Terakhir tgl 12-Mar-99, silakan berikan komentar RFC-3 dari ID link url-nya di mana? [1]:http://www.domainhandbook.com/rfc3.html [2]:A hypertext version is posted at http://www.law.miami.edu/~amf/quickguide.htm -copy: [1]: Comments on the World Intellectual Property Organization Interim Report: RFC-3 by Ellen Rony Co-author, The Domain Name Handbook: High Stakes and Strategies in Cyberspace (R&D Books, 1998) and webmaster of www.domainhandbook.com Copyright � 1999 by Ellen Rony. All rights reserved. Free copying and citation allowed with source, web site, and author reference. INTRODUCTION Most of the people you will hear from today are trademark owners, intellectual property attorneys, and counsels for corporations who are concerned with promoting and protecting their commercial identity in a global marketplace. I am neither a trademark owner nor an IP attorney but an advocate for non-commercial free speech on the Internet. I am co-author, with Dr. Peter Rony, of The Domain Name Handbook: High Stakes and Strategies in Cyberspace (R&D Books, July 1998), which culminates two years of research into domain name policies, protocols, disputes. and initiatives. I also maintain a 50-page website at WWW.DOMAINHANDBOOK.COM, extensively linked to domain name information such as Congressional documents, ICANN's activities, name dispute litigation, news reports, WIPO meetings, and more. I am here to express my grave dissatisfaction with the recommendations contained in the World Intellectual Property Organization's Interim Report, known as RFC-3. The proposed WIPO recommendations for settling domain name conflicts are far too broad and overreaching. WIPO creates a whole new system of administrative law to regulate domain names on behalf of trademark owners. The Interim Report lacks balance in exploring the effects of name collisions on both sides of the debate. It is imbued with a prejudicial bias that domain names are associated with trademarks, even though such domain names are neither geographically specific nor context sensitive. The U.S. Government called upon WIPO to initiate a balanced and transparent process 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, of adding new gTLDs and related dispute resolution procedures on trademark and intellectual property holders.1 RFC-3 exceeds this White Paper charter. It attempts to resolve a host of intellectual property problems not specifically related to cyberpiracy. In so doing, RFC-3 presumes an Internet thriving solely as a brand-dominated electronic mall, pushing, for example, the latest in flagship products, trademarked consumer goods, and famous name vehicles. RFC-3 focuses on protecting a broad brush of intellectual property rights in a system designed as a medium of information exchange for a non-commercial environment. A domain name is the human-friendly form of Internet addresses and the new "meta symbol" of the information landscape. It is a unique and customized address, a mnemonic replacement for the dotted octet of numbers that actually locate a particular computer. For commercial and non-commercial users alike, a domain name is our most important gateway to the electronic community. The low entry barriers and easy domain name registration enable broad worldwide participation in the Internet. RFC-3 recognizes that "Special care needs to be exercised to ensure that any policy developed for one interest or function does not impact unduly on, or interfere unduly with, other interests or functions."2 Unfortunately, WIPO has not followed this overarching principle. Recommendations for resolving trademark owner's concerns are made at the expense of legitimate domain name holders. Although WIPO was mandated to explore solutions to disputes involving "cyberpiracy", the Interim Report contains no definition of the term and no precise criteria for distinguishing such conflicts from those between legitimate competing interests in a domain name. One may infer by reference to the final section, that cyberpiracy means "the various predatory and parasitical practices in domain name registrations whereby persons seek, in bad faith, to take advantage of the reputation of another, specifically targeting the owners of marks that are famous or well-known or that have a certain notoriety."3 Cyberpiracy is often used in connection with "cybersquatting", referring to the practice of registering many famous and familiar domain names and warehousing a digital collection of marks that can be offered for sale to those who invested time and money in developing the goodwill of the name.4 Implied in the definitions of both cyberpiracy and cybersquatting is a predatory practice, an act of bad faith. A recent case elaborates on both these terms. The defendant, William Cary Nash, had offered to sell the domain name REACTION.COM to Kenneth Cole Reaction, the owner of the "Reaction" trademark. .K.C.P.L. Inc. v. Nash (S.D.N.Y. 11/24/98) 49 USPQ2d 1584 at 15895 refers to Panavision v. Toeppen6 , stating: At least one court has determined that jurisdiction exists over a defendant who is alleged to be a 'cyber squatter' or 'cyberpirate,' -- i.e., one who is engaged in the business of stealing valuable trademarks and registering them as domain names for the purpose of selling the rights to the domain name." Pages 1590-1591 add: "Panavision is also factually distinguishable because, despite plaintiff's characterizations, the facts alleged do not show Nash to be a 'cyber pirate' like Toeppen. Toeppen registered over one hundred domain names, virtually all of which were similar to famous trademarks. Nash, on the other hand, registered only four domain names, only one of which is alleged to resemble another's trademark. . . . In sum, K.C.P.L's factual allegations, which the Court accepts as true for the purpose of this motion, simply do not support its characterization of Nash as a 'cyber pirate' nor its labeling of his conduct as extortion. MOTIVATIONS FOR REGISTERING A DOMAIN NAME Unfortunately, WIPO takes a one-size-fits-all approach to domain name registrations that are identical or similar to registered marks. In describing and mandating an administrative dispute resolution proposal for all domain name registrants, RFC-3 fails to differentiate between abusive domain name registrations and legitimate motivation for the acquisition of a specific Internet mnemonic address. The varied reasons for registering a domain name include: 1) Information - The preponderance of domain name registrations occur for non-commercial purposes. They are registered for informational, educational, expressive, social and political purposes. They may be used for e-mails, for intranets, and for the private sharing of data. 2) Marketing - The WIPO perspective, however, concentrates on those who seek to benefit from a the broader business opportunities enabled by a global Internet marketplace. These are the companies that have trademark registration and identification with an advertised brand, line, product, and service or a legitimate nexus to a name through a common law use. 3) Misappropriation - Abusive domain registrants acquire well-known names purposefully to divert traffic to their web sites and trade on the goodwill developed by others. This category includes those who capitalize on spelling errors, or the same name in a different category of top level domain, to create the impression that the site is the source of goods and services offered by a better-known party. For example AMAZOM.COM feeds to two competing booksellers of the largest online bookseller AMAZON.COM7, while INTERNIC.COM, established by an Australian company collected up to $3 million from consumers worldwide who apparently mistook the site for that by NSI at INTERNIC.NET. 8 4) Speculation - The cybersquatter or cyberspeculator acquires a host of popular domain names for the sole purpose of reselling them to the parties most likely to want them for use in e-commerce. Dennis Toeppen may be the best-known cybersquatter, who registered more than 100 famous names such as DELTAAIRLINES.COM, CRATEANDBARREL.COM, TOURDEFRANCE.COM, and NEIMAN-MARCUS.COM, with a view toward selling them at a huge profit to the trademark owners. 9 5) Tarnishment - Names are registered for the specific purpose of dispersion or tarnishment. In these cases, the domain name is, in and of itself, a disparaging statement about a company or organization as implied in the registration of NETSCAPESUCKS.COM10 and GATEWAYSUCKS.COM. 6) Parody - The line between mean-spirited dispersion and satire, esprit or embellishment is represented on the Internet through parody registrations such as PLANNEDPARROTHOOD.COM,11 a site strictly for the birds , and the hilarious but extant HILLARYSHAIR.COM, which showed more than 200 coiffeurs of the First Lady. DOMAIN NAME CYBERPIRACY Whether or not the Internet is a "victim of its own success",12 WIPO is tasked with focusing on resolution of domain name disputes which involve cyberpiracy. Clearly, all registrations are not of this ilk, but the recommendations of RFC-3 do not distinguish among different motivating factors. Instead, they plow new ground with a broad claim of entitlements in e-commerce on behalf of those who possess trademarks and other, unspecified intellectual property rights. Among these, RFC-3 proposes that all domain name applicants in all generic TLDs be required to agree to arbitrate any disputes relating to their right to register and use a domain name. Paragraph 32 of RFC-3 states: It is further recognized that the goal of this WIPO Process is not to create new rights of intellectual property, nor to accord greater protection to intellectual property in cyberspace than that which exists elsewhere. Rather, the goal is to give proper and adequate expression to the existing, multilaterally agreed standards of intellectual property protection in the context of the new, multijurisdictional and vitally important medium of the Internet and the DNS that is responsible for directing traffic on the Internet. The WIPO Process seeks to find procedures that will avoid the unwitting diminution or frustration of agreed policies and rules for intellectual property protection. These are worthy and appropriate principles, but the WIPO recommendations seek to fit a square peg into a round hole, resulting in the diminution of the basic rights afforded to diverse interests of non-commercial speech in a borderless medium. The domain name system in cyberspace, and the intellectual property system of territorially-based rights in commerce, are inherently incompatible systems. The conflicts addressed in RFC-3 acknowledge the problem inherent in a system where every name must be unique. "As commercial activities have increased on the Internet, domain names have become part of the standard communication apparatus used by businesses to identify themselves, their products and their activities."13 This change reflects not a transmutation of domain names but rather a special interest usurpation of the DNS function to the detriment of non-commercial interests. Why should the covetous desire for a particular domain name by a trademark owner be sufficient to force legitimate registrants into the entanglement of alternative dispute resolution? The policy basis of trademarks is the orderly functioning of the market through the avoidance of confusion and deception. It is a right in a geographic scheme and market context to the exclusive use of the mark, enabling the owner to prevent confusion with others who possess associating products originating from a different source. RFC-3 recommends making the abusive registration of a domain name a ground for the cancellation or transfer of a registration in the administrative dispute-resolution procedure.14 The circumstances which may indicate the abusive registration a domain name, according to RFC-3, include the following: (i) any offer to sell the domain name to the complainant or to any member of the public; (ii) the domain name prevents the complainant from registering a domain name corresponding to its rights; (iii) the domain name is identical or confusingly similar to the rights of the complainant and its use by the domain name holder causes confusion as to the source and origin of the goods or services; (iv) the domain name, which is identical or confusingly similar to the complainant's right, was registered with a view to attracting increased traffic to the domain name holder's site; or (v) any other domain name registrations held by the domain name holder which are identical or confusingly similar to intellectual property rights of the complainant or others, and the number of such registrations.15 This is a dangerous approach and many legitimate domain name registrants will be severely affected this odd manipulation of intellectual property rights. * Is Chris "Pokey" Van Allen a cyberpirate because his father registered the 12-year old's nickname for use of a personal website.16 thus frustrating the trademark owner's desire to reflect an unreasonable presumption of its rights in a domain name. * When David Sams registered VERONICA.ORG to honor his newborn daughter, did he become a cyberpirate because Archie Comic Publications possesses a trademark on the name for one its cartoon characters?17 * Is Clue Computing, a small, Colorado Company offering system administration services, a cyberpirate because it registered a name identical to the trademark of a children's board game produced by multinational corporation?18 * Can the Dole Fruit Company use the broad sweep of intellectual property rights embodied in the RFC-3 recommendations to drag political cyberactivities and parody promos of the Elizabeth Dole presidential campaign into alternative dispute resolution? In many cases, accusations of cyberpiracy are prompted by a bad business decision on the part of a company that waited too long to register a domain name. For example, the publisher of Working Woman Magazine registered the domain name WOMWEB.COM. However, when the founder of Women's Business Network's registered WORKINGWOMEN.COM she was labeled either a cybersquatter and a cyberpirate, although she was neither but referred to herself as a registrant in good faith and a typical "working woman" who spent significant time and money building her resource directory business. 19 REVERSE DOMAIN NAME HIJACKING There are many different types of domain name disputes that do not involve cyberpiracy. RFC-3 fails to recognize the damaging effects of one of the most common types of complaints: reverse domain name hijacking. This occurs when a trademark owner asserts a spurious claim of trademark infringement and/or dilution to seize a domain name similar or identical to the registered mark away from a legitimate domain holder.20 An early example of reverse domain name hijacking involved the registration of TY.COM by Philip Giacalone to promote his Tech Yard web design services. The word "Ty" was an acronym for his online business as well as the name of his infant son. It appeared nowhere on the website, except as the Internet address. Ty, as all Beanie Baby� collectors are aware, is also the name of one of world's largest manufacturers of plush toys. There was no infringement of the registered trademark, no confusion of the source of goods which were so different from that of the toy maker. Yet, Ty, Inc., felt its trademark registration generated an entitlement to the TY.COM domain name. In the description of RFC-3, Giacalone's domain registration of this familiar name would be grounds for cancellation. The online archives have many other examples of domain name hijacking: * In October of 1996, Juno Lighting, Inc. asserted its trademark rights in lighting fixtures to challenge a public e-mail service doing business at JUNO.COM. The attempt to snatch the domain name put 500,000 of Juno Online's customers at risk of losing their e-mail access. * The Regis Corporation, the nation's largest owner and operator of hair salons in mall locations, asserted a trademark claim to REGIS.COM, registered to Regis McKenna, the premier image-maker for high tech startups. * Two and a half years after a couple registered BEWITCHED.COM to market their Java applets, they received a call from Columbia TriStar Interactive, demanding they relinquish the name which matched a popular TV show produced by TriStar in the 1960s.21 * Four years after EARTH.COM was established to as a small hobbyist website, a Massachusetts clothing company sued the registrant. Mondial Trading Company alleged infringement of its trademark to market a line of shoes even though EARTH.COM is not used for commercial activity.22 For every a trademark owner who feels entitled to a particular domain name, there is likely a domain registrant who has been subjected to spurious claims of trademark infringement, dilution, and cyberpiracy. The provisions of RFC-3 create a broad opportunity for trademark holders to attempt such reverse domain name hijacking at the expense of unrepresented parties. Reverse domain hijacking is not about unfair competition, infringement, rights in geography, or passing off. It is the predatory practice of a trademark owner covetous of acquiring a particular Internet address. In cases where content is truly infringing, the courts have the appropriate tools for determining rights and damages. Without requiring some form of showing of confusion, of damage or likelihood of success on the merits, the recommendations of RFC-3 allow a trademark owner frustrated at being too late to register a particular name to grab it from a good faith domain registrant like a gorilla plucking a banana from a tree. ONEROUS BURDENS RFC-3 is replete with recommendations that do nothing to further the resolution of disputes involving cyberpiracy. Some place an onerous burden on the majority of the more than 4 million registrations in .COM, .ORG and .NET to remedy the concerns of a relative few who have made bad business decisions. Many of the recommendations are over-solicitous to the interests of trademark holders and fundamentally unfair. Here are a few examples: Paragraph 57 states: It is recommended that the registration agreement contain an agreed term that inaccurate or unreliable information in the registration agreement constitute a material breach of the contract and be a basis for the cancellation of the domain name by the registration authority. This requirement may resolve the issue of fraudulent registrations by cybersquatters but does so at the expense of good-faith registrants. It imposes a burden of notification whenever ISP relationships, telephone area codes, and other contact information changes. Unreliable contract details should not be grounds for suspension of a name. In a fast-paced and mobile world, failure to maintain current data does not warrant such drastic action. >From Paragraph 53: It is recommended that the domain name registration agreement contain the following representations: (i) a representation that, to the best of the applicant's knowledge and belief, the registration of the domain name does not interfere with or infringe the intellectual property rights of another party; and (ii) a representation that the information provided by the domain name applicant is true and accurate. It is unclear how a domain name registrant can meet the requirements of 53(i) absent consultation with an intellectual property attorney and access to a global trademark database. Further, the cyberpirates to whom this provision is directed are unlikely to admit to knowledge of another party's intellectual property rights to the domain name being registered. It is possible that this may as an easy catch-all provision to haul good-faith domain registrants into administrative dispute resolution. >From Paragraphs 145 and 151, respectively: It is recommended that the domain registration agreement require the applicant to submit to the administrative dispute-resolution procedure in respect of any dispute concerning the domain name. It is recommended that the mandatory submission to the administrative dispute resolution procedure in the domain name registration agreement extend to any dispute concerning the domain name arising out of the alleged violation of an intellectual property right. Thus, WIPO's recommendations extend far beyond trademark domain name disputes involving cyberpiracy to ANY dispute involving a domain name. These provisions put WIPO into the center of all domain name disputes, thus adding an unwarranted administrative layer and exceeding the scope of the White Paper charter. >From Paragraph 168: It is not recommended that claims under the administrative dispute resolution procedure be subject to a time limitation. RFC-3 addresses the concern that the underlying use of a domain name may evolve over time, thus justifying the rejection of a time bar for claims. This recommendation leaves the domain name registrants vulnerable in perpetuity to disputes concerning any alleged violation of intellectual property rights, not even specific trademark rights. At the same time, Paragraph 71 recommends an expedited review of relevant facts and circumstances of a domain name dispute, citing an urgency in dealing with infringing activities, while ignoring the havoc and damage a capricious or arbitrary challenge can inflict upon an individual who has acted in good faith. >From Paragraph 158. It is recommended that the remedies available under the administrative procedure be limited to: (i) the suspension of the domain name registration; (ii) the cancellation of the domain name registration; (iii) the transfer of the domain name registration to the third party complainant; and (iv) the allocation of the responsibility for payment of the costs of the proceedings. This recommendation illustrates the one-sided intellectual property bias that permeates RFC-3. The provision offers no remedies to a good-faith domain name registrant who has been subjected to trademark misuse by a bad-faith complainant. Indeed, this provision is an invitation to abuse, as a covetous trademark owner has nothing to lose in pursuing ADR under WIPO sanctions. FAMOUS and WELL-KNOWN MARKS In addressing the protection of famous and well-known marks, RFC-3 acknowledges that, although the exact number of marks involved is not known, it is likely that the number which may qualify is in the hundreds, compared to approximately 4.8 million domain name registrations that exist worldwide.23 >From Paragraph 218. It is recommended that a mechanism be introduced as part of the administration of open TLDs whereby exclusions can be obtained and enforced for famous and well-known marks. RFC-3 also acknowledges that it is very difficult to establish that a trademark is famous or well-known as there is no true internationally uniform set of criteria for determining whether a trademark qualifies for this special status, not to mention the differing assessments in this respect being made throughout the world. The Interim Report acknowledges that "an exclusion for a famous or well-known mark would constitute a form of protection that applies more broadly than simply protection for the goods or services in relation to which a well-known mark is registered or used." 24 The problem with providing an exclusion in all top level domains for famous or well-known marks, assuming even that these can be identified, is the potential for "alpha string creep" or expansion of the protections afforded to those names. Trademark owners are going beyond their own specific marks and claiming rights to all phonetic and spelling variations of domain names that incorporate the famous or well-known mark.. Porsche, A.G., for example, starts with a presumption of bad faith and has filed litigation against 130 unnamed domain registrants for uses of the string *PORSCHE*.*, where the * represents any alpha characters or any top level domain. Toys R Us has been particularly aggressive in policing its use of its mark. It won a preliminary injunction against the registrant of TOYSAREUS.COM in what the court termed "a bad faith effort at cyberpiracy."25 but lost its bid to block a gun merchant's web site at GUNSAREUS.COM.26 The toy retailer also sent a cease and desist letter to Gus Lopez, who operates a non-commercial archive of Star Wars collectibles at TOYSRGUS.COM. The trademark owner claimed the 5-year-old site violates the Federal Dilution Act and demanded that Lopez shut down his site.27 The simplest way to reduce this friction is to make it clear that the Internet is not solely an electronic mall, nor solely a trademark owner's paradise. It is an open opportunity for small business and multinational corporations alike, for bully pulpits, for special interest groups, for free expression, and for the promotion of the full range of human activities and interests. Since RFC-3 acknowledges that less than 0.02 percent (two names per 10,000 names) of the domain name registrations are by owners of famous or well-known marks, it would be prudent to establish a new TLD where only those with such internationally recognized marks need apply. Call it .TMK. This would eliminate the attorneys' burden of sending cease and desist letters to good-faith domain name holders who have done no wrong other than being first to register a desirable name. It would also alleviate IP paranoia of policing trademarks among domain name registrations and relieve the pressure to register a famous trademark in many ccTLDs. A specially chartered gTLD expressly for famous or familiar trademarks would permit the use of mandatory of ADR without extending the requirement to other domain name users. TRADEMARKS AND THE DNS We all acknowledge that there is a problem in the domain name registration system. Cybersquatting affects trademark owners and good-faith domain name registrants alike. Cyberpirates who hijack familiar names to trade on the goodwill developed by others or who hold the name ransom to those most likely to desire such a domain name are clearly using the domain name system in inappropriate ways. However, such abuse should not be used as an instrument against the preponderance of legitimate domain name registrations. A domain name is not a trademark, but a means of locating its owner. On May 3, 1996, when Jon Postel posted a proposal to create up to 50 new registries, he devoted considerable attention to an analysis of the trademark concerns. He asserted, "The Domain Name System was created to simply name computers attached to the Internet. There was no intention that domain names identify products or services in any way, or that domain names have any relationship to trademarks."28 RFC-3 asserts that intellectual property right owners have made it clear in their comments that they are incurring significant expenditures to protect and enforce their rights in relation to domain names.29 Legitimate domain name registrants are also incurring significant expenditures to protect and enforce their common law rights to use their names in a global marketplace. Harvard geneticist Ruth Hubbard has noted, "The more sophisticated a technology and the more training and skill it requires, the more likely it is to be controlled by elites, to increase inequalities and to reinforce hierarchies."30 Laws exist in the jurisdiction of individual countries to adjudicate disputes involving infringement and dilution of trademarks. Any new technology assures a bumpy ride when its powers and boundaries undergo stress. I believe that RFC-3 needs a substantial edit. In my humble opinion, its application in the current form will cause more problems for the Internet community than it attempts to resolve for a specialized group of trademark owners confounded by a relatively small group of cyberpirates. _____________________________ REFERENCES 1. Department of Commerce Statement of Policy on the Management of Internet Names and Addresses (June 5, 1998) at http://www.ntia.doc.gov/ntiahome/domainname/6_5_98dns.htm 2. World Intellectual Property Organization, Interim Report RFC-3: The Management of Internet Names and Addresses, Paragraph 3. 3. RFC-3, Paragraph 239. 4. See Internatic v. Toeppen, No. 96C 1982 WL 716892 at *6 (N.D. ILL November 26, 1996). 5. K.C.P.L. Inc., v. William Cary Nash, Memorandum and Order, No. 98 Civ. 3773 (LMM) S.D.N.Y. (November 24, 1998) at http://www.bna.com/e-law/cases/kcpl.html 6. On April 20, 1998, in Panavision v. Toeppen and Network Solutions Inc., 97-55467, the Ninth U.S. Circuit Court of Appeals upheld a summary judgment motion against Dennis Toeppen who had registered domain names and attempted to ransom them to trademark owners such as Panavision, Lufthansa, Delta Airlines, and others for use as Internet addresses. "Toeppen's business is to register trademarks as domain names and then sell them to the rightful trademark owners. He acts as a 'spoiler,' " the court said in its unanimous ruling. 7. http://www.amazom.com See also: Online booksellers just a typo away from sales (ZDNet -April 30, 1998) at http://www.zdnet.com/zdnn/content/zdnn/0430/311628.html 8. Domain registry charged with fraud (C/Net - May 1, 1998) at http://www.news.com/News/Item/0,4,21727,00.html 9. Panavision International L.P. v. Dennis Toeppen, Network Solutions, Inc., et al. (September 19, 1996) at http://www.Loundy.com/CASES/Panavision_v_Toeppen.html 10. NETSCAPESUCKS.COM ordered to cease and desist, by Jim Hu (C/Net - December 1, 1998) at http://www.news.com/News/Item/0,4,29396,00.html 11. "The PLANNED PARROTHOOD� name is the rightful sole property of Patricia Barth since 1981 and has been in interstate and international commerce since that time." See http://www.plannedparenthood.com 12. RFC-3, Paragraph 38. 13. RFC-3, Paragraph 10. 14. RFC-3, Paragraph 243. 15. RFC-3, Paragraph 244. 16. Christopher "Pokey" Van Allen, who developed a personal website at POKEY.ORG, was challenged for rights to the domain name by Prema Toy Company. Prema is owner of trademark rights to the character Pokey, equine sidekick of the better-known toy, Gumby. The trademark owner offered to let Van Allen use the name under royalty-free license. The dispute over the innocent PokeyWeb site generated more than 4,500 e-mail messages and comments sent to the child. TONIC, the registry for Tonga, and the Australian Root Server Confederation each offered Van Allen his own "pokey" domains. Eventually, the court of public opinion and reason prevailed, and Prema Toys withdrew its claims for the domain name (April 21, 1998). See http://www.pokey.org 17. Archie Comic Publications is the trademark owner of "Veronica", the name of one of its cartoon characters, and registrant of VERONICA.COM. The publishing company sent a cease and desist letter to David Sams, who had set up a non-commercial site at VERONICA.ORG in honor of his infant daughter. Archie Publications subsequently dropped its threat of a lawsuit. 18. Hasbro, Inc. v. Clue Computing, Inc., Complaint, U.S. District Court of MA, C97-10065DPW (January 10, 1997) at http://www.clue.com/legal/hasbro/001.htm 19. Working Woman Magazine in Lawsuit Over Domain Name at http://www.workingwomen.com/info/articles/domain_dispute.html 20. See Ellen Rony and Peter Rony, The Domain Name Handbook: High Stakes and Strategies in Cyberspace (Kansas: R&D Books) 1998, p. 616. 21. One Couple's Struggle - Silicon Alley Reporter (November 17, 1998) at http://www.siliconalleyreporter.com/press/sa98/ 22. Mondial Trading Co. v. Tony Sanders, dba EARTH.COM, U.S. District Court of Massachusetts (98 Civ 12376 WGY) (November 19, 1998) at http://www.earth.com/underfire/complaint.txt 23. RFC-3, Paragraphs 216 and 217. 24. RFC-3, Paragraph 235. 25. Toys "R" Us Inc. v. Abir, 1997 U.S. Dist. LEXIS 22431 (S.D.N.Y. 12/19/97) 26. Toys 'R' Us Loses Bid to Block Gun Merchant's Web (NY Law Journal - November 3, 1998) at http://www.ljx.com/newswire/stories/1103988.htm 27. Cease and desist letter (Darby & Darby - January 26, 1999) at http://www.toysrgus.com/legal1.gif. See also http://www.domainhandbook.com/dd.html#toysrgus. Toys R Us has registered the following domain names: KIDSRUS.COM, BOYSRUS.COM, DOLLSRUS.COM, GALSRUS.COM, GIRLSRUS.COM, SPORTSRUS.COM, MATHEMATICSRUS, COM, MOVIESRUS.COM and PARTIESRUS.COM. 28. Jon Postel, "New Registries and the Delegation of New Top Level Domains," a.k.a. "Draft Postel (June 1996) at http://www.alternic.net/info/drafts/draft-postel-iana-itld-admin-01.txt.html 29. RFC-3, Paragraph 103. 30. Alan S. Miller, Marin Independent Journal, March 6, 1999. --------------- -copy:[2] Major Flaws in the WIPO Domain Name Proposal -- A Quick Guide A. Michael Froomkin, Professor of Law Executive Summary The World Intellectual Property Organization's plan to restructure the way Internet domain names in .com, .net, and .org are assigned and adjudicated is deeply flawed. The plan, contained in WIPO's "Interim Report" is designed to solve problems caused when Internet domain names collide with trademarked words. WIPO was asked to make suggestions for better dispute resolution, and it claims to have produced a plan that creates no new rights for intellectual property holders. In fact, however, the plan would impose extensive Alternate Dispute Resolution on all domain name registrants accused of infringing of any type of intellectual property with their registration. The WIPO plan's flaws include: -Bias. The plan is biased in favor of trademark holders; -Enabling censorship. The WIPO plan fails to protect fundamental free-speech interests including parody, and criticism of corporations; -Zero Privacy. The WIPO plan provides zero privacy protections for the name, address and phone number of individual registrants; -Intimidation. The WIPO plan creates an expensive loser-pays arbitration process with uncertain rules that will intimidate persons who have registered into surrendering valid registrations; -Tilts the playing field. The WIPO plan would always allow challengers to domain names registrations to appeal to a court, but would often deny this privilege to the original registrant; -Smorgasbord approach to law. Instead of directing arbitrators to apply applicable law, WIPO proposes using additional, different, rules it selected-rules that will often disadvantage registrants. A brief memo explaining these points follows. A more detailed, 50-page version, is also available in various file formats from http://www.law.miami.edu/~amf . This paper also proposes an alternate, fairer, reform plan. The key elements of the simpler reform plan are: -Reduce speculative registration: Require advance payment before registration -Penalize false contact details: De-register domains with fake contact information -Consider creating special rules to penalize large-scale domain speculation -Trust courts to continue to clarify relevant law -Understand that rapid changes in technology may make domain names less important -Create differentiated commercial and non-commercial top-level domains The Quick Guide A radical new plan could change the way that disputes over Internet domain names ending in .com, .org, and .net are resolved--to the advantage of trademark holders, and at the expense of individuals and small businesses who register domains. The draft plan was announced by the World Intellectual Property Organization (WIPO), a UN organization, two days before Christmas. Shortly after the close of the comment period this Friday, March 12, WIPO will submit a revised version of its plan to ICANN, the Internet Corporation on Assigned Names and Numbers. WIPO claims its proposals are designed to do no more than allow intellectual property rights holders to vindicate their existing rights better, cheaper, faster. No one would object if this is what WIPO's proposals actually did, but in fact they do something very different indeed. WIPO claims that its proposals create no new rights for intellectual property rights-holders beyond what is found in existing, applicable, law. In fact, WIPO's proposals create a host of new rights for trademark holders, and new potential liabilities for domain name registrants. In its draft report, WIPO proposes that all domain name registrants in .com, .org, and .net be contractually required to agree to an "administrative" arbitration procedure. WIPO claims that its proposals are unthreatening because anyone dissatisfied with the results of "administrative" arbitrations will be able to challenge the results of the procedure in court. In fact, challengers to domain name registrations (usually trademark holders who want the domain) will retain all their rights to go to court if they lose in the "administrative" proceeding. But many registrants who lose in the "administrative" proceeding will have no hope of meaningful judicial review, and for some there will be no court with subject-matter jurisdiction over their claim. A fuller explanation of why I think the WIPO proposals are flawed and unfair are available in my 50-page report, A Critique of WIPO's RFC 3, available from http://www.law.miami.edu/~amf . My report demonstrates that the practical consequences of WIPOs proposals would be one-sided: * WIPO's proposals consistently and substantially advantage TM rights-holders and holders of intellectual property generally, at the expense of others. * WIPO's proposals fail to take due account of the function of the Internet in ensuring and enhancing freedom of expression. Non-commercial use is not an absolute defense in a WIPO arbitration, putting parody, political, and disgruntled customer sites at risk. * WIPO's proposals would create an enormous potential for "reverse domain name hijacking" in which wealthy parties could threaten to impose substantial costs on registrants unless they surrender their domain names without a fight. Many individuals and small businesses likely will surrender their domain names rather than run the risks of losing in the administrative procedure--not least because WIPO proposes that the arbitrators in its "administrative" procedures use such vague and uncertain substantive rules that few registrants could have confidence about the outcome. * WIPO's proposals require the collection of large amounts of personal data when an individual registers a domain name. But the policies fail to require that the undertakings holding this data adhere to state-of-the-art privacy principles, or even any meaningful privacy principles for use of personal data at all. Instead, WIPO proposes that registrants' name addresses, phone numbers and other information be on an open, world-readable database. * WIPO has not published the details of the procedures it proposes be used in all "administrative" proceedings. As a result, there is no guarantee that the process will support fundamentals of due process such as actual notice to defendants. * WIPO's proposes that ICANN impose contractual terms on all parties involved in the domain name registration process. If ICANN forces every registry, registrar and registrant to agree to fixed contractual terms, it opens itself, the registries, and perhaps the registrars to anti-trust (competition law) liability. * The contractual terms proposed by WIPO have a substantial chance of being declared unenforceable by a US court, either because they are unconscionable, or because they are the rare type of contract of adhesion that could not be bargained around in any circumstances. *WIPO instructs arbitrators in its "administrative" dispute resolution policy that while they should consider applicable national law, they should also be guided by a number of "principles" WIPO claims (often inaccurately) to be guiding courts around the world. For example, WIPO instructs arbitrators to "balance" the intended use of complainant against the use of the registrant, and presumably favor the one the arbitrator thinks is "better". The result will be decisions inconsistent with those that would be rendered by a court. *WIPO threatens to introduce a number of uncertain and somewhat arbitrary new rules at a time when the courts are just beginning to work out sound and predictable legal rules to deal with conflicts between domain names and trademarks. The introduction of uncertainty combined with a "loser pays" ADR rule works against individuals and small businesses who, having registered a domain for $70 or less, will be unable or unwilling to risk thousands of dollars if they lose in the WIPO process. Large international corporations, on the other hand, often will gladly take the risk, especially as they can always go to court if it doesn't work out. Access to Court WIPO claims that access to courts will be preserved under it system. It is true that if a challenger loses, he gets a second bite at the apple: he can go to court just as if nothing ever happened. If, on the other, the challenger wins, he immediately gets the domain name from the original registrant. In the US, at least, that registrant now has no options: a court will only hear complaint that states a cause of action. But the original registrant has no cause of action against the new possessor of the domain: the winner committed no tort; he violated no contract (indeed, there is no contract between the parties), and he violated no statutory duty. The original registrant cannot sue the winner, he cannot sue the arbitrator, so his only recourse is to sue the registry -- which everyone agrees is blameless. Freedom of Expression Despite the US Government White Paper, WIPO's proposals are not limited to trademark conflicts with domain names; rather, WIPO proposes to entertain any complaint against a domain name registration based on any claim that an "intellectual property" right has been violated. In other words, persons who assert rights based on European doctrines of "rights of personality" will be able to contest domain registrations on the grounds of invasion of privacy, reputation, protection against defamation, and even "a right of informational self-determination," i.e., a right exclusively to determine whether and to what extent others might be permitted to portray one's life story in general, or certain events from one's life. Although a registrant and registry may be located in jurisdiction such as the USA that does not recognize this limit on the freedom of speech, there is nothing in the WIPO proposal that ensures absolute defenses such as the First Amendment always would apply. Privacy The WIPO proposals are insensitive to privacy concerns. One day, everyone on the planet may have their own domain. Data collection and publication requirements suited to businesses are not appropriate for ordinary people who register a domain and who understandably do not what their name, telephone number, and address published on the world wide web. It is even less suited to social, ethnic, religious, and political groups who have reason to fear retaliations if the information were disclosed. Every collector and keeper of this personal data should be held to the highest standards of protecting individual privacy. "Famous" trademarks WIPO proposes extensive rules to identify and privilege globally famous and well known trademarks. Currently, however, there is no consensus procedure for identifying globally famous or globally well-known marks. WIPO proposes vague and manipulable principles to fill this gap. Although WIPO suggests that only "a small number of names is involved...it is likely that famous and well-known marks that may qualify ... number in the hundreds, rather than the thousands" WIPO has not backed up that estimate with any numerical limit on the process. Under WIPO rules the potential number of terms (including common words with other meanings) that firms could prevent from being registration in any gTLD is potentially unlimited. WIPO's interim report can be seen at http://wipo2.wipo.int/process/eng/rfc_3.html Comments, which are due by March 12, can be made using a comments button visible on the same page. AN ALTERNATE PLAN Many people agree that a few simple measures would go a long way towards ameliorating the domain name/trademark mess. No one knows exactly how effective they would be. My proposal is to try them and see. It would be a mistake to build a baroque contractual and administrative structure on the assumption that technology is static. The importance of the domain name system as a tool for users to locate sites may be a temporary phenomenon, one quickly displaced by a new generation of search engines, intelligent agents, or context-driven artificial intelligence. 1.Require advance payment before registration of a domain, thus greatly increasing the cost of mass domain name speculation. 2.Allow de-registration (takedown) of domains when contact details are shown to be false by an aggrieved trademark holder. 3.Consider taking the lead from the Toeppen and One In A Million courts and establish special rules to deal with organized, repeat abusers of the system. 4.Create differentiated top-level-domains. Some non-commercial, open-access domains would be reserved for expressive activities. Other, new controlled-access domains, could be administered by bodies such as WIPO itself, which would ensure that all registrations were properly harmonized with existing trademark registrations and legitimate customer expectations. 5.Trust that as courts continue to make clear how domain names will be treated under law name speculation will become increasingly unattractive. 6.Recognize that the technology in this area is moving very quickly, and the current visibility and importance of domain names may soon be antiquated. Background information WIPO will hold the last of a series of public consultations in Washington DC on Wednesday, March 10, in the Department of Commerce Auditorium, 14th Street and Constitution NW, Washington, D.C. 20230. The building is directly across the street from the Monument, enter on the14th Street side. The meeting begins at 9:30 a.m.[time subject to confirmation]; for more information contact Ms. Lois Oliff, Tel: 202 482-3151, Fax: 202 482-0512, [EMAIL PROTECTED] . The "Critique of WIPO's RFC 3" is available from http://www.law.miami.edu/~amf in various file formats. The deadline for comments to WIPO on RFC 3 is this Friday, March 12. -- A. Michael Froomkin WIPO-related matters: [EMAIL PROTECTED] Professor of Law "It's warm here" U. Miami School of Law , P.O. Box 248087 Coral Gables, FL 33124, USA +1 (305) 284-4285 | +1 (305) 284-6506 (fax) | http://www.law.tm Asosiasi Penyelenggara Jasa Internet Indonesia [APJII] Indonesian Internet Service Provider Association Grha Citra Caraka [GCC], TELKOM Bldg, Mezzanine Fl. 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