WIPO TO PROBE NEW ISSUES RELATING
TO
DOMAIN NAME ABUSE
Domain name abuse came under the spotlight again this
week as the World Intellectual Property Organization (WIPO) accepted a request by
a number of countries to go a step further in its work to stamp out the bad faith
registration of domain names on the Internet. The aim is to create a stable environment
for the further development of electronic commerce and safeguard the interests of
owners of rights that are not necessarily based on registered trademarks.WIPO
helped put in place the current Uniform Dispute Resolution Policy (UDRP), which,
since December 1999, has been the basis for settling conflicts relating to trademarks
on the Internet. The year-long study that led to the implementation of the UDRP by
the Internet Corporation for Assigned Names and Numbers (ICANN) noted the need to
further study other intellectual property issues as they relate to the domain names
system.
A group of countries spearheaded by Australia (Argentina, Canada, Denmark,
European Union, France, and the United States of America) has written to WIPO Director
General Dr. Kamil Idris requesting the Organization, in line with its mandate to
promote the protection of intellectual property rights, to initiate a second round
of international consultations to address outstanding issues relating to intellectual
property and domain names. Such issues include abusive registrations of trade names,
geographical indications and other rights not based on trademarks. This request also
calls upon WIPO to draw up a list of best practices to help administrators of country
code top level domain name registries (ccTLDs) prevent and resolve domain names disputes.
WIPO
Assistant Director General, Mr. Francis Gurry, who oversaw the first WIPO Internet
Domain Name Process, welcomed this request and said that the Organization was committed
to promoting a reliable environment in cyberspace. "This request marks a new phase
in our attempts to establish greater compatibility between identifiers in the real
and virtual worlds. In examining personality rights, geographical indications and
the other areas mentioned in the request, we will be embarking on more complex, but
no less important, legal and policy terrain." Mr. Gurry noted.
The results of
this second series of consultations are expected to be submitted to WIPO’s member
states and the Internet community in the first half of 2001. "Like the first WIPO
process, these consultations will be conducted in a balanced and transparent manner.
To that end, WIPO invites all interested parties, including intellectual property
owners and other members of the Internet community, to participate. The objective,
as before, is to achieve consensus among all stakeholders on the issues addressed,"
said Mr. Gurry. Further information about the second WIPO process, and how to participate,
will soon be available on WIPO’s electronic commerce web site: http://ecommerce.wipo.int
WIPO
will continue to provide ccTLD administrators with advice and guidelines for best
practices and related dispute resolution procedures.
Background
In April 1999,
WIPO published a series of recommendations in a report entitled "The Management of
Internet Names and Addresses: Intellectual Property Issues" (see http://ecommerce.wipo.int).
This was the result of a year of intensive consultations - virtual and in person
- to address problems caused by the conflict between domain names and trademarks.
These recommendations were presented to the Internet Corporation for Assigned Names
and Numbers (ICANN), the manager of the technical aspects of the domain name system
(DNS). The Uniform Dispute Resolution Policy (UDRP), which went into effect on December
1, 1999, was among the WIPO recommendations implemented by ICANN. The dispute resolution
system is now widely regarded as an efficient, quick and cost-effective way to resolve
domain name disputes. Over 750 cases have been filed with the WIPO Arbitration and
Mediation Center, with more than 345 cases resolved since the beginning of the year.
The
first series of consultations targeted only the most problematic tensions between
trademarks and domain names, and identified a number of outstanding issues that required
further consultation. These include protection of trade names, geographical indications,
and other rights that are not based on registered trademarks. The two letters addressed
to Dr. Idris and signed by Senator Richard Alston, Australian Minister of Communications,
Information Technology and the Arts, and 19 other member states, call upon WIPO to
address these outstanding issues and to focus on helping to improve administration
of the ccTLDs. Among the issues raised in these letters are the bad faith, abusive,
misleading or unfair use of:
Personal names; (names of individuals that are targets
of abusive registration because they are distinctive or famous)
International
Nonproprietary Names (INNs); (unique and distinctive generic names of pharmaceutical
substances that are selected by the World Health Organization (WHO), and maintained
as public property to protect the safety of patients worldwide);
Names of international
intergovernmental organizations; (which are protected against use and registration
as trademarks by the Paris Convention and TRIPS Agreement);
Geographical indications,
geographical terms, or indications of source; (those expressions of ‘place-goods’
connection that give producers in a certain geographical region the right to indicate
that their products come from that region)
Trade names; (a name adopted by a
business enterprise on the basis of its character, separate to its trademarks and
service marks, that is used by the business to distinguish its commercial enterprise
from others)
Domain Names
Domain names were originally intended to facilitate
connectivity between computers through the Internet. However, as they are easy to
use and remember, they have come to constitute a form of business identifier. The
growing number of cybersquatting disputes reflects the premium businesses are placing
on domain names and their potential for facilitating electronic commerce. By using
trademarks as their domain names, businesses hope to attract potential customers
to their web sites and increase their market visibility. Domain names are now used
routinely in advertising as a means of indicating the presence of an enterprise on
the Internet.
With the growth of the Internet, domain names have increasingly come
into conflict with trademarks. The possibility of such conflict arises from the lack
of connection between the system for registering trademarks, on the one hand, and
the system for registering domain names, on the other hand. The former system (trademarks)
is administered by a public (governmental) authority on a territorial (either national
or regional) basis which gives rise to rights on the part of the trademark holder
that may be exercised within the territory. The latter system (domain names) is usually
administered by a non-governmental organization without any functional limitation
and on a first-come, first-served basis. Domain names offer a global presence on
the Internet.
Cybersquatters exploit the differences in the two systems by taking
advantage of the global, first-come, first-serve nature of the domain names system.
Intellectual property rights owners and people who register domain names in good
faith have welcomed the UDRP as a cost-efficient and speedy alternative to litigation.
For
further information, please contact the Media Relations and Public Affairs Section
at WIPO:
Tel.: +41 22-338 81 61 o 338 95 47
Fax: +41 22-338 88 10
Email:
publicinf@wipo.int