Re: Implications of NSI *Skunkworks* Ruling

[Andre Marcel <andre.marcel@wipo.int>]

Duane Little wrote :
>Under the MoU, the mere registration of a name is clearly
>regarded as the virtual equivalent of a de facto infringement.

While we understand the concern that this might be the case, in
fact nothing could be farther from the truth.

We would recommend that anyone interested in this topic review
the background material contained in the Policy Oversight
Committee (POC) Request for Comments (RFC) Notice-97-03, at
http://www.gtld-mou.org/docs/notice-97-03.html, as well as the
text of the [Second Revised] Draft Substantive Guidelines
Concerning Administrative Challenge Panels (ACPs) under the
gTLD-MoU, at http://www.gtld-mou.org/docs/sracps.htm.  The
RFC period for comments on this draft has been extended to
December 5, 1997.

The draft substantive guidelines require in every case a balancing
between the rights and interests of the domain name holder, and
the rights of the intellectual property (trademark) owner who filed
the challenge.  Under the guidelines, the first-come first-served
principle is stated as the basic rule for the right to hold and use a
domain name in the gTLDs (see paragraph 10).  Cancellation of
the domain name because of conflict with an intellectual property
right is an exception to that principle, and there must be sufficient
justification for doing so. 

Accordingly, the rights and interests of the domain name holder will
be broadly taken into account when the domain name is
challenged by a trademark owner. The rights and interests that
must be taken into account by an ACP include the following,
among others (see paragraph 20 of the substantive guidelines): 

-  good faith use of the domain name by the domain name holder
on the Internet;
-  evidence of widespread public recognition of the domain name
holder's use of the domain name on the Internet;
-  any prior rights that the domain name holder may have
concerning the domain name;
-  use of the domain name holder's personal name or nickname as
a second-level domain name in a gTLD which is dedicated to
personal names; 
-  any other right to continue use of the domain name. 

An ACP must also take into account, among other things, the type
of use that is being made of the domain name on the Internet, the
impact of the use of the domain name by the domain name holder
on the challenger's business, and the impact that cancellation of
the domain name would have on the domain name holder's
customers (paragraph 34).  A finding by the ACP that the domain
name has been used by the domain name holder continuously and
in good faith on the Internet for two years is considered a
rebuttable presumption that the domain name holder is entitled to
continue that use of the domain name (paragraph 21).

The substantive guidelines for ACPs have been drafted, and
revised, in an almost year-long open and public process involving
the participation of domain name owners and Internet associations,
as well as trademark owners, trademark associations, and national
governments.  They strive to achieve a balance between the
needs and interests of users of the Internet, and those of
trademark owners and other intellectual property right holders
(themselves Internet users and domain name holders), to create
stability in the global commercial and communications environment
that the Internet has become.




Andre Marcel
Consultant, WIPO
speaking on my own behalf
<andre.marcel@wipo.int>