Fwd: WIPO Recommends Uniform Mechanism to Regulate Domain Name Registration

[Milton Mueller]

WIPO has released a proposal to give trademark holders special,
pre-emptive rights over domain name rgeistrations in new top-level
domains. (see news release below) This is the kind of expanded,
extra-legal rights that civil liberties groups involved in ICANN have
opposed for years. The proposal would turn trademark rights - which is
supposed to be a limited, narrow form of exclusivity designed to prevent
consumer confusion and fraud - into a sweeping right to control how
names are used on the Internet.

I hope that WSIS civil society can express its opposition to this
proposal. It is another example of how existing international agencies
represent special interest constituencies (in this case, trademark
holders) and why more balanced forums, such as WGIG, are needed.

--MM

=====================
Press Release 409

Geneva, June 1st, 2005
  _____

WIPO Recommends Uniform Mechanism to Regulate Domain NameRegistrations
with
introduction of New gTLDs


The World Intellectual Property Organization (WIPO) has recommended
the
introduction of a uniform intellectual property (IP) protection
mechanism
designed to further curb unauthorized registration of domain names in
all
new generic Top-Level Domains (gTLDs). This came in a report by WIPO's
Arbitration and Mediation Center (WIPO Center) on the IP implications
of
introducing additional generic Top-Level Domains (new gTLDs). The
report,
"New Generic Top-Level Domains: Intellectual Property Considerations",
which
is available at http://arbiter.wipo.int/domains/reports/newgtld-ip,
said
that such a preventive mechanism would complement the curative relief
provided by the existing Uniform Domain Name Dispute Resolution Policy
(UDRP).

Introducing New gTLDs

The report is based on WIPO's experience in the area of IP protection
in the
domain name system (DNS). "The introduction of a new gTLD presents
particular challenges for IP owners seeking to protect their domain
names
against unauthorized registration by third parties. With the growth of
Internet usage and electronic commerce, the strategic importance of
domain
names as business identifiers has grown significantly," said Mr.
Francis
Gurry, WIPO Deputy Director General who oversees the work of the
Center. Mr.
Gurry said that registering their entire trademark portfolio may often
be
the only way for IP owners to protect their identifiers from being
"grabbed"
by cybersquatters. "If domain names are randomly attributed in newly
opened
gTLDs, IP owners will be forced to compete with cybersquatters for
their own
trademarks - unless additional safeguards are introduced," he added.
"Our
new report makes practical recommendations for addressing such
issues."

New gTLD Strategy

WIPO's report has been prepared in response to a request made by the
Internet Corporation for Assigned Names and Numbers (ICANN), the
institution
that oversees the functioning of the DNS. Following the introduction
of
seven new gTLDs in 2000 (.aero, .biz, .coop, .info, .museum, .name,
.pro),
ICANN is developing a comprehensive strategy for further expansion of
the
DNS The report provides input into that strategy from an IP and
dispute
resolution perspective.

WIPO Domain Name Experience

WIPO's recommendations made in the context of the First WIPO Internet
Domain
Name Process in 1999 led to the adoption of the UDRP - a quick and
cost
effective procedure for the independent resolution of disputes that
arise
from the abusive registration of trademarks as domain names. Under the
UDRP,
a complainant must demonstrate that the disputed domain name is
identical or
confusingly similar to its trademark, that the respondent does not have
a
right or legitimate interest in the domain name and that the
respondent
registered and used the domain name in bad faith. The WIPO Center was
the
first UDRP service provider to be accredited in December 1999 and has
since
administered over 7,500 cases under this policy alone. The WIPO Center
has
also been involved in the implementation of certain trademark
protection
mechanisms developed by new gTLD operators, and has handled more than
15,000
dispute resolution procedures under such mechanisms.

Need for Preventive Measures

WIPO's report focuses exclusively on the IP aspects that need to be
taken
into account if and when such extensions of the domain name space take
place, and does not comment on whether further extensions are necessary
or
desirable. The report summarizes the WIPO Center's UDRP experience,
and
notes that WIPO's UDRP case filing rate has remained stable over the
last
years and recently even increased. An additional mechanism to prevent
unauthorized registration of domain names during the critical
introductory
phase of a new gTLD would, therefore, strengthen the ability to combat
the
still widespread practice of cybersquatting.

Continued Attraction of .com

WIPO's UDRP experience also shows that the first extension of the DNS
in
2000 has not caused significant shifts in cybersquatting or
enforcement
patterns. UDRP disputes continue to concentrate heavily in the .com
domain.
Indeed, this trend has become even more pronounced since the
introduction of
the seven new gTLDs. While this may partly be explained by the
availability
of the start-up IP protection mechanisms adopted by .biz and .info, it
more
likely indicates that .com continues to be the most attractive domain
for
trademark owners as well as for cybersquatters.

WIPO's New gTLD Experience

The report summarizes the WIPO Center's experience in implementing
various
IP protection mechanisms developed by a number of new gTLDs and
provides a
comparative evaluation of existing approaches (watch services,
defensive
registrations, exclusion mechanisms, and pre-registration mechanisms).
It
notes a trend among TLDs towards sunrise mechanisms, i.e. the
possibility
for IP owners to register their identifiers before the general public.
Experience shows that the need for IP protection mechanisms is most
tangible
in open gTLDs, which are not subject to clearly defined and policed
registration restrictions, and which accept domain name applications
from
the general public. The fewer restrictions and prior verification
requirements associated with the registration process, the greater the
risk
of abusive registrations.

Best Practices

The report confirms the need for effective IP protection mechanisms to
prevent new gTLDs from turning into cybersquatting havens and
recommends
that mechanisms should: be effective and minimize the potential for
abuse;
take account of rights and interests of third parties; and be
practicable
and straightforward in order to avoid undue delays in the introduction
or
functioning of new gTLDs.

A Uniform IP Protection Mechanism

In conclusion, the report recommends implementing a single uniform
preventive IP protection mechanism across all new gTLDs. Specifically,
new
gTLDs would be required to offer IP owners the option of registering
their
protected identifiers during a specified period before opening
registration
to the general public. In sponsored or restricted gTLDs where IP owners
may
not be eligible to register domain names, IP owners could instead be
given
the option of obtaining defensive registrations during this initial
period.
Such a uniform mechanism would have a number of advantages:

*       Operators of new gTLDs would not be required to develop their
own IP
protection mechanisms, a task for which they are not necessarily
equipped;

*       ICANN would not be required to monitor the correct
implementation of
multiple protection mechanisms applied by different gTLDs (now that
ICANN's
experimental "proof of concept" phase on new gTLDs has been concluded);


*       IP owners would not be required to devote significant resources
to
understanding and using multiple different IP protection mechanisms;
and

*       The general public would benefit from enhanced reliability and
credibility of domains.

For further information please contact the Media Relations and Public
Affairs Section at (+ 41 22) 338 81 61, Fax: (+41 22) 338 82 80,
E-mail:
publicinf at wipo.int.