ICANN | Comments to WIPO Report

ICANN
WIPO Report on Domain Name Intellectual Property Issues--Summary of Public Comments Received
Exhibit B to May 27 Meeting Minutes

Introduction

The following summary is based on public comments received by ICANN (by May 21) regarding the WIPO recommendations on domain name intellectual property issues. The summary is organized thematically—presenting the various views on either side of various issues raised by the WIPO report.
 

Procedural Issues

ICANN received a great deal of commentary addressing the process by which ICANN should deal with the WIPO recommendations.

Several commentators (including one petition submitted on behalf of a long list of individuals) suggest that the WIPO report should not be even partially adopted by the ICANN Board at this time, but should instead be referred to the DNSO. Many of these commentators (including the petition-signers) also question the appropriateness of adoption of substantive policies by the interim board, as opposed to one elected by ICANN members. Supporters of these views include:

In support of this view, commentators Bret Fausett and Jonathan Weinberg note that the ICANN Bylaws (Section VI(2)(d)) provide that "The Board shall refer proposals for substantive policies not received from a Supporting Organization to the Supporting Organization, if any, with primary responsibility for the area to which the proposal relates for initial consideration and recommendation to the Board." Further, these commentators argue that the DNSO does "exist" for the purpose of referral, as the Bylaws (Section VI(3)(a)) provide that "Upon adoption of such Bylaw amendments [providing for a Supporting Organization] the Supporting Organization shall be deemed to exist for the purposes of these Bylaws." Another commentator (Milton Mueller) stresses that WIPO consulted mainly with intellectual property interests and that the other constituencies to be represented within the DNSO should also have an opportunity to weigh in with their views.

On a related procedural note, one commentator (The Office of Advocacy of the U.S. Small Business Administration) argues that ICANN’s notice and comment process was inadequate and suggests that ICANN postpone any final decisions until a clearer and more lengthy comment procedure is established.
 

Overall Assessments of the WIPO Recommendations

A few commentators suggest that the WIPO report should be rejected in its entirety on substantive grounds. For example, John Gilmore of the Electronic Frontier Foundation opposes adoption of the report and argues that "Domain Names are not trademarks and do not infringe trademarks. Trademarks are not domain names and do not grant rights in domain registration. . . The issuance of domain names, just like trademarks and company names, should be done on a first-come, first-served basis. Period."

Other commentators who oppose the WIPO report in its entirety (or the very idea of intellectual property protection for domain names) include:

Another set of commentators support ICANN adoption of the WIPO report in its entirety (or "as much as possible") with no, or only slight, modifications. This set of commentators includes:


Commentary on Specific WIPO Recommendations

Practices Designed to Minimize Conflicts Arising Out of Domain Name Registrations

This section of the WIPO report contains mainly recommended provisions of contracts between registrars and domain name holders—regarding accuracy of contact details, submission to jurisdiction, etc. Most of the comments on this section of the report involved the recommendations for collection and use of domain name holder contact details.

The WIPO recommendations (see WIPO Report paragraphs 73 and 81) regarding the collection and real-time public availability of domain name holder contact details were singled out for particular praise by several commentators:

One set of commentators (Content Providers Joint Submission) object to WIPO’s recommendation (WIPO Report paragraph 90) that domain name holder data be used only for "limited purposes," insisting that domain name registrars should not seek to bar any lawful use of registrant data.

One commentator (Content Providers Joint Submission) is disappointed that WIPO decided not to recommend a requirement that registrars use automated measures to screen out bogus domain name holder information (WIPO Report paragraph 116).

One commentator (Singapore Network Information Centre) asks for clarification regarding whether a domain name holder who refuses to give the consent for data use required in paragraph 90 of the WIPO report will be able to register a domain name, noting that under most data protection regimes "unless the personal information is mandatory for the purpose of the transaction (e.g. air travel), then the transaction must still be allowed even if consent is not given."

John Gilmore of the Electronic Frontier Foundation and Michael Froomkin also express concern about the lack of privacy protections. Gilmore’s commentary includes the following: "WIPO proposes that domain names be denied to those who wish not to make themselves available for nuisance suits by IP fanatics. They state that users who register a name and pay the required fees must be denied their chosen domains for lack of personal contact information. Trademark holders who seek to enforce their rights must bear the cost of enforcing their rights, including the cost of finding and serving the parties involved. The cost of finding these parties should not be ‘shared’ by requiring every possible party to such a lawsuit to publish contact information enabling them to be conveniently sued."

One commentator (Dinesh Nair) objected to the "take down" procedure WIPO recommends for dealing with alleged intellectual property violations by domain name holders who have provided invalid contact information (paragraph 123 of the WIPO report). He suggests giving domain name holders a three month grace period in which to respond to the attempt to contact them.

A few commentators raised issues regarding provisions of the current ICANN registrar accreditation agreement related to WIPO’s contact information recommendations:

One commentator (Content Providers Joint Submission) stated that ICANN’s contract provision allowing ISPs to license domain names to third parties (which the WIPO report endorses) invites abuse if it is not implemented with great caution. This commentator also took issue with the provision in the ICANN contract that requires provision of inaccurate data to be "willful" in order to trigger domain name cancellation. Another commentator (AT&T) expressed specific support for allowing ISPs to continue to register names that are, in turn, used by anonymous individuals.

Several commentators supported the idea of a study on the establishment of a special domain permitting anonymous registration, but urged caution in the area--fearing that such a domain would be a haven for intellectual property infringement. These commentators include:

The recommended requirement of pre-payment for and periodic renewal of domain name registrations (WIPO Report paragraphs 96 and 98) was singled out for particular support by several commentators:

The recommended requirement (WIPO Report paragraph 119) that domain name holder contact details be accurate, and that provision of inaccurate contact details constitute breach of the registration contract were singled out for particular support by:


Uniform Dispute-Resolution Procedures

Several commentators express particular support for the recommended administrative dispute resolution mechanism (WIPO Report paragraphs 140 – 244) and note particular support for elements of the proposed dispute resolution mechanism:

The IP Organizations Joint Submission notes agreement with the limited scope of the mechanism, that legitimate free-speech usage should not be considered abusive, that the mechanism should be applicable across all open gTLDs, that there should be a consolidation of all claims of abuse by the same party into one case, and that the mechanism should not cut off access to national court systems.

AT&T and Bell Atlantic support the recommendation that the procedure be uniform across all open gTLDs (with Bell Atlantic suggesting that it apply to ccTLDs as well.)

Bell Atlantic and AT&T also both suggest that ICANN should support WIPO as the leading dispute resolution center, with other facilities available only if they adhere to the criteria recommended in the WIPO report.

AT&T and Viacom especially support the preservation of the alternative of judicial redress.

The Office of Advocacy of the U.S. Small Business Administration supports the scope of the mechanism and the definition of "abusive registration" recommended by WIPO.

MCI and the American Intellectual Property Law Association stress the importance of establishing a uniform dispute resolution mechanism to avoid adoption of a variety of policies by new registrars or (MCI stresses) adoption by new registrars of NSI’s flawed policy.

Michael Froomkin, a member of the WIPO panel of experts who was highly critical of the draft WIPO recommendations, now supports the definition of abusive registrations (but notes that the definition in the report is not fully reflected in the proposed policy that appears in an Annex to the Report). He is concerned, however, that the proposed mechanism will deprive domain name holders of access to court if they lose in the dispute resolution process—against whom would they bring an action? What would be the cause of action?

One commentator (Singapore Network Information Centre) asks whether any estimate of cost for the dispute resolution is possible and suggests the possibility of a fixed fee set at a non-prohibitive level. This commentator also suggests that the dispute resolution panels should include representation from various geographic regions if possible.

One commentator lamented that the recommended dispute resolution policy does not go far enough to protect copyright online, as "it is limited to clear cases of cybersquatting. [And] . . . pirate sites do not often incorporate legitimate trademark-protected material in their names."

One commentator (Carl Oppendahl [sic, Oppedahl]) suggests that the remedy of domain name transfer in the dispute resolution system (and in the exclusion mechanism) should only apply to entities that can should that their name is "coined and unique." (In other words, made-up word like "Exxon," or "Xerox," but not real words that are also trademarks for specific products, like "Prince.")

One commentator (Carl Oppendahl [sic, Oppedahl]) noted specific support for publishing the decisions of the administrative dispute mechanism and for giving domain name holders an opportunity to defend themselves in the dispute mechanism and to point to their own rights (which may be other than trademarks) to the name under dispute.

Commentator Dinesh Nair objects to the recommendation (paragraph 140) that any dispute-resolution to which domain name applicants are required to submit should not deny parties to the dispute access to court litigation, arguing that this provisions renders the dispute-resolution system "moot and ineffective." He is also concerned that the definition of bad faith domain name registration is too broad; he suggests that registration only be considered "bad faith" if the domain is being used in the same category of business as the challenger.
 

Famous and Well-Known Marks

Several commentators express particular dissatisfaction with the proposed mechanism for exclusion of famous and well known names. These commentators include:

Professor Froomkin provides extensive commentary regarding the flaws in the proposed exclusion mechanism. In particular, he argues that the protections that would given to famous names go beyond what is provided by law. He also notes that there is no agreed definition of a globally famous mark, despite years of WIPO-sponsored efforts.

On the other hand, several commentators particularly support the concept of an exclusion mechanism for famous and well known marks:

One commentator (Singapore Network Information Centre) asks whether there is a possibility that the exclusion list would eventually be extended to ccTLDs, and asks whether WIPO will help ccTLDs set up an exclusion mechanism.
 

New gTLDs

Some commentators agree with WIPO’s recommendation that new gTLDs be added slowly and only after safeguards are in place:


Miscellaneous Comments on the WIPO Report

One commentator (John Moetteli) suggests that the rights that extend to trademark holders in the WIPO recommendation should extend to cases in which the domain name taken in its entirety is identical to their trademark. For example, he recommends that someone who holds a trademark for the name BURCH should have rights in the domain name BUR.CH.

One commentator (Professor Veijo Heiskanen) suggests that all domain names be moved into geographically-based TLDs, and into sectorally (e.g. commercial, non-commercial) defined SLDs in order to reduce conflicts between people who use the same name in reference to different products in different markets.

One commentator (Dennis Simpson) suggests prohibiting the resale of domain names.