ICANN | Message from GNSO Commercial and Business Users Constituency to Paul Twomey and Vint Cerf

Message from GNSO Commercial and Business Users Constituency to Paul Twomey and Vint Cerf

21 May 2003

Date: Wednesday, 21 May 2003
From: Philip Sheppard
Subject: BC position on new WIPO recommendations
To: Paul Twomey, Vint Cerf
Cc: Louis Touton

Business Constituency position on the proposals for dispute resolution for international organisations and country names

Paul, Vint, Louis,

Please find attached the BC position paper concerning new recommendations from the World Intellectual Property Organisation. We would be grateful if you would share this with the Board and other parties engaged on this issue.

Philip Sheppard
Marilyn Cade
Grant Forsyth

Business Constituency Position Paper

Proposals for dispute resolution for international organisations and country names

Executive summary of recommendations

1. The existing UDRP relating to trademarks and domain names must remain entirely unaffected by the new World Intellectual Property Organisation (WIPO) proposals.

2. The new WIPO proposals on disputes relevant to international organisations and country names should be evaluated for both the merit of the need and the merit of the proposed solutions.

3. If any action is determined necessary a separate dispute system should be established for international organisations and country names.

Background

The Business Constituency supports ICANN's existing uniform dispute resolution policy (UDRP) which has a primary function for the resolution of trade mark and domain name disputes. The policy was originally proposed in a set of recommendations from UN-agency the World Intellectual Property Organisation (WIPO). The recommendations are known colloquially as WIPO1. The recommendations came from the WIPO standing committee on trademarks – a committee comprising representatives of national trademark registration offices. The UDRP has certain characteristics:

it is fast: a resolution is given in weeks not years.
it is non-binding on the parties to the dispute: either party can subsequently go to Court.
it is administered by panelists who are typically experts in trade mark law.

In February 2003 WIPO wrote to ICANN¹ with new recommendations (WIPO2):

to modify the UDRP to allow international organisations (91) to file complaints;
to amend the UDRP to set up a reserve-list of country names (~329) for which registration as a future top-level domain name would be exclusive to the country itself.

These recommendations, not on trademark matters, also have their origin in WIPO's standing committee on trademarks. They were not universally supported within WIPO: the US, Canada, Australia and Japan expressed opposition to one or both proposals. ICANN's Government Advisory Committee has asked the Board to act. The ICANN Board has asked the GNSO Council to advise on the matter.

The issues

There are two separate issues. Firstly, is there merit in the proposals themselves? Is there a problem that needs a solution?

Secondly, if yes, then is the proposed solution of modifying or amending the existing UDRP a good solution?

Has WIPO identified a real problem?

– International Organisations (IGOs)

WIPO identifies the problem as the claim of a false association with an IGO and/or the possibility of user deception as a result: i.e. bad faith confusion.

How many actual problems of bad faith confusion have there been?

The BC understands there have been very few. There are only 91 registered IGOs in the world. The target problem is often free-speech sites set-up by entities with a political message related to the IGO: while this is irritating, confusion as to ownership is unlikely to be lasting. Moreover, content regulation is not within ICANN's mission.
If there is a real need the correct solution, as recognised in §168 of the WIPO report² should be a new WIPO treaty because the solution would create new international law: but WIPO was not prepared to go that far. This implies that the need for any change is uncertain.

What existing protection is there?

IGOs already have a privileged domain space .int. If a bona fide registrant sets up in say .com with an identical name, would there really be confusion?
Certain IGOs have trademark registration: the existing UDRP works for them already.

Is the solution proportional to the problem?

WIPO seeks protection not only for the names but the acronyms of IGOs. The protection would not require the UDRP's cumulative tests for bad faith: the fact of registration could be enough for a successful challenge. This goes too far and, as the WIPO report showed, may involve unnecessary disputes over names such as who. Is this the World Health Organisation, the pop group or the cult sci-fi figure Dr. Who? The off-line world differentiates by being context specific. These proposals are context neutral.

Is there a better solution?

IGOs can only register once in .int. ICANN should allow IGOs to have multiple registrations (such as the name and the initials) in the .int space.

– Country names

WIPO identifies the problem as the claim of a false association with a country and/or the possibility of user deception as a result: i.e. bad faith confusion.

How many actual problems of bad faith confusion have there been?

The BC understands there have been very few.

What existing protection is there?

This protection already exists for the .info domain name: is this not sufficient?

Is the solution proportional to the problem?

For countries to do on-line what they do not do off-line is inconsistent. Country names are used in areas such as trade, tourism and education by trademarks, and by company and organisation names. Insisting on potential exclusivity for all future domain names is disproportional to the perceived problem.
The solution is short-sighted. It was conceived in a world where .com is the dominant gTLD: the abuses cited often related to .com. In the future there will be many more gTLDs where adequate differentiation will be achieved so reducing the likelihood of confusion.

Is there a better solution?

Creating a new gTLD with registration exclusively for governments is a more elegant way to reduce consumer confusion.

It makes no sense to change the existing UDRP

The existing trademark UDRP is quite different to the new types of dispute resolution proposed.

In relation to IGOs, UDRP panelists would in effect be setting new international law. They are not qualified to do this.
In relation to country names, §234 of the WIPO report³ recognizes that the legal entitlement of a country to its corresponding name at the international level is not firmly established. There is no jurisprudence, similar to the century of trademark jurisprudence, to guide a dispute resolution panelist in this field.
The current proposals are flawed and may result in contested resolutions. This would bring the existing UDRP for trademarks into disrepute.

A separate system is needed because the characteristics of the solution proposed by WIPO differ significantly from the characteristics of the existing UDRP.

Characteristic	Trademark UDRP	IGOs	Country names
Non-binding nature: resource to Court possible	Yes	No	No
Panelists expertise in trademark law relevant	Yes	No	No
Protection based on reserve-list	No	No	Yes
History of relevant jurisprudence	Yes	No	No

Recommendations

1. The existing UDRP relating to trademarks and domain names must remain entirely unaffected by the WIPO2 proposals.

2. The new WIPO proposals on disputes relevant to international organisations and country names should be evaluated for both the merit of the need and the merit of the proposed solutions.

In this evaluation it should be remembered that both proposals are political compromises. In the case of IGOs, certain countries had specific disputes but WIPO did not agree to the more courageous solution of a new treaty. In the case of country names, WIPO has plucked this one item out of an on-going debate on other geographical names, and has not yet addressed the relevant complications.

3. If any action is determined necessary a separate dispute system should be established for international organisations and country names.

Notes:

1. http://www.icann.org/correspondence/gurry-letter-to-cerf-lynn-21feb03.htm

2. http://wipo2.wipo.int/process2/report/html/report.html

3. http://wipo2.wipo.int/process2/report/html/report.html

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