BT welcomes the continued efforts of WIPO/iPOC to establish basic
principles for operation of ACPs to address some of the trade
mark/domain name conflicts.
BT particularly approves the opening of the ACP process to use by any
holder of a relevant, demonstrable intellectual property right.
The specific identification and definition of "trafficking" as an
unacceptable activity is also helpful, but could usefully be expanded.
In this respect, Para. 26 of the guidelines should make clear that this
abuse includes the practice of "cybersquatting" on names by a person
with no relevant rights, even in the absence of any overt offer to sell,
rent or otherwise deal in the domain names concerned. In BT's
experience, the latest tactic adopted by cybersquatters is to claim that
their holdings of domain names are merely for a "private collection" and
are not intended for use. BT would recommend that such hoarding of
domain names in a collection with no bona-fide intention to use, should
be expressly condemned.
Another abuse BT has experienced is the use of aliases or name
variations by cybersquatters to hide the true extent of their
activities. Provision of false or misleading information by a domain
name registrant should be grounds for cancellation of the domain name
registration in the event of a challenge.
BT believes that the ACPs should operate only in those cases where it is
possible to make a simple and clear analysis (even if somewhat rough and
ready) on the facts. BT shares the concerns expressed by INTA that the
ACPs should not attempt to establish, de facto, a form of international
trade mark law by trying to undertake any more detailed assessment of a
"likelihood of confusion" on the basis of a wide range of competing
factors as presently listed in the draft guidelines If such detailed
analysis is required, then the case is not suitable for an ACP and
should be remitted to some alternative form of dispute resolution.
BT considers it would be appropriate for ACPs to take decisions at least
in the following situations:
i) trafficking/cybersquatting as noted above;
ii) same or substantially same name (e.g. obvious variants like:
british-telecom; britishtelecom; britishtele.com; britishtelec0m etc)
as challenger's mark in cases where domain name registrant has no
relevant, demonstrable IP rights; or
iii) false or misleading information on the domain name registration
form.
In case ii) above, it is recognised that it could be unfair to prevent
registration of a domain name in every case, particularly if a
challenger may only have limited rights itself in the mark incorporated
in the domain name. BT would propose, therefore, that in the absence of
any evidence of trafficking/cybersquatting or other bad faith by the
domain name registrant, an ACP should confine its consideration to cases
where there is identity either of jurisdiction or of goods and services.
That is where the challenger has a demonstrable IP right in the same
jurisdiction where the domain name registrant resides or does business
OR where the challenger's registration specifies goods/services included
in the domain name registrant's actual or intended use. [To assist in
this analysis, BT would suggest the domain name application form should
require sufficient information on the intended use to enable the Nice
Trade Mark class for goods/services relevant to the registrant's
intended use to be identified - a checklist based on the Nice
Classification might helpfully be included, for example.] In such
cases, it is submitted, it is reasonable to conclude that there is a
genuine potential for conflcit and the status quo ante should be
preserved (i.e. the challenger should prevail).
BT has the following additional observations on other related matters:
a) BT considers it inappropriate to introduce automatic "emergency ACP"
review whenever a request for suspension is made. In the interest of
preserving the status quo ante, when a challenge is timely made and a
bond posted then suspension should follow pending full ACP consideration
on the merits.
If a domain name registrant wishes to challenge the suspension then
equity should require it to post an equivalent bond for this to be
considered. However, since a challenger must include its grounds on
filing its challenge, then a domain name registrant should be required
to present its evidence in defence at the time it requests lifting of
the suspension. If this is done, then instead of deciding on the
suspension issue alone, an ACP would effectively be in a position to
adjudicate on the substantive issues as well. Thus, instead of a
request to lift suspension, the domain name registrant would effectively
be requesting expedited processing of the challenge and would be posting
its bond for that purpose. This would streamline the ACP process. If
the domain name registrant does not post bond, suspension should stay,
and the ACP convene in due course to a normal timetable.
b) BT notes with approval the comments in the faq.html document on the
gTLD-MoU website, under paragraph 2.9, regarding the consideration of
various options, including round-robin processing; phased introcution of
new gTLDs one-by-one; and treating all applications arriving in an
initial period as being simultaneous and attempting to resolve conflicts
before allocating domain names. These are constructive proposals, and
BT would strongly support the implementation of all these proposed
options to reduce the risk of major abuse of trade mark owners'
interests and to effect a more orderly introduction of any new gTLDs.
Keith Gymer
24 November, 1997