December 29, 2000
COMMENTS OF THE U.S. COUNCIL FOR INTERNATIONAL BUSINESS
REGARDING THE SECOND WIPO DOMAIN NAME PROCESS
The U.S. Council for International Business (USCIB) appreciates the opportunity to provide its comments to the World Intellectual Property Organization (WIPO) regarding the Second WIPO Internet Domain Name Process (RFC-2). USCIB is a membership organization representing the interests of over 300 global corporations, professional firms and business associations, with the objective of promoting an open system of world trade, finance and investment. USCIB is the American affiliate of the International Chamber of Commerce (ICC), the Business and Industry Advisory Committee (BIAC) to the OECD and the International Organisation of Employers (IOE). As such, it officially represents U.S. business positions in the main intergovernmental bodies, and vis-à-vis foreign business communities and their governments.
Because USCIB members include companies that are building the infrastructure of the Internet, providing content, using the Internet and providing e-commerce around the world, we are particularly concerned about the policy changes being examined by WIPO. The comments below, however, reflect only our preliminary analysis of the issues. We will provide additional input as the WIPO process continues.
Although USCIB members welcome WIPO’s efforts to prevent and resolve domain name conflicts, we encourage WIPO to move slowly and cautiously in expanding the scope of rights and interests to be protected beyond those of trademarks. While we note that RFC-2 seeks comments and recommendations regarding five categories of domain name disputes, we will limit our comments to personal names, geographic indications and tradenames. Our comments also include a recommendation that WIPO undertake efforts to improve the WHOIS database system.
As explained more fully below, the impact of expanded protection -- and the resulting expanded jurisdiction of the Uniform Dispute Resolution Process (UDRP) – need to be more thoroughly understood. Rightholders are already struggling with inadequate mechanisms to monitor and defend their interests. It would be advisable to strengthen those mechanisms before overwhelming the system with additional disputes.
Expansion of the Domain Name Process to Personal Names
· There is not yet a good understanding of the impact of including personal names in the Domain Name Process or of the implications for the UDRP. The potential exists for personal names to become confused with brand names, trademarks and tradenames, thus damaging consumer confidence in e-commerce. As we have stated in the past,
brand names must be protected, in particular, to reduce the scope for fraud and misrepresentation and the risk of confusion to the public. Consumers must have confidence in the ability to rely on established brand identities, trademarks, tradenames and corporate reputations as guideposts of trust and reliability. Efforts need to be undertaken to establish a regime that enhances and ensures consumer confidence, avoids consumer confusion and prevents fraud perpetrated through the use of similar names:
· Registration policies should prohibit cybersquatting, warehousing, piracy and any other misappropriation of brand names, trademarks and tradenames as personal names.
· The UDRP should allow persons or entities with intellectual property rights, trademarks, tradenames or other distinctive signs to intervene as early as possible to protect their interests.
· There should be sufficient flexibility to allow different legitimate claimants to a name to register the corresponding domain name, while ensuring adequate means to differentiate between them. However, many USCIB members hold well known trademarks that are recognized across multiple countries and regions, causing serious concern over efforts to co-exist. WIPO’s standing committee is currently studying this issue. Though this issue is not resolved, it may be advisable to establish separate standards to deal with the limited number of trademarks that enjoy global recognition.
· Because country code Top Level Domains (ccTLDs) are gaining experience with personal names as Second Level Domains (SLDs), we encourage WIPO to work collaboratively with those ccTLDs that have significant numbers of registrations and that allow personal name registrations, perhaps conducting a survey of the rules that ccTLDs have in place to prevent and resolve domain name collisions involving personal names.
Ensuring International Coherence
· To ensure the ability of consumers and businesses to utilize the Internet system most effectively, it is vitally important that international coherence be sought among the different systems of allocating domain names in different registries (for both generic Top Level Domains (gTLDs) and ccTLDs). Consistent procedures must be adhered to by all gTLDs and by those country codes that act as gTLDs, such as .nu, .tv and .md. Those procedures should include baseline requirements for dispute resolution and requirements for providing accurate and complete information in domain name applications.
· Country code managers should be invited into an active consultative role with respect to the issue of trademark and domain name collisions, including WIPO’s expansion of protected rights under the Domain Name System and the functioning of WHOIS (see below).
Ensuring Reliability and Consistency in the Dispute Resolution Process
· USCIB members support the need for reliability and consistency in the existing dispute resolution process and we strongly recommend that all gTLDs be required, as a part of their accreditation, to participate in the UDRP. No exceptions should be made for any gTLDs or for any ccTLDs that operate as gTLDs. In addition, we urge that efforts be undertaken to gain participation by country code managers in a voluntary and collaborative process to ensure consistency among dispute resolution procedures.
· Expanding the scope of the UDRP into other areas is likely to put arbitrators in a position of having to decide questions under a variety of different laws and standards. Disputes that do not involve trademarks may best be left to the courts or, perhaps, to technical or other solutions that remain to be developed as the Internet continues to evolve.
· The qualifications that need to be met by arbitrators outside of the trademark area are undefined. As WIPO makes recommendations in this area, it must also outline a well-defined process to ensure that arbitrators handling the new categories of disputes are experts in those categories.
· In order to ensure an effective dispute resolution process, WIPO should undertake a thorough examination of the implications of expanding domain name rights, giving due consideration to the protection of consumer confidence and the integrity of the Internet infrastructure. This is a complex area and deserves thoughtful consideration before moving forward. Otherwise, forum shopping is likely to result, threatening the stability of the process.
WIPO’s Efforts Should Also Support a Functioning WHOIS System
· WHOIS is used by consumers, businesses and government agencies to identify domain name holders, to determine where to seek redress for violations of rights and to investigate illegal activity. While WHOIS was previously an integrated database that encompassed .com, .net and .org and was administered by one company, WHOIS data is now drawn from the 70 domain name registrars for .com, .net and .org. In addition, with respect to ccTLDs, searchers must typically go into the WHOIS database for each ccTLD individually. There are growing problems in this area, as several ccTLDs have closed off, or are considering closing off, access to WHOIS altogether. A reliable and searchable database that bridges the different registrars’ databases is necessary to maintain transparency and accountability on the Internet. Access to and proper functioning of the registration records in the ccTLDs is also essential.
· As competition was introduced into the registrar process, assurances about the restoration of a comprehensive WHOIS were made to concerned businesses and to the holders of trademarks and copyrights. This rebuilding process is moving very slowly and significant concerns remain.
· In addition to serving ISPs, WHOIS also serves individuals, businesses and trademark and copyright holders, who rely on the availability of a comprehensive, efficient and searchable database. A reliable WHOIS is, in fact, crucial to the ability of rightholders around the world to effectively monitor and enforce their intellectual property rights. Though we realize that WHOIS is not solely a WIPO issue, WIPO must be mindful of the challenges facing the WHOIS system while considering changes to the UDRP.
· Under current conditions, it can be difficult to conduct robust searches or obtain critical domain name information in order to establish bad faith or abusive registration of domain names.
· WHOIS no longer features a common data format, rendering searches more difficult.
· WHOIS searches have become more time consuming and costly. For example, searches for dealing with copyright and trademark infringement typically require multiple searches in complex formats to ascertain evidence of cyberpiracy. The capability to support such searches is not presently available across the WHOIS databases that are provided by the growing number of registrars. Further, users are now charged if they want more than 50 hits on a search.
· Access to WHOIS data for the ccTLDs may be unavailable or difficult to search. In addition, a few ccTLDs have closed off access to WHOIS altogether. Consultation with the ccTLD operators is needed to work toward a common approach to ensuring that information contained in the various WHOIS databases is presented in a standard format and is routinely available.
· Information contained in some WHOIS databases is often inaccurate or outdated. Moreover, WHOIS searches sometimes yield false information provided to registrars when a domain name was obtained, making it difficult or impossible for rightholders to take action against the holder of the conflicting domain name.
· While ICANN accreditation agreements include specific registrar obligations with respect to WHOIS, there is little enforcement of those obligations by ICANN. Registrar obligations exist, should be enhanced and must be enforced as part of the contractual accreditation system. Further, those same registrar obligations should be extended to ccTLDs that behave like gTLDs. Again, while this is not a WIPO issue, we encourage WIPO to use its mandate concerning the protection of intellectual property rights to document some of the problems confronting rightholders.
· The expansion into seven new gTLDs may lead to increased fragmentation of the WHOIS system unless steps are taken to ensure a standardized interface and common requirements across all gTLDs. Standards need to be established, implemented from the initial launch of new gTLDs, and be enforced. While we understand that uniformity across ccTLDs presents additional technical and political challenges, further consultation with the ccTLDs should be sought with regard to approaches that will enable standardized searches.
December 29, 2000
