IP: WIPO RFC on Uniform Dispute Resolution Policy for domain names

[Dave Farber <farber () cis upenn edu>]

> > Date: Tue, 15 Aug 2000 00:40:06 +0200
> From: Slobodan Markovic <twiddle () EUnet yu>
> Organization: www.internodium.org.yu
> To: ncdnhc <ncdnhc-discuss () lyris isoc org>
> Subject: WIPO RFC
>
> [It seems to me that drafting of the domain dispute
> policy is slowly becoming an exclusive privilege of
> the WIPO... and that ain't good.  :-)  --sloba]
>
>
> http://www.news.com/Perspectives/Column/0,176,474,00.html?st.ne.per.gif.a
>
> Agency could be coming for your domain name
> August 11, 2000
>
> An international organization has proposed rules under which established
> Web sites could lose the right to use names with common geographical
> terms, such as "Bordeaux."
>
> The World Intellectual Property Organization (WIPO), an agency of the
> United Nations, recently opened a comment period on its proposal
> [http://wipo2.wipo.int/process2/rfc/rfc1/].
>
> The current draft of the proposal suggests revoking the domain names of
> Web sites that conflict with "geographical terms," individuals' personal
> names and "tradenames." Tradenames are broader than trademarks and do not
> require trademark registration.
>
> The development is significant because the WIPO first proposed a
> domain-name dispute resolution policy in April of last year. That
> proposal, reduced somewhat in scope, was adopted last December by the
> Internet Corporation for Assigned Names and Numbers (ICANN), the Net's
> coordinating body.
>
> WIPO subsequently became one of four arbitration bodies approved by ICANN
> to arbitrate cases.
>
> The dispute-resolution policy is written with specific and targeted
> language. It applies only when a domain name has been used in "bad faith."
> ICANN defines bad faith narrowly to apply only to "cybersquatters"--those
> who register multiple names merely to resell them to holders of registered
> trademarks.
>
> Arbitrators in many cases, however, have greatly expanded the policy.
> Domain names have been taken from some legitimate businesses and nonprofit
> organizations that never attempted to resell their names.
>
> For example, a WIPO arbitration panel last April announced a decision to
> take Crew.com, a generic name, from a small-business owner and transfer it
> to J. Crew International, the sportswear manufacturer.
>
> Considering all cases decided between Jan. 1 and June 30, 2000, the WIPO
> transferred domain names from defendants to plaintiffs in 84 percent of
> all cases. A competing body, eResolution, found for the plaintiffs only 47
> percent of the time.
>
> Under ICANN's rules, plaintiffs are allowed to select the arbitration body
> they prefer. The WIPO quickly increased its market share, receiving the
> majority of all cases by the second quarter of 2000.
>
> Here are the definitions of some of the factors that could cause a Web
> site to lose its name under WIPO's proposal:
>
> -- Geographical terms. This includes "a geographical place of origin of a
> product." The example the WIPO gives is "Florida oranges." But many others
> come to mind such as "Maryland crab," "German beer" and so forth.
>
> -- Personal names. Alternatives include applying the new rules to "all
> names," only the "names of famous persons," or the "names of government
> officials or other persons in the public eye."
>
> Perhaps as a precursor to this new policy, a WIPO decision in June
> transferred the domain names Montyroberts.org and Montyroberts.net to
> horse trainer Monty Roberts. The WIPO ordered the transfers, although
> Roberts acknowledged that he held no registered trademark on his name at
> the time.
>
> -- Tradenames. This is perhaps the broadest category. Trademarks must
> identify specific products or services. But tradenames "distinguish a
> business," according to the WIPO proposal, "independently of the goods or
> services that the business offers."
>
> In addition, "tradenames receive protection," the WIPO says, "without the
> obligation of a filing or registration." For this reason, a company you
> had never heard of might have a legal basis to take away your Web site's
> address based on the concept of tradenames.
>
> Already, arbitration cases have ranged far beyond exact matches of
> trademarked words. The proposed rules may create a new class of phrases
> that can threaten the existence of established Web sites.
>
> At this point, the WIPO is seeking comments, which must be received by
> Aug. 15, only on the scope of the proposal. The organization says it will
> publish a new draft Sept. 8, with comments on that document open until
> Nov. 17.

AND

> Date: Mon, 14 Aug 2000 20:55:18 EDT
> Subject: Comments against scope of WIPO RFC badly needed!
> To: ncdnhc-discuss () lyris isoc org
> From: KathrynKL () aol com
>
> As you may know, I have been involved in fighting against WIPO for some time.
> WIPO has ** always ** wanted a much broader scope to the UDRP -- and much
> greater trademark and trademark-type protections.
>
> The new Request for Comment -- due August 15 -- asks for input on whether the
> UDRP should be expanded to include geographical terms, personal names, and
> tradenames.  The answer should be an ** unqualified no **.  Each of these
> expansions a) goes beyond any treaty that has been negotiated and essentially
> amounts to the creation of new international law by WIPO without a treaty,
> and b) has the tremendous potential to hurt noncommercial speech and activity
> on the Internet.
>
> I can offer "New York" pizza in Cairo (and in my domain name) without being
> any type of legal violation.  I can be named "Maggie" and want a domain name
> and website without being the former prime minister of England. Tradenames
> are not generally registered, difficult to know, and could be common,
> ordinary words such as UNO, APPLE, or COOL.  The potential for infringements
> of the rights of noncommercial speakers and individuals is tremendous if the
> UDRP is expanded into these areas.  These cases belong in courts and before
> treaty negotiators -- this is far beyond any possible mandate for WIPO and
> the UDRP.l
>
> If you and/or your organization can submit brief comments to WIPO by Aug. 15
> telling them that the proposed new scope of the UDRP is wrong and violates
> the original understanding of the UDRP as a very narrow scope  -- it would
> certainly help.
>
> Apologies for my infrequency postings.  Please feel free to write to me
> privately on this matter if I can help.;
> regards,
> kathy kleiman
>
> <<
> -- Geographical terms. This includes "a geographical place of origin of a
> product." The example the WIPO gives is "Florida oranges." But many others
> come to mind such as "Maryland crab," "German beer" and so forth.
>
> -- Personal names. Alternatives include applying the new rules to "all
> names," only the "names of famous persons," or the "names of government
> officials or other persons in the public eye."
>
> -- Tradenames. This is perhaps the broadest category. Trademarks must
> identify specific products or services. But tradenames "distinguish a
> business," according to the WIPO proposal, "independently of the goods or
> services that the business offers."
>  >>