Jean-Jacques Joly 158, rue de l'Université

Secrétaire Général F 75340 Paris Cedex 07, France

Tel.: +33 1 44 18 89 00

Fax.: +33 1 44 18 04 23

email: joly@cabinetbeaudelomenie.fr

Paris, November 5, 1997

WIPO-World Intellectual

Property Organization

34, Chemin des Colombettes

CH-1211 Geneve 20

Suisse
 
 

Re: Trademarks and Internet Domain Names - Recommendations from FICPI to WIPO

Dear Sirs,

On behalf of FICPI, I am pleased to enclose herewith a copy of the paper drawn up by our Federation with respect to Trademarks and Internet Domain Names. This paper is submitted for consideration within the term for comments expiring on November 7, 1997.

Yours sincerely,
 
 

Jean-Jacques Joly

(FICPI CET Trademark Group)

Please note that the following comments and suggestions should not be taken as either support for, or opposition to the WIPO/IPOC proposals, or any part thereof. FICPI is merely taking the opportunity to respond to the proposals.

FICPI makes the following recommendations with respect to the proposed WIPO/ACP rules and the proposed substantive guidelines concerning administrative challenge panels.

Note: These recommendations were originally written at the conclusion of the WIPO meetings in Geneva in September, 1997. Certain recommendations which appear below were initially made by the FICPI representative at these WIPO meetings and appear to have already been considered and at least partially introduced into the [Second Revised] Draft of the Substantive Guidelines for Administrative Domain Name Challenge Panels as of October 2, 1997. However, comments on the Second Draft are being solicited until November 7, 1997, at which point a revised draft will be prepared and posted a week later. A further one month period will be allowed for comments on this third draft before the ACP Rules will also be revised. Therefore since the Rules themselves have not yet been changed, FICPI continues to make all the recommendations below as originally suggested prior to October 2, 1997, in addition to further recommendations in light of the Second Draft.

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1. That paragraph B. 3. (f) of TDN/CM/II/3, Annex II, page 2 be amended from

"a policy shall be implemented that a second-level domain name in any of the CORE-gTLDs which is identical or closely similar to an alphanumeric string that, for the purposes of this policy, is deemed to be international known, and for which demonstrable intellectual property rights exist, may be held or used only by, or with the authorization of, the owner of such demonstrable intellectual property rights.",

to

"B. 3. (f) a policy shall be implemented that a second-level domain name in any of the CORE-gTLDs which is identical to or so similar to an alphanumeric string as to be likely to lead to the harmful and 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 ... rights."

2. (a) No automatic suspension of a domain name shall take place unless there is a procedure whereby immediate notification can be given to the person whose name is suspended and access to an ACP be given to rebut the suspension within 48 hours.

(b) No such suspension shall be upheld unless there is a clear likelihood of harm and a balance of convenience clearly favours the continuation of the suspension.

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3. The threshold which has been established in the Second Draft for the Challenger to meet in respect of demonstrable intellectual property rights should be rendered more accessible by allowing the Challenger a 72 hour response time in the event that the ACP concludes that there is no demonstrable intellectual property right. Any decision made by the ACP after the Challenger has responded would be final, subject to appeal on which the Applicant must be heard.

4. Since this threshold has also been established in cases where an intellectual property right is asserted in connection with the filing of a petition for pro-active exclusion, a similar 72 hour response period should be allowed if the ACP determines that the threshold is not met, before a final decision is rendered which would be subject to appeal in the courts.

5. Section 29, subparagraph 3 of the Second Draft should be amended by the addition of the following words:

"- Where the ACP finds that the intellectual property right held by the challenger had been obtained for the sole purpose of challenging the domain name in question, with the intent of disrupting the domain name holder's activities on the Internet without good and reasonable cause,for example, where the challenger does not use the subject matter of the intellectual property right with respect to the goods or services for which it was granted;" .
 
 

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6. The appeal provisions in the ACP Rules as they currently stand should be broader in scope and less limited than the threshold requirement of an "unreasonable or obvious mistake of fact", in order to provide a meaningful alternative to the courts for parties with domain name disputes.

7. Registrars must abide by national court decisions concerning Internet domain names even if they override an ACP decision already made.

8. That clearly anyone be able to access the ACP's if they have a demonstrable intellectual property right, not just multi-national corporations.

9. There must be enough information about the various Registrars, the databases, the Internet service providers, applicants, and challengers, that they are accessible for the purposes of serving them with legal documents in any court proceeding.

10. There must be a searchable database for both Internet domain name applications and decisions.

11. Clearly, an effort must be made immediately to bring whoever it is who will be granting the .com top level domain name and country code top level domain names into the fold. Seeking some international consensus for the method of granting top level domains and methods for resolving disputes is clearly

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important. Although it will take time, some immediate efforts should be made to get talks going on an international treaty or co-operative arrangement for the purpose of standardizing rules concerning Internet access, Internet providers, conditions for applications for domain names, and provisions for enforcement and particularly for reciprocal enforcement between jurisdictions. It is imperative that these be looked at quickly and that in coming up with any treaty, that the Internet community and its needs be considered as carefully as those of the legal and intellectual property community, lest the rules be so skewed in favour of intellectual property owners, that the Internet community simply circumvents them, which remains a distinct possibility.

prepared for FICPI by

Jonathan Cohen

FICPI Trademark Group

submitted for FICPI by

Helmut Sonn

Chairman of FICPI Trademark Group
 
 

November 3, 1997