[gnso-rpm-wg] UDRP & ICANN Schemes vs WORLD TRADE ORGANIZATION.

[Graham Schreiber]

Hello ICANN ~ UDRP / Rights Protection Mechanisms Participants:

Cc Greg, Phil, Neda, Eric & Lawrence:


Please read and be aware of the WTO Rules, the Global Rules that rein over
Trade Marks as Common Law under USA Law ~ In Rem & In Personam plus those
which are Registered at USPTO, getting inclusion in the Madrid System
Countries, under American Trade Agreements.

Fundamentally, any Brand or Business that has a Domain Name of .COM and is
"In Use" ~ "In Commerce" equals "First in Use" therefore all the NTIA's
contracted New gTLDs fall behind .COM TLD.

That also applies to the SUB.COM -DOMAIN NAMES of CentralNic!

Regards, Graham.


WORLD TRADE ORGANIZATION

Council for Trade-Related Aspects of Intellectual Property Rights

https://www.wto.org/english/tratop_e/trips_e/ta_docs_e/8_1_ipcw128add1_e.pdf

IP/C/W/128/Add.1

15 May 2003

B. TRADEMARKS

18. Rights in trademarks and other distinctive signs are territorial, but
when such signs are used on the Internet they become simultaneously
accessible irrespective of territorial origin. Paragraphs 54-61 and 85-87
of the original background note in document IP/C/W/128 discussed certain
questions arising from this tension between territorial systems of
protection and the global nature of the Internet. These questions include
under what conditions the use of a trademark on the Internet would satisfy
certain requirements where the registrability or maintenance of a
registration requires use, as well as under what conditions and in which
jurisdiction(s) the use of a sign on the Internet would constitute an
infringement. The note also addressed the issue of use and promotion of
well-known marks on the Internet, as well as the relationship between
trademarks and domain names. The following describes how these issues have
been addressed in WIPO's recent work.

Use of trademarks on the Internet

19. Issues relating to the use of trademarks on the Internet were addressed
in a "Joint Recommendation Concerning Provisions on the Protection of
Marks, and Other Industrial Property Rights in Signs, on the Internet
("Joint Recommendation"),32 that was adopted by the Assembly of the Paris
Union for the Protection of Industrial Property and the General Assembly of
WIPO in September 2001.33 The WIPO Survey characterizes the Joint
Recommendation as follows:

"The Preamble to the Joint Recommendation makes clear that it does not
purport to be a trademark law for the Internet, but is intended to guide
the application of existing national or regional laws with respect to legal
problems resulting from the use of a sign on the Internet. Emphasizing the
'global nature' of the Internet, the Joint Recommendation aims at providing
the clearest possible legal framework for trademark owners who wish to use
their marks on the Internet and to participate in the development of
e-commerce upon it. Its purpose is, therefore, to help competent
authorities to determine whether, under the applicable law, the use of a
sign on the Internet has contributed to the acquisition, maintenance or
infringement of a mark or other industrial property right in the sign, or
whether such use constitutes an act of unfair competition, and thereafter
to apply appropriate remedies.

The determination of the applicable law itself is not addressed by the
Joint Recommendation, but is left to the principles of private
international law, as they are applied in each Member State. [...]"34

20. The Joint Recommendation is built on three principles. First, the use
of a sign on the Internet contributes to the acquisition, maintenance or
infringement of a trademark or other industrial property right in the sign
in a particular country only if the use has a commercial effect in that
country. Second, the Joint Recommendation aims to enable owners of
conflicting rights in identical or similar signs to use these signs
concurrently on the Internet. To this end, it introduces a "notice and
avoidance of conflict" procedure: right holders or persons who are
otherwise permitted to use a sign in one jurisdiction are exempt from
liability in another jurisdiction up to the point when they receive a
notification of infringement in the latter jurisdiction. After the receipt
of such notification, they continue to be exempt from liability if they
expeditiously take reasonable measures which are

32

33 These governing bodies decided to "[r]ecommend that each Member State
may consider the use of any of the provisions [...] as guidelines
concerning the protection of marks, and other industrial property rights in
signs, on the Internet". Article 1(i) of the Joint Recommendation defines
that a "'Member State' means a State member of the Paris Union for the
Protection of Industrial Property, of the World Intellectual Property
Organization, or of both".

34 Paragraphs 155-156 of the WIPO Survey (a footnote in the original
document omitted).

IP/C/W/128/Add.1 Page 7

The Joint Recommendation is available at http://www.wipo.int/about-
ip/en/index.html?wipo_content_frame=/about-ip/en/development_iplaw/index.htm.


IP/C/W/128/Add.1 Page 8

effective to avoid a commercial effect in that jurisdiction. Third,
remedies for an infringement in a particular country must be proportionate
to the commercial effect of the use of the sign in that country. In
general, competent authorities should, as far as possible, refrain from
granting "global injunctions" that would affect the use of the sign outside
the jurisdiction in question.

Well-known trademarks

21. The protection of well-known marks was addressed in a "Joint
Recommendation Concerning Provisions on the Protection of Well-Known Marks",35
that was adopted by the Assembly of the Paris Union for the Protection of
Industrial Property and the General Assembly of WIPO in September
1999.36 First,
it provides guidelines to assist competent authorities to determine whether
a mark is well-known. Among the recommended criteria to be considered are
the duration, extent and geographical area of any use and promotion of the
mark. The explanatory notes prepared by the International Bureau of WIPO
and attached to the recommendation state that, although the term "use" is
not defined in the recommendation, for the purposes of its provisions the
term "use" should cover use of a mark on the Internet. Furthermore, they
explain that "[a]dvertising, for example, in print or electronic media
(including the Internet), is one form of promotion".37 Second, the
recommendation provides that well-known marks must be protected against
conflicting marks, business identifiers and domain names.38 As regards
domain names, it is specified that "[a] domain name shall be deemed to be
in conflict with a well-known mark at least where that domain name, or an
essential part thereof, constitutes a reproduction, an imitation, a
translation, or a transliteration of the well-known mark, and the domain
name has been registered or used in bad faith".39

Domain names

22. Following its First Internet Domain Name Process, an international
process to develop recommendations concerning the intellectual property
issues associated with Internet domain names, WIPO published, in April
1999, its report "The Management of Internet Names and Addresses:
Intellectual Property Issues". The principal recommendations of this report
were implemented through the adoption by the Internet Corporation for
Assigned Names and Numbers ("ICANN") of the Uniform Domain Name Dispute
Resolution Policy ("UDRP") in August 1999. This procedure, which entered
into operation in December 1999, provides holders of trademark rights with
an administrative mechanism for the efficient resolution of disputes
arising out of the bad faith registration and use by third parties of
Internet domain names corresponding to those trademark rights. The UDRP now
applies to disputes in the generic top-level domains ("gTLDs") .com, .net,
and .org, the new gTLDs .aero, .biz, .coop, .info, .museum, .name, and .pro,40
and those country code top-level domains ("ccTLDs") that have adopted the
Policy on a voluntary basis.41

35

36 These governing bodies decided to "[r]ecommend that each Member State
may consider the use of any of the provisions [...] as guidelines for the
protection for well-known marks". Article 1(i) of the recommendation
defines that a "'Member State' means a State member of the Paris Union for
the Protection of Industrial Property and/or the World Intellectual
Property Organization ".

37 Sub-paragraphs 2 and 3 of Article 2(1) of the recommendation and the
attached explanatory notes.
38 Article 3(1) of the recommendation.
39 Article 6(1) of the recommendation.
40 ICANN has accredited a number of institutions to administer complaints
filed under the Policy,

among which the WIPO Arbitration and Mediation Center is the leading
provider. To date, approximately 8,200 cases have been filed under the
procedure. Of these cases, more than 4,800 were filed with the WIPO
Arbitration and Mediation Center.

41 WIPO launched in August 2000 the WIPO ccTLD Programme, which aims to
enhance the protection of intellectual property in the ccTLDs through
cooperation with their administrators. To date, 30 administrators of ccTLDs
have retained the WIPO Arbitration and Mediation Center as dispute
resolution service provider on the basis of the UDRP or a variation
thereof.

This recommendation is available at http://www.wipo.int/about-
ip/en/index.html?wipo_content_frame=/about-ip/en/development_iplaw/index.htm.


IP/C/W/128/Add.1 Page 9

23. WIPO commenced the Second WIPO Internet Domain Name Process in July
2000 to address abusive domain name registrations of identifiers other than
trademarks. In September 2001, WIPO published its report on this process
entitled "The Recognition of Rights and the Use of Names in the Internet
Domain Name System", and presented it to WIPO's member States and ICANN.
This report was analyzed by the WIPO Standing Committee on the Law of
Trademarks, Industrial Designs and Geographical Indications ("SCT"), which
formulated a set of recommendations.42 These recommendations were
considered by the WIPO General Assembly at its meeting in September 2002.43 The
recommendation concerning country names was remitted for further
consideration at the SCT's meeting in November 2002.44 As a result, the
member States of WIPO decided to recommend that the names and acronyms of
intergovernmental organizations ("IGOs") and country names should be
protected against abusive registration as domain names.45 These
recommendations were transmitted to ICANN.46

IV. ENFORCEMENT AND RELATED MATTERS

Liability of service provides

24. Paragraphs 73 and 74 of document IP/W/128 addressed the issue of the
liability of service providers in respect of the transmission and storage
of material initiated by others: to what extent service providers, who act
as intermediaries transmitting or storing potentially infringing content,
are or should be held liable for such content and, if so, what remedies
should be available. Given that the Internet is a borderless medium, it
would be important that national approaches to this issues would be
mutually compatible so as to allow global networks and markets to develop
smoothly.

25. This issue was discussed in the context of the work leading up to the
WIPO 1996 Diplomatic Conference. Article 8 of the WCT on the "Right of
Communication to the Public" compiles the various provisions of the Berne
Convention on the right of communication into a single provision, extends
the right to all categories of works, and clarifies the application of the
right in respect of interactive on-demand communications.47 As regards the
scope of this right in respect of intermediaries who provide physical
facilities for communication without actively initiating it, the Conference
adopted the following Agreed Statement:

42 The SCT's recommendations are reflected in WIPO document WO/GA/28/3.

43 The decisions of the General Assembly in respect of these
recommendations are reflected in paragraphs 74-81 of WIPO document
WO/GA/28/7.

44 The decisions by the SCT concerning country names are reflected in 6-11
of WIPO document SCT/9/8.

45 The delegation of the United States dissociated itself from the General
Assembly's decision on the recommendation concerning the names and acronyms
of IGOs, and the delegations of Australia, Canada and the United States
dissociated themselves from the SCT's decision on the recommendation
concerning country names.

The General Assembly also adopted recommendations concerning certain other
identifiers. It adopted the recommendation that no particular form of
protection of international non-proprietary names for pharmaceutical
substances would be recommended in the DNS at this time, but that WIPO,
together with the World Health Organization, would continue to monitor the
situation and, where necessary, bring any important developments in this
area to the notice of member States; it adopted the recommendation that
WIPO member States should keep the issue of trade names under review and
raise it for further discussion if the situation so required; it adopted
the recommendation that no action was needed in respect of personal names;
and in respect of geographical indications, it adopted the recommendation
that this issue be reverted to the regular session of the SCT to decide how
to address the issue of the protection of geographical indications in the
DNS.

46 For an in-depth examination of WIPO's work relating to domain names, see
paragraphs 178-239 and 516-522 of the WIPO Survey. All the WIPO
documentation referred to above can be accessed through the WIPO domain
names gateway page at http://ecommerce.wipo.int/domains/.

47 See paragraphs 43-45 of document IP/C/W/128. Similar provisions are
contained in Articles 10 and 14 of the WPPT that deal with the right of
making available of fixed performances and of phonograms.

IP/C/W/128/Add.1 Page 10

"It is understood that the mere provision of physical facilities for
enabling or making a communication does not in itself amount to
communication within the meaning of this Treaty or the Berne Convention."

While this statement clarifies the scope of the right of communication to
the public, it leaves the issue of liability of service provides to be
determined at the national level.48

26. Since the adoption of the WCT in December 1996, the issue of liability
of service providers has been addressed in the legislation of a number of
countries. Some countries have regulated the issue specifically in relation
to copyright, while others have taken a horizontal approach applying the
rules to liability arising under any relevant laws applying to the
information transmitted or stored. Below are some examples of such laws.

27. The United States Digital Millennium Copyright Act of 199849 limits the
liability of service providers, under specified conditions, to certain
forms of injunctive relief in respect of certain common activities
involving the transmission or storage of material initiated by a person
other than the service provider. The conditions include that the service
provider complies with a "notice and take down" procedure that allows the
right holder to notify it of allegedly infringing material residing on its
system and require it to take down or disable access to such material after
receiving such notice. Similar laws determining liability of service
providers in the copyright context have been enacted in a number of
countries, including Hungary, Ireland and Singapore.

28. The European Communities Directive on Electronic Commerce,50 adopted in
June 2000, approaches the same question in a horizontal manner. Its
provisions on liability of intermediary service providers apply to
liability the may arise from the application of copyright or any other
relevant laws. Subject to certain conditions, service providers may not be
held liable for the simple transmission of information provided by the
recipient of the service ("mere conduit"), automatic intermediate and
temporary storage of such information with the sole objective of making its
onward transmission more efficient ("caching"), and storage of such
information at the request of the recipient ("hosting"). In the case of
hosting, the service provider, upon obtaining knowledge or awareness that
the activity is illegal, must expeditiously remove or disable access to the
information. The EC member States may not impose on service providers any
general obligation to monitor the information transmitted or stored. Also
Japan has approached the regulation of service provider liability in a
horizontal manner in its "Provider Liability Law", enacted in November 2001.51


48 The agreed statement may be read together with the following explanatory
notes on draft Article 10, which later became Article 8 of the WCT: "The
relevant act is the making available of the work by providing access to it.
What counts is the initial act of making the work available, not the mere
provision of server space, communication connections, or facilities for the
carriage and routing of signals. It is irrelevant whether copies are
available for the user or whether the work is simply made perceptible to,
and thus usable by, the user." "It is strongly emphasized that Article 10
does not attempt to define the nature or extent of liability on a national
level. This proposed international agreement determines only the scope of
the exclusive rights that shall be granted to authors in respect of their
works. Who is liable for the violation of these rights and what the extent
of liability shall be for such violations is a matter for national
legislation and case law according to the legal traditions of each
Contracting Party." Paragraphs 10.10 and 10.21 of WIPO document CRNR/DC/4
entitled "Basic Proposal for the Substantive Provisions of the Treaty on
Certain Questions concerning the Protection of Literary and Artistic Works
to be Considered by the Diplomatic Conference".

49 Pub. L. No. 105-304, 112 Stat. 2860, 2876.

50 Directive 2000/31/EC of the European Parliament and of the Council of 8
June 2000 on Certain Legal Aspects of Information Society Services, in
particular Electronic Commerce, in the Internal Market.

51 Law No. 137 of 30 November 2001.
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20160402/48dcf8b5/attachment-0001.html>