MARQUES, The Association of European Brand Owners and its Internet sub committee welcomes this opportunity to submit comments to the gTLD-MoU POLICY OVERSIGHT COMMITTE, on the Proposed Trademark Dispute Resolution [Second Revised] Draft Substantive Guidelines for Administrative Domain Name Challenge Panels.

MARQUES is a non profit making organisation representing European brand owners and embraces all industrial, commercial and product sectorial interests. The website of MARQUES is located at http://www.martex.co.uk/marques.

MARQUES Internet sub-committee consists of Mary Bagnall, Rowe &Maw, UK, Tove Graulund, MD Foods, Denmark, Sylvain Hirsch, Cabinet Hirsch, France, Morag Macdonald, Bird & Bird, UK, Bo Thorstorp, Arla, Sweden and Nick Wood, Net Searchers, UK.

Our comments are as follows:-

1. "To Further a stable global commercial environment on the Internet World Wide Web"

1. "To protect of legitimate interests of trade mark owners on the Internet and in particular to make the dispute settlement procedures available in the context of as many conflicts as is appropriate."

Will existing domain name registrations represent Demonstrable Intellectual Property rights?

Whilst it may be difficult for the ACP to consider challenges which would be brought by a party who cannot point to a registered right we consider that there should be a procedure by which a challenge may be revisited if the intellectual property rights on which the challenge was made can be invalidated. Section 31 clearly envisages that multiple challenges may be made. In addition Section 46 provides that Excluded SLDs may be revisited if the circumstances on which exclusion was granted have changed. It is currently not clear that the question of ownership of a domain name can be revisited if the intellectual property rights on which it is based are invalidated where, for example the domain name was transferred rather than excluded.

1. "To provide adequate safeguards in order to protect the interests of domain name holders who have a legitimate interest in continuing use of their domain names"

1. The procedure enables the emergency ACP to suspend a domain name on the application of a challenger (provided a bond is posted by the Challenger). Section 5 of the Guidelines sets out the points that the ACP will consider in making its determination. These include a consideration of the relative harm that would be suffered by the domain name holder and the challenger. As the domain name holder is unlikely to have submitted his representations at the time of suspension we suggest that the applicant applying for suspension should be obliged to make reasonable inquiries as to the use being made of the name by the domain name registrant and to disclose such use to the emergency ACP. For example, the registration by the domain name holder may accompany a launch of products or services which have been the subject of enormous expenditure by a legitimate trader, also by reference to the domain name. Suspension may cause significant damage to the domain name holder (even for a few days). This may be difficult to quantify and even if quantifiable, may exceed the amount of the challenger's bond. The fact that an application to suspend may be made only within 30 days of registration offers some safeguard; we think the further safeguard of full disclosure of all the facts by the challenger is desirable.
2. We also suggest that a compulsory return date or reconsideration date should be fixed by the emergency ACP, at which time the representations of both parties and any third party wishing to intervene may be made to the panel. This return date could be fixed by reference to the time by which the domain name holder must respond under the normal procedure which is 10 days from the date of commencement of the challenge. On this date the representations of all parties would be considered by the (emergency) ACP and the suspension either confirmed or discharged for the duration of the challenge procedures.

1. "To inhibit, in the new gTLD's, "trafficking" in domain names that correspond to the Intellectual Property rights of others" and "To reduce what has been referred to as "reverse domain name hijacking"

1. "To provide quick efficient and fair resolution of disputes concerning intellectual property and domain names"
1. The ACP procedures assume that all domain name holders have the technical expertise to conduct the procedures on line. However not all domain name holders necessarily have access to the Internet. Some are on an Intranet or have only limited access to the Internet. Some have only limited numbers of trained technical people. We think that the ACP will need to make directions as to the mode of conducting any hearing, particularly bearing in mind the technical capabilities of the parties. Hearings by video conferencing would be a possibility but not all jurisdictions will have easy access to the necessary equipment.
2. We would like the position regarding costs clarified to ensure that the ACP has the ability to order fixed sums regarding the costs of the challenge procedure. Although the WIPO rules provide for reasonable expenses to be recovered, it is not clear that this will include costs of prosecuting or defending the challenge rather than fees and expenses. The costs award should fairly reflect the costs incurred rather than the small level of costs ordered in, for example, some trade marks registries. We suggest that the ACP should be able to make a costs order at the conclusion of the challenge procedures. The parties could disclose their costs and a simple breakdown which would enable the ACP to make an appropriate award.
3. We are concerned as to how effectively any award of costs could be enforced and would appreciate clarification regarding this.
2. Other comments and concerns

1. Article 7 of the core MoU requires that registrars include in their registration agreements and application forms for assignment of SLDs paragraphs whereby the applicant agrees to be bound by the ACP decisions, and (unless the domain name applicant has ticked the box opting out of mandatory submission to arbitration) shall also be bound by the decision of the arbitrator. Does this mean that the decision of the ACP cannot be challenged in the Courts? How is it proposed that the ACP will deal with the question of recognition of decisions of national courts? If a Greek Court and a US Court reach different decisions relating to the same trade mark, for example, what stand will the ACP take when assessing the rights in that name of a domain name holder and challenger?.
2. We note that appeals from the ACP are to an Appeal panel. We question whether there should be a higher, perhaps judicial, forum for appeal. We appreciate that it is difficult to find an appropriate forum in view of the international nature of the procedures. It occurred to us that, although not convened for the purpose, the International Court of Justice could play a role. We would welcome discussion and clarification regarding the whole issue of the jurisdiction of the ACP and the relationship between the ACP, decisions from the appeal ACP and decisions of national courts.
3. Appeals will be based on the information and materials that were presented to the ACP in the proceeding and will be based on whether there was an obvious mistake of fact or whether the determination of the ACP was, based on those materials, manifestly unreasonable. We would suggest that provision should be made for the Appeal panel to allow submission of additional evidence in appropriate cases. If there is no such provision, the procedures may involve unnecessarily voluminous evidence which will result in the procedures becoming slow and expensive.
4. We would also suggest that there should be some initial consideration prior to instigation of the ACP procedure to establish that the dispute is one which ought properly to be dealt with by the ACP; for example where a trade mark on which a challenge is based is not internationally known, or where the rights of the parties are evenly matched.
5. We question whether it is desirable that the challenger of a domain name has the ability to dictate by his application the procedure by which he disputes will be resolved.
6. As a general comment we would suggest that it is made absolutely clear that the compulsory agreement between the Registrar and the Applicant must be signed before a domain name is registered and that no domain name may be registered (however urgent) unless the Registrar has received the signed compulsory agreement. We think it is essential that it is impossible for a domain name to be registered without submitting a signed agreement.

21st November 1997