gTLD-MoU

gTLD-MoU POLICY OVERSIGHT COMMITTEE

NOTICE-97-03

ACTION: REQUEST FOR COMMENTS

SUBJECT: Review of Proposed Trademark Dispute Resolution: [Second Revised] Draft Substantive Guildelines for Administrative Domain Name Challenge Panels (http://www.gtld-mou.org/docs/sracps.htm)

ANNOUNCEMENT DATE: October 2, 1997

PRELIMINARY CLOSING DATE (For Comments on Second Revised Draft): December 5, 1997

POSTING OF A THIRD REVISED DRAFT: Approximately seven days after preliminary closing date

FINAL CLOSING DATE (For Comments on Third Revised Draft): three weeks after posting of the third revised draft

ADDRESSES: Electronic comments should be sent to notice-97-03@gtld-mou.org. Comments submitted can be in ASCII, Microsoft Word, WordPerfect or HTML. The original mail archive of submissions can be found at http://www.gtld-mou.org/notice-97-03/.

Written comments or comments submitted on diskette can be sent to:

Albert Tramposch
Director-Advisor
World Intellectual Property Organization (WIPO)
34, chemin des Colombettes
1211 Geneva 20, Switzerland
e-mail address: albert.tramposch@wipo.int

If further information is required on this notice, please contact poc-submit@gtld-mou.org.

A. BACKGROUND

1. History of the Proposed Dispute Resolution System: An Alternative to the Mandatory 60-day Wait

In fulfillment of its charter (http://www.gtld-mou.org/docs/iahc-charter.html), the IAHC, in its Draft Specifications of December 19, 1996 (http://www.gtld-mou.org/draft-iahc-gTLDspec-00.html), addressed several issues concerning conflicts between trademarks and domain names. One important proposal in the Draft Specifications was a mandatory 60-day waiting period for all domain name registrations in the gTLDs.

The 60-day waiting period was proposed as a way of making it possible for national court procedures to serve as an effective way of resolving disputes involving trademarks and domain names (for the purposes of this RFC, the term "trademarks" will be used, but it should be noted that other relevant intellectual property rights may also be involved). The waiting period, in particular, would give trademark owners sufficient time to review lists of registered domain names, and file actions in the appropriate national court before the domain name could go on-line.

There was a highly negative public reaction to the proposed 60-day waiting period. In particular, the position was expressed that the propoal would impose a large burden on all domain name holders, while the trademark conflicts it was intended to cure affected only a small percentage of domain names.

In response to the negative public reaction, the IAHC proposed, in its Final Report of February 4, 1997 (http://www.gtld-mou.org/draft-iahc-recommend-00.html), an alternative system for dealing with disputes involving trademarks and domain names: namely, an on-line dispute resolution system in which disputes would be handled quickly, efficiently and inexpensively, and which would be available immediately after the registration of a domain name. It is believed this proposed system would not burden domain names which are not subject to any conflict, and would place the burden where it belongs: on domain names for which a conflict actually exists. It is also believed that an international dispute resolution system would be appropriate for addressing conflicts in a global system of domain names such as the gTLDs, solving difficult international jurisdictional and choice of law issues, that it would efficiently deal with the problem of domain name trafficking (that is, the registration of a term as a domain name by a person which has no rights in the term, for the purpose of reselling the domain name to another person who has such rights), and that it would, uniquely, take into account the interests of legitimate domain name users as well as trademark owners.

The dispute settlement procedures contemplated in the gTLD-MoU will be administered by the WIPO Arbitration and Mediation Center (the "WIPO Center"). The WIPO Center is a private-sector function of the World Intellectual Property Organization (WIPO), the specialized agency of the United Nations which is responsible for the promotion of international intellectual property protection. WIPO is a unique international organization in having a dual character: it is both an intergovernmental organziation, and a global, market-oriented organization which serves a large clientele of private sector users through its international registration and dispute settlement activities.

2. Discussions, Meetings and Public Comments

In the months since the publication of the IAHC Final Report, there have been many discussions, meetings and public comments which have considered the proposed dispute resolution system. These have included the following:

- a series of consultative meetings involving WIPO Member States and interested intergovernmental and non-governmental organizations (including Internet organizations as well as trademark organizations) (see http://www.wipo.int/eng/internet/domains/index.htm);

- a meeting of the WIPO General Assembly, which "noted with approval" the proposed dispute settlement activities of the WIPO Arbitration and Mediation Center in connection with the gTLD-MoU (see http://www.wipo.int/eng/internet/domains/index.htm);

- meetings held in the context of the ITU (see http://www.itu.int/net-itu/dnsmeet/);

- comments submitted to IAHC and iPOC (submission address: poc-submit@gtld-mou.org);

- comments submitted to the United States Department of Commerce (see http://www.ntia.doc.gov/ntiahome/domainname/domainname.htm; a summary of the comments recevied can be found at http://www.ntia.doc.gov/ntiahome/domainname/DNSComments_SUM.htm).

- Information about the activities of WIPO in the area of trademarks and Internet domain names (http://www.wipo.int/eng/internet/domains/index.htm);

- PowerPoint overview of gTLD-MoU dispute settlement procedures (http://www.gtld-mou.org/docs/acps/index.htm); and

- An Open Letter from WIPO to the Internet Community Concerning Dispute Settlement Resolution Procedures Under the gTLD-MoU (http://www.wipo.int/eng/internet/domains/openlet.htm).

3. Summary of the Proposed Dispute Resolution System

The proposed gTLD-MoU dispute resolution system would involve three dispute resolution procedures in connection with registrations of domain names covered by the gTLD-MoU:

On-line Mediation

On-line Expedited Arbitration. This would be available in the case of an unsuccessful mediation (unless the applicant for the domain name registration had, in the domain name application form, declined mandatory submission to arbitration). Any entity wishing to submit a dispute concerning a domain name registration to expedited arbitration would be able to submit, online, a request for expedited arbitration to the WIPO Center. That Center would appoint the arbitrator, who is responsible for the conduct of the proceedings and for giving a binding decision that is enforceable in law both nationally and internationally by virtue of a well-established legal framework. The pleadings would be exchanged online, except for original evidence that may need to be submitted by expedited postal means. It is to be expected that physical hearings would not normally be necessary, and the parties and the arbitrator would be able to communicate simultaneously on a dedicated channel via a secure chat facility.

On-line Administrative Challenge Panel Procedure. This procedure would be conducted under the proposed WIPO Rules for Administrative Challenge Panel Procedures Concerning Internet Domain Names ("WIPO ACP Rules"). Those Rules are intended to implement the intellectual property policy contained in Section 2 of the gTLD-MoU, and as detailed in the draft Substantive Guidelines for Administrative Domain Name Challenge Panels. Under this procedure, panels, constituted by the WIPO Center after consultation with the parties, would give determinations in cases where an entity other than the registrant of the domain name (e.g., the holder of a trademark or other intellectual property right) challenges the registration of the domain name on the ground that it conflicts with its (the challenger's) intellectual property rights. The ACP procedures are described more fully in the following section.

Each applicant for a registration of a domain name in any of the new generic top-level domains would, in the application form, agree to submit to the dispute resolution procedures. However, in view of the finality of arbitration awards and the lack of availability of any substantive appeal from such awards, applicants would be able to decline submission to expedited arbitration (whereas they would not be able to decline submission to mediation or the administrative challenge procedures). In the event of a dispute, it would then be for the third party, which considers that its rights are violated by the domain name registration, to choose, if it wishes, to call the domain name registrant (i) to mediation followed, if the mediation is unsuccessful, by expedited arbitration (unless mandatory submission to expedited arbitration had already been declined by the applicant), (ii) to an administrative challenge panel procedure (which, as noted, includes a preventive option for a party to petition that others should be excluded from registering domain names that are identical or similar to the domain name or intellectual property rights of that party), or (iii) to other legal options, including litigation.

The focus of this request for comments is the Administrative Challenge Panel procedures, in particular, the Substantive Guidelines Concerning ACPs.

B. THE DRAFT ACP SUBSTANTIVE GUIDELINES

The first version of the Draft Substantive Guidelines Concerning Administrative Challenge Panels (ACPs) was prepared by the IAHC and posted on the www.iahc.org web site for public comment on March 26, 1997 (see http://www.gtld-mou.org/docs/acp-guide.html).

A first revised version, the [Revised] Draft Substantive Guidelines Concerning Administrative Challenge Panels (ACPs) was posted by iPOC on the www.gtld-mou.org web site on May 23, 1997 (see http://www.gtld-mou.org/docs/racps.htm).

A [Second Revised] Draft Substantive Guidelines Concerning Administrative Challenge Panels (ACPs) was recently posted by iPOC, and is the subject of this Request for Comments (see http://www.gtld-mou.org/docs/sracps.htm).

Once finalized, the Substantive Guidelines will constitute Appendix D of the CORE-MoU (see http://www.gtld-mou.org/docs/core-mou.htm).

1. Summary of the ACP Procedures

Under the proposed Substantive Guidelines, the following procedures are contemplated with respect to ACPs:

Challenges At the time a domain name is registered with one of the gTLD-MoU registrars, information about that registration will be made publicly available and searchable on the Internet. A third party which believes that its rights are infringed by the registration of such a domain name may file a Request for Challenge with the WIPO Center.

Several forms of relief may be requested by the challenger, including (i) exclusion of the second-level domain name from the gTLD, and (ii) transfer of the registration to the challenger.

The challenger must make a good-faith assertion that it holds intellectual property rights in the alphanumeric string that has been registered as a domain name. If the challenge is lodged within 30 days of the date that the registration information is made public, the challenger may request that an ACP grant a provisional suspension of the domain name that would last for the duration of the challenge procedures (challenges may be filed later than the 30-day limit, but in such cases a provisional suspension will not be available).

In making a determination concerning a challenge, an ACP must take into account, inter alia, the following factors, where applicable:

The extent and character of the intellectual property rights of the challenger;

The interests of the domain name holder;

Any evidence of bad faith on the part of either party, including trafficking, bad faith registration of the domain name, bad faith assertion of intellectual property rights, and multiple challenges;

Similarity of the second-level domain name and the alphanumeric string that is the subject of the intellectual property rights;

The use being made of the domain name;

The potential impact of the determination on the domain name holder and the challenger, and their respective customers;

Any third party rights.

Petitions The following petitions may also be filed: (i) a Petition for Pro-Active Exclusion, whereby the exclusion of a domain name could be requested before a conflicting domain name is registered; (ii) a Petition for Exception from Exclusion, if a party believes that it should be allowed to register a domain name that had prevously been excluded; and (iii) a Petition for Modification or Cancellation of an Exclusion, based, for example, on the lapse of the trademark registration on which an exclusion was granted, or on a later, relevant national court decision.

General Exclusions Trademark owners may also request a General Exclusion, that is, exclusion of the domain name from all gTLDs in which it had not yet been registered. This would be appropriate, for example, in the case of trademarks which are unique and recognized around the world.

Appeal and Implementation Determinations of ACPs may be appealed to a larger appeal panel.

Final determinations of ACPs will be directly implemented in the CORE database by the operator of the database.

2. Community concerns that have been addressed in the [Second Revised] draft

Several major concerns that had been made known by the Internet and trademark communities in relation to the draft Substantive Guidelines are addressed in the current [Second Revised] Draft .

These concerns include the following:

- The so-called entry requirement of 35 national trademark registrations made the procedures unavailable with respect to most potential conflicts (that requirement has been deleted; a showing of an appropriate intellectual property right is now sufficient for the lodging of a challenge);

- Adequate safeguards were needed to protect the interests of domain name holders who are using their domain names in good faith on the Internet (those safeguards have been added);

- "Reverse domain name hijacking" -- that is, appropriation by a trademark owner of a domain name which had been used legitimately and in good faith by another on the Internet for several years -- had not been addressed (it is now addressed);

- There needed to be safeguards against abuse of the provisional suspension of a domain name within 30 days after registration, for example by a person who wanted to interfere with the start-up of a company's legitimate business activities (those safeguards have been added).

In addition, provisions concerning good faith have been included, and the factors which must be considered by ACPs in making a determination have been simplified and clarified.

3. gTLD-MoU Policy

In light of the changes that have been incorporated into the [Second Revised] Draft, plus the comments that will be received in response to the present RFC, the policy contained in Section 2(f) of the gTLD-MoU (http://www.gtld-mou.org/gTLD-MoU.html) will be appropriately modified. The wording of a proposed new policy will be posted in this RFC, after the initial 30-day comment period, along with the third revised draft.

C. QUESTIONS:

Comments should be directed toward the most recent draft of the Substantive Guidelines (http://www.gtld-mou.org/docs/sracps.htm).

1. Do the [Second Revised] Draft Substantive Guidelines adequately address the following concerns:

To protect the legitimate interests of trademark owners on the Internet, in particular, to make the dispute settlement procedures available in the context of as many conflicts as is appropriate;

To provide adequate safeguards in order to protect the interests of domain name holders who have a legitimate interest in continuing use of their domain names;

To inhibit, in the new gTLDs, "trafficking" in domain names that correspond to the intellectual property rights of others;

To reduce what has been referred to as "reverse domain name hijacking";

To meet due process concerns;

To provide quick, efficient and fair resolution of disputes concerning intellectual property and domain names.

2. Are there other important concerns that have not been addressed in the Substantive Guidelines?

3. Are there any other comments you have concerning the proposed dispute resolution system, or concerning trademarks/intellectual property and domain names in general?

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