A Commentary on WIPO's 'The Management of Internet Names and Addresses: Intellectual Property Issues'

Abstract

The World Intellectual Property Organization's Final Report on "The Management of Internet Names And Addresses: Intellectual Property Issues" is in many respects a substantial improvement on WIPO's Interim Report, RFC 3.

The attempt to define "abusive registrations" represents a good-faith effort to define cybersquatting. While this new definition will no doubt benefit from public comment and discussion it has yet to receive, the proposal in the body of the report seems to hew closely to the definitions evolving in the various courts that have considered the issue. Once flaws in the formal expression of the policy in the Final Report's Annexes have been corrected, this proposal should represent an improvement over the current NSI dispute policy, one that will serve the legitimate interests of trademark and service mark holders without opening the door to "reverse domain hijacking".

Unfortunately, the Final Report leaves essentially unchanged the proposals in the Interim Report regarding the proposed treatment of globally famous trademarks. It proposes a baroque, ad hoc, quasi-judicial procedure based on vague (and in one case prejudicial) criteria to define when a trademark is sufficiently internationally famous to be granted special privileges on the Internet, and proposes special privileges that trademarks do not currently have under law. At present there is no agreed definition of a globally famous mark, although WIPO-sponsored panels have been seeking to formulate a definition for years. Furthermore, the WIPO proposal rejects imposing any upper limit on the number of trademarks that may be declared "famous," perhaps because it is impossible to predict how many marks will qualify.

As noted regarding the Interim Report, parties who lose their domain names under the proposed dispute resolution procedure and believe the arbitrator erred may find it difficult to find a court capable of hearing their claim. Because the Final Report restricts the dispute resolution procedure to a much narrower class of cases than did the Interim Report, one can expect that there will be many fewer such cases than initially feared – but not zero.

In addition, there are a number of ambiguities and possible errors in material which appears for the first time in the Final Report. This material will benefit from public review; and in some cases some of this material may need revision. In particular, the procedural proposals in the Annex contain what appears to be a serious drafting error.

While not strictly an intellectual property issue, and without wishing to minimize the complexity and importance of the real issues that remain to be determined, the Final Report provides a less ringing endorsement than one might have hoped for new global Top-Level Domains (gTLDs) and for the creation of a new privacy-enhanced gTLD for non-commercial uses.

Keywords: domain names, DNS, WIPO, cyberlaw