SCT/10/5 Page 5 WIPO E SCT/10/5 ORIGINAL English

sct/10/5 page 5 wipo ---- e sct/10/5 original: english date: march 30, 2003 world intellectual property organi

SCT/10/5
page 5
WIPO
----

E
SCT/10/5
ORIGINAL: English
DATE: March 30, 2003
WORLD INTELLECTUAL PROPERTY ORGANIZATION
GENEVA
standing committee on the law of trademarks,
industrial designs and geographical indications
Tenth Session
Geneva, April 28 to May 2, 2003
The protection of country names in the domain name system
Document prepared by the Secretariat
Background
==========
1 At the meeting of the WIPO General Assembly in September 2002, a
majority of delegations recommended that the Uniform Domain Name
Dispute Resolution Policy (UDRP) be amended to provide protection for
country names in the Domain Name System (DNS). It was noted, however,
that the following issues in particular warranted further discussion:
(1) the list to be relied upon to identify the names of countries
which would benefit from the protection envisaged; (2) the extension
of the deadline for the notification to the Secretariat of names by
which countries are commonly or familiarly known; and (3) how to deal
with acquired rights. The General Assembly decided that discussions
should be continued in the Standing Committee on the Law of
Trademarks, Industrial Designs and Geographical Indications (SCT) with
a view to reaching a final position (see paragraph 81 of the WIPO
General Assembly Report, document WO/GA/28/7).
2 The SCT continued discussion of these issues at its ninth session.
At this session, delegations supported the following (see paragraph 7
of the Summary by the Chair, document SCT/9/8):
i.
protection should be extended to the long and short names of
countries, as provided by the United Nations Terminology Bulletin;
ii.
the protection should be operative against the registration or use
of a domain name which is identical or misleadingly similar to a
country name, where the domain name holder has no right or
legitimate interest in the name and the domain name is of a nature
that is likely to mislead users into believing that there is an
association between the domain name holder and the constitutional
authorities of the country in question;
iii.
each country name should be protected in the official language(s)
of the country concerned and in the six official languages of the
United Nations; and
iv.
the protection should be extended to all future registrations of
domain names in generic top-level domains (gTLDs).
3 The Delegations of Australia, Canada and the United States of
America dissociated themselves from this decision. The Delegation of
Japan stated that, while it did not oppose the decision to extend
protection to country names in the DNS, further discussion was
required concerning the legal basis for such protection, and stated
its reservation to paragraph 7 herein, except for subparagraph (iv).
4 As reported in Circular No. 107 INT. of March 20, 2003, the
International Bureau has transmitted the above recommendation on the
protection of country names, together with the recommendation made by
the WIPO General Assembly with regard to the protection of names and
acronyms of international intergovernmental organizations (IGOs), to
the Internet Corporation for Assigned Names and Numbers (ICANN). In
the transmittal letter, the International Bureau has also informed
ICANN of the continued discussion on three outstanding issues in the
area of country names. At its meeting on March 12, 2003, the Board of
Directors of ICANN requested the President of ICANN to inform the
Governmental Advisory Committee, the Supporting Organizations, and the
other Advisory Committees of ICANN of the WIPO recommendations and to
invite them to provide comments by May 12, 2003.
5 At its meeting from March 23 to 25, 2003, the Governmental Advisory
Committee (GAC) of ICANN adopted the following decision on the WIPO
recommendations:
“4.1 GAC considered the WIPO communication to ICANN of February 21,
2003, and the ICANN request for Advice, March 12, 2003. GAC took note
that the WIPO II recommendation to ICANN was based on a formal
decision by Member States, resulting from more than two years’ work in
the official WIPO instances.
4.2 GAC’s Advice to ICANN is as below:
1.
GAC endorses the WIPO II recommendations that the names and
acronyms of IGOs and country names should be protected against
abusive registration as domain names.
2.
GAC advises the ICANN Board to implement the WIPO II
recommendations regarding the protection of the names of
Inter-Governmental Organisations (IGO) and the protection of
Country Names in the Domain Name System.
3.
As the practical and technical aspects of extending this
protection, and notably the implications for the UDRP, need to be
fully understood, GAC proposes that a joint working group should
be established in conjunction with other interested ICANN
constituencies, in particular the gTLD and ccTLD communities.”
Outstanding Issues
6 At its ninth session in November 2002, the SCT supported continued
discussion on the following issues (see paragraph 8 of the Summary by
the Chair, document SCT/9/8):
i.
extension of protection to the names by which countries are
familiarly or commonly known;
ii.
retrospective application of the protection to existing
registrations of domain names, and in which alleged rights may
have been acquired; and
iii.
the question of sovereign immunity of States before the courts of
other countries in relation to proceedings relating to protection
of country names in the DNS.
Extension of Protection to Names by Which Countries Are Commonly or
Familiarly Known
7 A number of Member States have, throughout the discussion of this
issue, supported extending protection also to names by which countries
are commonly or familiarly known. At the second special session of the
SCT in May 2002, it was agreed that countries should notify any such
names to the Secretariat before September 30, 2002, (see paragraph 210
of document SCT/S2/8). After the WIPO General Assembly referred the
question as to whether this deadline was to be extended to the SCT,
the SCT agreed, at its ninth session, that any such additional names
be notified to the Secretariat before December 31, 2002, (see
paragraph 8 of the Summary by the Chair, document SCT/9/8). A
cumulative list of all notifications received by the Secretariat to
date is contained in the Annex.
8 The implementation of such protection may, however, give rise to a
number of issues.
9 It will have to be determined whether the list of names should be
finite, or whether it should be possible to notify additional names,
or make amendments to existing notifications, at a later stage. Member
States will note in this context that some of the notifications listed
in the Annex were received after December 31, 2002. It will have to be
decided whether names notified after this deadline should also benefit
from protection.
10 Member States may also have to consider whether it should be left
entirely to each country to determine, for the purpose of the
protection at issue, by which names it is “commonly or familiarly
known,” or whether a mechanism should be established that would allow
other countries to object to individual notifications. In the latter
case, the details of such mechanism as well as the effect of any
objections will have to be determined.
11 As to the language of names, it is recalled that Member States have
decided to restrict protection to the official language(s) of the
country concerned as well as the six official languages of the United
Nations. Delegations may wish to consider whether this limitation
should also apply to names by which a country is commonly or
familiarly known, or whether such names should also be protected in
additional languages.
12 Some of the names that have been notified would, already under the
current recommendation, enjoy protection as “misleadingly similar”
variations of their official country name. The protection of such
names would, therefore, not require an extension to names by which
countries are commonly or familiarly known.
13 The SCT is invited to decide
i.
whether protection should be extended to names by which countries
are familiarly or commonly known; and, if so,
ii.
whether it should be possible to notify additions or amendments at
a later stage, and whether any notifications received after
December 31, 2002, should benefit from such protection;
iii.
whether it should be left entirely to each country to determine,
for the purpose of the protection at issue, by which names it is
“commonly or familiarly known,” or whether there should be a
mechanism allowing other countries to object to individual
notifications.
Retrospective Application and Acquired Rights
14 The SCT has, so far, recommended protecting country names against
abusive domain name registrations occurring after the recommended
protection has been implemented. Extending protection retroactively
might give rise to the question of how acquired rights should be
treated. It should be noted, however, that the protection recommended
by the SCT is limited to cases where the domain name holder has no
right or legitimate interest in the disputed name. To that extent,
acquired rights of domain name registrants would not seem to be
affected.
15 The SCT is invited to decide whether protection of country names
should be extended retroactively and, if so, whether there is a need
to take specific account of acquired rights even though such
protection would only apply where the domain name holder has no right
or legitimate interest in the disputed name.
Relevance of Sovereign Immunity of States
16 Paragraph 4(k) of the UDRP recognizes that a losing domain name
registrant can bring the dispute before a competent national court of
justice. To this end, the complainant is required to submit, in the
complaint, to the jurisdiction of the national courts either at the
principal office of the registrar or at the domain name holder’s
address as shown in the relevant WHOIS database. A certain number of
States, including Australia, Germany, New Zealand, Norway and Turkey,
have already filed complaints under the UDRP and, in that context,
submitted to the relevant UDRP provisions.
17 It is recalled that the SCT has recommended to respect the
privileges and immunities enjoyed by IGOs in the implementation of
protection for the names and acronyms of IGOs. Instead of submitting
to the jurisdiction of national courts of justice, IGOs would
therefore submit to a special appeal procedure by way of de novo
arbitration. Some delegations have expressed a preference for
establishing a similar mechanism for country names arguing that this
would provide an efficient appeal mechanism for domain name
registrants and at the same time respect the immunity of sovereign
States. Other delegations were, however, in favor of retaining the
procedure as currently provided under the UDRP.
18 The SCT is invited to decide whether to recommend, in view of the
immunities enjoyed by sovereign States, a special appeal mechanism by
way of de novo arbitration.
[Annex follows]
List of commonly known country names
for which protection is sought in the Domain Name System
as notified to the Secretariat
AS OF MARCH 30, 2003
Country
Names
Date on which the notification was received
Czech Republic
Česká republika
Česko
Czech Republic/The/
Czech/The/
Czechlands/The/
la République tchèque
La Tchéqui
República Checa
Chequia
Tschechische Republik/Die/
Tschechien
Bohemia
CZ
January 8, 2003
Estonia
Eesti Vabariik
January 7, 2003
Holy See
Holy See (the)
Santa Sede (la)
Saint-Siège (le)
Stato della Città del Vaticano (lo)
Vatican City State (the)
État de la Cité du Vatican (l’)
Estado de la Ciudad del Vaticano (el)
Vatican (the)
le Vatican
VAT
VA
June 28, 2002
Hungary
Magyar Köztársaság
Magyarország
Hungária
Republic of Hungary (the)
Hungary
Ungarische Republik (die)
Ungarn
République hongroise (la)
Hongrie
República Hungara (la)
Hungria
December 19, 2002
Mexico
Estados Unidos Mexicanos
República Mexicana
México
July 12, 2002
Netherlands
Nederland
Netherlands (the)
Pays-bas (les)
Paises bajos (los)
Holland
Hollande
Holanda
Niederlande (die)
July 15, 2002
New Zealand
Aotearoa
Aoteoroa
New Zealand
New Zeeland
NewZealand
New-Zealand
New_Zealand
New.Zealand
August 28, 2002
Portugal
Portugal
República Portuguesa
República de Portugal
July 1, 2002
Republic of Korea
Korea
South Korea
S-Korea, S_Korea, S Korea
ROK, KOR
Hankook, Daehanminkook
Corée
Corea
韓國
大韓民國
January 7, 2003
Russian Federation
Russian Federation (the)
Russia
August 6, 2002
Switzerland
Schweiz
Suisse
Svizzera
Svizra
Switzerland
Suiza
Helvetien
Helvétie
Elvezia
Helvetia
Helvecia
Schweizerische Eidgenossenschaft
Schweizer Eidgenossenschaft
Confédération suisse
Confederazione svizzera
Confederaziun svizra
Swiss Confederation
Confederación Suiza
Helvetische Eidgenossenschaft
Confédération helvétique
Confederazione elvetica
Confederaziun helvetica
Confoederatio helvetica
Elvetic Confederation
Helvetian Confederation
Confederación helvecia
Bund
Confédération
Confederazione
Confederaziun
Confederation
Confederación
CH
CHE
November 6, 2002
Thailand
SIAM
July 11, 2002
The former Yugoslav Republic of Macedonia
Република Македониjа
Republika Makedonija
Македониjа
MK
Republic of Macedonia
République de Macédoine
Republica de Macedonia
Республика Македония
January 6, 2003
[End of Annex and of document]