BELL ATLANTIC'S COMMENTS ON NOTICE 98-01

Bell Atlantic also supports the comments of the Private Sector Working Group and looks forward to working with WIPO on the continuing development of its dispute resolution policies.

As an initial matter, we urge WIPO to suspend temporarily its work on the ACP Guidelines until the issues in the U.S. Administration Green Paper are fully commented upon and the course for Internet governance is resolved. The ACP Guidelines were created as a result of the gTLD-MOU. That entire document and the future of the POC are now in question. If the suggestions in the Green Paper are supported in place of the gTLD-MOU, WIPO would be free to adopt a new model for dispute resolution that may or may not be similar to the ACP process.

For example, if the Green Paper’s suggestion that each registry adopt minimum dispute resolution processes is adopted, there may be some type of baseline but no uniformity among registries. WIPO must adopt a uniform method of dispute resolution to provide certainty and predictability to trademark owners. WIPO should offer a single uniform method of dispute resolution to every registry and other entity involved in the collision of trademarks and domain names.

In the interim, Bell Atlantic offers a few substantive comments and questions on the third draft guidelines. The guidelines are well written and much easier to understand than previous drafts.

The Third Revised Substantive Guidelines are by definition limited to the narrowest cases of "manifest imbalance," including cybersquatting and piracy. It is not clear from the guidelines exactly how imbalanced the rights must be. For example, for the ACP to work, must the challenged party have no rights, weak rights, or proportionally smaller rights than the challenging party? If the answer is no rights, then the role of the ACPs would appear to be cut to apply to only a very small percentage of the trademark disputes that arise in this area. Again, we believe it would be prudent for WIPO to wait until the issues raised by the Green Paper resolve themselves before committing themselves to this particular model.

The changes made on requirements to obtain proactive exclusions are generally very good. The new language however, makes it hard to predict whether one could actually succeed at obtaining an exclusion. There must be some clarification (informal or otherwise) to trademark owners about whether a claim would be likely to succeed. Trademark owners may be reluctant to apply for such exclusions if they do not know if they can reasonably prevail. A more dangerous result of the failure to obtain such an exclusion is the possibility that a national court could later falsely interpret WIPO’s refusal as indicative of weak rights in the trademark.

The section on time limits should be clarified to indicate that the ACP shall not consider any claim that is submitted more than three years after the date of registration or exclusion ONLY IF the registrant has not changed its use of goods or services associated with that domain name to infringe upon the rights of a third party.

With respect to suspensions, Bell Atlantic still supports the automatic suspension of the domain name, especially in light of the fact that there may be no waiting period prior to registration. We would suggest the inverse procedure from what is suggested, namely, that the domain name is automatically suspended and that the registrant bear the costs of invoking an emergency ACP to determine whether to lift the suspension. In this way, the financial burdens of the ACP process can be shared more equitably among the parties.

A number of other important issues still remain to be answered. For example,

• The Third Draft is not linked to WIPO’s effort to harmonize trademark laws. Without such linkage, it is a partial solution that will not lead to the change of inadequate protection for trademarks in many countries. The smarter pirates and infringers will certainly forum shop in order to exploit these differences and will take necessary steps to make sure that WIPO cannot adjudicate their claims due to the "manifest imbalance" of rights. Without harmonization at some level, the collision of trademark rights and domain name registrations cannot be resolved. Bell Atlantic continues to urge for a waiting or prescreening period to be reinserted into the new Guidelines as a mandatory requirement.
• The actual legal standing of the ACPs in any and all legal jurisdictions.
• The power of the ACPs have to enforce its decisions and impose sanctions for noncompliance.
• The possibility that there will be alternative tribunals available to the trademark community to resolve these disputes.
• The actual costs and numbers of varying ACP processes. Bell Atlantic believes it is best that WIPO not offer differing and multiple dispute resolution mechanisms to each registry, directory, or other domain name service. This will result in duplicative and excessive costs and unpredictable outcomes for trademark holders.

Respectfully submitted,