11.3 New Rights in Names: WIPO 2

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If there were any doubts about the intent of WIPO and certain other interests to take advantage of the ICANN regime to create new rights in names, they were resolved with the release of the Interim Report of WIPO's second domain name proceeding (WIPO 2001). The second WIPO proceeding advocated several new types of name exclusions and some modifications of the Uniform Dispute Resolution Policy (UDRP) to recognize new rights in domain names. The new rights involved names of international organizations, nonproprietary pharmaceutical names, geographical indicators, country codes, personal names, and trade names.

The new rights were proposed before ICANN had even begun to evaluate its UDRP.

11.3.1 INNs and IGOs: Taking Care of Your Own

One of the focal points of WIPO's report was the list of International Nonproprietary Names (INNs) for pharmaceutical substances, created by the World Health Organization (WHO). The INN list consists of 8,000 generic names of drugs, such as 'ampicillin' or 'penicillin.' Over 100 new names are added to the list each year. The purpose of the list is to ensure that no one can claim proprietary rights to those terms. The INN list, therefore, is intended to preserve freedom of expression in the realm of drug development and medicine by ensuring that no company or individual can control or regulate the basic terms used to scientifically describe and define pharmaceutical substances. One would think, therefore, that those terms' use in the domain name space would be open to all, as it is in other contexts. WHO is concerned, however, that the registration of an INN as a domain name means that a private interest might 'control' an INN. Indeed, it refers to the registration of a domain name as a ' monopoly of association.'

Monopoly? WHO's understanding of DNS is less than perfect. It does not seem to understand that an INN can show up in any one of more than 257 top-level domains; that the number of TLDs could be expanded to a million; that INNs could show up in third-, fourth, and fifth-level domains (or further down the hierarchy) or on the right-hand side of a Uniform Resource Locator (URL). In fact, the report admits that 'evidence of actual damage resulting from the registration and use of INNs as domain names is lacking' (WIPO 2001 para. 45).

None of these facts deterred WIPO from proposing to mint a new global right. It recommended that all character strings identical to INNs, in five official languages, be excluded from the DNS database. WIPO would like the exclusion to apply in all open generic TLDs, and urges all country code TLD registries to adopt it, too. Moreover, it proposes to expropriate holders of existing registrations by canceling their domain name registrations.

The WIPO report also recommends special treatment of the names of international intergovernmental organizations (IGOs). Under current treaties, IGOs are protected against registration of their names or acronyms as trademarks or service marks. WIPO proposed to exclude the exact names and acronyms of official IGOs from all gTLDs, regardless of how they were used. As in the case of INNs, it did not document a significant social problem caused by abusive registration of IGO names. Indeed, the only statements in support of the exclusion came from the IGOs themselves. The following comment, submitted to WIPO by the Preparatory Commission for the Comprehensive Nuclear-Test-Ban Treaty Organization, was typical of the rationale put forward: '[I]t is important to have only one authentic source of information in the Internet and to prevent the establishment of competing, unofficial Internet sites that may contain misleading, inaccurate, or prejudicial information, or that may lead the viewer to believe that he or she is using the official Web site of the organization.'

This statement makes it abundantly clear that by regulating DNS labels, we are regulating speech and content as well. The treaty organization wanted to leverage the administration of DNS to ensure that there is 'only one authentic source of information' about itself on the Internet and to prevent the formation of 'competing, unofficial' sites. Few would object to measures aimed at eliminating fraudulent or deceptive Web sites, whether they target international organizations or any other type of organization. But fraud of that sort does not require a global name exclusion; it can be addressed by existing treaties and by the existing Uniform Dispute Resolution Policy. A more likely scenario is that the names of IGOs would be used not by frauds but by parodists or political critics to operate Web sites with critical or humorous content. An across-the-board exclusion seems intended only to prevent these critics from attracting the attention of the public by incorporating the IGO's name into their domain name label.

11.3.2 Geographical Designations

Geographical designations include the names of cities, nations, regions, or locations. Often, geographic names are used as indicators of the source of agricultural or manufactured products. Because of this type of usage, an extensive body of intellectual property law has grown up around them. [6 ]But neither the geographical indications themselves nor the legal principles governing them are uniform across territorial jurisdictions. As one legal scholar put it, 'The same word can, in different contexts, constitute fully or partially a geographical indication, an indication of source, a geographic term, a descriptive term, a personal name, and a trademark. In other words, merely because a certain word functions as a geographical indication in one market, jurisdiction, and language, does not mean that the word is inherently a geographical indication.' [7 ]Terms such as ' champagne' or 'bourbon,' which have specific and regulated applications in France, may not be protected at all in the United States.

Nevertheless, the second WIPO report recommended the adoption of new measures to protect geographic indicators and indications of source in the open top-level domains. It proposed to do this by broadening the scope of ICANN's UDRP to include abusive registrations of geographical indications and indications of source. The result of such a move would be to vastly complicate the definition and application of the UDRP, and to foment hundreds if not thousands of new disputes as different territorial norms began to collide with each other. Even the International Trademark Association recognized that extending the UDRP to geographical terms would require 'extensive adjustments' in the UDRP's language. 'The number of required amendments would transform the UDRP from a relatively easy-to-understand process to a more complex legal regimen that may not be readily understandable, especially to respondents who are presented with a cause of action against them.' [8 ]It is difficult to understand why WIPO would propose this other than as part of an ambitious attempt to exploit the leverage of the domain name system to carve out a new global system of name rights with itself at the center.

It is interesting to speculate on what would have happened if WIPO's proposed regime had been in place back in November 1994, when a startup company with no real connection to Brazil registered the name amazon.com. Most likely, the claims of a small U.S. company with no political clout would have been brushed aside as an 'inauthentic' use of an important geographical indicator.

11.3.3 Rights of Personality

Common pool conditions in the domain name space allowed anyone to register personal names as well as trademarked product names.

Entertainers, celebrities, politicians, and some not-so-famous people found that their names had been registered by someone else. Frequently they did not like the use to which it was put. One activity in particular got the attention of politicians: the registration of the names of elected politicians and political candidates as domains. The names became the address of Web sites critical of the candidates' political views. Or they were offered to the candidates for a higher price. [9 ]While the Republican and Democratic parties' national committees expressed valid concerns about the use of domain name registrations to extort payments from campaign committees, they also raised troubling issues about the overlap between domain name regulation and free expression. The Democratic party's national committee, for example, complained about the 'voter confusion arising from a multiplicity of sites with domain names including the candidate's name, when such sites are created by individuals or organizations in order to criticize or parody the candidate, rather than for profit.' Was their concern really the abusive registration of names, or simply a desire to make their political opponents and critics a bit harder to find?

Because of the power of Hollywood, strong national legislation in the United States has already addressed personality rights in the domain name space. The so-called Anticybersquatting Consumer Protection Act (ACPA) allows civil lawsuits against people who register the domain name of a person 'without that person's consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party.' Even before ACPA, several U.S. court cases stripped domain name speculators of registrations of the names of celebrities and performers.[10 ]

In general, personal names are not protected as marks unless they are used or registered as an identifier of a product or service. There are laws against defamation, libel, and slander, but they pertain to content rather than labels. Within the ICANN regime, several UDRP decisions have recognized and upheld personality rights when the name in question is associated with famous performers and effectively functions as a trademark. [11 ]The results, however, are mixed. Several cases uphold the right of third parties to register someone else's name if they are fans or have something to say about the person and wish to identify the site using a direct nominative reference. [12 ]

The second WIPO process considered some of these issues and raised the possibility of amending ICANN's dispute resolution policy to strengthen personality rights. The new right WIPO proposes would apply when the name is distinctive and the domain name registration is commercially exploited by an unauthorized party. The definition of 'bad faith registration' would be modified to include practices that take advantage of the reputation or goodwill in a person's identity. The WIPO wording does not sound all that unreasonable, but it constitutes yet another step in the direction of an expanded, global regime of rights to names with WIPO at its center. The report was weak in documenting abuses, and particularly weak in demonstrating that the abuses that exist in this area are not being handled by existing remedies. If the UDRP is modified, thousands of new disputes will be created, as people around the world would be encouraged to bring claims against anyone who registers their personal name as a domain name. There are no guarantees about the results of a UDRP case, so the risk of registering such a name will rise. 'Taking advantage of the reputation or goodwill in a person's identity' can be an all-encompassing claim. If someone writes a book about a famous person and uses the name in the title, are they taking advantage of someone else's reputation? Probably.

11.3.4 Country Names: Semantics and Sovereignty

An especially potent subset of the controversy over geographical designators concerns country names, including both the words themselves and the two-letter country codes of the ISO-3166-1 list. In this case, the rights being asserted are not derived from commercial trademark rights but are put forward as extensions of national sovereignty.

The ISO list of country codes embodied the pre-Internet international communication regime. It reflected a world of territorial nation-states where international relations were coordinated by treaty-based intergovernmental institutions. By incorporating this artifact into the domain name space, Jon Postel inadvertently helped to reproduce the political geography of the ancien rÈgime in cyberspace. The ISO codes were originally part of a private name space and were intended to be nothing more than an identifier of what country a domain administrator was in. Remarkably, these casual delegations of top-level domains were transmuted into the basis of a sovereignty claim by national governments. According to the ICANN Governmental Advisory Committee (GAC), the 'relevant national government or public authority' should determine who receives the right to operate a country code registry, the duration of the license, and any review or revocation processes. [13 ]This claim should not be confused with the simple and unexceptional notion that a registry located in a country must conform to the law of the country. Rather, nation-states via GAC are claiming that they should have the authority to determine who is assigned the country code top-level domain for their country. That is, they are asserting a right to share with ICANN the power to make top-level delegations. The claim is based on the flimsiest of grounds: an arbitrary semantic relationship, the notion that the ccTLD string 'stands for' or ' represents' the country, and that that semantic relationship is somehow exclusive and privileged. In fact, there could be many different TLDs referring to a specific country (e.g., .us, .usa, .america, and so on). The arbitrariness of the relationship becomes evident from countries with ccTLDs such as .tv, .cc, or .md that exploit the semantic properties of their country code to generate domain name registration business unrelated to the country itself, and that contract out the registry operation to companies in the United States or Britain.

But political factors have overridden technical and business facts in this case. The GAC has lobbied to make sure that ccTLD delegations are exclusive by warning ICANN not to delegate any new TLDs with the names of countries or that use the three-letter country codes. The director-general of the European Commission, Robert Verrue, expressed support for the idea of giving governments the opportunity to register or assign in advance the two-letter and three-letter ISO country codes in the new TLDs. [14 ]In its second process WIPO proposed to exclude all two-letter country codes from the second level of all new generic TLDs.

Elisabeth Porteneuve, an adviser to France's .fr registry, said that ccTLDs are 'attached to the reputation of the country. It's important, like a brand name.' [15 ]The government of the Republic of South Africa has taken an even stronger stance. It has objected to the common practice of registering country names in the second-level domain space, when the registrants 'have no association or tie with that country.' It goes on to say, 'It is the position of the Republic of South Africa that second-level domain names the same as Country Names are valuable national assets belonging to the respective sovereign nations. The country names in the gTLDs, particularly the dot-com TLD, have the potential to be of substantial political and economic value, particularly to developing nations.' [16 ]

Clearly, by adjusting the UDRP to recognize geographical indicators, WIPO opens the door to claims that any registration of the name of a country is 'abusive.' As the WIPO report recognizes, the same logic could also be used to support protecting the names of provinces, counties, cities, towns, and national parks. It also raises, but does not resolve, questions about rights to register the names of subnational groups, ethnic groups, and the names of tribes or indigenous peoples.

One can only wonder when the demand for protecting religious terms will surface. The current regime offers exclusive protection for the names of cookies, laundry detergents, and thirty-six different misspellings of 'Yahoo.' But it allows sacred names and profound concepts to be appropriated by anyone who wants them. Shouldn't our regulatory apparatus make sure that the registrant of allah.org (or its equivalent in Arabic script) is a devout Muslim, that jesuschrist.com is in authentic hands, [17 ]that the registrant of truth.com lives up to the name?

[6 ]The Paris Convention, Article 10 (1), states that its provision on seizure of goods traded across national boundaries shall apply to instances where false indications of the source of the goods or the identity of the producer are used. The Madrid (Indications of Source) Agreement broadens the application of the Paris convention to 'deceptive' indications of source. The Lisbon Agreement regulates 'appellations of origin,' requiring participating states to protect registered appellations against any 'usurpation or imitation.' Geographical indications are also covered by Articles 22 and 23 of the TRIPS Agreement.

[7 ]Christine Haight Farley, assistant professor of law, American University, Response to the Interim Report of the Second WIPO Internet Domain Name Process, Washington D.C. Regional Consultation, May 29, 2001.

[8 ]Letter from International Trademark Association to Francis Gurry, May 24, 2001, <http://wipo2.wipo.int/process2/rfc/rfc3/comments/msg00034.html>.

[9 ]Terry Allen, 'Squatting for Dollars: A Political Cybersquatter Makes Mischief, and a Few Dollars, by Registering Candidate Domain Names,' June 12, 2000, <http://www.salon.com/>.

[10 ]A group of country music artists sued Jim Salmon, who registered around 450 personal names, in 1998. Jim Hu, 'Country Music Artists Sue over Domains,' CNET News, April 8, 1998.

[11 ]Julia Fiona Roberts -v- Russell Boyd, re: juliaroberts.com (WIPO case no. D2000-0210), and Daniel C Mario Jnr -v- Video Images Productions, re: danmarino.com (WIPO case no. D2000-0598), and several other cases recognized common law trademark rights in personal names and transferred domain name registrations to celebrities.

[12 ]In Bruce Springsteen -v- Jeff Burgar and Bruce Springsteen Club, re: brucespringsteen.com (WIPO case no. D2000-1532), the majority holds that 'the users of the internet do not expect all sites bearing the name of celebrities or famous historical figures or politicians, to be authorized or in some way connected with the figure themselves.' In Jules I. Kendall -v- Donald Mayer, re: skipkendall.com (WIPO case no. D2000-0868), the panelists unanimously permitted a relative of the golfer Skip Kendall to continue to use the name as the address of a Web site airing grievances about a personal debt.

[13 ]GAC, Principles for the Delegation and Administration of ccTLDs, February 23, 2000, Sec. 9.

[14 ]Letter from Robert Verrue, European Commission, to Mike Roberts, President of ICANN, December 1, 2000, <http://wipo2.wipo.int/process2/rfc/rfc3/comments/msg00034.html>.

[15 ]Kenneth Neil Cukier, 'Governments Stake Claim for Control over Country-Specific Domain Names,' CommunicationsWeek International, June 7, 1999, p. 1.

[16 ]Submission by Republic of South Africa in Response to World Intellectual Property Organization's WIPO2 RFC-2 Process, March 1, 2001.

[17 ]In a rather delicious irony, jesus.com has been registered by a Washington D.C. area man with an uncanny resemblance to the stereotypical Bible school picture of Jesus. The Web site at that address is an extended personal ad: 'Golden-haired, blue-eyed Jesus seeks loving young woman (22-29), preferably of recent Norse-Germanic heritage, who wishes to live in the spirit of the eternal. Innocence, or rebirth into innocence, and a desire to transcend the material mendacity of this world are essential! I offer a pure and spiritual existence of life's essence, free of fear, free of despair. I will reveal the bliss, power, and endless rewards of faith and belief. The right woman who is ready for my love, blessings, and unforgettable spiritual exploration will be given the world, but will also want to give me her world in the mutual quest to share the infinite. I offer you the ability to experience the fulfillment of your dreams and all you seek. Prospective respondents should read 1 John 4:18. True to artistic depictions, I have a lean swimmer's body and a six-pack, and if you have sought your best in life you will also be in good shape.' Where is WIPO when we need it?



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Ruling the Root(c) Internet Governance and the Taming of Cyberspace
Ruling the Root: Internet Governance and the Taming of Cyberspace
ISBN: 0262134128
EAN: 2147483647
Year: 2006
Pages: 110

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