Request for Comments Results - last update March 16, 1998 

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*Request for Comments Results 
*Notice-97-03: Informal Summary of Submissions to the (Second Revised) Draft Substantive Guidelines for the ACPs
Many helpful comments were submitted on the Second Revised Draft of the Substantive Guidelines in response to Policy Oversight Committee's request for comments Notice 97-03. The POC would like to extend its thanks and appreciation to all those who submitted comments, and would also appreciate receiving views on the Third Revised Draft (this draft and another Request for Comments on it will be released soon).

In order to offer a brief overview of the comments received, the informal summary below highlights comments that were posted to the RFC. This table is not intended to provide an exhaustive list of all of the points that were raised in submissions, but rather to help identify some of the various points that were carefully considered. The table below is organized as follows: (I) specific comments following the table of contents of the second revised draft; and (II) more general comments.

Abbreviations and Names of Individuals and Entities Having Submitted Comments:

Bianchi : Roberto Bianchi
Bell Atl.: Bell Atlantic
BT : British Telecom
CASIE : Coalition for Advertising Supported information and Entertainment (USA)
China NIC : People’s Republic of China Network Information Center
DNRC : Domain Name Rights Coalition
Epstein : Richard H. Epstein
FICPI : Fédération Internationale des Conseils en Propriété Industrielle
Gilmore : John Gilmore
Goldberg. : Ari Goldberger
Govt. of Singapore : Government of Singapore
INPI : Institut National de la Propriété Industrielle (France)
INTA : International Trademark Association
Johnson : David R. Johnson
JTMA : Japan Trademark Association
Kane : Paul M. Kane
MCI : MCI Telecommunications Corporation
MARQUES : Association of European Brand Owners
PSWG : Private Sector Working Group
WHO : World Health Organization
 

I SPECIFIC COMMENTS
 
Title and paragraph number in the second revised draft  
¯ 		 questions or suggestions 
¯ 
forms of relief
2  INPI : "(a) measures : 
- a specific or general exclusion of the registered domain name(s); 
- a transfer of the domain name to the challenger; 
- a specific or general pro-active exclusion."
assertion of an intellectual property right
3 CASIE: restore adequate discretion to the ACPs to consider the merits of rights based on use in disputes; 
FICPI : the petitioner should have a 72 h period to demonstrate its intellectual property right should the ACP concludes that there is no such right; 
Govt. of Singapore: what happens if the IPR is not registered but has acquired goodwill? 
INPI: "the intellectual property right shall be subject to evidence"(être susceptible de preuve); 
MCI: include as demonstrable intellectual property rights new marks incorporating similar existing trademarks or which are part of family of marks. PSWG: the concept of "demonstrable intellectual property right" should be contained in the definition section and rely on a set of measurable standards i.e.: 
- proof of registration in a party to the TRIPs and/or the Paris convention; 
- evidences of uses (one provide goods or services under the mark, substantial not token use, use in commerce).
 request for provisional suspension of the domain name
4  BT: emergency ACP is unnecessary. Any domain name registration challenged within the time limit should be suspended unless the suspension is challenged by the registrant with payment of a bond; 
CASIE: the ACP might order the use of a directory as an alternative to suspending a domain name; 
DNRC: include an explicit requirement that the domain name owner may be reached and given time (7 business days) to respond prior to any action. In such a request, the trademark owner should demonstrate that the trademark is a an arbitrary one and the words could not be used by many parties in non-infringing manner; 
FICPI: no suspension of the DN unless immediate notification to the registrant who is given 48 h to rebut it. Suspension shall not be upheld unless there is clear likelihood of harm and balance of convenience favors its continuation. 
Govt. of Singapore: Is the 30 days period extendible? What if the ACP has not taken a decision within 48 hours ? 
PSWG: the deadline should be changed from 30 days to 90 days. In case of challenge the domain name should be placed on hold automatically but the ACP must work quickly to resolve the dispute;
5  JTMA: the emergency ACP should also consider the extent of the rights of the challenger to decide whether he has adequately asserted the IPR upon which a challenge may be based. 
MARQUES: the applicant for provisional suspension should disclose to the emergency ACP the use being made of the name. The decision of suspension should include a reconsideration date to confirm or invalidate the suspension. In the meantime (10 days) representations by the parties may be made.
determinations in the context of a challenge
7 Bianchi : delete (f) i.e. determination that the conflict is not appropriate for ACP procedure. Replace it by a provision under which the parties would be informed that they can undertake the dispute resolution through other procedures; the ACP would close the proceeding where both parties inform that they prefer to undertake another procedure. 
CASIE: give the ACP the authority to transfer the SLD in a more appropriate gTLD; 
INPI: id. CASIE; also add two new determinations: 
- "confirmation of the registration"; 
- "withdrawal of the application" (for a challenge or a proactive exclusion).
costs of the procedure, disposal of the bond
8 Johnson: Are there any limits to a bond ? Since the ACP can dispose of the bond, it could be a way to award damages.
first come first served principle
10, 11 Govt. of Singapore : Will the first come first served principle be able to help a domain name holder owner of an IPR and whose challenger also uses the TM but to a wider extent ? 
PSGW : the principle of "first come first served" is not relevant in dispute resolution; delete both paragraphs.
the intellectual property right of the challenger
12 CASIE : see comments to paragraph 3; 
DNRC: the trademark owner should demonstrate that the trademark is an arbitrary one and the words could not be used by many parties in non-infringing manner where he requests a suspension or makes a petition for pro-active exclusion; 
INTA : for the purpose of the challenge, limit demonstrable intellectual property rights to internationally and widely known marks and the appropriate indicia of IPR (preferably objectively based criteria like those articulated in the prior draft); 
PSWG : see comments to paragraph 3;
13 PSWG: see comments to par. 3; 
search reports should have limited relevance in any ACP procedure; 
court opinion must be a body recognized as a court of competent jurisdiction by a US court or other International legal authority such as the Hague Convention; 
clarify what is meant by government opinions and relevant governmental bodies; 
delete "other tangible evidence" (too vague).
rights which may not be demonstrable
15 Johnson: make clear whether rights acquired from use are a valid base for a request; 
MARQUES : concerned that the common law rights or those resulting from unfair competition would be excluded; 
MCI: unregistered rights should receive careful consideration; 
PSWG: delete this paragraph since it appears to confuse the issue; evidence of common law rights is subject to the courts;
goods or services
16 PSWG: see response to par. 31 proposing changes to the "closely similar" standard; also insert a language that the ACP will consider the "relatedness" of goods and services.
extent of rights
17 PSWG : see response to par. 3; the ACP must lower the threshold for establishing an internationally known mark using quantitative criteria;
18 PSWG : delete this paragraph since it implies subjective inquiries on the good faith use of the domain name.
uniqueness
19 DNRC : include an explicit requirement that the trademark owner using a word which can be construed as a generic or descriptive word will bear the burden of proof that the domain name is used in the category of goods or services where the trademark owner can claim that mark; 
PSWG : delete this paragraph; ACP should not consider whether a mark is descriptive of generic term outside its field of commerce
rights and interests of the domain name holder
20 

fifth indent 

2nd indent 

20 (all)

 Johnson : mention rights relating to free expression; 
Gilmore :delete "in a gTLD which is dedicated to personal names" since the right to name one owns publication is essential to free expression : ACP should not rule for domain names used as e mail address; see also Johnson comments;  
JTMA : replace "for less than two years of continuous use" by "within two years"; 
PSWG : delete all the paragraph; this type of determination relying on subjective and complex factors appears to lie outside the scope of the ACP process;
21 PSWG : delete this paragraph ; this rebuttable presumption runs counter to presumptions under trademark laws that the trademark owner is not prejudiced from prosecuting infringers by enforcing its rights after learning of their existence.
bad faith, including trafficking
23 Johnson : when and how someone should be barred from future actions for reason of abuse of the process might be better left for case by case determinations;
25 to 30 BT : ACP should operate only in those cases or in cases where there is identity either of jurisdiction or of goods and services;
trafficking
26 BT : make clear that cybersquatting is considered i.e. under circumstances where there is no spontaneous offer to sell the domain name; 
DNRC : delete reference to spontaneous offers; should the trademark owner have some evidence of piracy it is welcome to bring the evidence forward in its own way; 
INTA : see BT comments.
bad faith registration of the domain name
28 BT : the provision of a false or misleading information in the domain name registration should be another circumstance of bad faith; 
INTA : broaden the scope to each case where the applicant has violated the registry policy with regard to obtaining and renewing domain name registration;
bad faith assertion of intellectual property rights
29 
indent 3 

29 indent 2,3,4 

29 indent 2 & 3

 FICPI: only the challenger’s intent of disrupting the domain name holder’s activities on the Internet "without good and reasonable cause" could amount to a bad faith assertion of an IPR; 
Johnson : look for objective factors wherever feasible since the "sole purpose" test will be difficult to apply in the context of on lines hearings; 
JTMA : delete indent 2 since it will be difficult to determine that while the challenge is based on a bona fide assertion of an IPR, it has been brought for the "sole purpose" of appropriating a domain name ; 
insert a "willful negligence" of disrupting the domain name activities, beside the intent, in indent 3;
multiple challenges
30 PSWG: this paragraph needs to be redrafted more clearly
similarity of the 2nd level domain name with the alphanumeric string that is the subject of  
the IPR
31 PSWG: this paragraph could be further improved : "the ACP shall consider whether the 2nd level domain name is (...) closely similar (delete "so") or dilutive to that alphanumeric string such that its use is likely to lead to the erroneous conclusion (...)"
32 Epstein: a name internationally recognized as a trademark in commerce should be granted its use within any second level domain (by including and/or limiting to the use of digits, hyphens, capital or lowercase letters or underline marks whereby the length of the second level domain with the use of hyphens or underline marks and variations for digits and letters do not extend the length of the trademark); 
Govt. of Singapore : transliterations should be considered among the factors of similarity. 
PSWG: delete the reference to the proposed gTLD in the definition of "clearly misleading" marks; 
list examples of misleading marks.
33 DNRC: see comments to paragraph 4; 
PSWG: delete all but the ACP’s consideration of whether the goods associated with the domain name are related to those offered by the trademark owner; this consideration would not need to be exercised at all for well-known marks.
potential impact on the domain name holder and the challenger
34 PSWG: What legal standard would govern the ACP’s inquiry on the potential impact ?
assertion of an intellectual property right in the petition
38 DNRC : see comments to paragraph 12 
FICPI : see comment to paragraph 3; 
INPI : see comments to paragraph 3;
39 Johnson : see comments to paragraph 23;
submission of search reports
41 JTMA: suggests to provide a list of "bona fide search firms"; 
PSWG: delete requirement of search report (see par. 13);
determinations
42 Govt. of Singapore : How would a third party be aware of a petition ? Would there be a publication for comments before a determination of made ?
filing of a petition for exception from exclusion
43 PSWG: Exceptions from exclusions should only be granted upon a showing of extraordinary evidence;
filing of a petition for modification or cancellation of an exclusion
46 PSWG : see comments to par. 43
47 PSWG : this provision invites parties to forum shop and litigate to obtain a favorable decision; this problem needs harmonization of international trademark laws;
bad faith
50,51 Johnson: see comments to paragraph 23
general exclusions
53 PSWG: see comment to paragraph 41
54 PSWG: see comment to paragraph 20
extent and uniqueness of the intellectual property rights
56,57 DNRC: see comments to paragraph 4; 
PSWG : What is meant by "sufficient extent and uniqueness"? This should only apply to well-known or famous marks; see also comments to paragraph 17.
appeals
60 FICPI : broaden the scope of appeals; 
INPI : delete the paragraph (typically no appeal in an arbitration proceeding); 
Johnson : make clear where and how an appeal is taken through cross references to the best sources of information on that topic; 
Kane : either party should be able to reserve the right to have their appeal heard before a court of appropriate jurisdiction; 
MARQUES : allow the submission of further evidence in an appeal; 
PSWG: What constitutes an obvious mistake of fact or a determination that is manifestly unreasonable ?
publication and implementation of ACP determinations
61 Johnson : What is the plan for systematic publication and dissemination of precedents? Is there any plan to produce an organized gloss and treatise on the subject of rights and duties in net identifiers ? 
Bell Atlantic, PSWG : What power has the ACP to enforce its determinations and impose sanctions for non compliance ?
 
II GENERAL COMMENTS
 
Title and Summary
 Done by
prevention of disputes
The domain name applicant should be able to provide information on the intended use identifying the goods and services according to the Nice classification; BT 
POC is urged to create guidelines which address the inequities in the current domain name assignment, for example through a directory solution; CASIE
Each national network information center should be the only one able to register as second level domain names ISO 3166 country codes and well accepted names of its country and their variations; China NIC
Internationally known marks should be made unavailable by the registrars as second level domain name under any TLD, including ISO 3166 TLD subject to the agreement of the countries; Epstein
The substantive guidelines must expressly state that they do not apply to any previously registered second level domain name; Goldberg
POC should work out a rationalization of the domain name system management, through the implementation of a "naming charter" which at least would define the field of sector of activity for each new gTLD; INPI
POC should not introduce any more than one or two new gTLDs at the start; PSGW (this view is not supported by MCI, one of the PSWG members)
Other dispute settlement systems
POC should consider the advantage of multiple providers for domain name dispute resolution with a centralized appellate body to ensure consistency; CASIE
The Guidelines must provide some perspective for the concurrent jurisdiction of local courts or other courts in domain name proceedings; CASIE 
Bell Atl. 
MARQUES
WIPO is not an appropriate neutral party to administer even the procedural aspects of an ACP; DNRC
Mediation would be preferable to solve domain name disputes (quick, flexible, lower costs); INPI
The ACP should be free to recommend other dispute settlement systems; INPI
ACP proceedings
There must be a database for Internet domain name applications and decisions; FICPI
Allow several languages in the ACP proceedings; INPI
Ensure low cost for the parties as a counterpart of the WIPO monopoly on the administration of the system; INPI
Reduce the complexity of the proposed procedures; make them more "user friendly" for any Internet user; INPI, Johnson
The ACP will need to make direction as to the mode of conducting hearings bearing in mind the technical capabilities of the parties; MARQUES
Allow some initial consideration prior to the instigation of the ACP to establish the appropriateness of the procedure. MARQUES
ACP substantive guidelines
Should be limited to "clear cut cases" namely those involving trafficking, cybersquatting, use of same or substantially same name where domain name registrant has no demonstrable IPR and provision of false or misleading information on the domain name registration; BT
The ACP must be empowered to address each situation on its merits; CASIE
Future substantive guidelines must include a statement of principles or substantial provisions protecting free speech versus the exclusive use of a term under a trademark, namely generic/dictionary terms; DNRC 
Gilmore 
Johnson
 Replace paragraph 2(f) of the gTLD-MoU and the CORE-MoU with "a policy shall be implemented that a second level domain name which is identical to or so similar to an alphanumeric string as to be likely to lead to the erroneous conclusion of a connection to, or approval by, the challenger thereof, or is likely to unfairly weaken or damage the rights of the challenger thereof, and for which a demonstrable intellectual property right exists may be used only by, or with the authorization of, the owner of such demonstrable intellectual property right." FICPI
Trademark law and its principles should prevail over addressing standards; INPI
Should be limited to "clear cut cases" involving internationally (and widely) known marks; INTA, MCI
Should be simplified into few core principles and some lists of factors to be considered with more emphasis on the essential showings required; Johnson
The threshold for entry to the "unique group" of those who can obtain a proactive exclusion must be higher; Kane
Interested parties should be able to challenge domain names which are identical to International Non proprietary Names (INNs); WHO
Jurisdiction
An instance which could trigger ACP decisions should be defined; Bell Atl. 
MARQUES 
PSWG
The Domain Name applicant should be able to opt in for the ACP jurisdiction over its domain name disputes; DNRC 
MARQUES
Registrars must abide by national court decisions concerning Internet domain names even if they override a previous ACP decision; FICPI
Information about the various registrars, databases, Internet service providers, applicants and challengers should be available for the purpose of providing them in any court proceeding; FICPI
Other general comments 
Some immediate efforts should be made for an international treaty or cooperative agreements for the purpose of standardizing rules concerning Internet access, Internet providers, conditions for domain names applications and provisions for reciprocal enforcement between jurisdiction; FICPI
Disputes about second level domain names in the other gTLD ad ISO 3166 TLD should be quickly covered by the ACP; FICPI 
MARQUES
The registration of second level domain names under the ISO 3166 TLD provides an adequate answer to piracy; INPI
WIPO should announce a schedule to begin the harmonization of the necessary trademark laws that affect the domain name process. PSWG
 
*Notice-97-02: Review of new generic Top Level Domains (gTLDs)
The gTLD-MoU interim Policy Oversight Committee, after: has concluded a review of the 7 gTLD names suggested in the final report of the International Ad Hoc Committee's (IAHC's) Recommendations for Administration and Management of gTLDs.  The conclusions of this review are: Therefore, the revised names of new gTLDs are:
.firm for businesses, or firms 
.shop for businesses offering goods to purchase
.web  for entities emphasizing activities related to the World Wide Web
.arts for entities emphasizing cultural and entertainment activities
.rec for entities emphasizing recreation/entertainment activities
.info for entities providing information services
.nom for those wishing individual or personal nomenclature, i.e., a personal nom de plume
For further details on this topic, see the gTLD-MoU Frequently Asked Questions, Sections 2.1 - 2.3, 2.5 - 2.6 and Section A (Background) of Notice-97-02.

Specifically, in the public ratings received for the suggested gTLD names in the IAHC final report, each had a majority rating of "strongly approve" or "approve" except for .store. A majority of respondents indicated that .store should be replaced by .shop.

A more detailed review of responses to Notice-97-02: Review of new generic Top Level Domains (gTLDs) will be released in the future by the interim Policy Oversight Committee.

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