First WIPO Internet Domain Name Process: Archive

In June 1998, the World Intellectual Property Organization (WIPO) undertook an international process to develop recommendations concerning the intellectual property issues associated with Internet domain names, including domain name dispute resolution.  The WIPO Internet Domain Name Process was finalized on April 30, 1999 with the publication of the Final Report.  The recommendations contained in the Final Report have been made available to the new organization, the Internet Corporation for Assigned Names and Numbers (ICANN), that has been formed to manage the policy and technical aspects of the Internet Domain Name System.  They have also been made available to the Member States of WIPO for their consideration at the September general assemblies of the WIPO Member States.

The organization and management of the DNS has been the subject of intensive discussions throughout the world over the past several years. These discussions have been motivated by a desire to ensure that the management of the DNS is institutionalized in a manner that will permit the system to accommodate the growing volume of traffic on the Internet and to be administered in a competitive and open way which permits the interests of all stakeholders in the Internet to be taken into account.

One of the important issues that has been considered in the course of these discussions is the interface between domain names and trademarks. While domain names were originally intended to perform only the technical function of facilitating connectivity between computers through the Internet, domain names have, because of their easy-to-remember and human friendly form, come to constitute business identifiers. They are used routinely in advertising as a means of indicating the presence of an enterprise or business on the Internet. Businesses have come to realize the significant potential of an Internet web site as a means for providing information and offering goods or services directly to the consumer public.

With the growth of the Internet, domain names have come into conflict with trademarks. The possibility of such conflict arises from the lack of connection between the system for registering trademarks, on the one hand, and the system for registering domain names, on the other hand. The former system (trademarks) is administered by a public (governmental) authority on a territorial (either national or regional) basis which gives rise to rights on the part of the trademark holder that may be exercised within the pertinent territory. The latter system (domain names) is usually administered by a non-governmental organization without any functional limitation: domain names are registered on a first-come, first-served basis and offer a unique, global presence on the Internet.

The potential for conflicts inherent in the two different systems of registration has been exploited by persons who have made it a practice to register, as domain names for themselves, the trademarks of other persons or enterprises (“cybersquatting”).

Conflicts between domain names and trademarks present unusual features that stretch the capacity of the ordinary judicial system. That system is also territorially based, so that it cannot always provide a comprehensive solution to a conflict with a global dimension. Furthermore, litigation can be slow and expensive, factors that can produce a de facto situation in which it may be quicker and cheaper for a trademark holder to deal with a cybersquatter and buy back its rights to a domain name, rather than to seek to retrieve those rights through litigation.

The relationship between Internet domain names and trademarks was addressed beginning in 1996 by the International Ad Hoc Committee (IAHC), which issued its “Memorandum of Understanding on the Generic Top-Level Domain Name Space of the Internet Domain Name System” (gTLD-MoU) in May 1997. Taking into account advice provided by WIPO on intellectual property and dispute resolution issues, the IAHC (later the Policy Oversight Committee (POC)) developed a dispute resolution system to address potential conflicts between trademarks and domain names.

An important development in the discussions on the future organization and management of the domain name system was the publication on June 5, 1998 of a Statement of Policy on “Management of Internet Names and Addresses” (Docket Number 980212036-8146-02) by the Department of Commerce of the United States of America (“the USG White Paper”). The USG White Paper follows from intensive discussions and public debate internationally. The USG White Paper contained the following passage:

“The U.S. Government will seek international support to call upon the World Intellectual Property Organization (WIPO) to initiate a balanced and transparent process, which includes the participation of trademark holders and members of the Internet community who are not trademark holders, to (1) develop recommendations for a uniform approach to resolving trademark/domain name disputes involving cyberpiracy (as opposed to conflicts between trademark holders with legitimate competing rights), (2) recommend a process for protecting famous trademarks in the generic top level domains, and (3) evaluate the effects, based on studies conducted by independent organizations, such as the National Research Council of the National Academy of Sciences, of adding new gTLDs and related dispute resolution procedures on trademark and intellectual property holders. These findings and recommendations could be submitted to the board of the new corporation for its consideration in conjunction with its development of registry and registrar policy and the creation and introduction of new gTLDs.”

With the approval of the members States, WIPO has undertaken the process through a combination of Internet-based consultations and physical (in-person) consultations throughout the various regions of the world.  WIPO has endeavored to obtain the widest possible geographical and sectoral participation.  The process took approximately ten months to complete.    WIPO was assisted in the process by an internationally and sectorally representative group of experts.  The timetable indicating the various steps in the process is provided at “Process timetable“.

The results of the WIPO Internet Domain Name Process and observations with regard to the implementation of those results were made during the testimony of Mr. Francis Gurry, Assistant Director General & Legal Counsel of the World Intellectual Property Organization before the Subcommittee on courts and Intellectual Property of the Committee on the Judiciary, US House of Representatives, Congress of the United States (July 28, 1999).