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WIPO Recommends Uniform Mechanism to Regulate Domain NameRegistrations with introduction of New gTLDs
The World Intellectual Property Organization (WIPO) has recommended the introduction of a uniform intellectual property (IP) protection mechanism designed to further curb unauthorized registration of domain names in all new generic Top-Level Domains (gTLDs). This came in a report by WIPO’s Arbitration and Mediation Center (WIPO Center) on the IP implications of introducing additional generic Top-Level Domains (new gTLDs). The report, "New Generic Top-Level Domains: Intellectual Property Considerations", which is available at http://arbiter.wipo.int/domains/reports/newgtld-ip, said that such a preventive mechanism would complement the curative relief provided by the existing Uniform Domain Name Dispute Resolution Policy (UDRP).
Introducing New gTLDs
The report is based on WIPO’s experience in the area of IP protection in the domain name system (DNS). "The introduction of a new gTLD presents particular challenges for IP owners seeking to protect their domain names against unauthorized registration by third parties. With the growth of Internet usage and electronic commerce, the strategic importance of domain names as business identifiers has grown significantly," said Mr. Francis Gurry, WIPO Deputy Director General who oversees the work of the Center. Mr. Gurry said that registering their entire trademark portfolio may often be the only way for IP owners to protect their identifiers from being "grabbed" by cybersquatters. "If domain names are randomly attributed in newly opened gTLDs, IP owners will be forced to compete with cybersquatters for their own trademarks – unless additional safeguards are introduced," he added. "Our new report makes practical recommendations for addressing such issues."
New gTLD Strategy
WIPO’s report has been prepared in response to a request made by the Internet Corporation for Assigned Names and Numbers (ICANN), the institution that oversees the functioning of the DNS. Following the introduction of seven new gTLDs in 2000 (.aero, .biz, .coop, .info, .museum, .name, .pro), ICANN is developing a comprehensive strategy for further expansion of the DNS. The report provides input into that strategy from an IP and dispute resolution perspective.
WIPO Domain Name Experience
WIPO’s recommendations made in the context of the First WIPO Internet Domain Name Process in 1999 led to the adoption of the UDRP – a quick and cost effective procedure for the independent resolution of disputes that arise from the abusive registration of trademarks as domain names. Under the UDRP, a complainant must demonstrate that the disputed domain name is identical or confusingly similar to its trademark, that the respondent does not have a right or legitimate interest in the domain name and that the respondent registered and used the domain name in bad faith. The WIPO Center was the first UDRP service provider to be accredited in December 1999 and has since administered over 7,500 cases under this policy alone. The WIPO Center has also been involved in the implementation of certain trademark protection mechanisms developed by new gTLD operators, and has handled more than 15,000 dispute resolution procedures under such mechanisms.
Need for Preventive Measures
WIPO’s report focuses exclusively on the IP aspects that need to be taken into account if and when such extensions of the domain name space take place, and does not comment on whether further extensions are necessary or desirable. The report summarizes the WIPO Center’s UDRP experience, and notes that WIPO’s UDRP case filing rate has remained stable over the last years and recently even increased. An additional mechanism to prevent unauthorized registration of domain names during the critical introductory phase of a new gTLD would, therefore, strengthen the ability to combat the still widespread practice of cybersquatting.
Continued Attraction of .com
WIPO’s UDRP experience also shows that the first extension of the DNS in 2000 has not caused significant shifts in cybersquatting or enforcement patterns. UDRP disputes continue to concentrate heavily in the .com domain. Indeed, this trend has become even more pronounced since the introduction of the seven new gTLDs. While this may partly be explained by the availability of the start-up IP protection mechanisms adopted by .biz and .info, it more likely indicates that .com continues to be the most attractive domain for trademark owners as well as for cybersquatters.
WIPO’s New gTLD Experience
The report summarizes the WIPO Center’s experience in implementing various IP protection mechanisms developed by a number of new gTLDs and provides a comparative evaluation of existing approaches (watch services, defensive registrations, exclusion mechanisms, and pre-registration mechanisms). It notes a trend among TLDs towards sunrise mechanisms, i.e. the possibility for IP owners to register their identifiers before the general public. Experience shows that the need for IP protection mechanisms is most tangible in open gTLDs, which are not subject to clearly defined and policed registration restrictions, and which accept domain name applications from the general public. The fewer restrictions and prior verification requirements associated with the registration process, the greater the risk of abusive registrations.
The report confirms the need for effective IP protection mechanisms to prevent new gTLDs from turning into cybersquatting havens and recommends that mechanisms should: be effective and minimize the potential for abuse; take account of rights and interests of third parties; and be practicable and straightforward in order to avoid undue delays in the introduction or functioning of new gTLDs.
A Uniform IP Protection Mechanism
In conclusion, the report recommends implementing a single uniform preventive IP protection mechanism across all new gTLDs. Specifically, new gTLDs would be required to offer IP owners the option of registering their protected identifiers during a specified period before opening registration to the general public. In sponsored or restricted gTLDs where IP owners may not be eligible to register domain names, IP owners could instead be given the option of obtaining defensive registrations during this initial period. Such a uniform mechanism would have a number of advantages:* Operators of new gTLDs would not be required to develop their own IP protection mechanisms, a task for which they are not necessarily equipped;
* ICANN would not be required to monitor the correct implementation of multiple protection mechanisms applied by different gTLDs (now that ICANN’s experimental "proof of concept" phase on new gTLDs has been concluded);
* IP owners would not be required to devote significant resources to understanding and using multiple different IP protection mechanisms; and
* The general public would benefit from enhanced reliability and credibility of domains.
The IPKat welcomes the Report's conclusions but wonders whether they weren't blindingly obvious. What benefit would ever be reaped by having non-uniform IP protection mechanisms, except by villains?