[WSIS CS-Plenary] Fwd: WIPO Recommends Uniform Mechanism to Regulate Domain Name Registration

[Jonathan Cave]

I strongly endorse Milton's call to arms.  The very essence of trademark 
protection is that it is acquired through active use of a named identity 
and extends no further than the active market in which it is used.  Let the 
trademark holders first saturate the Internet wioth their identities, then 
let them seek further IPR.  I suppose there are real issues arising when a 
firm's identity is not used to siphon off business or defraud consumers in 
other ways, but in that case trademark is not a good starting point.

J.


At 16:55 02/06/2005, you wrote:

>WIPO has released a proposal to give trademark holders special,
>pre-emptive rights over domain name rgeistrations in new top-level
>domains. (see news release below) This is the kind of expanded,
>extra-legal rights that civil liberties groups involved in ICANN have
>opposed for years. The proposal would turn trademark rights - which is
>supposed to be a limited, narrow form of exclusivity designed to prevent
>consumer confusion and fraud - into a sweeping right to control how
>names are used on the Internet.
>
>I hope that WSIS civil society can express its opposition to this
>proposal. It is another example of how existing international agencies
>represent special interest constituencies (in this case, trademark
>holders) and why more balanced forums, such as WGIG, are needed.
>
>--MM
>
>=====================
>Press Release 409
>
>Geneva, June 1st, 2005
>   _____
>
>WIPO Recommends Uniform Mechanism to Regulate Domain NameRegistrations
>with
>introduction of New gTLDs
>
>
>The World Intellectual Property Organization (WIPO) has recommended
>the
>introduction of a uniform intellectual property (IP) protection
>mechanism
>designed to further curb unauthorized registration of domain names in
>all
>new generic Top-Level Domains (gTLDs). This came in a report by WIPO's
>Arbitration and Mediation Center (WIPO Center) on the IP implications
>of
>introducing additional generic Top-Level Domains (new gTLDs). The
>report,
>"New Generic Top-Level Domains: Intellectual Property Considerations",
>which
>is available at http://arbiter.wipo.int/domains/reports/newgtld-ip,
>said
>that such a preventive mechanism would complement the curative relief
>provided by the existing Uniform Domain Name Dispute Resolution Policy
>(UDRP).
>
>Introducing New gTLDs
>
>The report is based on WIPO's experience in the area of IP protection
>in the
>domain name system (DNS). "The introduction of a new gTLD presents
>particular challenges for IP owners seeking to protect their domain
>names
>against unauthorized registration by third parties. With the growth of
>Internet usage and electronic commerce, the strategic importance of
>domain
>names as business identifiers has grown significantly," said Mr.
>Francis
>Gurry, WIPO Deputy Director General who oversees the work of the
>Center. Mr.
>Gurry said that registering their entire trademark portfolio may often
>be
>the only way for IP owners to protect their identifiers from being
>"grabbed"
>by cybersquatters. "If domain names are randomly attributed in newly
>opened
>gTLDs, IP owners will be forced to compete with cybersquatters for
>their own
>trademarks - unless additional safeguards are introduced," he added.
>"Our
>new report makes practical recommendations for addressing such
>issues."
>
>New gTLD Strategy
>
>WIPO's report has been prepared in response to a request made by the
>Internet Corporation for Assigned Names and Numbers (ICANN), the
>institution
>that oversees the functioning of the DNS. Following the introduction
>of
>seven new gTLDs in 2000 (.aero, .biz, .coop, .info, .museum, .name,
>.pro),
>ICANN is developing a comprehensive strategy for further expansion of
>the
>DNS The report provides input into that strategy from an IP and
>dispute
>resolution perspective.
>
>WIPO Domain Name Experience
>
>WIPO's recommendations made in the context of the First WIPO Internet
>Domain
>Name Process in 1999 led to the adoption of the UDRP - a quick and
>cost
>effective procedure for the independent resolution of disputes that
>arise
>from the abusive registration of trademarks as domain names. Under the
>UDRP,
>a complainant must demonstrate that the disputed domain name is
>identical or
>confusingly similar to its trademark, that the respondent does not have
>a
>right or legitimate interest in the domain name and that the
>respondent
>registered and used the domain name in bad faith. The WIPO Center was
>the
>first UDRP service provider to be accredited in December 1999 and has
>since
>administered over 7,500 cases under this policy alone. The WIPO Center
>has
>also been involved in the implementation of certain trademark
>protection
>mechanisms developed by new gTLD operators, and has handled more than
>15,000
>dispute resolution procedures under such mechanisms.
>
>Need for Preventive Measures
>
>WIPO's report focuses exclusively on the IP aspects that need to be
>taken
>into account if and when such extensions of the domain name space take
>place, and does not comment on whether further extensions are necessary
>or
>desirable. The report summarizes the WIPO Center's UDRP experience,
>and
>notes that WIPO's UDRP case filing rate has remained stable over the
>last
>years and recently even increased. An additional mechanism to prevent
>unauthorized registration of domain names during the critical
>introductory
>phase of a new gTLD would, therefore, strengthen the ability to combat
>the
>still widespread practice of cybersquatting.
>
>Continued Attraction of .com
>
>WIPO's UDRP experience also shows that the first extension of the DNS
>in
>2000 has not caused significant shifts in cybersquatting or
>enforcement
>patterns. UDRP disputes continue to concentrate heavily in the .com
>domain.
>Indeed, this trend has become even more pronounced since the
>introduction of
>the seven new gTLDs. While this may partly be explained by the
>availability
>of the start-up IP protection mechanisms adopted by .biz and .info, it
>more
>likely indicates that .com continues to be the most attractive domain
>for
>trademark owners as well as for cybersquatters.
>
>WIPO's New gTLD Experience
>
>The report summarizes the WIPO Center's experience in implementing
>various
>IP protection mechanisms developed by a number of new gTLDs and
>provides a
>comparative evaluation of existing approaches (watch services,
>defensive
>registrations, exclusion mechanisms, and pre-registration mechanisms).
>It
>notes a trend among TLDs towards sunrise mechanisms, i.e. the
>possibility
>for IP owners to register their identifiers before the general public.
>Experience shows that the need for IP protection mechanisms is most
>tangible
>in open gTLDs, which are not subject to clearly defined and policed
>registration restrictions, and which accept domain name applications
>from
>the general public. The fewer restrictions and prior verification
>requirements associated with the registration process, the greater the
>risk
>of abusive registrations.
>
>Best Practices
>
>The report confirms the need for effective IP protection mechanisms to
>prevent new gTLDs from turning into cybersquatting havens and
>recommends
>that mechanisms should: be effective and minimize the potential for
>abuse;
>take account of rights and interests of third parties; and be
>practicable
>and straightforward in order to avoid undue delays in the introduction
>or
>functioning of new gTLDs.
>
>A Uniform IP Protection Mechanism
>
>In conclusion, the report recommends implementing a single uniform
>preventive IP protection mechanism across all new gTLDs. Specifically,
>new
>gTLDs would be required to offer IP owners the option of registering
>their
>protected identifiers during a specified period before opening
>registration
>to the general public. In sponsored or restricted gTLDs where IP owners
>may
>not be eligible to register domain names, IP owners could instead be
>given
>the option of obtaining defensive registrations during this initial
>period.
>Such a uniform mechanism would have a number of advantages:
>
>*       Operators of new gTLDs would not be required to develop their
>own IP
>protection mechanisms, a task for which they are not necessarily
>equipped;
>
>*       ICANN would not be required to monitor the correct
>implementation of
>multiple protection mechanisms applied by different gTLDs (now that
>ICANN's
>experimental "proof of concept" phase on new gTLDs has been concluded);
>
>
>*       IP owners would not be required to devote significant resources
>to
>understanding and using multiple different IP protection mechanisms;
>and
>
>*       The general public would benefit from enhanced reliability and
>credibility of domains.
>
>For further information please contact the Media Relations and Public
>Affairs Section at (+ 41 22) 338 81 61, Fax: (+41 22) 338 82 80,
>E-mail:
>publicinf at wipo.int.
>
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