General Counsel's Briefing
Concerning Policy-Development Process on WIPO-2 Recommendations
To the Board:
In late-February 2003, ICANN received a
letter from Francis Gurry, Assistant Director General of WIPO, concerning
the results of the WIPO Second Internet Domain Name Process (WIPO-2
Process). In my 7 March 2003
Briefing Concerning Letter Received from WIPO Concerning Second Internet
Domain Name Process, I very briefly summarized the WIPO-2 Process,
reviewed the provisions of the relevant ICANN bylaws concerning the process
ICANN should follow, and recommended that the Board invite the ICANN supporting
organizations and advisory committees to make preliminary comments on
At its 12 March 2003 meeting, the
Board adopted resolution 03.22 requesting "the President to inform
the Governmental Advisory Committee, the Supporting Organizations, and
the other Advisory Committees of the 21 February 2003 letter from WIPO;
to provide those bodies with a copy of the text of the letter; and to
invite them to provide, no later than 12 May 2003, any comments they may
formulate, according to their processes, concerning the matters discussed
in the WIPO letter." This was done, and comments were received from
the GAC, the GNSO Council, and the At-Large Advisory Committee (ALAC):
In addition, comments were received from the Intellectual Property Interests
Constituency and the Commercial and Business Users Constituency of the
Now that these comments have been received, it is appropriate for the
Board to consider what steps should be taken next in responding to the
WIPO letter and the recommendations it makes.
Discussion of Comments
The various comments received concern both the substance of the WIPO-2
recommendations and the process ICANN should follow in responding to those
recommendations. The comments received are detailed and thoughtful, and
merit careful and reflective consideration. (See the links above.)
The Governmental Advisory Committee, in
its Rio de Janeiro Communiqué, endorses the WIPO-2 recommendations
that the names and acronyms of intergovernmental organizations (IGOs)
and the names of countries be protected against abusive registration as
domain names. The Communiqué advises the ICANN Board to implement
WIPO's recommendations that protections be provided from such abusive
registrations. At the same time, however, the GAC notes that "the
practical and technical aspects of extending this protection, and notably
the implications for the UDRP, need to be fully understood". The
GAC therefore proposes "that a joint working group should be established
in conjunction with other interested ICANN constituencies, in particular
the gTLD and ccTLD communities."1
The GNSO Council, as the ICANN body assigned
the responsibility under ICANN's bylaws for developing and recommending
to the ICANN Board substantive policies relating to gTLDs, makes
the following recommendations:
(1) consider the WIPO recommendations separately from the review of
the existing Universal Dispute Resolution Policy (UDRP) which is aimed
(2) consider that the WIPO recommendations associated with Names and
Acronymns of International Intergovernmental Organisations and Country
Names should be subject to a policy development process to look at how
they can be implemented taking into account a thorough examination of
the issues surrounding the recommendations.
The ALAC's comments
set forth significant concerns regarding whether the WIPO-2 recommendations
are within the scope of ICANN's mission. In its comments, the ALAC states
that ICANN is not intended to be an international law-making body, and
that implementation of the WIPO-2 recommendations would extend the UDRP
in a way that eliminates two key features currently embodied in the UDRP
that avoid placing ICANN in a law-making role:
First, the UDRP addresses only situations where a complainant
has rights under existing trademark laws. Decisions are specifically
required to be made in accordance with the rules and principles of law
that the panel finds applicable. The UDRP implements existing law which
has been developed by well-established governmental law-making mechanisms.
It does not create new trademark law.
Second, parties dissatisfied with UDRP procedure or rulings
can obtain judicial review in an appropriate court. This helps to ensure
that the UDRP does not supersede applicable national law.
On the first point, the ALAC comments bring to light the conclusions
reached in a September 2001 WIPO report that extensively analyzed the
legal basis for protection of the names and acronyms of IGOs and the names
of countries. In that analysis, WIPO concluded that extending the UDRP
to protect IGO names and acronyms would involve "creation of new
international law" (paragraph
168). Similarly, WIPO concluded that "[p]rotecting
country names in the gTLDs would require or amount to the creation of
new law, a function traditionally reserved for States" (paragraph
On the second point, the ALAC points out that the WIPO-2 recommendations
(in the case of IGO names and acronyms and possibly country names as well)
would preclude the ultimate recourse to the competent national courts
(i.e. those with which the registrant has a connection) on questions of
national law, instead requiring that challenges to decisions (under an
extended UDRP) to transfer names to IGOs and countries be addressed through
The ALAC comments raise very substantial questions regarding whether
extending the UDRP in the recommended manner would exceed the scope of
ICANN's mission. The recommendations seek the extension of the UDRP, which
currently provides a procedural mechanism for resolving cases of abusive
registrations based on existing legal principles established by governments,
to situations where it appears that normative rules for resolving disputes
among third parties with competing claims have not been created by governments.2
In conclusion, the ALAC gives the following advice:
 In view of these new difficulties which are less evident
in the trademark-centric review of the UDRP currently underway
the Committee supports the GNSO Council's recommendation to separate
the UDRP's review from discussions about implementation of WIPO's recommendations,
and to address the additional WIPO requests in a separate policy-making
 The Committee also recommends to the Board that any separate policy-making
process begin with a careful review of the legal basis for rights that
are proposed to be created or implemented. The September 2001 WIPO Report
strongly indicates that the current WIPO recommendations propose to
implement "rights" that are not supported by existing law.
The Board, in common with other ICANN bodies, has a responsibility to
take care that ICANN adhere to its limited mission. The Committee urges
the Board to ensure that ICANN's policy development proceed only where
there is a solid legal foundation and a full understanding of the limits
of existing legal consensus.
In an annex
to its comments, the ALAC also expresses various concerns with the
substance of the WIPO-2 recommendations.
The GNSO Intellectual
Property Interests Constituency comments express opposition to amending
the UDRP to accommodate the WIPO-2 recommendation that disputes relating
to IGOs should not be required to submit to the jurisdiction of national
courts. Echoing the concerns of the ALAC, the IPC comments note that the
availability of national court review "properly ensures that the
courts are the ones who are ultimately responsible for interpreting the
law both national and international alike."
In its comments,
the GNSO Commercial and Business Users Constituency makes the following
1. The existing UDRP relating to trademarks and domain names must remain
entirely unaffected by the WIPO2 proposals.
2. The new WIPO proposals on disputes relevant to international organisations
and country names should be evaluated for both the merit of the need
and the merit of the proposed solutions.
In this evaluation it should be remembered that both proposals are
political compromises. In the case of IGOs, certain countries had specific
disputes but WIPO did not agree to the more courageous solution of a
new treaty. In the case of country names, WIPO has plucked this one
item out of an on-going debate on other geographical names, and has
not yet addressed the relevant complications.
3. If any action is determined necessary a separate dispute system
should be established for international organisations and country names.
Options for Proceeding
There are at least three options now available for progressing the evaluation
of the WIPO-2 recommendations:
A. Initiation of a Formal Policy-Development Process.
One option is to initiate a formal policy-development process. Because
the WIPO-2 recommendations concern extension of the UDRP, which applies
in gTLDs, Article
X, Section 1 of the bylaws makes the GNSO the relevant body to carry
out the policy-development process:
Section 1. DESCRIPTION
There shall be a policy-development body known as the Generic Names
Supporting Organization (GNSO), which shall be responsible for developing
and recommending to the ICANN Board substantive policies relating
to generic top-level domains.
To initiate a policy-development process on whether to adopt the WIPO-2
recommendations, the Board should adopt a resolution under item
1(a) of the GNSO Policy-Development Process:
a. Issue Raised by the Board. If the Board directs the Council to
initiate the PDP, then the Council shall meet and do so within fifteen
(15) calendar days after receipt of the Issue Report, with no intermediate
vote of the Council.
This approach has the advantage of proceeding to consideration of the
WIPO-2 recommendations without delay. It has the disadvantages of (a) proceeding
without a full understanding of whether the WIPO-2 recommendations are
within the scope of ICANN's mission (see Alternative B below) and (b) focusing
the discussion of the WIPO-2 recommendations in the GNSO at this stage,
when the GAC has expressed an interest in participating in a joint working
group with other ICANN constituencies. While the GAC has a liaison to
the GNSO Council, and the GNSO Council can consult with the GAC at various
points of the policy-development process, the opportunity for GAC input
at this stage would be be less in a formal policy-development process
than that entailed by a joint working group as suggested by the GAC.
B. Clarification of Relationship of WIPO-2 Recommendations to
ICANN's Mission. Alternatively, it may be appropriate, particularly
in view of the September
2001 WIPO analysis, to investigate whether the WIPO-2 recommendations
would involve ICANN in what the ALAC calls "law-making" activities.
If the WIPO analysis is correct, the WIPO-2 recommendations would appear
to require that ICANN prescribe adherence to normative rules, not based
on established laws enacted by governments and without relation to technical
considerations, for the definition of rights as between third parties
to register names.
Clarification of these concerns as an initial step has the advantage
of clearly delineating the limitations inherent in ICANN's mission before
devoting considerable resources toward the development of a policy that
may exceed that mission. While it is true that the GNSO Policy-Development
Process requires early
consideration of whether an issue is properly within the scope of the
ICANN policy process, that determination must be made in a very
short time-frame (15 days) that is unlikely to allow proper consultation
with legal experts on the correctness of the September 2001 WIPO analysis.
Moreover, as the ALAC observed in its comments, "[t]he Board, in
common with other ICANN bodies, has a responsibility to take care that
ICANN adhere to its limited mission." A disadvantage of this approach
is that it would delay the commencement of a formal policy-development
process on the WIPO recommendations.
C. Establishment of a Joint Working Group for Initial Analysis.
As noted above, the GAC recommended the establishment of a joint working
group including both the GAC and affected constituencies to evaluate
the practical and technical implications of the WIPO-2 recommendations.
This approach would result in a delay in the initiation of formal policy-development
activities (Alternative A above), but could be pursued in parallel with
clarification of legal issues pertinent to ICANN's mission, as described
in Alternative B above.
1. Since the WIPO-2 recommendations appear, like the
UDRP itself, to concern only gTLDs, the basis for including "ccTLD
communities" as interested is unclear.
2. In resolution
02.43, the ICANN Board agreed to reserve 329 country names in .info
for the purpose of making them available for registration by governments.
This reservation was made based in part on the willingness of Afilias,
the operator of the .info top-level domain, to address concerns raised
by the Governmental Advisory Committee. The reservation was specifically
limited to .info, and not applicable to other gTLDs, then existing or
the layout, construction and functionality of this site
should be sent to firstname.lastname@example.org.
©2003 The Internet Corporation for Assigned
Names and Numbers. All rights reserved.