This replaces INTA's November 21, 1997 electronic submission on the
subject of RFC 97-03. That earlier submission, which was in draft
form, should be disregarded as it was inadvertently forwarded in lieu
of the final text of INTA's response, which appears below. We
apologize for any inconvenience that may have resulted from this
omission. We are also forwarding a hard copy of our response to Mr.
Shaw's attention via courier.
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INTA appreciates the significant effort WIPO has made in studying the
issues presented in attempting to restructure the objective guidelines
needed to implement the gTLD-MoU policy regarding administrative
challenge panels. As we have all learned from the process, is it one
thing to state that objective standards are necessary, it is another
to attempt to articulate and develop those standards. INTA applauds
WIPO's constructive contribution to this effort, as exemplified by the
current draft. However, INTA believes that this draft far exceeds the
intent of the gTLD-MoU policy it is designed to implement, and
therefore is forced, in the absence of any applicable international
trademark law, to elaborate a set of ad hoc international trademark
law principles. INTA is open to further discussion of the issues
involved in the creation of international trademark law, but believes
that such crucial global legal issues must be very carefully
considered and strongly believes that "international trademark law"
should not be created ad hoc by ACP decisions.
CONCERN
While INTA continues to believe that the ACP concept may be
successfully employed as a swift and cost-conscious means of
addressing some of the more blatant pirating problems with domain
names, INTA does not believe that the ACPs are an appropriate forum
for less clear cut domain name conflicts.
The IAHC designed the ACPs to implement a very specific policy now set
forth in the gTLD-MoU: "a second-level domain name in any of the
CORE-gTLDs which is identical or closely similar to an alpha-numeric
string that, for the purposes of this policy, is deemed to be
internationally known, and for which demonstrable intellectual
property rights exist, may be held or used only by, or with the
authorisation of, the owner of such demonstrable intellectual property
rights." gTLD-MoU, Article 2(f). Further, the IAHC plan states :"an
administrative domain name challenge panel (...) would not have
authority over the parties in a given challenge, and would not have
any authority to review or enforce any national or regional
intellectual property right or obligation, other than to determine if
a second-level domain name is held in violation of the policy set out
above." Section 7.1.2.
INTA has in the past worked with IAHC and WIPO in crafting the
previous draft guidelines implementing the above policy.
The new draft guidelines, while accomodating some concerns voiced
about the threshold requirements for bringing an ACP challenge, go
well beyond this same policy. WIPO expressly recognizes this fact in
section II of the draft Guidelines (October 2, 1997), Interpretation
of the gTLD-MoU policy, where it states that the section is
"reserved", and notes: "Depending on the final approach adopted for
these Substantive Guidelines, the gTLD-MoU policy (Section 2(f)) may
have to be amended. Therefore, these two introductory sections will be
revisited after the initial comment period on the substantive portion
of the guidelines is completed."
As a matter of regulatory procedure or governance, to first define
guidelines and then subsequently modify the underlying policy to fit
the guidelines designed to implement the policy seems akin, to use the
old adage, to putting the cart before the horse. Moreover, to proceed
on this course could jeopardize the support of some of the over 175
signatories to the gTLD-MoU, because this course so far exceeds the
original intent of a key portion of the MoU.
The new draft guidelines do particularly go beyond the scope of the
initial intent where they call upon the ACPs (in particular in III.C)
to assess and possibly rule on a complex fact-intensive situation
regarding the equities between the two parties (the trademark owner
and the domain name holder) as opposed to a narrowly-defined and
objectively-based inquiry regarding the trademark owner's
demonstrable intellectual property rights and interests.
While such a fact-intensive inquiry and assessment is a necessity in
more complex trademark infringement situations, it requires an
applicable body of law. In the absence of applicable international
trademark law, INTA is of the opinion that the ACP is not the
appropriate forum for the creation and development of an international
"common law" of trademarks. The draft Guidelines would make the ACPs
decide disputes using the general criteria typically used by judicial
bodies to decide questions of infringement and unfair competition. As
this would happen outside the context of a judicial system, the
Guidelines give the ACPs powers to make decisions having, perhaps
large, economic significance with no counterbalancing institutional
checks on the excercise of those powers. Judicial systems have
safeguards that inhibit and remedy arbitrary or capricious
decision-making. Judges are guided by the rulings of their appellate
courts, sister courts, and jurisprudence, as well as general judicial
principles. This concern was earlier voiced by INTA with regard to
NSI's dispute resolution policy. See INTA's Internet Subcommittee
proposed Domain name Registry Policy of November 20, 1996: "InterNIC
and other NICs are fundamentally unsuited to play a judicial role,
particularly since domain name/trademark disputes are highly
contextual in nature and require a close examination of the facts and
equities of each case in order to reach a fair result."
In sum, rather than creating a system in which the ACPs may, through
the application of objective criteria and in certain limited
situations, prevent the registration of a well known trademark as a
domain name by someone other than its owner, the draft Guidelines will
operate to create a body of international common law of trademarks
outside the bounds of an established legal system.
CONCLUSION
The process of attempting to develop ACP guidelines has illustrated the
difficulty in defining objective criteria to carry out the Section 2(f)
mandate. Given this difficulty, INTA believes that, in line with the
gTLD-MoU and the earlier draft of the ACP Guidelines, the ACPs
jurisdiction should be limited to clear-cut cases where a quick and
efficient decision can be made without necessitating an in-depth
examination and assessment. This may only the case where
(1) the applicant is trafficking in domain names (as set forth in
Paragraph 26 of the draft Guidelines, with the exception that the
definition of trafficking should be broadened to encompass
"cybersquatting" where there may be no overt offer to sell);
(2) the challenger has an internationally and widely known mark and
the appropriate indicia of intellectual property rights, yet to be
defined, but in the spirit of the objectively-based criteria
articulated in prior drafts of the ACP Guidelines; or
(3) the applicant has violated registry policy with regard to
obtaining or renewing a domain name registration (i.e.
misrepresentation regarding intended use of the domain).
Sally M. Abel
Chair, INTA Internet Subcommittee