Amfetamine

The United Nations-backed organization that has settled the lion's share of trademark disputes over Internet addresses has reached a major milestone in its drive to create a comprehensive, global policy on domain naming and intellectual property rights.

A 200-page interim report, the "Second World Intellectual Property Organization (WIPO) Internet Domain Name Process," contains recommendations that call for increased protection for the names of geographic locations, of non-proprietary names of pharmaceuticals, and of the names of international governmental outfits (like the UN itself).

The document's authors also take on the thorny issue of personal names and Internet-domain registration, but are unable to recommend a preferred approach to avoiding - or resolving - conflicts that can occur, usually over the names of famous people.

In 1999, the "First WIPO Internet Domain Process" (originally called "The Management of Internet Names and Addresses: Intellectual Property Issues") became the foundation of the dispute-resolution rules adopted by the internet Corporation for Assigned Names and Numbers (ICANN).

That Uniform Domain Name Dispute Resolution Policy (UDRP), launched in December 1999, has since seen more than 2,500 decisions by international arbitrators settle disputes over more than 4,700 domain names under the dot-com, dot-org and dot-net domain spaces controlled by ICANN.

But WIPO's second attempt to sort out conflicts with intellectual property rights created by the stampede to register Internet addresses goes beyond ICANN's UDRP. In fact, WIPO says it was a number of UN-member countries - not ICANN - that got the ball rolling on the latest report with their request that domain name issues be examined in greater detail.

In addition, over that past year, WIPO has been playing a growing role in settling disputes over Internet addresses registered under country-code top-level domains (ccTLDs), such as dot-mx for Mexico. WIPO now provides dispute resolution for 19 countries' ccTLDs, including the increasingly popular commercialized ccTLD of Pacific- island nation Tuvalu (dot-tv).

The interim report, which is intended to inspire comments until June 8, also takes a broader view than just resolving disputes. For example, to protect the names of geographic locations, drugs and the world governmental agencies, the report recommends prohibiting registrations of such names before they occur. The report falls short of recommending a retroactive ban on geographic place names.

And, while ICANN isn't required to officially implement WIPO recommendations in its own UDRP, the international organization's spin on the rights of intellectual property owners already has a major impact on that process. More of ICANN's UDRP complaints are filed with WIPO than with any of the three other organizations authorized to arbitrate such cases.

"The UDRP was deliberately limited in scope," WIPO's new report says. "It deals only with the class of disputes that concern conflicts between domain names and trademarks and, within that class, it deals only with deliberate, bad-faith violations of trademarks ... popularly known as 'cybersquatting.'"

However, the report says, "it became apparent in the course of the first WIPO Process that the practice of cybersquatting went well beyond the violation of trademark rights and encompassed the putatively unfair abuse of other forms of identifiers."

Nonproprietary Pharmaceutical Names

Among those "identifiers" are the names of drugs that may not be trademarks, but which, some contributors to the WIPO process said, should be protected from domain-name registrants.

Such "international nonproprietary names" (INNs) for pharmaceuticals include Phenobarbital, amphetamine, and ibuprofen, WIPO said. INNs are cataloged by the World Health Organization (WHO) and currently total some 8,000, with more than a hundred being added each year.

The existence of the WHO list makes identifying INNs easy for domain-name registration authorities, which WIPO recommends should prohibit registration of domain names consisting of INNs in the five languages encompassed by WHO's list (Latin, English, French, Russian and Spanish).

Furthermore, the document recommends that the prohibition on INNs as domain names include those already registered under generic top- level domains (gTLDs) - such as dot-com, dot-net and dot-org. The report says that whoever registered Ibuprofen.com, for example, could "reasonably (be) expected to have been aware of the underlying policy of the INN system against the establishment of private rights in INNs."

It continues: "It does not seem unfair, therefore, that any policy adopted for the implementation of the protection of INNs within the domain name space should apply with respect to all past and future registrations of domain names. Furthermore, the allowance of any grandfather clauses for existing registrations would greatly undermine the efficacy of the public policy underlying the INN system."

WIPO suggests that such a prohibition should also be part of policies for all new gTLDs, such as ICANN's planned dot-aero, dot- biz, dot-coop, dot-info, dot-museum, dot-name and dot-pro address spaces.

Left for further debate, however, was the question of whether the INN ban should also apply to the national ccTLDs and whether variations on INN domains that indicate related resources or manufacturers should be allowed, such as Amfetamine-info.com or Glaxo-phenobarbital.com.

WIPO said that the automatic-exclusion approach to INNs would eliminate the need to modify the trademark-oriented UDRP to settle disputes over such domain names.

Intergovernmental Organizations

Although a dot-int gTLD already exists for international intergovernmental organizations (IGOs), such as the UN, WHO, and WIPO itself, "virtually all of the IGOs submitting comments indicated that some form of protection was needed," the report says.

"A number of the comments of IGOs noted instances of abuse or other problems in the registration of their names or acronyms, which resulted in deception or confusion to the public. These organizations expressed concern that unofficial Web sites using a domain name that is identical or similar to their name or acronym may contain misleading, inaccurate or prejudicial information about the IGO, while leading the viewer to believe that he or she is visiting the organization's official web site." 1 The report says that the existence of the dot-int gTLD is "insufficient" to protect the IGOs, and suggests an automatic exclusion process for all gTLD registrations like that recommended for INN-listed pharmaceuticals.

Geographical Domain Names

Likewise, WIPO recommends a similar ban on geographical place names in gTLDs, but also suggests broadening the scope of the UDRP so that those attempting to profit from registering geographical place names can be considered "cybersquatters" without the need for those names to be considered trademarks in the usual sense.

WIPO says it suggests that a prohibition on place names in domain should be restricted to those reflecting the names of countries and "administratively recognized regions and municipalities within countries."

The WIPO report notes that a number of UDRP cases have already attempted to grapple with the issue of geographic domains and trademark, resulting in mixed results.

Last August, a WIPO arbitrator ruled that Barcelona.com should be taken from it current owner and given to the city of that name, which the arbitrator said had trademark rights to it. But that case was quickly followed by the exact opposite decision in the case of StMoriz.com and, more recently, over PortOfHelsinki.com.

The Barcelona.com case has made its way to a US federal court where the owners of the address are attempting to ward off the domain transfer through a lawsuit against the Spanish city. However, WIPO points out in its report that a number of European courts have reached government-friendly decisions on their own in other cases, including the case of Saint-tropez.com in a French court and the case of Heidelberg.de in Germany.

Personal Names As Internet Addresses

On the issue of registering personal names as addresses, the WIPO report says there is "abundant evidence that the names of at least certain well-known individuals have been the subject of parasitical practices in the domain name space.

"Similar practices exist in respect of personal names, particularly those of famous people, in various contexts in the non-virtual world," the report says. "The Internet adds, however, a new dimension to those practices because of the immediacy and low cost with which a domain name registration may be obtained and because of the global presence to which it gives rise."

But, complicating the issue is that, unlike the INN drugs or IGOs created by treaty, what makes for a personal name is not always clear.

In the case of famous individuals, UDRP decisions - particularly those from WIPO - have extended the concept of common law marks to famous monikers, awarding decisions to the likes of America actress Julia Roberts, who had never registered her name as a trademark.

In such cases, the report says, the famous name clearly has a commercial value, making decisions easier using the trademark- dispute approach.

But, while WIPO outlines some broader remedies, such as requiring all "personal name" registrants to show they have a personal right to a domain, it stops short of making any recommendations, saying that more discussion is needed on the issues.

A series of regional "consultation" session are planned for gather additional comment on the proposals, including one in a Washington, D.C., Department of Commerce auditorium on May 29.

More information is at: http://wipo2.wipo.int/ .

Reported by Newsbytes.com, http://www.newsbytes.com .

17:47 CST

(20010416/Press contact: Office of Legal and Organization Affairs, WIPO, +41-22-338-8138/WIRES ONLINE, BUSINESS, LEGAL/WORLDCOPY/PHOTO)

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