedures can be monitored. That experience will be the arbiter of whether the proposed improved practices and procedures do indeed result in a significant reduction of the problems that have been encountered by intellectual property owners.
Differentiation
344. In addition to reference to experience as a means of controlling any perceived harmful effects of introducing new gTLDs, as discussed above, consideration could also be given to differentiation as a means of accommodating both the interests of intellectual property owners and those of other constituencies in the addition of new gTLDs.
345. It is clear that many Internet constituencies highlight the importance of the Internet as a non-commercial communications network, and are therefore concerned that any overzealous implementation of measures proposed for the protection of intellectual property may result in significant limitations on other important rights and interests.
346. The WIPO Interim Report signaled that one approach to bridging the differences in views between those with differing conceptions of the use of the Internet might be to acknowledge the multi-dimensional use of the Internet (and domain names) by introducing a differentiation in the name space between commercial and non-commercial domains. As indicated in Chapter 2 above, it is considered that this approach requires further reflection, elaboration and consultation. We add, at this stage, only that, if any non-commercial domain were introduced, the desirability of extending exclusions for famous and well-known marks to such a domain would also need to be carefully considered.
The Impact of New Navigational Measures
347. Current controversies regarding the DNS and trademarks find their origin in the mnemonic function of domain names. For the general public, easy-to-remember domain names are among the primary navigation tools for the Internet, as they permit direct and convenient access to websites.
348. Recent technological developments, however, may impact on the future relevance of domain names. Keyword systems, which have started to make their appearance, offer the potential to substantially reduce user reliance on domain names as Internet signposts. While various systems are available now, each with its own technical characteristics, they have one feature in common: to access a website, a user no longer needs to enter the site’s domain name in the browser location or address field. Instead, a keyword may yield the same navigational result.
349. Depending on their market acceptance, degree of use and navigational accuracy, keywords, in addition to domain names, may increasingly be relied upon to perform the function of locating businesses and their brands on the Internet. However, the same landrush mentality that applied to domain names may take hold in this area as well, as commercial and other interests seek to arrogate valuable keywords for themselves. The practices and procedures on the basis of which persons or organizations obtain keywords and the manner in which keyword systems operate may well cause difficulties similar to those now encountered in relation to domain names.
350. While some of the systems allow parties to share the same keyword, other systems do not permit this. The inability to share a keyword, similar to the DNS uniqueness requirement, may lead to conflicts between persons or enterprises coveting common words that form part of marks as keywords. Furthermore, the fact that certain systems allow generic terms (such as "golf", "car", "book") to be employed as keywords may further complicate matters, as it undercuts the keyword’s core functionality, namely, the identification of a website with a reasonable degree of particularity. The grounds and procedures for the attribution of keywords may, if not properly conceived, lead to problems similar to those that have resulted from less than optimal domain name registration practices.
351. Potential concerns are well illustrated by way of the following example. Several businesses, located in various regions of the world, have registered domain names with the common element "telecom" in each. The list includes SymmetriCom, Inc. (www.telecom.com), Telecom UK Ltd. (www.telecom.co.uk), TWX Telecommunications GmbH (www.telecom.de), Telecom s.r.l. (www.telecom.it), Telstra Corporation Ltd. (www.telecom.com.au) and Swisscom (www.telecom.ch). Nonetheless, some of the currently available keyword systems direct a user entering the keyword "telecom" only to the website of SymmetricCom, Inc., without any reference to the other companies. Depending on how widely these particular systems are used, this may impact on the companies’ visibility on the Internet. Potential concerns in this respect are reinforced by the fact that certain keyword systems are incorporated into and interoperate with the most popular Internet browsers, further leveraging the marketing power of the keywords registered therein.
352. Only the future can tell to what extent the debate may shift from domain names to keywords, and market acceptance of keyword navigation systems will play a determining role in this respect. However, many of the same positions and arguments heard in the domain name controversy may resurface.
FOOTNOTES
[179] See WIPO RFC-2, paragraphs 19-23; United States Government White Paper, Section 8; and the recently agreed Memorandum of Understanding between the United States Department of Commerce and ICANN (MoU), in which ICANN agrees to:
"[c]ollaborate on the design, development and testing of a plan for creating a process that will consider the possible expansion of the number of gTLDs. The designed process should consider and take into account the following:
…
"d. Recommendations regarding trademark/domain name policies set forth in the Statement of Policy [White Paper]; recommendations made by the World Intellectual Property Organization (WIPO) concerning: (i) the development of a uniform approach to resolving trademark/domain name disputes involving cyberpiracy; (ii) a process for protecting famous trademarks in the generic top level domains; (iii) the effects of adding new gTLDs and related dispute resolution procedures on trademark and intellectual property holders; and recommendations made by other independent organizations concerning trademark/domain name issues." (Article V.C.9.d.).
The MoU provides that the following factors should also be taken into account: the potential impact of new gTLDs on the Internet root server system and Internet stability; the creation and implementation of minimum criteria for new and existing gTLD registries; and potential consumer benefits/costs associated with establishing a competitive environment for gTLD registries (Article V.C.9.a.-c.).
[180] The Postel Internet-Draft is referenced at http://www.iiia.org/lists/newdom/1996q2/0259.html in the Newdom listserver archive.
[181] The Revised Internet-Draft is referenced at http://www.iiia.org/lists/newdom/1996q2/0289.html in the Newdom listserver archive.
[182] See http://www.gtld-mou.org/draft-iahc-recommend-oo.html.
[183] Proposed Rule for the Improvement of the Technical Management of Internet Names and Addresses, Docket No. 980212036-8036-01 (January 30, 1998) (the Green Paper).
[184] The White Paper (Section 7) provided the following policy guidance on adding new TLDs:
"At least in the short run, a prudent concern for the stability of the system suggests that expansion of gTLDs proceed at a deliberate and controlled pace to allow for evaluation of the impact of the new gTLDs and well-reasoned evolution of the domain space. New top level domains could be created to enhance competition and to enable the new corporation to evaluate the functioning, in the new environment, of the root server system and the software systems that enable shared registration."
[185] This principle of doing no harm was most recently stated by President Clinton on November 30, 1998, in a speech addressing progress in electronic commerce.
[186] See, the Internet Architecture Board’s Comment on the Green Paper, paragraph 2 (February 23, 1998). For example, the addition of very large numbers of TLDs (for example, allowing arbitrary domains to be established for any and all interested parties) could cause scaling and implementation problems in the current DNS due to the potential flattening of the domain name lookup process.
[187] See, in this respect, Amendment No. 11 to the Cooperation Agreement between NSI and the United States Department of Commerce, which entered into force on October 7, 1998 (NCR-9218742). This agreement provides in relevant part that: "In order to create an environment conducive to the development of robust competition among domain name registrars, NSI will, either directly or by contract, develop a protocol and associated software supporting a system that permits multiple registrars to provide registration services within the gTLDs for which NSI now acts as a registry (Shared Registration System)."
[188] The recent bidding for the top-level domain ".tv," which is the ISO 3166 two-letter code for Tuvalu, illustrates the commercial potential that some would attribute to such country domains. It was reported that one of the bidders promised US$ 50 million in advance for the contract to administer the domain. See Andrew Raskin, "Buy This Domain," WIRED (September 9, 1998) (http://www.wired.com/wired/archive/6.09/tuvalu_pr.html).
[189] One analysis was presented as a comment to WIPO RFC-1 by Mr. Milton Mueller, Associate Professor at Syracuse University School of Information Studies (USA). With respect to the incidence of domain name disputes involving intellectual property, the Mueller study concludes that, on the basis of statistical evidence, actual infringement cases constitute a very small number in the gTLDs. A critique of this study was submitted as a comment to WIPO RFC-2 by Mr. Jacob Jacoby, Professor at the Leonard Stern Graduate School of Business, New York University (USA), and Mr. Leon B. Kaplan, President of Princeton Research and Consulting Center Inc. (Princeton, NJ, USA). The Jacoby and Kaplan critique takes issue with the Mueller study on the basis that there is no scientifically defensible basis for the conclusions contained therein.
[190] Network Solutions Inc., the registration authority for the nearly 4,500,000 names registered in the open gTLDs, has indicated that it has received approximately 5,400 trademark-related complaints resulting in the application of its Dispute Resolution Policy in approximately 2,600 instances. While the number of disputes which have been brought to NSI’s attention is low in relation to the total number of domain name registrations in these gTLDs, considered absolutely these numbers nevertheless represent a significant level of conflicts.
[191] See Intellectual Property on the Internet: A Report Commissioned by MARQUES (the Association of European Trade Mark Owners), was based on a mail survey in which responses from 60 entities were received from 24 countries in Africa, Asia, Europe, Latin America and North America. The majority of respondees were directors, heads of trademark departments or partners of law firms specializing in intellectual property. See also International Association for the Protection of Industrial Property, Group Reports Q143: Internet Domain Names, Trademarks and Trade Names, XXXVIIth Congress, Rio de Janeiro, 1998 (Yearbook 1998/VI).
[192] See Comment of Ms. Sally Abel of International Trademark Association (San Francisco Consultation).
[193] See Comment of Ms. Susan Anthony of MCI Worldcom (Washington Consultation – 1998).
[194] See Comment of Ms. Sarah Deutsch of Bell Atlantic (Washington Consultation – 1998).
[195] See Comment of Ms. Marilyn Cade of AT&T (Washington Consultation – 1998).
[196] See Comment of Mr. Gregory Phillips of Johnson & Hatch for Porsche (San Francisco Consultation).
[197] See Comment of Ms. Michelena Hallie of Viacom (Washington Consultation – 1998).
[198] See Comment of Ms. Susan Anthony of MCI Worldcom (Washington Consultation – 1998).
[200] See Comment of Ms. Michelena Hallie of Viacom (Washington Consultation – 1998).
[201] See Comment of Ms. Anne Gundelfinger of Intel (San Francisco Consultation).
[202] See Comment of Mr. Nils Montan of Warner Bros. (San Francisco Consultation).
[203] See Comment of Ms. Shelley Hebert of Stanford University (San Francisco Consultation).
[204] See Comment of Electronic Frontier Foundation (November 6, 1998 - RFC-2).
[205] Pokey.org and Veronica.org were domain names registered in the names of children, for their non-commercial use, but were identical to an existing trademark and therefore apparently frustrated the trademark owners' desire to register the coinciding domain name. See Comment of Ms. Ellen Rony (Washington Consultation - 1999).
[206] In that case, Roadrunner Computer Systems, which had used the domain name for two years to market their Internet services, challenged NSI's dispute resolution policy after the trademark owners invoked the policy to assert their right to use the domain name. The suit was dismissed after NSI agreed not to disrupt Roadrunner's use of the domain name in the absence of a court order. See Roadrunner Computer Systems, Inc. v. Network Solutions, Inc. No. 96-413-A (E.D. Va. complaint filed March 26, 1996), dismissed (June 21, 1996) (at http://www.patents.com/nsicpt.sht).
[207] See Comment of Mr. Srikanth Narra (March 26, 1999 - RFC-3); Comment of Ms. Jane and Mr. Helmut Hirsch (March 14, 1999 - RFC-3).
[208] See Comment of Mr. Kurt Opsahl & Co-Signatories (March 19, 1999 - RFC-3); Comment of Domain Name Rights Coalition (March 20, 1999 - RFC-3).
[209] See Comment of Mr. Rocky Cabagnot (March 18, 1999 - RFC-3).
[210] See Comment of Government of United States of America, Office of Advocacy U.S. Small Business Administration (March 19, 1999 - RFC-3); Comment of Mr. Eric Menge (Washington Consultation – 1999); Comment of Mr. Michael Doughney (Washington Consultation – 1999).
[211] See Comment of Mr. Eric Menge (Washington Consultation – 1999), who described the reliance of small businesses on the Internet, stating that, as of November 1998, 41 percent of all small and mid-size businesses in the USA have a website, and 22 percent of those businesses use the Internet to sell goods and services (Washington Consultation - 1999).
[212] Comment of Davis & Schroeder that "[n]inety percent of the demands my small clients get from big companies no longer even make a pretense of there being any real trademark issue, they just say 'I went to register my trademark as a domain name and found that you were using it - give it to me!’" See also Comment of gjohnson@season.com (March 19, 1999 - RFC-3); Comment of Mr. Peter Rony (March 15, 1999 - RFC-3).
[213] See Comment of Government of Australia (March 30, 1999 - RFC-3); Comment of ACM and the Internet Society (March 25, 1999 –RFC-3); Comment of DNRC (March 20, 1999 - RFC-3); Comment of Mr. Kurt Opsahl & Co-Signatories (March 19, 1999 - RFC-3); Comment of Mr. Milton Mueller (Washington Consultation - 1999); Comment of Ms. Shari Steele (Washington Consultation - 1999); Comment of Mr. Michael Doughney (Washington Consultation – 1999).
[214] Comment of Mr. Michael Doughney (Washington Consultation - 1999).
[215] See Comment of Mr. Paul Kane of Internet Computer Bureau (Brussels Consultation – 1998). See also Comment of Electronic Frontier Foundation (November 6, 1998 - RFC-2).
[216] See Comment of the Government of India, Department of Industrial Development: Ministry of Industry, (November 6, 1998 - RFC-2).
[217] See Comment by Mr. Krishna of Andhra Pradesh Technology Services, State Government of Andhra Pradesh (Hyderabad Consultation – 1998).
[218] See Network Solutions Domain Name Dispute Policy (Revision 03) (effective February 25, 1998), at http://www.internic.net/domaininfo/internic-domain-6.html.
[219] On the other hand, NSI’s Policy does require that the third party complainant’s notice "clearly state that the complainant believes the registration and use of the disputed domain name violates the trademark rights of the complainant; the notice must also clearly allege the factual and legal bases for the belief." (Section 8(b)).
[220] See Comment of The Chanel Company (November, 4 1998 - RFC-2).
[221] See Comment of International Intellectual Property Alliance (November 6, 1998 - RFC-2).
[222] RIPE CENTR Response to the Green Paper, at http://www.ntia.doc.gov/ntiahome/domainname/130dftmail/03_13_98.htm.
[223] For instance, the large majority of European organizations have registered their domain names with one of the ccTLD registries.
[224] Statistics referred to in this section were made available by NetNames Ltd. at http://www.netnames.com.
[226] See Comment of European Community and its Member States (November 3, 1998 - RFC-2); Comment of American Intellectual Property Law Association (November 6, 1998 - RFC-2); Comment of European Brands Association (AIM) (November 5, 1998 - RFC-2); Comment of Ms. Marilyn Cade of AT&T (Washington Consultation – 1998); Comment of Ford Global Technologies (November 14, 1998 - RFC-2); Comment of Mr. Roger Cochetti of IBM (Washington Consultation – 1998)
[227] See Comment of MARQUES (November 6, 1998 - RFC-2); Comment of Mr. Neil Smith of Limbach and Limbach (San Francisco Consultation); Comment of Mr. Keith Gymer (Brussels Consultation – 1999); Comment of Mr. Nethri (Hyderabad Consultation); Comment of Mr. Martin Schwimmer (November 11, 1998 - RFC-2).
[228] For instance, the latest releases of Netscape’s browser include a feature called "Internet Keywords." A user wishing to access, for example, the website of BankAmerica Corporation would no longer be required to enter "http://www.bofa.com" in a browser, but simply "bank of america."
[229] The INternet ONE system permits such coexistence, as illustrated by http://www.lloyds.io. When a user enters a keyword that is shared by several parties in this system, a screen will appear listing all such parties together with their description, and a link to their respective websites.
[230] Centraal’s RealName system requires keywords to be unique; see http://company.realnames.com/WhatAreRealNames/GeneralFAQ.html.
[231] In Netscape’s system, entering the keyword "book" directs the user to the Barnes & Noble on-line book store at http://www.book.com. Centraal’s RealName system in principle does not accept generic terms, see http://company.realnames.com/WhatAreRealNames/GeneralFAQ.html.
[232] Compare, for instance, the policies of Netscape (at http://home.netscape.com/escapes/keywords/faq.html), Internet One (at http://www.io.io/rules.html), and Centraal (at http://company.realnames.com/WhatAreRealNames/GeneralFAQ.html); see also Estee Lauder, Inc. et al. v. the Fragrance Counter, Inc. et al. (S.D.N.Y., No. 99 Civil 382) (plaintiffs allege that keywords registered by the Fragrance Counter with Excite infringe their trademarks) (pending).
[233] Similarly entering the keyword "golf" in the same systems, directs the user to the website of one company located in the United States (www.golf.com), while several other companies exist that have used the word "golf" as a domain name, including one in the United Kingdom (www.golf.co.uk), Germany (www.golf.de), the Netherlands (www.golf.nl), Australia (www.golf.com.au), etc.
[234] See, e.g., C. Oakes, "The Next Net Name Battle," WIRED (July 20, 1998) (at http://www.wired.com/news/news/technology/story/13820.html), and G. Venditto, "Netscape’s Quiet Power Grab," Internet World (August 24, 1998) (at http://www.internetworld.com/print/1998/08/24/opinion/19980824-target.html).