French Patents and Trademarks Office (INPI) comments on RFC-97-03

(second revised substantive guidelines

concerning administrative domain name challenge panels).

(English translation)

_____________

The French PTO takes the opportunity given by the iPOC in RFC-97-03 to comment on the second revised guidelines concerning administrative domain name challenge panels. The French PTO is pleased to note that the iPOC has taken into account critics, proposals and suggestions that were made at the two consultative meetings held in Geneva in may and september 1997. Beforehand, the French PTO would like to mention a number of principles fundamental to industrial rights holders and to reiterate the reservations it has voiced on several occasions.

- Only the registration of domain names in national TLD (iso 3166) can be an appropriate solution to the cyber-squatting issue on the Internet. Such a principle proves to be more and more appropriate to follow the development and the international spread of the Internet which makes the initial advantage of a mnemonic domain name (in comparison with an IP address) disappears as a result of the multiplication of gTLDs which will require the use of a search engine.

- primacy of trademark law over any other address rule, in accordance with the established French case law concerning disputes involving trademarks and on line codes over any other principle

- primacy of trademark law principles (territoriality and speciality)

- only the mediation procedure can solve disputes between rightholders effectively, quickly and at low costs. In this respect, it would be highly desirable to give to the ACP panelist complete freedom to promote the settlement of the dispute between the parties by the means it considers the more appropriate. By creating a system, mixing arbitration and mediation, and by creating ab initio new norms applicable to a dispute, these ACP guidelines will not contribute to give confidence to industrial property rights holders. Therefore, if ² factors to be considered in making determinations² could be proposed (such as those proposed in § IV C of the substantive guidelines) in order to help the ACP panelist to make his determination, these factors should not be recognized any substantive legal value.

Comments made hereafter can not be interpretated as supportting the general management gTLDs provisions of made by IAHC/iPOC, even though the end of registration monopoly by the creation of a number of registration entities seems positive to us.

The French PTO supports the offer made by the arbitration and mediation center of WIPO to administrate the ACP procedure, insofar as, in the view of the transnational character of the Internet alternative dispute resolution proves to be particularly appropriate to settle disputes opposing trademarks and domain names quickly, globally and at low costs.

However the French PTO could not give its support without imposing the following conditions :

- respect of multilinguism (language of procedure )

- necessity for the WIPO Center, in compensation of the monopolistic and compulsory nature of the submission of the dispute, to fix a low cost for the litigants

In consideration of this monopole, the density and the complexity of procedural guidelines for the ACPs as well as the possibilities of delaying tactics and bad faith, and systematic litigation before national courts may increase the costs and the length of the procedure.

Rationalization of domain name administration system, even though substantial modifications and improvement have been made to the initial iPOC project, the domain name administration system still does not seem to grant adequate protection of industrial property rights on the Internet. Indeed, as we voiced in several occasions, only the existence of a naming charter established after due consideration and harmonised for both gTLDs and ISO 3166 TLDs could limit disputes between trademarks owners and domain names holders. Such a rationalization before registration procedure could be carried out, at best by an adequate preliminary control ( such as NIC-France procedure ) or at least by a accurate determination of the speciality of each gTLD ( such as Nice classification, trade registry, etc. ...). In the absence of such a system and application of theses principles, the ACP procedures would only be costly placebo for the owners of Industrial Property Rights and will multiply by seven problems that NSI has come across to manage gTLDs ( .com, .org, .net)

This inefficiency is also highlighted by the problem of pre-registration of second level domain names by the registration entities which shows that there is already a number of potential disputes between applicants for domain names before the IAHC/iPOC system comes into operation.

Reducing complexity of proposed procedures. The proposed procedure rules (ACPs in particular), so accurate as they are, are far too complex to be used easily and quickly by a cybernaut. Only specialists -- lawyers, trademark attorneys -- will be able to advise the parties wishing to bring an ACP before the WIPO Center.

This extreme "juridization" seems vertically opposite with the "user friendly" character of the Internet and could increase costs of the procedure at the WIPO Center. Moreover, the creation of an appeal procedure for the determination of the ACP can only extend the length of the dispute resolution procedure. It would therefore be appropriate to go back to the essential nature of alternative dispute resolution mechanism i.e. swiftness and easiness of use. In view thereof, mediation seems particularly appropriate.

The substantive guidelines seems far too complex, they mix the procedure and its object and make it difficult to understand the proposed rules.

We still think that only mediation is appropriate to solve efficiently disputes between owners of trademarks and holders of domain names on the Internet. It would therefore be adequate to withdraw from the gTLD-MoU the reference to the ACPs and only make reference to mediation.

If the POC were to decide in another way, we strongly advise a simplification of the ACPs guidelines. To that end, we submit hereafter a proposal of procedural rules for the ACPs, established on the basis of the second revised version of the substantive guidelines of October 2nd, 1997.

* * * * *

Denis CROZE & Stéphane BESLIER.

a) Article 2 f of gTLD-MoU

b) Definitions (part III of second revised version)

"Industrial property rights" refers only to a right that has already been granted and has not expired or been otherwise invalidated.

1. Any person may file a request an ACP under the WIPO Rules for administrative challenge panel procedures concerning Internet domain names (WIPO ACP rules) as established by the WIPO Center.

2. The request for an ACP shall contain :

a) the petition(s) requested :

- partial (§ 2i) or general (§ 2iii) exclusion of the registered domain name

- transfert of the domain name to the challenger

Where a pro active petition for exclusion is filed, registration of domain name shall be automatically suspended :

i) in all of the gTLDs named when a partial exclusion petition is filed

ii) in all of the gTLDs in which the domain name is not yet registered when a general exclusion is filed (§6).

The suspension of registration shall remain in effect during the pendency of the consideration of the petition by the ACP (§40).

b) Assertion of an industrial property right ( § 3 et § 38)

The industrial property right shall :

- be likely to be proved

- contain :

- the date on which it was granted

- the name of administrative agency which granted it

c) Where applicable, the request for provisional suspension of the use of the domain name

Such a request shall be lodged within 30 days of the date on which the information concerning the registration of the domain name became publicly available, and a bond shall be posted (§ 4 and 5). The request is immediately referred to an emergency ACP which shall determine, within 48 hours, wether the use of the domain name by its holder would be suspended for the pendency of the ACP.

1. Emergency ACP

In making its determination, the emergency ACP shall consider, inter alia, the relative harm that would be suffered by the domain name holder and the challenger. For example, whether the domain name holder has its own intellectual property rights in the domain name, whether the domain name holder has begun significant good faith commercial or other activities using the domain name, and whether the challenger has adequately asserted intellectual property rights upon which a challenge may be based. ( §4 et 5)

2. Normal ACP

ACPs shall make their determinations based on a balancing of all circumstances of the case, and in particular on the factors to be considered in making determinations

ACP may make the following determinations :

1. partial exclusion (§ 7 a et 54 ii)

2. Transfert to the challenger (anc. § 7 b)

3. general exclusion( § 7 c et 54 i) *

4. Re-assigment of the domain name (new)

5. Confirmation of the domain name registration (new)

6. Dismissal of the petition requested or of the request for provisional suspension

for - sufficient showing of evidence has not been made ( § 7 e)

- conflicting rights that relatively evenly balanced ( § 7f) **

- intention to deceive ( § 39) ***

- bad faith (anc. § 50 et 51)****

After a second-level domain name has been excluded from any of the gTLDs, a future domain name applicant may only obtain the registration of that domain name in that gTLDs by filing a petition for exception from exclusion ( § 43 et 46):

on the basis of :

- a showing of some substantial independant right to use the name( § 43);

The challenger in the original of the ACP which resulted in the exclusion shall be notified the petition for exception from exclusion and shall have the opportunity to fully take part in the new procedure. (§43)

A petition for exception to exclusion can be requested, inter alia, on the ground of a relevant subsequent national or regional court final (unappealable) decision on the same subject matter. ( § 47)

ACPs shall not award monetary damages, it being understood that they may award the costs of the challenge procedure, and may make appropriate determinations with respect to any bond that has been posted, including forfeiture of the bond.

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* A determination of general exclusion is submitted to a publication period for comment before such a determination is made ( § 7c)

** In such a proceeding, an ACP may recommend that the dispute be submitted to another form of dispute resolution, for example mediation or arbitration, or to litigation before a national or regional court, this list not being restrictive ( § 7f )

*** When the assertion in the petition is found by the ACP to have been willfully false with intention to deceive, the challenger may be assessed any costs of other parties, and the challenger may be precluded from filing any requests for challenge or petitions before ACPs in the future with respect to any domain names ( § 39)

**** Where a participant is found by the ACP to have participated in the procedures in bad faith, the ACP shall disregard the contribution of the participant. The said participant may be required to bear all costs of the challenger or others parties ( § 23 et 24 ).