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Second
WIPO
Internet Domain Name Process
http://wipo2.wipo.int
David Muls
Head
Electronic Commerce Section
Office of Legal & Organization Affairs
World Intellectual Property Organization
Outline of presentation
World Intellectual Property Organization (WIPO)
WIPO Internet Domain Name Processes
Second WIPO Internet Domain Name Process
Structure and Timetable of Second WIPO Process
Interim Report of Second WIPO Process
Some Reflections
World Intellectual Property Organization
Intergovernmental organization
177 Member States
Specialized UN agency (separate budget)
Geneva-based (with New York office)
approximately 1000 staff members
Three main areas of work
-Development of international intellectual property law (treaties, resolutions, …)
-Global IP protection systems (Patent Cooperation Treaty, Madrid System, Arbitration & Mediation Center…)
-Cooperation for development
90% self-financed
WIPO’s Domain Name Work
Development of international intellectual property law
-WIPO Internet Domain Name Processes
Global IP protection systems
-WIPO Arbitration and Mediation Center
ICANN accredited dispute resolution provider for UDRP
Close to 2700 cases in the gTLDs filed since December 1999
Close to 2,300 cases in the gTLDs resolved
Includes 12 cases where domain names are in non-Latin characters
Includes one case where decision is in Chinese, but domain name is in Latin characters (supor.com/chinasupor.com)
Close to 50 cases in the ccTLDs (35 resolved)
WIPO Internet Domain Name Processes
Open consultation processes aimed at formulating recommendations for resolving conflicts between domain names and intellectual property
Focus on gTLDs (but also relevant to ccTLDs)
Vehicle: WIPO Requests for Comments (on web site)
First WIPO Process (July 1998 - April 1999)
Improved registration practices (registration agreement & WHOIS)
Uniform dispute resolution procedure for trademarks
Famous & well-known marks
new gTLDs
ICANN’s Uniform Domain Name Dispute Resolution Procedure is a result of the WIPO recommendations
Second WIPO Internet Domain Name Process
Member State request in June 2000
Certain issues unresolved in first WIPO Process
International nonproprietary names of pharmaceutical substances (INNs)
Names of international intergovernmental organizations
Personal names
Geographical indications, indications of source, geographical terms
Trade names
Technical measures (WHOIS)
Structure and Timetable of Second Process
July 10, 2000: WIPO2 RFC1
October 13, 2000: WIPO2 RFC2
Regional consultations
Sao Paulo, Brazil (August 2-3, 2000)
Chiang Mai, Thailand (August 3-4, 2000)
Amman, Jordan (September 18-20, 2000)
Krakow, Poland (October 25-26, 2000)
April 12, 2001: WIPO2 RFC3 (Interim Report)
Regional consultations
Brussels, Belgium (April 23, 2001)
Accra, Ghana (April 26, 2001)
Buenos Aires, Argentina (May 10, 2001)
Melbourne, Australia (May 24, 2001)
Washington, D.C., USA (May 29, 2001)
Valencia, Spain (May 30, 2001)
August, 2001: Final Report
Interim Report of Second WIPO Process
Summary of main issues in the Interim Report
International nonproprietary names of pharmaceutical substances (INNs)
Names of international intergovernmental organizations
Personal names
Geographical indications, indications of source, geographical terms
Trade names
Technical measures (WHOIS)
Final Report is due in August
What I will be saying is without prejudice to what the recommendations of the Final Report might be
International Nonproprietary Names of Pharmaceutical Substances (INNs)
Unique identifier of pharmaceutical substances or active pharmaceutical ingredients (ibuprofen, nandrolone, …)
List maintained and developed by World Health Organization
Policy goal: no proprietary rights in INNs
Should be free to use by all
Reliability of information
Prevention of dilution
In light of exclusive nature of domain name, INNs should be protected in the DNS
How?
Exclusion mechanism
Modified UDRP
Notice and take-down procedure
Names of International Intergovernmental Organizations
Article 6ter of the Paris Convention
Protects the names and abbreviations of international intergovernmental organizations against their registration or use as trademarks
Extended by Article 16 of the Trademark Law Treaty to service marks
Incorporated in TRIPS Agreement through Article 2
Many problems experienced in the DNS by organizations in question
Protection is recommended
Form?
Exclusion or challenge procedure (modified UDRP)?
Full names only or acronyms also (e.g., WHO)?
Personal Names
Personal names of famous persons often are cybersquatted
The UDRP protects trademarks (registered or unregistered)
Personal names can, under certain circumstances, be registered as a trademark or be used as a trademark
Personal names that have acquired such trademark status qualify for protection under the UDRP
Some famous persons remain unprotected
Those whose fame is not the result of any commercial activity
Those who are famous, who have not obtained trademark registrations for their names and are active in countries which do not recognize unregistered marks
Should protection be extended to the names of this class of famous persons?
Geographical Indications
Geographic designation of the place of origin of a product where a given quality, characteristic or reputation of that product is attributable to its geographic origin (“Tsingtao”)
Intellectual property protection: Paris Convention, Madrid (Indications of Source) Agreement, Lisbon Agreement and TRIPS Agreement
Problems experienced in the DNS
Office International de la Vigne et du Vin
Institut National des Appelations d’Origine
Should there be protection and what form should it take?
While there are uniform rules, there is no uniform understanding on what qualifies as a protected geographical indication
Geographical Terms
Geographical place identifiers not recognized by the intellectual property system (e.g., South Africa)
Variety is enormous, Interim Report selected a few
Country names
ISO 3166 country code elements (e.g., CN)
Administratively recognized regions and municipalities
Names of indigenous peoples
Pattern: registered by persons who have no connection with the identifier
Particularly sensitive for country names (southafrica.com)
No uniform rules in this area
Paris Convention protects certain State symbols (armorial bearings, flags and emblems…), but not country names themselves
Should there be protection in the DNS?
Trade Names
Trademarks and service marks distinguish goods and services from each other
Trade names distinguish entire businesses from each other
Protected under the Paris Convention
Should the UDRP be expanded to cover also trade names?
Distinction between trademark and trade name is not always clear
Unregistered marks already are protected
Some countries do not recognize unregistered marks
Some countries have a tradition of relying on trade names
Reasonable support for extending UDRP to trade names
Technical Measures (WHOIS)
Recommendations of first WIPO Process
Publicly accessible WHOIS should be available in real-time
Minimum information (name & contact details of registrant)
Searchable
Current issues with regard to WHOIS in the gTLDs
Fragmented across multiple registrars
Search criteria other than domain name (registrant)
Global WHOIS
Privacy implications in certain jurisdictions
Some Reflections
Second WIPO Process covers some topics where harmonization of intellectual property rules is either non-existent or weak
Personal names
Geographical indications
Geographical terms
Trade names
How much can one accomplish in those areas through
Consultation processes, such as WIPO Second Process?
ICANN?
What is the role of governments?
Consider country names
Perceived by some governments as linked to their national sovereign interest
Protection likely would amount to creation of new law
How should any recommendations be implemented?
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