The World Intellectual Property Organization (WIPO) — the United Nations tribunal responsible for overseeing Internet domain name disputes and other intellectual property issues — is launching a new offensive against cybersquatters.
To date, WIPO has focused its efforts on stamping out the registration of misleading domain names that include existing trademarks not owned by the company or person who registered the domain name. However, several countries, including Australia, Argentina, Canada, Denmark, France and the U.S., as well as the European Union, do not believe the current efforts go far enough and have asked the WIPO to take a second look at regulating domain names.
Some of the issues to be addressed are abusive registrations of trade names, geographical names and other names that are not technically trademarks. A trademark is a word and/or design used to designate the origin of goods and services, while a trade name is the name of a company. For example, in general terms “Frosted Flakes” is a trademark, while “Kellogg’s” is a trade name.
WIPO is taking the view that it can be just as harmful for a company to have its trade name registered as a domain name by another company, as it is for the company to have its trademark registered as a domain name by another company. Other non-trademark names that have value are geographical designations, such as “Florida Oranges,” personal names such as “Julia Roberts,” and marks of quality, such as seals of approval and grade designations.
The WIPO, which began arbitrating domain name disputes in December, has resolved over 345 of the more than 750 cases filed with the WIPO Arbitration and Mediation Center.
Not Far Enough
In April 1999, the WIPO issued a series of recommendations in a report titled “The Management of Internet Names and Addresses: Intellectual Property Issues.” However, those recommendations did not go far enough, according to the WIPO and countries involved, because they only addressed problematic domain name registrations that include technical trademarks.
The WIPO says the ultimate goal of its new initiative is to “create a stable environment for the further development of electronic commerce and safeguard the interests of owners of rights that are not necessarily based on registered trademarks.”
The organization also said that one of the problems with the current domain name registration process is that trademark registrations are administered by governmental agencies, while domain name registrations are usually administered by non-governmental agencies on a first-come, first-served basis. Cybersquatters often exploit the difference. For example, cybersquatters often register domain names that are already company names, movie titles and the like, in the hopes that they can sell them to the interested party for a hefty profit.
WIPO Assistant Director General Francis Gurry welcomed the request for additional measures and said that WIPO is committed to promoting a reliable environment in cyberspace.
Gurry added, “This request marks a new phase in our attempts to establish greater compatibility between identifiers in the real and virtual worlds. In examining personality rights, geographical indications and the other areas mentioned in the request, we will be embarking on more complex, but no less important, legal and policy terrain.”
List of Best Practices
In two letters addressed to WIPO Director General Dr. Kamil Idris, the leaders from 20 member states asked the WIPO to draw up a list of best practices to help administrators of country code top level domain name registries (ccTLDs) prevent and resolve domain names disputes.
The leaders specifically want the WIPO to address the bad faith, abusive, misleading, or unfair use of:
- Personal names. Celebrity names are often the target of abusive registrations. American actress Julia Roberts was recently awarded the rights to the name “JuliaRoberts.com” by the WIPO.
- International Nonproprietary Names (INNs). Unique and distinctive generic names of pharmaceutical substances that are selected by the World Health Organization (WHO), and maintained as public property to protect the safety of patients worldwide.
- Names of international intergovernmental organizations. These names, which include INTERPOL and groups of various UN organizations, are protected against use and registration as trademarks by the Paris Convention and TRIPS Agreement.
- Geographical indications, geographical terms, or indications of source. Trade groups want these names protected to maintain the worldwide use of these geographical terms as an indicator that products come from that geographical region.
- Trade names. These are names that are adopted by a business to distinguish its commercial enterprise from others, separate from its trademarks and service marks that are used on products and services.
The WIPO, which hopes to make its new recommendations available to WIPO member states and the Internet community in the first half of 2001, is asking for input from stakeholders around the world.
Gurry said, “Like the first WIPO process, these consultations will be conducted in a balanced and transparent manner. To that end, WIPO invites all interested parties, including intellectual property owners and other members of the Internet community, to participate.”