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DNS protection still inadequate to combat online abuses

by Kanaga Raja

Geneva, 3 Sept 2001 -- The current international legal framework dealing with protection in the domain name system (DNS) of the naming systems examined is inadequate, and the international community has to decide whether to address these insufficiencies and establish a complete legal basis for dealing with offensive online practices that arise in connection with the systems concerned.

This is among several recommendations by the World Intellectual Property Organization (WIPO) in its Final Report released here - to deal with the misuse of certain names and identifiers in the Internet DNS - at the close of an international process that spanned the past year.

A domain name is an address of a website that is easily identifiable and easy to remember such as yahoo.com or amazon.com. Such domain names aid in connecting computers through the Internet.

These domain names have, over time, become business identifiers and even trademarks themselves. Businesses use them to advertise their presence on the Internet and to attract greater market visibility and facilitate E-commerce operations.

With the explosive growth of the Internet, a fine line is now being drawn between trademarks and domain names. According to WIPO, domain names have come increasingly in conflict with trademarks.

Such a conflict, WIPO points out, arises from the fact that there is a lack of connection between the system for registering trademarks, and the system for registering domain names. The trademark system is administered by a public (government) authority on a territorial basis, be it national or regional, whereas the system for domain names is usually administered by an NGO without any functional limitation and on a first-come, first-serve basis.

Online abuse develops when cyber-squatters exploit the differences between these two systems and take full advantage of the first-come, first-serve nature of the domain system.

Cyber-squatters are third parties that take up pre-emptive registration of trademarks, famous people, or businesses with which they have no connection, as domain names through the first-come, first-serve nature of the domain name system.

WIPO predicts that as new gTLD (generic top-level domains) such as: .info; .coop; .museum; .aero; .pro and others are introduced, there is the possibility of further conflicts between domain names and business identifiers.

As a means to solve the numerous conflicts arising from the activities of cyber-squatters on the Internet, WIPO adopted the Uniform Dispute Resolution Policy (UDRP) in December 1999, through its first Internet Domain Name Process.

In July 2000, a group of countries spearheaded by Australia (and including Argentina, Canada, Denmark, the EU, France and the US) requested WIPO to initiate a second fast-track international consultation to address the issues concerned.

WIPO’s second report examined the abusive registration of domain names relating to international non-proprietary names (INNs); names of international intergovernmental organizations (IGOs); personal names; geographical indications, indications of geographical source or other geographical terms; and trade names.

With respect to INNs, WIPO recommended that a simple mechanism be established to protect INNs against identical domain name registrations.

This can be achieved through an administrative system that would operate when any interested party notifies WIPO that a domain name is identical to an INN, whereby WIPO, in conjunction with the WHO, would verify the fact and notify ICANN (Internet Corporation for Assigned Names and Numbers) that the domain name registration should be cancelled.

In the case of IGOs, which are protected against use and registration as trademarks by the Paris Convention and TRIPS, WIPO recommends that states, as constituent members of the IGOs, should establish an administrative dispute-resolution procedure similar to UDRP to bring up claims.

When it comes to personal names, which involves the names of individuals who are the targets of abusive registration because they are famous or distinguished, WIPO says that this lies with the international community, which must decide whether to work towards some means of protection for personal names in the domain name space. WIPO says that under the UDRP, personal names that also qualify as trademarks, whether registered or unregistered, can be protected.

At present, admits WIPO, there are no existing international norms dealing with protection of personal names per se that can be reflected in the domain space.

Some cases involving personal names that received significant media attention include juliaroberts.com and jimihendrix.com. In both these cases, the names were transferred to the individuals or their families.

On the issue of geographical indications and the like, the second WIPO report notes that an international framework in this area needs to be further advanced before an adequate solution is available in the domain name space. The lack of an internationally agreed list of geographical indications means that the UDRP cannot simply be applied, because it would raise complex legal questions.

As for other geographical terms, appropriate international law does not currently exist and WIPO warns that a decision needs to be taken on whether laws need to be developed to address the widespread registration of the names of countries, places and indigenous peoples as domain names by persons not connected with them.

On the question of trade name, which is a name adopted by a business enterprise to identify itself, as opposed to its various goods and services (which falls under trademarks), WIPO recommends that no action be taken in this area because, although international norms exist for their protection, problems remain in identifying what can be protected as a ‘trade name’ across different countries and, as with geographical indications, complex legal choices would need to be addressed.

WIPO says that the recommendations made in its second report would be presented to WIPO member states and the Internet community, including to ICANN. – SUNS4960

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