[141] See Comment of United States of America, Office of Advocacy, U.S. Small Business Administration (Washington consultation – May 29, 2001), Comment of World Health Organization (WHO) (RFC-3 – June 7, 2001), Comment of Argentine Chamber of Databases and On Line Services (CABASE) (RFC-3 – June 6, 2001), Comment of Association for Computing Machinery’s Internet Governance Project, Electronic Privacy Information Center (RFC-3 – June 15, 2001), Comment of European Brands Association (AIM) (RFC-3 – May 16, 2001), Comment of F閐閞ation internationale des conseils en propri閠?industrielle (FICPI) (RFC-3 – June 14, 2001), Comment of International Trademark Association (INTA) (RFC-3 – May 24, 2001), Comment of Japan Network Information Centre (JPNIC) (RFC-3 – June 8, 2001), Comment of Christian Mogensen (RFC-3 – April 16, 2001).
[142] See Comment of International Labour Office (ILO) (RFC-3 – June 8, 2001).
[143] See Comment of Japan, Ministry of Economy, Trade and Economy (METI) (RFC-3 – July 5, 2001), Comment of Republic of Korea, Korean Intellectual Property Office (KIPO) (RFC-3 – June 7, 2001), Comment of Switzerland, Swiss Federal Institute of Intellectual Property (RFC-3 – June 15, 2001), Comment of European Commission (RFC-3 – June 25, 2001), Comment of International Civil Aviation Organization (ICAO) (RFC-3 – June 12, 2001), Comment of International Labour Office (ILO) (RFC-3 – June 8, 2001), Comment of World Health Organization (WHO) (RFC-3 – June 7, 2001), Comment of Brazilian Association of Intellectual Property (ABPI) (RFC-3 – June 8, 2001), Comment of International Chamber of Commerce (ICC) (RFC-3 – June 18, 2001), Comment of Law and Technology Committee, Auckland District Law Society (RFC-3 – June 22, 2001). See also Comment of Asociaci髇 Interamericana de la Propiedad Industrial (ASIPI) (RFC-2 - December 26, 2000), Comment of The Association of European Trade Mark Owners (MARQUES) (RFC-2 - December 22, 2000), Comment of European Brands Association (AIM) (RFC-2 - December 20, 2000), Comment of Cuatrecasas Abogados (RFC-1 – September, 2000), Comment of Elzaburu (Luis H. de Larramendi) (RFC-1 – September 19, 2000).
[144] See Comment of the European Patent Office (EPO) (RFC-2 - December 28, 2000), Comment of Organization for the Prohibition of Chemical Weapons (OPCW) (RFC-2 – December 28, 2000), Comment of Preparatory Commission for the Comprehensive Nuclear-Test-Ban Treaty Organization (CTBTO) (RFC-2 – December 22, 2000), Comment of World Health Organization (WHO) (RFC-2 – December 21, 2000), Comment of Asociaci髇 Interamericana de la Propiedad Industrial (ASIPI) (RFC-2 - December 26, 2000), Comment of The Association of European Trade Mark Owners (MARQUES) (RFC-2 - December 22, 2000); cf. Comment of International Maritime Organization (IMO) (RFC-2 – December 13, 2000), Comment of J. R. Stogrum (RFC-1 – September 14, 2000).
[145] See Comment of Asociaci髇 Interamericana de la Propiedad Industrial (ASIPI) (RFC-2 - December 26, 2000).
[146] See Comment of International Labour Office (ILO) (RFC-3 – June 8, 2001), Comment of American Intellectual Property Law Association (AIPLA) (RFC-3 – June 7, 2001).
[147] See Comment of the European Commission (RFC-2 – January 16, 2001), Preparatory Commission for the Comprehensive Nuclear-Test-Ban Treaty Organization (CTBTO) (RFC-2 – December 22, 2000), Comment of the United Nations Framework Convention on Climate Change (RFC-2 – December 7, 2000), Comment of World Health Organization (WHO) (RFC-2 – December 21, 2000), Comment of the Comment of Asociaci髇 Interamericana de la Propiedad Industrial (ASIPI) (RFC-2 - December 26, 2000), Comment of European Brands Association (AIM) (RFC-2 - December 20, 2000), Comment of British Telecommunications, Plc. (RFC-2 - December 19, 2000), Comment of Elzaburu (Luis H. De Larramendi) (RFC-1 – September 19, 2000).
[148] See Comment of Japan, Ministry of Economy, Trade and Economy (METI) (RFC-3 – July 5, 2001), Comment of Switzerland, Swiss Federal Institute of Intellectual Property (RFC-3 – June 15, 2001).
[149] See Comment of American Intellectual Property Law Association (AIPLA) (RFC-3 – June 7, 2001), Comment of Brazilian Association of Intellectual Property (ABPI) (RFC-3 – June 8, 2001). See also Comment of International Maritime Organization (IMO) (RFC-2 – December 13, 2000), Comment of Organization for the Prohibition of Chemical Weapons (OPCW) (RFC-2 – December 28, 2000).
[150] See Comment of Asociaci髇 Interamericana de la Propiedad Industrial (ASIPI) (RFC-2 – December 26, 2000), Comment of European Brands Association (AIM) (RFC-2 – December 20, 2000), Comment of British Telecommunications, Plc. (RFC-2 – December 19, 2000).
[151] See Comment of the Preparatory Commission for the Comprehensive Nuclear-Test-Ban Treaty Organization (CTBTO) (RFC-2 – December 22, 2000). See also Comment of World Health Organization (WHO) (RFC-2 – December 21, 2000), providing that the challenge should be allowed if the acronym of the IGO was in use before the domain name registration and there is a risk of confusion as to the identity of the domain name holder or the registration or use is otherwise in bad faith.
[152] See Comment of United Kingdom, The Patent Office (RFC-3 - June 1, 2001), Comment of American Intellectual Property Law Association (AIPLA) (RFC-3 – June 7, 2001). See also Comment of the American Intellectual Property Law Association (AIPLA) (RFC-2 – December 29, 2000), Comment of International Trademark Association (INTA) (RFC-2 – January 4, 2001).
[153] See Comment of F閐閞ation internationale des conseils en propri閠? industrielle (FICPI) (RFC-2 – December 29, 2000), Comment of International Trademark Association (INTA) (RFC-2 – January 4, 2001), Comment of United States Council for International Business (USCIB) (RFC-2 – December 29, 2000), Comment of Verizon (RFC-2 – December 26, 2000).
[154] See Comment of Christopher Zaborsky (RFC-1 – August 11, 2000), Comment of Ashutosh C. Pradham (RFC-2 - December 16, 2000).
[155] See Comment of Association for Computing Machinery’s Internet Governance Project (RFC-3 – June 15, 2001), Comment of Alexander Svensson (RFC-2 – December 21, 2000), Comment of PTI Networks, Inc. (Frank Schilling) (RFC-1 – August 13, 2000), Comment of VerandaGlobal.com, Inc. (William Blackwood) (RFC-1 – August 15, 2000), Comment of Solid State Design, Inc. (Charles Linart) (RFC-1 – August 15, 2000), Comment of harrycanada (RFC-1 – August 14, 2000), Comment of Garry Anderson (RFC-1 – August 12, 2000), Comment of Mark Moshkowitz (RFC-1 – August 12, 2000), Comment of Daniel Deephanphongs (RFC-1 – August 12, 2000).
[156] See, for example, Comment of International Civil Aviation Organization (ICAO) (RFC-3 – June 12, 2001), Comment of International Labour Office (ILO) (RFC-3 – June 8, 2001), Comment of United Nations, Office of Legal Affairs, (RFC-3 – June 15, 2001), Comment of Organization for the Prohibition of Chemical Weapons (OPCW) (RFC-2 – December 28, 2000).
[157] See Comment of United Nations, Office of Legal Affairs (RFC-3 – June 15, 2001).
[158] The UDRP Rules, paragraph 3 (xiii), provide that the complaint shall:
“State that Complainant will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction.”
See http://www.icann.org/udrp/udrp-rules-24oct99.htm#3bxiii
[159] International Convenant on Civil and Political Rights, Article 10.1.
[160] Kalven, “Privacy in Tort Law-Were Warren and Brandeis Wrong?” (1966) 61 Law and Contemporary Problems 326, 331, quoted in Zacchini v. Scripps-Howard Broadcasting Company 433 U.S. 562, at 576 (1976).
[161] Ley Organica de 5 de mayo de 1982, “Derecho al honor intimidad personal y familiar y a la propia imagen.”
[162] For example, in Japan, on the basis of Article 709 of the Civil Code.
[163] See Article 15(1).
[164] See Comment of Michael Froomkin (RFC3 – June 4, 2001).
[165] See UDRP, para. 4(a).
[166] See e.g., Harrods Ltd. v. Robert Boyd, WIPO Case D2000-0060 (March 16, 2000) (the domain name dodialfayed.com was determined to be registered and used in bad faith, as it was confusingly similar to the personal name, “Dodi Fayed,” which had been registered as a European Community Trademark); Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case D2000-0847 (October 12, 2000) (the domain name was held to have been registered and used in bad faith and was identical or confusingly similar to the personal name, Madonna, for which the Complainant held a United States Trademark Registration); Drs Foster & Smith, Inc. v. Jaspreet Lalli, NAF FA0007000095284 (August 21, 2000) (same); Helen Fielding v. Anthony Corbet a/k/a Anthony Corbett, WIPO Case D2000-1000 (Sept. 25, 2000) (Complainant had registered trademark in fictional character “Bridget Jones”); Alain Delon Diffusion S.A. v. Unimetal Sanayi ve Tic A.S., WIPO Case D2000-0989 (October 26, 2000) (the domain name alaindelon.com was held to have been registered and used in bad faith and was identical to the personal name, Alain Delon, for which the Complainant held International Trademark Registration); Laurence Fontaine v. Visiotex S.A., WIPO Case D2001-0071 (March 26, 2001) (the Panelist found that the domain name lauresainclair.com was confusingly similar to the personal name of Complainant which had registered as a trademark LAURE SAINCLAIR); Isabel Preysler Arrastia v. Ediciones Delf韓, S.L., WIPO Case D20001-0298 (May 31, 2001) (Panel found that the domain name preysler.com was confusingly similar to the personal name, Isabel Preysler, for which Complainant held a Spanish Trademark Registration).
[167] See J. T. McCarthy, McCarthy on Trademarks and Unfair Competition, Vol. 4, ch. 25, ?5:74.2 (2000), indicating that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required – unregistered or common law trademark or service mark rights will suffice” to support a complaint under the UDRP. (Emphasis in original).
[168] One of the earliest decisions to rely on unregistered rights in a trademark was handed down in the consolidated cases of Bennett Coleman & Co. v. Steven S. Lalwani, WIPO Cases D2000-0014 and D2000-0015 (March 11, 2000). The cases involved a Complainant located in India and a respondent located in the United States of America. The Respondent challenged that there were no trademark registrations for the relevant words in the domain names, theeconomictimes.com and the timesofindia.com, in the United States and that, in any event, any trademark registrations in India had expired. The Panelist, Professor W.R. Cornish, found first that, given the Internet provides worldwide access, the assessment of the propriety of a domain name registration cannot be confined only to comparisons with trademark registrations and other rights in the country where the web site may be hosted. Secondly, the Panelist relied on the “reputation from actual use” of the words in question to determine that, whether or not the Indian trademarks were registered, the Complainant had trademark rights.
[169] See e.g., Julia Fiona Roberts v. Russell Boyd, WIPO Case D2000-0210 (May 29, 2000) (holding that the Complainant has common law trademark rights in her name: “The Policy does not require that the Complainant should have rights in a registered trademark or service mark. It is sufficient that the Complainant should satisfy the Administrative Panel that she has rights in common law trademark or sufficient rights to ground action for passing off”); Jeanette Winterson v. Mark Hogarth, WIPO Case D2000-0235 (May 22, 2000) (Panel held that Complainant has trademark rights in the mark JEANETTE WINTERSON, emphasizing that paragraph 4(a)(i) of the UDRP “refers to rights not registered trademark rights of a third party”); Mick Jagger v. Denny Hammerton, NAF FA0007000095261 (September 11, 2000) (“Complainant held a common law trademark in his famous name, “Mick Jagger,” even without registration at the United States Patent and Trademark Office.”); Helen Folsade Adu p/k/a Sade v. Quantum Computer Services, Inc., WIPO Case D2000-0794 (September 26, 2000) (Panel held that Complainant has established common law trademark and service mark rights in the word “SADE,” which has been used in connection with sales of records, CDs, CD-ROMS, tickets for concerts and merchandising in many jurisdictions around the world); CMG Worldwide, Inc. v. Naughtya Page, NAF Case FA0009000095641 (November 8, 2000) (Diana, Princess of Wales, before her death had common law trademark rights in her name); Cho Yong Pil v. ImageLand. Inc., WIPO Case D2000-0229 (May 10, 2000) (Complainant demonstrated that the fame in his name, as a famous Korean pop music artist for 30 years, was sufficient to give him trademark or service mark rights for the purpose of the rules); Rosa Montero Gallo v. Galileo Asesores S.L., WIPO Case D2001-1649 (January 27, 2001) (Panel found that Complainant was sufficiently famous in association with the services offered in connection with Complainant’s personal name to establish the requisite common law trademark right ); Jos?Luis Sampedro S醗z v. Galileo Asesores S.L., WIPO Case D2000-1650 (January 27, 2001) (same); Lorenzo Silva Amador v. Galileo Asesores S.L., WIPO Case D2000-1697 (January 27, 2001) (same); Julian Barnes v. Old Barn Studios Limited, WIPO Case D2001-0121 (March 26, 2001) (Panel found that Complainant has common law trademark holding that “Complainant has established that he uses his name in the creation and promotion of his work from which he makes his living. His name identifies his work. His work is ordered and called for under and by reference to his name.”); Louis De Bernieres v. Old Barn Studios Limited, WIPO Case D2001-0122 (March 26, 2001) (same); Anthony Beevor v. Old Barn Studios Limited, WIPO Case D2001-0123 (March 26, 2001) (same); Margaret Drabble v. Old Barn Studios Limited, WIPO Case D2001-0209 (March 26, 2001) (same); George-Marie Glover and George-Marie Glover, LLC v. Cherie Pogue, WIPO Case D2001-0600 (June 11, 2001) (Panel held that Complainant has common law trademark in the name “George-Marie” which has been used in connection with complainant’s artistic services for 15 years); See also Report of first WIPO Process, paras. 149-50, at 42-43 (allow “consideration of all legitimate rights and interests of the parties (which are not necessarily reflected in a trademark certificate)”).
[170] See e.g., Julia Fiona Roberts v. Russell Boyd, WIPO Case D2000-0210 (May 29, 2000) (the complainant “is a famous motion picture actress”); Jeanette Winterson v. Mark Hogarth, WIPO Case D2000-0235 (May 22, 2000) (Complainant is an author who has “achieved international recognition and critical acclaim,” writing books and screen plays that have been published in over 21 countries in 18 languages); Mick Jagger v. Denny Hammerton, NAF FA0007000095261 (September 11, 2000) (Complainant has a “famous personal name, ‘Mick Jagger,’”); Helen Folsade Adu p/k/a Sade v. Quantum Computer Services, Inc., WIPO Case D2000-0794 (September 26, 2000) (Complainant is a world famous singer, songwriter and recording artist known under the stage name “SADE”); Isabelle Adjani v. Second Orbit Communications, Inc., WIPO Case D2000-0867 (October 4, 2000) (Panel notes that Complainant has achieved “international recognition and acclaim” as a well-known film actress using her real name, Isabelle Adjani); CMG Worldwide, Inc. v. Naughtya Page, NAF Case FA0009000095641 (Nov. 8, 2000) (finding that, in relation to the domain names princessdi.com and princessdiana.com, that Princess Diana, during her life time, was well known as Princess Diana or Princess Di); but cf., Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case D2000-0596 (July 20, 2000) (held that the personal name Sting was not distinctive, as it “is also a common word in the English language, with a number of different meanings”); Alain Delon Diffusion S.A. v. Unimetal Sanayi ve Tic A.S., WIPO Case D2000-0989 (October 26, 2000) (“the Panel is satisfied that the ALAIN DELON name and mark is well-known internationally”).
[171] See Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case D2000-0299 (June 9, 2000).
[172] See Steven Rattner v. BuyThisDomainName (John Pepin), WIPO Case D2000-0402 (July 3, 2000) (holding Complainant is well-known and has a common law mark in connection with investment banking and corporate advisory services); Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case D2000-0299 (June 9, 2000) (held that Complainant's name, Monty Roberts, is a famous mark in connection with the service of horse training); Nic Carter v. The Afternoon Fiasco竁IPO Case D2000-0658 (October 17, 2000) (Complainant’s “name, Nic Carter is distinctive, has received a high degree of recognition and has come to be associated in the minds of the public with Complainant and his radio broadcasting services”); Isabelle Adjani v. Second Orbit Communications, Inc., WIPO Case D2000-0867 (October 4, 2000) (use of Complainant’s name has come to be recognized by the general public as indicating an association with the Complainant and her activities as an actress); Mick Jagger v. Denny Hammerton, NAF FA0007000095261 (September 11, 2000) (“Complainant presented evidence “of the continuous commercial use ... for more than thirty-five (35) years” of “his famous personal name, ‘Mick Jagger,’”); Helen Folsade Adu p/k/a Sade v. Quantum Computer Services, Inc., WIPO Case D2000-0794 (September 26, 2000) (“SADE,” has been used in connection with sales of records, CDs, CD-ROMS, tickets for concerts and merchandising in many jurisdictions around the world); but cf., Anne McLellan v. Smartcanuk.com, eResolution Case AF-0303a & AF-0303b (September 25, 2000) (held that Complainant, the most senior Government of Canada official in the Province of Alberta, where both Complainant and Respondent reside, has common law trademark rights in her name, although the decision does not indicate that she has used her name as a mark in commerce).
[173] See e.g., Harrods Ltd. v. Robert Boyd, WIPO Case D2000-0060 (March 16, 2000) (domain name dodialfayed.com was determined to be confusingly similar to the personal name, “Dodi Fayed.”); Steven Rattner v. BuyThisDomainName (John Pepin), WIPO Case D2000-0402 (July 3, 2000) (Complainant not limited to claiming rights in his full name - small variations in the name are not material).
[174] See Bennett Coleman & Co. v. Steven S. Lalwani, WIPO Cases D2000-0014 and D2000-0015 (March 11, 2000) (given the Internet provides worldwide access, the assessment of the propriety of a domain name registration cannot be confined only to comparisons with trademark registrations and other rights in the country where the web site may be hosted); see also Jeanette Winterson v. Mark Hogarth, WIPO Case D2000-0235 (May 22, 2000) ("Since both the Complainant and the Respondent are domiciled in the United Kingdom, … the Panel can look at applicable decisions of English courts"); Pierre van Hooijdonk v. S.B. Tait, WIPO Case D2000-1068 (Nov. 4, 2000) (Complainant was resident in the Netherlands and the Respondent in the United Kingdom. The Panel makes reference to (i) Complainant’s Benelux registered trademark and service mark, (ii) the common law of the United Kingdom, and (iii) the decision of the President of the Amsterdam District Court in Albert Heijn and 159 other plaintiffs v. Name Space (July 13, 2000), holding that Defendant’s registration of 300 “proper names” was unlawful); Isabelle Adjani v. Second Orbit Communications, Inc., WIPO Case D2000-0867 (October 4, 2000) (“The Complainant is resident in Switzerland and the Respondents give an address in the United States of America. To the extent that it assists in determining whether the Complainant has met her burden under paragraph 4a(i) of the Policy to establish that she has trademark rights in her name Isabelle Adjani, the Panel can look at applicable decision and laws in both countries”); Estate of Stanley Getz a/k/a Stan Getz v. Peter Vogel, WIPO Case D2000-0773 (October 10, 2000) (“Since Getz was a resident of the State of California at the time of his death and since his estate is being probated in the courts of the State of California under California law, to the extent that it would assist the Panel, the Panel shall also look to the law of the State of California.”).
[175] See Experience Hendrix. LLC v. Denny Hammerton and the Jimi Hendrix Fan Club, WIPO Case D2000-0364 (August 15, 2000); MPL Communications Ltd. v. Denny Hammerton, NAF Case FA0009000095633 (October 25, 2000) (Respondent, who had registered paulmccartney.com and lindamccartney.com, has also registered the names of other celebrities such as Mick Jagger, Rod Stewart and Sean Lennon. He has not made use of the domain names in connection with a bona fide offering of goods or services); Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madona.com,” WIPO Case D2000-0847 (October 12, 2000) (use which intentionally trades on the fame of another can not constitute a “bona fide” offering of goods or services”); Alain Delon Diffusion S.A. v. Unimetal Sanayi ve Tic A.S, WIPO Case D2000-0989 (October 26, 2000) (the Panel found that, among other factors, the registration by the Respondent of a number of other well known trademarks as domain names, there was no basis for finding that the Respondent have had any good faith basis for registering the disputed domain name).
[176] Helen Folsade Adu p/k/a Sade v. Quantum Computer Services, Inc., WIPO Case D2000-0794 (September 26, 2000).
[177] See Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case D2000-0299 (June 9, 2000).
[178] Id.; see also; Nic Carter v. The Afternoon Fiasco竁IPO Case D2000-0658 (October 17, 2000) (same); Jeanette Winterson v. Mark Hogarth, Case D2000-0235 (May 22, 2000), quoting British Telecommunications plc v. One in a Million (1999) FSR 1, at 23 (C.A.) (Aldous L.J.):
“The placing on a register of a distinctive name such as marksandspencer makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name.”
[179] Id.
[180] See UDRP, para. 4(b):
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
[181] See e.g., Experience Hendrix. LLC v. Denny Hammerton and the Jimi Hendrix Fan Club, WIPO Case D2000-0364 (August 15, 2000) (jimihendrixs.com); MPL Communications Ltd.v. Denny Hammerton, NAF Case FA0009000095633 (October 25, 2000) (paulmccartney.com and lindamccartney.com); Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com,” WIPO Case D2000-0847 (October 12, 2000) (madonna.com).
[182] See Jules I. Kendall v. Donald Mayer re skipkendall.com, WIPO Case D2000-0868 (October 26, 2000).
[183] See http://www.theglobalname.org.
[184] See http://www.icann.org/tlds.
[185] See Comment of Hungary, Hungarian Patent Office (RFC-3 – June 13, 2001), Comment of Mexico, Mexican Institute of Industrial Property (IMPI) (RFC-3 – June 5, 2001), Comment of Switzerland, Swiss Federal Institute of Intellectual Property (RFC-3 – June 15, 2001), Comment of Association des Praticiens en droit des Marques et des Mod鑜es (APRAM) (RFC-3 – June 7, 2001), Comment of Brazilian Association of Intellectual Property (ABPI) (RFC-3 – June 8, 2001) and (RFC-2 – January 4, 2001), Comment of Japan Network Information Center (JPNIC) (RFC-3 – June 8, 2001), Comment of Nominet UK (RFC-3 – June 14, 2001). For similar views expressed in response to RFC-2, see also Comment of Australia, Government of Australia (RFC-2 – January 23, 2001), Comment of Associaci髇 Interamericana de la Propiedad Industrial (ASIPI) (RFC-2 – December 26, 2001), Comment of European Brands Association (AIM) (RFC-2 – December 20, 2000), Comment of British Telecommunications plc (RFC-2 – December 28, 2000), Comment of Ian Kaufman (RFC-2 – December 20, 2000).
[186] See Comment of United Kingdom, The Patent Office (RFC-3 – June 1, 2001), Comment of United States of America, Office of Advocacy: United States Small Business Administration (RFC-3 – June 15, 2001), Comment of European Commission (RFC-3 – June 25, 2001), Comment of American Intellectual Property Law Association (AIPLA) (RFC-3 – June 7, 2001), Comment of Association for Computing Machinery’s Internet Governance Project (RFC-3 – June 15, 2001), Comment of Copyright Coalition on Domain Names (CCDN) (RFC-3 – June 7, 2001) and (RFC-2 – December 28, 2000), Comment of F閐閞ation internationale des conseils en propri閠?industrielle (FICPI) (RFC-3 – June 14, 2001) and (RFC-2 – January 18, 2001), Comment of International Association for the Protection of Industrial Property (AIPPI) (RFC-3 – June 18, 2001), Comment of International Chamber of Commerce (ICC) (RFC-3 – June 18, 2001), Comment of International Trademark Association (INTA) (RFC-3 – May 24, 2001), Comment of Motion Picture Association of America (MPAA) (RFC-3 – June 6, 2001), Comment of Icannchannel.de (RFC-3 – June 15, 2001) and (RFC-2 – December 21, 2000), Comment of Rod Dixon (RFC-3 – May 15, 2001), Comment of Michael Froomkin (RFC-3 – June 4, 2001). For similar views expressed in response to RFC-2, see also Comment of European Commission (RFC2 – January 16, 2001).
[187] See Comment of Japan Network Information Center (JPNIC) (RFC-3 – June 8, 2001), Comment of Nominet UK (RFC-3 – June 14, 2001).
[188] See Comment of Switzerland, Swiss Federal Institute of Intellectual Property (RFC-3 – June 15, 2001).
[189] See Comment of Switzerland, Swiss Federal Institute of Intellectual Property (RFC-3 – June 15, 2001), Comment of Association des Praticiens en droit des Marques et des Mod鑜es (APRAM) (RFC-3 – June 7, 2001), Comment of Brazilian Association of Intellectual Property (ABPI) (RFC-3 – June 8, 2001), Comment of Japan Network Information Center (JPNIC) (RFC-3 – June 8, 2001), Comment of Nominet UK (RFC-3 – June 14, 2001).
[190] See Comment of Brazilian Association of Intellectual Property (ABPI) (RFC-3 – June 8, 2001).
[191] See Comment of F閐閞ation Internationale des Conseils en Propri閠? Industrielle (FICPI) (RFC-3 – June 14, 2001), Comment of International Association for the Protection of Industrial Property (AIPPI) (RFC-3 – June 18, 2001), Comment of Motion Picture Association of America (MPAA) (RFC-3 – June 6, 2001).
[192] See Comment of United States of America, Office of Advocacy: United States Small Business Administration (RFC-3 – June 15, 2001), Comment of Association for Computing Machinery’s Internet Governance Project (RFC-3 – June 15, 2001), Comment of Icannchannel.de (RFC-3 – June 15, 2001), Comment of Rod Dixon (RFC-3 – May 15, 2001).
[193] See Comment of United Kingdom, The Patent Office (RFC-3 – June 1, 2001), Comment of F閐閞ation Internationale des Conseils en Propri閠? Industrielle (FICPI) (RFC-3 – June 14, 2001), Comment of International Trademark Association (INTA) (RFC-3 – May 24, 2001), Comment of Rod Dixon (RFC-3 – May 15, 2001).
[194] See Comment of Association des Praticiens en droit des Marques et des Mod鑜es (APRAM) (RFC-3 – June 7, 2001), Comment of Motion Picture Association of America (MPAA) (RFC-3 – June 6, 2001).
[195] See Comment of Rod Dixon (RFC-3 – May 15, 2001), Comment of Michael Froomkin (RFC-3 – June 4, 2001).
[196] Comment of Motion Picture Association of America (MPAA) (RFC-3 – June 6, 2001).
[197] A comparable provision has been enacted by the State of California as part of legislation similar to the ACPA. See Section 17525 (a) of the Cal. Business and Professional Code (August 22, 2000).
[198] See Annex II.
[199] See Annex II.
[200] See Annex II.
[201] See Annex II.
[202] Agreement Relating to the Creation of an African Intellectual Property Organization Constituting a Revision of the Agreement Relating to the Creation of an African and Malagasy Office of Industrial Property (Bangui (Central African Republic), March 2, 1977). See http://www.oapi.cm.
[203] The Protocol is not yet in force.
[204] Article 10(1), Paris Convention.
[205] Article 9(3), Paris Convention.
[206] Article 10(2), Paris Convention.
[207] Article 2.1, TRIPS Agreement.
[208] Article 1(1), Madrid (Indications of Source) Agreement.
[209] Article 22.2(a), TRIPS Agreement.
[210] Article 22.2(b), TRIPS Agreement.
[211] Article 23, TRIPS Agreement.
[212] The definition in the TRIPS Agreement is broader insofar as it attributes status to geographical localities from which products derive a reputation. There are certain other differences.
[213] Article 23.4, TRIPS Agreement.
[214] More information on the Office international de la vigne et du vin (OIV) is available at http://www.oiv.org/int.
[215] See Comment of Office international de la vigne et du vin (OIV) (RFC-3 of first WIPO Process - April 30, 1999).
[216] “Une 閠ude men閑 en 1999 a constat?le d閜魌 d’un grand nombre de noms de domaine (.com) qui correspondent aux noms d’appellations d’origines et d’indications g閛graphiques de produits vitivinicoles et de noms de c閜ages sans que les d閜ositaires aient un lien quelconque avec les titulaires r閑ls des droits li閟 ?ces signes distinctifs.” in Comment of Office international de la vigne et du vin (OIV) (RFC-1 - August 14, 2000).
[217] As the study was conducted in 1999, and as registration data often change, all information regarding the domain name holder as well as the web site’s activity has been verified as at January 26, 2001, as reflected in the Annex.
[218] See Comment of Institut national des appellations d’origine (INAO) (RFC-2 – January 31, 2001).
[219] See Annex VII, INAO: fitou.com.
[220] See Annex VII, INAO: bourgueil.com, corton.com, gigondas.com, vacqueyras.com; Annex VI Ch鈚eauneuf du Pape: bade.com, barsac.com, rhodes.net; Annex VIII Lisbon: champagne.org, chinon.org, frascati.com.
[221] See Annex VI, OIV: bourgogne.com, eiswein.com, lambrusco.com, medoc.com; Annex VIII Lisbon: armagnac.com, hoyo-de-monterrey.com, tequila.com.
[222] See Comment of France, Institut national des appellations d’origine (INAO) (RFC-3 – June 13, 2001), Comment of Hungary, Hungarian Patent Office (RFC-3 – June 13, 2001), Comment of Switzerland, Swiss Federal Institute of Intellectual Property (RFC-3 – June 15, 2001), Comment of United Kingdom, The Patent Office (RFC-3 – June 1, 2001), Comment of European Commission (RFC-3 – June 25, 2001), Comment of American Intellectual Property Law Association (AIPLA) (RFC-3 – June 7, 2001), Comment of Auckland District Law Society, Law & Technology Committee (RFC-3 – June 22, 2001), Comment of Brazilian Association of Intellectual Property (ABPI) (RFC-3 – June 8, 2001), Comment of European Brands Association (AIM) (RFC-3 – May 16, 2001), Comment of International Association for the Protection of Industrial Property (AIPPI) (RFC-3 - June 18, 2001), Comment of International Chamber of Commerce (ICC) (RFC-3 – June 18, 2001), Comment of Japan Network Information Center (JPNIC) (RFC-3 – June 8, 2001), Comment of Nominet UK (RFC-3 – June 14, 2001), Comment of UAEnic (RFC-3 –June 6, 2001), Comment of Elzaburu (Luis H. De Larramendi) (RFC-3 – June 14, 2001). For similar views expressed in response to RFC-2, see also Comment of Government of Australia (RFC-2 – January 23, 2001), Comment of Government of The Netherlands, Ministry of Transport, Public Works and Water Management (RFC-2 – December 20, 2000), Comment of State Agency on Industrial Property Protection of the Republic of Moldova (RFC-2 – December 29, 2000); Comment of Associaci髇 Interamericana de la Propiedad Industrial (ASIPI) (RFC-2 – December 26, 2000); Comment of Brazilian Association of Intellectual Property (ABPI) (RFC-2 - December 28, 2000), Comment of Association of European Trade Mark Owners (MARQUES) (RFC-2 - December 22, 2000), Comment of ES-NIC (RFC-2 – December 29, 2000), Comment of Sarah Deutsch, Verizon (RFC-2 December 26, 2000).
[223] See Comment of F閐閞ation internationale des conseils en propri閠? industrielle (FICPI) (RFC-3 – June 14, 2001; see also (RFC-2 - December 29, 2000) and Comment of International Trademark Association (INTA) (RFC-3 – May 24, 2001).
[224] See Comment of Canada, Government of Canada (RFC-3 – July 5, 2001), Comment of Japan, Ministry of Economy, Trade and Industry (METI) (RFC-3 – July 5, 2001), Comment of United States of America, U.S. Patent and Trademark Office (USPTO) (RFC-3 – June 14, 2001), Comment of Association for Computing Machinery’s Internet Governance Project, Electronic Privacy Information Center (RFC-3 – June 15, 2001), Comment of EasyLink Services Corporation (RFC-3 – January 1, 2001), Comment of International Trademark Association (INTA) (RFC-3 – May 24, 2001), Comment of Icannchannel.de (RFC-3 – June 15, 2001), Comment of Andy Eastman (RFC-3 – June 16, 2001), Comment of Christine Haight Farley (RFC-3 – June 11, 2001), Comment of Michael Froomkin (RFC-3 – June 4, 2001). For similar views expressed in response to RFC-2, see also Comment of Tim Heffley, Z-Drive Computer Service (RFC-2 – December 19, 2000), Comment of Christa Worley (RFC-2 December 19, 2000), Comment of Alexander Svenssen (RFC-2 – December 21, 2000).
[225] See Comment of France, Institut national des appellations d’origine (INAO) (RFC-3 – June 13, 2001).
[226] See Comment of France, Institut national des appellations d’origine (INAO) (RFC-3 – June 13, 2001) and Comment of European Commission (RFC-3 – June 25, 2001).
[227] See Comment of Elzaburu (Luis H. De Larramendi) (RFC-3 – June 14, 2001).
[228] See Comment of European Commission (RFC-3 – June 25, 2001), Comment of Hungary, Hungarian Patent Office (RFC-3 – June 13, 2001), Comment of United Kingdom, The Patent Office (RFC-3 – June 1, 2001), Comment of American Intellectual Property Law Association (AIPLA) (RFC-3 – June 7, 2001), Comment of Auckland District Law Society, Law & Technology Committee (RFC-3 – June 22, 2001), Comment of International Association for the Protection of Industrial Property (AIPPI) (RFC-3 – June 18, 2001).
[229] See Comment of Elzaburu (Luis H. De Larramendi) (RFC-3 – June 14, 2001).
[230] See Comment of Japan Network Information Center (JPNIC) (RFC-3 – June 8, 2001).
[231] See Comment of France, Institut national des appellations d’origine (INAO) (RFC-3 – June 13, 2001).
[232] See Comment of Christine Haight Farley (RFC-3 – June 11, 2001).
[233] See Comment of United States of America, U.S. Patent and Trademark Office (USPTO) (RFC- 3 – June 14, 2001) and Comment of Christine Haight Farley (RFC-3 – June 11, 2001).
[234] See Comment of United States of America, U.S. Patent and Trademark Office (USPTO) (RFC- 3 – June 14, 2001), Comment of F閐閞ation internationale des conseils en propri閠?industrielle (FICPI) (RFC-3 – June 14, 2001), Comment of International Trademark Association (INTA) (RFC-3 – May 24, 2001), Comment of Christine Haight Farley (RFC-3 – June 11, 2001).
[235] See paragraph 195, above.
[236] See Comment of Michael Froomkin (RFC-3 – June 4, 2001).
[237] See Comment of Association for Computing Machinery’s Internet Governance Project, Electronic Privacy Information Center (RFC-3 – June 15, 2001), Comment of International Trademark Association (INTA) (RFC-3 – May 24, 2001), Comment of Icannchannel.de (RFC-3 – June 15, 2001).
[238] See Comment of United States of America, U.S. Patent and Trademark Office (USPTO) (RFC- -3 – June 14, 2001).
[239] See http://www.hcch.net/e/workprog/jdgm.html.
[240] Terminology Bulletin No. 347/Rev.1, States Members of the United Nations, Members of the Specialized Agencies or Parties to the Statute of the International Court of Justice, ST/CS/SER.F/347/Rev.1.
[241] See WIPO Case D2000-1664 (caymanislands.com) http://arbiter.wipo.int/domains/decisions/html/2000/d2000-1664.html.
[242] Business Day (Johannesburg), June 21, 2001.
[243] Docket number 16 O 101/00, Computerrecht (CR) 2000, page 700-701.
[244] For more information, see http://http://www.iso.ch/.
[245] The list of currently existing ccTLDs is available at http://www.iana.org/cctld/cctld-whois.htm.
[246] See, for instance, the services of CentralNic offering the possibility of registering names under the following: br.com, cn.com, eu.com, gb.com, gb.net, hu.com, no.com, qc.com, ru.com, sa.com, se.com, se.net, uk.com, uk.net, us.com, uy.com, and za.com. For more information, see http://www.centralnic.com/.
[247] The World Heritage List is available at http://www.unesco.org/whc/nwhc/pages/doc/mainf3.htm.
[248] See http://www.legalis.net/jnet/decisions/marques/tgi_sttropez.htm.
[249] This case is available at http://www.legalis.net.
[250] Next to heidelberg.de, these cases concerned the following cities: kerpen.de, pullheim.de, celle.de, herzogenrath.de, bad-wildbad.com. They are all available at http://www.bettinger.de/datenbank/domains_ge.html.
[251] See, for instance, WIPO Case D2000-0064 (1800rockport.com); WIPO Case D2000-0505 (barcelona.com); WIPO Case D2000-0617 (stmoritz.com); WIPO Case D2000-0629 (parmaham.com; WIPO Case D2000-0638 (manchesterairport.com); D2000-0699 (paris-lasvegas.comi; WIPO Case D2000-1017 (xuntadegalicia.net/xuntadegalicia.org); WIPO Case D2000-1218 (wembleystadiumonline.com); WIPO Case D2000-1224 (sydneyoperahouse.net); WIPO Case D2000-1377 (axachinaregion.com); WIPO Case D2000-1435 (capeharbour.com/capeharbor.com). These cases are available at http://arbiter.wipo.int/domains/decisions/index-gtld.html.
[252] WIPO Case D2000-0505, available at http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0505.html and WIPO Case D2000-0617, available at http://arbiter.wipo.int/domains/decisions/html/d2000-0617.html.
[253] WIPO Case D2000-1728, available at http://arbiter.wipo.int/domains/decisions/html/2000/d2000-1278.html.
[254] WIPO Case D2001-0001, available at http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0001.html.
[255] WIPO Case D2001-0002, available at http://arbiter.wipo.int/domains/decisions/html/2001/d2000-0002.html.
[256] WIPO Case D2001-0047, available at http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0047.html.
[257] WIPO Case D2001-0069, available at http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0069.html.
[258] WIPO Case D2001-0321, available at http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0321.html.
[259] WIPO Case D2001-0348, available at http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0348.html.
[260] WIPO Case D2001-0566, available at http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0566.html.
[261] The policy of .AU on this question is currently under review. For more information, see Section 4.2 of Review of Policies in ..AU Second Level Domains, Public Consultation Report, auDA Name Policy Advisory Panel (November 2000), available at http://www.auda.org.au/panel/name/papers/publicreport.html. Until November 15, 2000, .NL also restricted the registration of domain names corresponding to city and province names. Since that date, these restrictions have been removed. However, in its comments on WIPO2 RFC-2, the Dutch Ministry of Transport, Public Works and Water Management stated that it is advisable to protect geographical terms against their bad faith, abusive, misleading or unfair registration and use in the DNS.
[262] See .CA registration policy at http://www.cira.ca/en/cat_Registration.html.
[263] See .DZ registration policy at http://www.nic.dz/francais/precision.htm.
[264] See .ES registration policy at http://www.nic.es/normas/index.html.
[265] See .FR registration policy at http://www.nic.fr/enregistrement/fondamentaux.html.
[266] See .PE registration policy at http://www.nic.pe/interna/normas.htm.
[267] See .SE registration policy at http://www.iis.se/regulations.shtml.
[268] For instance, for .AU, this is Australian Surveying and Land Information Group’s database of Australian place names.
[269] See, for instance, the work conducted since 1982 by the United Nations Commission on Human Rights, its Sub-Commission on Prevention of Discrimination and Protection of Minorities, and the Sub-Commission’s Working Group on Indigenous Populations. More particularly in the area of intellectual property, see WIPO’s work on traditional knowledge, innovations and creativity, information about which is available at http://wipo.int/traditionalknowledge/introduction/index.html.
[270] See Comment of United States of America, U.S. Patent and Trademark Office (USPTO) (RFC-3 - June 14, 2001), Comment of United States of America, Office of Advocacy: U.S. Small Business Administration (RFC-3 – June 15, 2001), Comment of Association for Computing Machinery’s Internet Governance Project, Electronic Privacy Information Center (RFC-3 - June 15, 2001), Comment of F閐閞ation internationale des conseils en propri閠?industrielle (FICPI) (RFC-3 – June 14, 2001), Comment of International Association for the Protection of Industrial Property (AIPPI), (RFC-3 – June 18, 2001), Comment of the International Chamber of Commerce (ICC) (RFC-3 – June 18, 2001), Comment of International Trademark Association (INTA) (RFC-3 – May 24, 2001), Comment of EasyLink Services Corporation (RFC-3 – January 1, 2001), Comment of Icannchannel.de (RFC-3 – June 15, 2001), Comment of Michael Froomkin (RFC-3 – June 4, 2001). For similar views expressed in response to RFC-2, see also Comment of Tim Heffley, Z-Drive Computer Service (RFC-2 – December 19, 2000), Comment of Alexander Svenssen (RFC-2 – December 21, 2000), Comment of Christa Worley (RFC-2 – December 29, 2000).
[271] See Comment of Cyprus, Government of Cyprus (RFC-3 – June 7, 2001), Comment of South Africa, Ministry of Telecommunications (RFC-3 – June 7, 2001), Comment of United Kingdom, The Patent Office (RFC-3 – June 1, 2001), Comment of European Commission (RFC-3 – June 25, 2001), Comment of American Intellectual Property Law Association (AIPLA) (RFC-3 – June 7, 2001), Comment of Auckland District Law Society, Law & Technology Committee (RFC-3 – June 22, 2001), Comment of Brazilian Association of Intellectual Property (ABPI) (RFC-3 – June 8, 2001), Comment of Japan Network Information Center (JPNIC) (RFC-3 – June 8, 2001), Comment of UAEnic (RFC-3 – June 6, 2001), Comment of Elzaburu (Luis H. De Larramendi) (RFC-3 – June 14, 2001). For similar views expressed in response to RFC-2, see also Comment of Netherlands, Ministry of Transport, Public Works and Water Management (RFC-2 – December 20, 2000), Comment of European Commission (RFC-2 – January 16, 2001), Comment of South Africa, Government of South Africa (RFC-2 – March 2, 2001).
[272] See Comment of South Africa, Ministry of Telecommunications (RFC-3 – June 7, 2001).
[273] See Comment of United States of America, U.S. Patent and Trademark Office (USPTO) (RFC-3 – June 14, 2001), Comment of United States of America, Office of Advocacy: U.S. Small Business Administration (RFC-3 – June 15, 2001), Comment of Association for Computing Machinery’s Internet Governance Project, Electronic Privacy Information Center (RFC-3 - June 15, 2001), Comment of International Association for the Protection of Industrial Property (AIPPI), (RFC-3 – June 18, 2001). For similar views expressed in response to RFC-2, see also Comment of Australia, Government of Australia (RFC-2 – January 2001), Comment of Brazilian Association of Intellectual Property (ABPI) (RFC-2 – December 28, 2000), Comment of Christa Worley (RFC-2 - January 4, 2001).
[274] See Comment of United States of America, Office of Advocacy: U.S. Small Business Administration (RFC-3 – June 15, 2001), Comment of Association for Computing Machinery’s Internet Governance Project, Electronic Privacy Information Center (RFC-3 – June 15, 2001), Comment of EasyLink Services Corporation (RFC-3 – January 1, 2001).
[275] See Comment of United States of America, Office of Advocacy: U.S. Small Business Administration (RFC-3 – June 15, 2001), Comment of International Trademark Association (INTA) (RFC-3 – May 24, 2001), Comment of EasyLink Services Corporation (RFC-3 - January 1, 2001).
[276] See Comment of EasyLink Services Corporation (RFC-3 – January 1, 2001).
[277] See Comment of United States of America, U.S. Patent and Trademark Office (USPTO) (RFC-3 – June 14, 2001), Comment of F閐閞ation internationale des conseils en propri閠?industrielle (FICPI) (RFC-3 – June 14, 2001).
[278] See Comment of United Kingdom, The Patent Office (RFC-3 – June 1, 2001), Comment of European Commission (RFC-3 – June 25, 2001), Comment of Auckland District Law Society, Law & Technology Committee (RFC-3 – June 22, 2001), Comment of International Association for the Protection of Industrial Property (AIPPI), (RFC-3 – June 18, 2001), Comment of Japan Network Information Center (JPNIC) (RFC-3 – June 8, 2001).
[279] See Comment of Association for Computing Machinery’s Internet Governance Project, Electronic Privacy Information Center (RFC-3 – June 15, 2001), Comment of CentralNic (RFC-3 – May 25, 2001), Comment of Fish & Richardson P.C. (RFC-3 – June 14, 2001).
[280] See Comment of CentralNic (RFC-3 – May 25, 2001).
[281] See Comment of International Trademark Association (INTA) (RFC-3 – May 24, 2001).
[282] See Comment of Canada, Government of Canada (RFC-3 – July 5, 2001), Comment of Auckland District Law Society, Law & Technology Committee (RFC-3 – June 22, 2001), Comment of Christine Haight Farley (RFC-3 – June 11, 2001).
[283] See, in this respect, United Nations Terminology Bulletin No. 347/Rev.1, States Members of the United Nations, Members of the Specialized Agencies or Parties to the Statute of the International Court of Justice, ST/CS/SER.F/347/Rev.1.
[284] See Comment of European Brands Association (AIM) (RFC-2 - December 20, 2000).
[285] See also the discussion of Article 6ter in the preceding chapters of this Report.
[286] See Comment of South Africa, Ministry of Communications (RFC-3 – June 7, 2001).
[287] See paragraph 264 of the Interim Report.
[288] See WIPO Document PR/WGAO/II/6.
[289] See Basic Proposals for the Diplomatic Conference on the Revision of the Paris Convention for the Protection of Industrial Property (Geneva, February 4 to March 4, 1980).
[290] See WIPO Document PR/SM/9.
[291] See paragraph 34 of the Report of the first WIPO Process where it is stated that “[t]he goal of this WIPO Process is not to create new rights of intellectual property, nor to accord greater protection to intellectual property in cyberspace than that which exists elsewhere. Rather, the goal is to give proper and adequate expression to the existing, multilaterally agreed standards of intellectual property protection in the context of the new, multijurisdictional and vitally important medium of the Internet and the DNS that is responsible for directing traffic on the Internet.”
[292] Appendix K is available at http://www.icann.org/tlds/agreements/unsponsored/registry-agmt-appk-26apr01.htm.
[293] See pages VIII and 1 of International Standard ISO 3166-1 (Ref. no.: ISO 3166-1:1997 (E/F)).
[294] The same questions arise irrespective of whether the term registered at the second level is an ISO 3166 code or another term. While the problem therefore is of a general nature affecting all registrations at levels below the second level, it is discussed here in the context of the registration of country codes at the second level.
[295] See Comment of CentralNic (RFC-3 – May 25, 2001).
[296] See Comment of Canada, Government of Canada (RFC-3 – July 5, 2001), Comment of Auckland District Law Society, Law & Technology Committee (RFC-3 – June 22, 2001), Comment of Christine Haight Farley (RFC-3 – June 11, 2001).
[297] For more information on this Program, see www.wipo.int/globalissues/index-en.html.
[298] Article 2.1, TRIPS Agreement.
[299] See Comment of Switzerland, Swiss Federal Institute of Intellectual Property (RFC--3 – June 1, 2001).
[300] Refer generally to the analysis of the passing-off action in W.R. Cornish, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights, (4th ed.) (Sweet & Maxwell, 1999) at Chapter 16, and in T.A. Blanco White and Robin Jacob, Kerly’s Law of Trade Marks and Trade Names, (12th ed.) (Sweet & Maxwell, 1986) at Chapter 16.
[301] See Comment of Hungary, Hungarian Patent Office (RFC--3 – June 13, 2001), Comment of F閐閞ation internationale des conseils en propri閠?industrielle (FICPI) (RFC-3 – June 14, 2001), Comment of International Chamber of Commerce (ICC) (RFC-3 – June 18, 2001), Comment of European Brands Association (AIM) (RFC-2 – December 20, 2000), Comment of ACM Internet Governance Project (RFC-1 – September 15, 2000).
[302] See Comment of Brazilian Association of Intellectual Property (ABPI) (RFC-2 – December 28, 2000), Comment of Steven Turnbull, University of Tsukuba (RFC-1 – August 29, 2000).
[303] See Comment of Mexico, National Institute of Copyright (RFC-3 – May 30, 2001).
[304] See Comment of Dipcon – Domain Name and Intellectual Property Consultants AB (RFC-2 – December 22, 2000).
[305] See 15 U.S.C., ?1125(a).
[306] See 15 F. Supp.2d 1089 (D.Minn, 2000).
[307] Decision of September 30, 1997 – 4 O 179/97, finding in favor of the UFA-Film-und Fernseh GmbH & Co KG, which had rights in the designation ‘UFA’. Similarly, the Munich District Court, in a decision of October 21, 1998 – 1 HK O 167 16/98, found against the domain name registrant of “muenchner-rueck.de”, as an unauthorized use of the commercial designation ‘M黱chner R點kversicherung’.
[308] See, for example, the decision of the Stuttgart Court of Appeal in a decision of February 3, 1998 – 2 W 77/97, finding that “steiff.com” infringed the name rights of the soft toy manufacturer, Steiff.
[309] The Bonn District Court, in a decision of September 22, 1997 – 1 O 374/97, found that the domain name registrant for “dtag.de” had a legitimate interest in his domain and, applying the principle that any person may participate in business under his own name, found that Section 12 of the Civil Code did not apply.
[310] The following ccTLD registration authorities restrict the registration of trade names as domain names: .AD (Andorra), .AM (Armenia), .AT, (Austria), .AU (Australia), .BB (Barbados), .CH (Switzerland), .CO (Colombia), .CY (Cyprus), .ES (Spain), .FI (Finland), .FR (France), .HU (Hungary), .IE (Ireland), .KH (Cambodia), .LT (Lithuania), ..NO (Norway), .SA (Saudi Arabia), .SE (Sweden), .SI (Slovenia), ..SM (San Marino), .TH (Thailand), .TR (Turkey) and .UK (United Kingdom). The majority of ccTLD administrators impose no restrictions on domain name applications based on trade names as follows: .AR (Argentina), .BE (Belgium), .BF (Burkina Faso), .BG (Bulgaria), .BH (Bahrain), .BN (Benin), .BY (Belarus), .CA (Canada), .CR (Costa Rica), .DE (Germany), .DK (Denmark), .EC (Ecuador), .GE (Georgia), .GT (Guatemala), .HN (Honduras), .HU (Hungary), .KG (Kyrgyzstan), .KH (Cambodia), .KR (Republic of Korea), .LT (Lithuania), .MA (Morocco), .MD (Moldova), ..MK (the Former Yugoslav Republic of Macedonia), .MN (Mongolia), .MU (Mauritius), .MX (Mexico), .PT (Portugal), .RO (Romania), .RU (Russian Federation), .SG (Singapore), .UA (Ukraine), .US (United States of America) and .UZ (Uzbekistan).
[311] See Comment of Japan, Ministry of Economy, Trade and Economy (METI) (RFC-3 – July 5, 2001), Comment of Michael Froomkin (RFC-3 – June 4, 2001).
[312] See Comment of Nominet UK (RFC-3 – June 14, 2001).
[313] See Comment of United Kingdom, The Patent Office (RFC-3 – June 1, 2001), Comment of European Commission (RFC-3 – June 25, 2001), Comment of Associations des Praticiens en droit des Marques et des Mod鑜es (RFC-3 – June 7, 2001), Comment of American Intellectual Property Law Association (AIPLA) (RFC-3 – June 7, 2001), Comment of Brazilian Association of Intellectual Property (ABPI) (RFC-3 – June 8, 2001), Comment of European Broadcasting Union (EBU) (RFC-3 – June 8, 2001), Comment of International Association for the Protection of Industrial Property (AIPPI) (RFC-3 – June 18, 2001), Comment of Law and Technology Committee, Auckland District Law Society (RFC-3 – June 22, 2001), Comment of Nominet UK (RFC-3 – June 14, 2001), Comment of Christian Mogensen (RFC-3 – April 16, 2001), Comment of Daniel R. Tobias (RFC-3 – April 15, 2001). See also Comment of Australia, Government of Australia (RFC-2 – January 23, 2001), Comment of Moldova, State Agency on Industrial Property Protection of the Republic of Moldova (RFC-2 – December 29, 2000), Comment of European Brands Association (AIM) (RFC-2 – December 20, 2000), Comment of Asociaci髇 Interamericana de la Propiedad Industrial (ASIPI) (RFC-2 – December 26, 2000), Comment of Des Donnelly, rexco.com (RFC-1 – August 5, 2000), Comment of the Association of European Trade Mark Owners (MARQUES) (RFC-2 – December 22, 2000), Comment of Matthias Haeuptli (RFC-2 – September 15, 2000).
[314] Indeed, the Administrative Panel in WIPO Case D2000-0025 SGS Soci閠?g閚閞ale de surveillance S.A. v. Inspectorate (March 17, 2000) stated: “The Panel considers that the Policy and Rules refer only to identity or similarity to trademarks and service marks in which a complainant has rights. No reference is made in the Policy and Rules to trade names in which a complainant has rights.” In another WIPO Case D2000-0638 Manchester Airport PLC v. Club Club Limited (August 22, 2000), the three-member Administrative Panel found against a Complainant who had asserted that the domain name registered by the Respondent was identical to a name under which it traded, and that the respondent was passing off of the complainant’s unregistered rights in its corporate name. The majority of the Panel found that there was insufficient evidence of corresponding trademark rights in the name and that the UDRP did not address passing-off.
[315] See Comment of F閐閞ation internationale des conseils en propri閠?industrielle (FICPI) (RFC-3 – June 14, 2001), Comment of International Trademark Association (INTA) (RFC-3 – May 24, 2001), Comment of Chris Brand (RFC-3 – April 16, 2001), Comment of Michael Froomkin (RFC-3 – June 4, 2001).
[316] See Comment of Switzerland, Swiss Federal Institute of Intellectual Property (RFC-3 – June 15, 2001).
[317] See Comment of Hungary, Hungarian Patent Office (RFC-3 – June 13, 2001), Comment of F閐閞ation internationale des conseils en propri閠?industrielle (FICPI) (RFC-3 – June 14, 2001), Comment of International Chamber of Commerce (ICC) (RFC-3 – June 18, 2001). See also Comment of United States of America, United States Council for International Business (RFC-2 – December 29, 2000), Comment of European Brands Association (AIM) (RFC-2 – December 20, 2000), Comment of Billy Reynolds, 14us2.com (RFC-1 – August 15, 2000), Comment of Ben Hwang (RFC-1 – August 11, 2000), Comment of Edwin Philogene (RFC-1 – August 11, 2000).
[318] See Comment of Brazilian Association of Intellectual Property (ABPI) (RFC-2 – December 28, 2000).
[319] See Comment of Bernard H.P. Gilroy (RFC-1 – August 11, 2000), Comment of Jay Orr (RFC-1 – August 14, 2000).
[320] See Comment of United States of America, Office of Advocacy, U.S. Small Business Administration (RFC-3 – June 15, 2001).
[321] See Comment of Gregory Rippel, U.S. Realty Corp. (RFC-1 – August 19, 2000), Comment of John Apolloni (RFC-1 – August 14, 2000), Comment of Alexander Svensson (RFC-2 – December 21, 2000).
[322] See Comment of United Kingdom, The Patent Office (RFC-3 – June 1, 2001), Comment of Frank Azzurro (RFC-1 – August 15, 2000).
[323] See Comment of American Civil Liberties Union (ACLU) (RFC-2 – December 29, 2000), Comment of Leah Gallegos, TLD Lobby (RFC-1 – August 16, 2000), Comment of Katharine Audlin, NewsBank, Inc. newsbank.com (RFC-1 – August 12, 2000), Comment of Edwin Philogene (RFC-1 – August 11, 2000), Comment of Joseph Fowler (RFC-1 – August 11, 2000), Comment of Atilda Alvarido (RFC-1 – August 12, 2000).
[324] See Comment of Hungary, Hungarian Patent Office (RFC-3 – June 13, 2001), Comment of Mexico, Mexican Institute of Industrial Property (IMPI) (RFC-3 – June 5, 2001), Comment of European Commission (RFC-3 – June 25, 2001), Comment of Law and Technology Committee, Auckland District Law Society (RFC-3 – June 22, 2001).
[325] See Comment of Forrester Rupp (RFC-1 – August 14, 2000), Comment of Security Privacy and Internet Equity Symposium of 16/12/00 of the Key West Institute S6/Consortium Board (RFC-2 – December 22, 2000).
[326] See Comment of Australia, Government of Australia (RFC-2 – January 23, 2001).
[327] See Comment of American Civil Liberties Union (ACLU) (RFC-2 – December 29, 2000).
[328] See, for example, Comment of American Intellectual Property Law Association (AIPLA) (RFC-3 – June 7, 2001).
[329] See Comment of Australia, Government of Australia (RFC-2 – January 23, 2001).
[330] See Comment of American Intellectual Property Law Association (AIPLA) (RFC-2 – December 29, 2000).
[331] See Comment of Weikers & Co., Attorneys at Law (RFC-1 – August 11, 2000).
[332] See Comment of Security Privacy and Internet Equity Symposium of 16/12/00 of the Key West Institute S6/Consortium Board (RFC-2 – December 22, 2000), Comment of Mark James Adams, Raysend (RFC-1 – August 11, 2000).
[333] See UDRP Rule 4.b. See Comment of Australia, Government of Australia (RFC-2 – January 23, 2001).
[334] See Comment of Swiss Federal Institute of Intellectual Property (RFC-2 – December 29, 2000).
[335] See Comment of Security Privacy and Internet Equity Symposium of 16/12/00 of the Key West Institute S6/Consortium Board (RFC-2 – December 22, 2000), Comment of Mark James Adams, Raysend (RFC-1 – August 11, 2000).
[336] See Comment of The Law Society of Scotland (RFC-2 – January 4, 2001).
[337] See Comment of International Trademark Association (INTA) (RFC-2 – January 4, 2001).
[338] Statistics by NetNames at http://www.netnames.com
[339] The Chairman of the U.S. House Judiciary Subcommittee on Courts, the Internet and Intellectual Property set forth the issues at an oversight hearing on the Whois database ‘Privacy and Intellectual Property Issues’ as follows: “The policies controlling the access and use of this information imply many things, including privacy issues, the ability to enforce intellectual property rights, empowering parents and consumers, aiding law enforcement in public safety activities, and important First Amendment Rights.” (See the proceedings of the Subcommittee on Courts, the Internet and Intellectual Property Committee on the Judiciary, U.S. House of Representatives, Washington, D.C., July 12, 2001 at http://www.house.gov/judiciary/4.htm). See also presentation of Mr. Paul Hughes, Public Policy Advisor, Adobe Systems USA, on ‘Domain name registrant contact details’, at the WIPO Conference on Intellectual Property Questions Relating to ccTLDs (February 20, 2001) at http://ecommerce.wipo.int/meetings/2001/cctlds/presentations/hughes.pdf.
[340] See testimony of Stevan D. Mitchell, Vice President, Intellectual Property Policy, Interactive Digital Software Association, before the Subcommittee on Courts, the Internet and Intellectual Property Committee on the Judiciary, U.S. House of Representatives, Washington, D.C., July 12, 2001 (at http://www.house.gov/judiciary/mitchell_071201.htm).
[341] See Comment of Motion Picture Association of America, Inc. (MPAA) (RFC-3 – June 6, 2001). See also Comment of the United States Council for International Business (USCIB) (RFC-2- December 29, 2000).
[342] See Comment of Australia, Australian Competition & Consumer Commission (ACCC) (RFC-3- June 15, 2001), Comment of Hungary, Hungarian Patent Office (RFC-3 – June 13, 2001), Comment of United Kingdom, The Patent Office (RFC-3 – June 1, 2001), Comment of United States of America, U.S. Patent and Trademark Office (RFC-3 – June 14, 2001), Comment of American Intellectual Property Law Association (AIPLA) (RFC-3 – June 7, 2001), Comment of Brazilian Association of Intellectual Property (ABPI) (RFC-3 – June 8, 2001), Comment of Copyright Coalition on Domain Names (CCDN) (RFC-3 – June 7, 2001), Comment of International Association for the Protection of Industrial Property (AIPPI) (RFC-3 – June 18, 2001), Comment of International Trademark Association (INTA) (RFC-3 – May 24, 2001), Comment of Law and Technology Committee, Auckland District Law Society (RFC-3 – June 22, 2001), Comment of Motion Picture Association of America, Inc. (MPAA) (RFC-3 – June 6, 2001). See also Comment of Verizon (RFC-2 – December 26, 2000).
[343] The Copyright Coalition on Domain Names submitted that these services are also important for advancing law enforcement, consumer protection, parental control and other social policies in the online environment. See Comment of the Copyright Coalition on Domain Names (CCDN) (RFC-2 – December 28, 2000).
[344] At the time of writing, the ICANN Names Council Whois Committee has received over 1900 comments as part of its consultation process on this issue. See http://www.icann.org/dnso/whois-survey-en-10jun01.htm.
[345] See Report of the first WIPO Internet Domain Name Process, paras 74-81.
[346] WIPO recommended that domain name applicants should be required to provide the following information: full name of the applicant; applicant’s postal address, including street address or post office box, city, State or Province, postal code and country; applicant’s e-mail address; applicant’s voice telephone number; applicant’s facsimile number, if available; and where the applicant is an organization, association or corporation, the name of an authorized person (or office) for administrative or legal contact purposes. See Report of the first WIPO Process, para. 73.
[347] See Report of the first WIPO Process, paras. 74 -81.
[348] See ICANN Registrar Accreditation Agreement, Art. II.F(1).
[349] The President of the International Anticounterfeiting Coalition (IACC), Timothy P. Trainer, testified before the U.S. House of Representatives Subcommittee oversight hearing on the Whois database ‘Privacy and Intellectual Property Issues’, and encouraged the United States Government to urge ICANN to “pay more attention to the implementation and enforcement of the registrars’ [Registrar Accreditation Agreements] obligations and to increase its efforts to restore WHOIS at least to the level of usability that the public enjoyed up until the advent of registrar competition in 1999. Since the gTLD WHOIS environment provides a template for these services in other parts of the DNS, increased attention here could improve accountability and transparency throughout the Internet.” (Testimony before the Subcommittee on Courts, Internet and Intellectual Property Committee on the Judiciary, U.S. House of Representatives, Washington, D.C., July 12, 2001, at the oversight hearing on the Whois database ‘Privacy and Intellectual Property Issues’ at http://www.house.gov/judiciary/trainer_071201.htm).
[350] See, for example, Comment of Hungary, Hungarian Patent Office (RFC-3 – June 13, 2001).
[351] See Report of the first WIPO Process, paras. 117-119.
[352] See ICANN Statement of Registrar Accreditation Policy, Art II.J (7)a. (approved November 4, 1999) at http://www.icann.org/nsi/icann-raa-04nov99.htm.
[353] See ICANN Statement of Registrar Accreditation Policy, Art II.F (approved November 4, 1999) at http://www.icann.org/nsi/icann-raa-04nov99.htm.
[354] See Comment of the Copyright Coalition on Domain Names (CCDN) (RFC-2 – December 28, 2000). The ICANN policy for allocation of new gTLDs asks: “Does the proposal make adequate provision for Whois service that strikes an appropriate balance between providing information to the public regarding domain-name registrations in a convenient manner and offering mechanisms to preserve personal privacy?” See ICANN Criteria for Assessing TLD Proposals, August 15, 2000, para.8 (d) at http://www.icann.org/tlds/tld-criteria-15aug00.htm.
[355] See Comment of Hungary, Hungarian Patent Office (RFC-3 – June 13, 2001), Comment of United States of America, Office of Advocacy, U.S. Small Business Administration (RFC-3 – June 15, 2001), Comment of American Intellectual Property Law Association (AIPLA) (RFC-3 – June 7, 2001), Comment of Brazilian Association of Intellectual Property (ABPI) (RFC-3 – June 8, 2001), Comment of International Trademark Association (INTA) (RFC-3 – May 24, 2001), Comment of Motion Picture Association of America, Inc. (MPAA) (RFC-3 – June 6, 2001).
[356] See ‘Intellectual Property Protection in the New TLDs’, Intellectual Property Constituency (IPC) of the DNSO, August 24, 2000, at http://ipc.songbird.com/New_TLD_Safeguards.htm.
[357] The list of accredited registrars is updated regularly at http://www.icann.org/registrars/accredited-list.html
[358] See http://www.uwhois.com.
[359] See Comment of Copyright Coalition on Domain Names (CCDN) (RFC-2 – December 28, 2000).
[360] See Comment of Commercial Internet eXchange Association (CIX) (RFC-2 – December 29, 2000), stating that “CIX urges that particular attention be given to the fiss
