DNRC Letter to the World Intellectual Property Organization

May 28, 1997

By Facsimile
Mr. Arpad Bogsch, Director General
World Intellectual Property Organization
34, chemin des Colomettes
1211 Geneve 20
Suisse

Dear Mr. Bogsch:

The Domain Name Rights Coalition respectfully requests that this letter with the attached position paper be circulated to all participants at the Consultative Meeting ("Meeting") and all companies, individuals or countries who ask for copies of materials circulated at the Meeting. Such a request is consistent with the 1967 Stockholm Convention and Part III of the General Rules of Procedure.

The Domain Name Rights Coalition ("DNRC") planned to attend the Meeting, but could not. Based on reports that it has received of the Meeting now in progress, the DNRC feels compelled to share its concerns prior to the close of the Meeting. The DNRC submits that Meeting participants must balance the communication rights of all Internet speakers with the intellectual property rights of international trademark owners. Should Meeting participants adopt a single set of arbitration guidelines suitable only for large trademark holders operating in Internet commerce, and then apply these guidelines to all areas of communication and speech on the Internet, such action would exceed the recognized and legal bounds of WIPO's authority.

Because of the urgency of the situation, we ask Meeting participants to consider and adopt the attached recommendations.

Sincerely,

Kathryn Kleiman, Esq.
President, Domain Name Rights Coalition

Domain Name Rights Coalition
Recommendations for Limited Scope of
Proposed WIPO Arbitration Rules and Policies

The Domain Name Rights Coalition Recommends:

Adopt trademark specific domain names at the international and national level. .TM was introduced by the IAHC in its Draft Report and gained strong acceptance among the Internet community, the public interest community and the trademark community.
Limit the proposed work of the WIPO Arbitration Center to the .TM domain names spaces at the international level at this time.
Add affirmative language to the WIPO arbitration guidelines setting out the value of noncommercial speech on the Internet and affirming traditional limitations of trademark law, including news reporting and parody. Further, because citizens and companies across the world use common letters, words and language, WIPO must affirm that duplicate use is expected and will be protected on the Internet as in all other mediums of communication.
Apply rules and policies to domain name spaces with the same selectiveness and care as in all other mediums of communication. The proposed "harmonization" of rules and policies across all domain name areas would produce disastrous results and drive valued forms of communication offline. The IAHC history is informative. Initially, the IAHC proposed only the creation of the .TM domain name space for trademark owners. After calls from the DNRC and others for domain name spaces to identify the speech of "individuals, schools and libraries, community groups, social groups and political groups," the IAHC created .NOM, .INFO, .REC and .ARTS. See Comments of the Domain Name Rights Coalition to the IAHC Draft, January 17, 1997, http://www.domain-name.org. These spaces will be used entirely or primarily for speech which does not involve trademarked products or service. Accordingly, the presumption in these domain name areas must be that common, dictionary words in a domain name, on its face, is not an infringement of the rights of any trademark holder.

Rationale:

The Internet is the most powerful form of international communication that exists today. It allows every individual to publish his/her personal and political views, communities to form across international borders, and circulation and availability of information and databases to urban and rural areas like. In little discussed but increasingly widespread cases, the ability of all individuals, organizations, political groups, and business, including entrepreneurs and small businesses (businesses too new or too unsophisticated to have obtained trademarks), to communicate on the Internet is being threatened by trademark abuse and overreaching. Taking advantage of the Domain Name Dispute Policy of Network Solutions, Inc., trademark owners are using their trademarks for descriptive and generic words (trademarks which, in the physical world provide very narrow rights, if any, to prevent others from using the same or similar words) to take away domain names and Internet identities of individuals, organizations, entrepreneurs and smaller businesses. Such overreaching by trademark owners for common dictionary words or letter configurations (called "reverse hijacking" by Internet insiders) is a daily occurrence. Domain names which were not held by warehousers, created no confusion and did not infringe have been challenged.

To gain respect as an impartial Internet participant and not an advocate of trademark owners, the Meeting and its participants must condemn this practice. It must clearly set forward in any guidelines regarding trademarks and domain names that common words such as "pony" and "prince," names such as "Ty," and animals such as "roadrunner" are open to use on the Internet as freely and broadly as they are used in the any other medium of communication. For all languages and alphabets, WIPO must make and abide by such a position.

In the Draft Specifications for Administration and Management of gTLDs, the International Ad Hoc Committee, a committee of the private organization, the Internet Society, of Reston, Virginia, in the United States, recommended that an international .TM space be created for the WIPO registrations at the international level, with second level .TM spaces created by each country under its country code. The Domain Name Rights Coalition, the Internet Community, and trademark owners agreed. Trademark owners supported the allocation because it would give them a domain name space in which to register goods and services; it would give the customers a domain name space in which to quickly find their goods and services; and it would narrow the area of Internet speech which they needed to patrol for infringement (other than the most blatant). Individuals, small businesses and nonprofit organizations liked it because the Internet would have other domain name spaces devoted to their noncommercial and commercial speech which did not involve trademarked products or services. To gain legitimacy in its standing, WIPO must insist that the .TM domain name space be created for the protection of its trademark owners.

At the same time, WIPO must apply its proposed arbitration policies, at this time, only to the .TM domain name space. Such a limitation is in keeping with the history, expertise and experience of the WIPO Arbitration Center. According to the WIPO General Information Brochure, the WIPO Arbitration Center resolves "international commercial disputes between private parties involving intellectual property." It should continue to resolve disputes between large intellectual property owners as these disputes begin to originate online and require the interpretation and application of rules to the new online environment.

However, disputes between a trademark holder and an individual with a domain name which uses a common dictionary word, or an individual named Jim McDonald who has a personal website under .NOM, must not be resolved by the WIPO Arbitration Center. Traditionally, WIPO is not the defender of trademark limitations or the guardian of trademark fair use exceptions such as parody and news reporting. Accordingly, WIPO must not assume this responsibility in the online world. While the WIPO Arbitration Center dispute policies between trademark holders may serve as a good example for other arbitration environments, the aggressive protection of open communication and the enforcement of the traditional limits of trademark law must come from a difference process. Such a process must equally commit to the protection of open communication of all Internet participants and to the extension of trademark limits onto the Internet.

It is critical that the Consultative Meeting participants recognize the overly broad nature of the Working Document proposals, particularly paragraphs 51 and 52, and limit the scope of the rules and policies of the WIPO Arbitration Center to disputes over the .TM domain name space and disputes between intellectual property owners.

Further, WIPO cannot blindly apply (or "harmonize") a single set of rules and policies across all top-level domain names and across all national boundaries. Such an attempt would, if successful, destroy the open communication of the Internet that the United States and other countries have committed to preserving. Domain names spaces are beginning to emerge for noncommercial speech and, in response to the recommendations of DNRC and others, the IAHC proposed new additions: .NOM for individuals, .INFO for information services, .REC for recreation/entertainment and .ARTS for cultural and entertainment. It is expected that the speech, and the identification of this speech by domain names, will be largely noncommercial.

WIPO must affirm that, in domain name spaces not devoted to trademark products or services, the use of ordinary dictionary words or a short sequence of letters will be presumed not to infringe on a trademark absent any further evidence of wrongdoing. It is only fair and right that Meeting participants resolve that domain name in non-trademark-specific domain name spaces, are not trademarks. To do otherwise would remove from the vocabulary of Internet citizens worldwide the basic building blocks of communication -- the language and words which all countries protect for communication of all varieties. In the .TM region, of course, the presumption would be the reverse -- that the trademark owner expects the domain name to identify a trademarked good or service, and other uses are likely to be presumed infringing. Given the different uses of domain name to cover different forms of communication, "harmonization" of a single set of policies and rules is ill-advised.

Finally, the proposed separation of domain name areas for trademarked goods and services from other domain name areas will cure many of the legitimate concerns of intellectual property owners. Trademark holders would feel confident that consumers will find their goods and services easily in the .TM and similar domain name areas, and at the same time, be assured that the actions of individuals in non-trademark domain areas would not reflect on their trademarked goods or services.

Conclusion:

Authority on the Internet is established by virtue of expertise and proper actions. The Internet Community currently views WIPO as an advocate for rights of intellectual property owners, not as an impartial arbitrator of disputes between the users of words in noncommercial versus commercial speech.

To the extent that WIPO remains within its traditional bounds of authority and arbitrates disputes online between intellectual property owners, its arbitration rules will be regarded as models for review and use throughout the Internet. Adherence to the recommendations set forth above will give WIPO great standing in the Internet community for its understanding of the complexity of the Internet and the need to protect all speech which takes place across it.

About the Domain Name Rights Coalition:

The Domain Name Rights Coalition represents the interests and views of entrepreneurs, small businesses and individuals on the Internet. The DNRC works for equitable, consistent and responsible domain name policies from international governmental organizations, the National Science Foundation, Network Solutions, Inc., and all entities who control portions of the Internet. Its representatives have served on the State Department's Working Group on Domain Names and regularly assist and advise domain name owners worldwide.