Hello ICANN ~ UDRP / Rights Protection Mechanisms Participants: Cc Greg, Phil, Neda, Eric & Lawrence: Please read and be aware of the WTO Rules, the Global Rules that rein over Trade Marks as Common Law under USA Law ~ In Rem & In Personam plus those which are Registered at USPTO, getting inclusion in the Madrid System Countries, under American Trade Agreements. Fundamentally, any Brand or Business that has a Domain Name of .COM and is "In Use" ~ "In Commerce" equals "First in Use" therefore all the NTIA's contracted New gTLDs fall behind .COM TLD. That also applies to the SUB.COM -DOMAIN NAMES of CentralNic! Regards, Graham. WORLD TRADE ORGANIZATION Council for Trade-Related Aspects of Intellectual Property Rights https://www.wto.org/english/tratop_e/trips_e/ta_docs_e/8_1_ipcw128add1_e.pdf IP/C/W/128/Add.1 15 May 2003 B. TRADEMARKS 18. Rights in trademarks and other distinctive signs are territorial, but when such signs are used on the Internet they become simultaneously accessible irrespective of territorial origin. Paragraphs 54-61 and 85-87 of the original background note in document IP/C/W/128 discussed certain questions arising from this tension between territorial systems of protection and the global nature of the Internet. These questions include under what conditions the use of a trademark on the Internet would satisfy certain requirements where the registrability or maintenance of a registration requires use, as well as under what conditions and in which jurisdiction(s) the use of a sign on the Internet would constitute an infringement. The note also addressed the issue of use and promotion of well-known marks on the Internet, as well as the relationship between trademarks and domain names. The following describes how these issues have been addressed in WIPO's recent work. Use of trademarks on the Internet 19. Issues relating to the use of trademarks on the Internet were addressed in a "Joint Recommendation Concerning Provisions on the Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet ("Joint Recommendation"),32 that was adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of WIPO in September 2001.33 The WIPO Survey characterizes the Joint Recommendation as follows: "The Preamble to the Joint Recommendation makes clear that it does not purport to be a trademark law for the Internet, but is intended to guide the application of existing national or regional laws with respect to legal problems resulting from the use of a sign on the Internet. Emphasizing the 'global nature' of the Internet, the Joint Recommendation aims at providing the clearest possible legal framework for trademark owners who wish to use their marks on the Internet and to participate in the development of e-commerce upon it. Its purpose is, therefore, to help competent authorities to determine whether, under the applicable law, the use of a sign on the Internet has contributed to the acquisition, maintenance or infringement of a mark or other industrial property right in the sign, or whether such use constitutes an act of unfair competition, and thereafter to apply appropriate remedies. The determination of the applicable law itself is not addressed by the Joint Recommendation, but is left to the principles of private international law, as they are applied in each Member State. [...]"34 20. The Joint Recommendation is built on three principles. First, the use of a sign on the Internet contributes to the acquisition, maintenance or infringement of a trademark or other industrial property right in the sign in a particular country only if the use has a commercial effect in that country. Second, the Joint Recommendation aims to enable owners of conflicting rights in identical or similar signs to use these signs concurrently on the Internet. To this end, it introduces a "notice and avoidance of conflict" procedure: right holders or persons who are otherwise permitted to use a sign in one jurisdiction are exempt from liability in another jurisdiction up to the point when they receive a notification of infringement in the latter jurisdiction. After the receipt of such notification, they continue to be exempt from liability if they expeditiously take reasonable measures which are 32 33 These governing bodies decided to "[r]ecommend that each Member State may consider the use of any of the provisions [...] as guidelines concerning the protection of marks, and other industrial property rights in signs, on the Internet". Article 1(i) of the Joint Recommendation defines that a "'Member State' means a State member of the Paris Union for the Protection of Industrial Property, of the World Intellectual Property Organization, or of both". 34 Paragraphs 155-156 of the WIPO Survey (a footnote in the original document omitted). IP/C/W/128/Add.1 Page 7 The Joint Recommendation is available at http://www.wipo.int/about- ip/en/index.html?wipo_content_frame=/about-ip/en/development_iplaw/index.htm. IP/C/W/128/Add.1 Page 8 effective to avoid a commercial effect in that jurisdiction. Third, remedies for an infringement in a particular country must be proportionate to the commercial effect of the use of the sign in that country. In general, competent authorities should, as far as possible, refrain from granting "global injunctions" that would affect the use of the sign outside the jurisdiction in question. Well-known trademarks 21. The protection of well-known marks was addressed in a "Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks",35 that was adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of WIPO in September 1999.36 First, it provides guidelines to assist competent authorities to determine whether a mark is well-known. Among the recommended criteria to be considered are the duration, extent and geographical area of any use and promotion of the mark. The explanatory notes prepared by the International Bureau of WIPO and attached to the recommendation state that, although the term "use" is not defined in the recommendation, for the purposes of its provisions the term "use" should cover use of a mark on the Internet. Furthermore, they explain that "[a]dvertising, for example, in print or electronic media (including the Internet), is one form of promotion".37 Second, the recommendation provides that well-known marks must be protected against conflicting marks, business identifiers and domain names.38 As regards domain names, it is specified that "[a] domain name shall be deemed to be in conflict with a well-known mark at least where that domain name, or an essential part thereof, constitutes a reproduction, an imitation, a translation, or a transliteration of the well-known mark, and the domain name has been registered or used in bad faith".39 Domain names 22. Following its First Internet Domain Name Process, an international process to develop recommendations concerning the intellectual property issues associated with Internet domain names, WIPO published, in April 1999, its report "The Management of Internet Names and Addresses: Intellectual Property Issues". The principal recommendations of this report were implemented through the adoption by the Internet Corporation for Assigned Names and Numbers ("ICANN") of the Uniform Domain Name Dispute Resolution Policy ("UDRP") in August 1999. This procedure, which entered into operation in December 1999, provides holders of trademark rights with an administrative mechanism for the efficient resolution of disputes arising out of the bad faith registration and use by third parties of Internet domain names corresponding to those trademark rights. The UDRP now applies to disputes in the generic top-level domains ("gTLDs") .com, .net, and .org, the new gTLDs .aero, .biz, .coop, .info, .museum, .name, and .pro,40 and those country code top-level domains ("ccTLDs") that have adopted the Policy on a voluntary basis.41 35 36 These governing bodies decided to "[r]ecommend that each Member State may consider the use of any of the provisions [...] as guidelines for the protection for well-known marks". Article 1(i) of the recommendation defines that a "'Member State' means a State member of the Paris Union for the Protection of Industrial Property and/or the World Intellectual Property Organization ". 37 Sub-paragraphs 2 and 3 of Article 2(1) of the recommendation and the attached explanatory notes. 38 Article 3(1) of the recommendation. 39 Article 6(1) of the recommendation. 40 ICANN has accredited a number of institutions to administer complaints filed under the Policy, among which the WIPO Arbitration and Mediation Center is the leading provider. To date, approximately 8,200 cases have been filed under the procedure. Of these cases, more than 4,800 were filed with the WIPO Arbitration and Mediation Center. 41 WIPO launched in August 2000 the WIPO ccTLD Programme, which aims to enhance the protection of intellectual property in the ccTLDs through cooperation with their administrators. To date, 30 administrators of ccTLDs have retained the WIPO Arbitration and Mediation Center as dispute resolution service provider on the basis of the UDRP or a variation thereof. This recommendation is available at http://www.wipo.int/about- ip/en/index.html?wipo_content_frame=/about-ip/en/development_iplaw/index.htm. IP/C/W/128/Add.1 Page 9 23. WIPO commenced the Second WIPO Internet Domain Name Process in July 2000 to address abusive domain name registrations of identifiers other than trademarks. In September 2001, WIPO published its report on this process entitled "The Recognition of Rights and the Use of Names in the Internet Domain Name System", and presented it to WIPO's member States and ICANN. This report was analyzed by the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications ("SCT"), which formulated a set of recommendations.42 These recommendations were considered by the WIPO General Assembly at its meeting in September 2002.43 The recommendation concerning country names was remitted for further consideration at the SCT's meeting in November 2002.44 As a result, the member States of WIPO decided to recommend that the names and acronyms of intergovernmental organizations ("IGOs") and country names should be protected against abusive registration as domain names.45 These recommendations were transmitted to ICANN.46 IV. ENFORCEMENT AND RELATED MATTERS Liability of service provides 24. Paragraphs 73 and 74 of document IP/W/128 addressed the issue of the liability of service providers in respect of the transmission and storage of material initiated by others: to what extent service providers, who act as intermediaries transmitting or storing potentially infringing content, are or should be held liable for such content and, if so, what remedies should be available. Given that the Internet is a borderless medium, it would be important that national approaches to this issues would be mutually compatible so as to allow global networks and markets to develop smoothly. 25. This issue was discussed in the context of the work leading up to the WIPO 1996 Diplomatic Conference. Article 8 of the WCT on the "Right of Communication to the Public" compiles the various provisions of the Berne Convention on the right of communication into a single provision, extends the right to all categories of works, and clarifies the application of the right in respect of interactive on-demand communications.47 As regards the scope of this right in respect of intermediaries who provide physical facilities for communication without actively initiating it, the Conference adopted the following Agreed Statement: 42 The SCT's recommendations are reflected in WIPO document WO/GA/28/3. 43 The decisions of the General Assembly in respect of these recommendations are reflected in paragraphs 74-81 of WIPO document WO/GA/28/7. 44 The decisions by the SCT concerning country names are reflected in 6-11 of WIPO document SCT/9/8. 45 The delegation of the United States dissociated itself from the General Assembly's decision on the recommendation concerning the names and acronyms of IGOs, and the delegations of Australia, Canada and the United States dissociated themselves from the SCT's decision on the recommendation concerning country names. The General Assembly also adopted recommendations concerning certain other identifiers. It adopted the recommendation that no particular form of protection of international non-proprietary names for pharmaceutical substances would be recommended in the DNS at this time, but that WIPO, together with the World Health Organization, would continue to monitor the situation and, where necessary, bring any important developments in this area to the notice of member States; it adopted the recommendation that WIPO member States should keep the issue of trade names under review and raise it for further discussion if the situation so required; it adopted the recommendation that no action was needed in respect of personal names; and in respect of geographical indications, it adopted the recommendation that this issue be reverted to the regular session of the SCT to decide how to address the issue of the protection of geographical indications in the DNS. 46 For an in-depth examination of WIPO's work relating to domain names, see paragraphs 178-239 and 516-522 of the WIPO Survey. All the WIPO documentation referred to above can be accessed through the WIPO domain names gateway page at http://ecommerce.wipo.int/domains/. 47 See paragraphs 43-45 of document IP/C/W/128. Similar provisions are contained in Articles 10 and 14 of the WPPT that deal with the right of making available of fixed performances and of phonograms. IP/C/W/128/Add.1 Page 10 "It is understood that the mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of this Treaty or the Berne Convention." While this statement clarifies the scope of the right of communication to the public, it leaves the issue of liability of service provides to be determined at the national level.48 26. Since the adoption of the WCT in December 1996, the issue of liability of service providers has been addressed in the legislation of a number of countries. Some countries have regulated the issue specifically in relation to copyright, while others have taken a horizontal approach applying the rules to liability arising under any relevant laws applying to the information transmitted or stored. Below are some examples of such laws. 27. The United States Digital Millennium Copyright Act of 199849 limits the liability of service providers, under specified conditions, to certain forms of injunctive relief in respect of certain common activities involving the transmission or storage of material initiated by a person other than the service provider. The conditions include that the service provider complies with a "notice and take down" procedure that allows the right holder to notify it of allegedly infringing material residing on its system and require it to take down or disable access to such material after receiving such notice. Similar laws determining liability of service providers in the copyright context have been enacted in a number of countries, including Hungary, Ireland and Singapore. 28. The European Communities Directive on Electronic Commerce,50 adopted in June 2000, approaches the same question in a horizontal manner. Its provisions on liability of intermediary service providers apply to liability the may arise from the application of copyright or any other relevant laws. Subject to certain conditions, service providers may not be held liable for the simple transmission of information provided by the recipient of the service ("mere conduit"), automatic intermediate and temporary storage of such information with the sole objective of making its onward transmission more efficient ("caching"), and storage of such information at the request of the recipient ("hosting"). In the case of hosting, the service provider, upon obtaining knowledge or awareness that the activity is illegal, must expeditiously remove or disable access to the information. The EC member States may not impose on service providers any general obligation to monitor the information transmitted or stored. Also Japan has approached the regulation of service provider liability in a horizontal manner in its "Provider Liability Law", enacted in November 2001.51 48 The agreed statement may be read together with the following explanatory notes on draft Article 10, which later became Article 8 of the WCT: "The relevant act is the making available of the work by providing access to it. What counts is the initial act of making the work available, not the mere provision of server space, communication connections, or facilities for the carriage and routing of signals. It is irrelevant whether copies are available for the user or whether the work is simply made perceptible to, and thus usable by, the user." "It is strongly emphasized that Article 10 does not attempt to define the nature or extent of liability on a national level. This proposed international agreement determines only the scope of the exclusive rights that shall be granted to authors in respect of their works. Who is liable for the violation of these rights and what the extent of liability shall be for such violations is a matter for national legislation and case law according to the legal traditions of each Contracting Party." Paragraphs 10.10 and 10.21 of WIPO document CRNR/DC/4 entitled "Basic Proposal for the Substantive Provisions of the Treaty on Certain Questions concerning the Protection of Literary and Artistic Works to be Considered by the Diplomatic Conference". 49 Pub. L. No. 105-304, 112 Stat. 2860, 2876. 50 Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on Certain Legal Aspects of Information Society Services, in particular Electronic Commerce, in the Internal Market. 51 Law No. 137 of 30 November 2001.