Announcements

Request For Comments on Issues

Addressed in the WIPO Internet Domain Name Process

The following comments are provided by the Singapore Network Information Centre, the
.SG country-code Top Level Domain (ccTLD) registry.

A. Dispute Prevention

General

While SGNIC agrees that applicants / registrants of domain names should not infringe
the rights of others, it also believes that a registry should confine its functions to
registration of domain names. It should not expand its duties to include that of a
watchdog of trademark owners. To do this means resources will have to be allocated to
verify that registrants are bona fide. It is also difficult to ensure completeness or
thoroughness of any checking or verification. As such the registry may be potentially
liable if such a process is not conducted properly. Presently we are aware that agencies
like our Registry of Companies and Registry of Trade Marks and Patents do verify their
registrations and disallow any conflicting / competing applications. These agencies are
able to do so as they have been empowered by law to carry out their respective functions.
Unlike them, most ccTLDs registries are private non-profit organisations without legal
authority.

Nevertheless we are agreeable that ccTLDs should adhere to policies regarding IP issues
associated with domain names that may be adopted by the New Organisation with respect to
gTLDs, provided of course jurisdictional concerns are addressed in the policies.

Certification

Parties can only obtain a certification on the use of a trademark if it is registered.
For unregistered trademarks, this is not possible. As for certification for use, it is
also not clear what constitutes "use" and who should be the certifying
authority. Further does it mean that any party so certified would have a prima facie right
to register or that the registry need no longer check on the validity of the
certification. If there is a need to check, then the registry will again have additional
duties which ( as stated earlier ) should not be part of its functions. We therefore do
not believe that a certification system either for the use or trademark will work.

In our current registration agreement, the applicant is required to make certain
warranties and representations stating that the domain name will be used by the applicant
and that no rights have been infringed. Although we still operate on a first
–come-first-serve basis, we will not hesitate to remove any domain names which have
breached the warranties and representations eg. where the registrant has registered some
one else’s trade mark and the owner has alerted us. As of today we have had no need
to remove any domain names on such grounds. We have also recently modified our
registration procedure and forms to ensure that the registrants are aware of the terms and
conditions when they register, particularly when the registration is done by agents. For
example a letter is sent to the registrant notifying him of the approval of the domain
name and requesting the registrant to read the agreement. It also allows him to cancel the
registration without any fee if he so chooses. We are however considering reminding the
registrant of the representations and warranties in the renewal notice.

Warehousing

There is no possibility that we can monitor use of the domain names once registered. We
currently require that the servers be activated within a month from date of registration.
As long as this requirement is met, we consider the domain names as being "in
use". However we do have provisions to discourage warehousing of domain names
(including increased fees for subsequent registration after the first domain name and our
right to refuse transfers of names) But unless and until we can clearly define what
"use" is, warehousing remains a real though not a serious problem.

Domain names databases

Domain names databases which are interlinked would be useful for dispute prevention
purpose. The only consideration is to ensure that such databases are not abused for
commercial purposes eg spamming. Information to be reflected should include:

Use of directory and listing service etc

This will be useful but only if it can be used for both web and non-web based
applications i.e. email.

Marketing of ISO 3166 country codes

It will be good if ccTLDs confined their use to the purpose that they were created i.e.
to enable the association of a particular domain name with the country. The marketing of
ccTLDs as generic TLDs will also encourage more cross-country domain name disputes.

B. Dispute Resolution

General
The resolution of domain names at an international level and with WIPO’s
participation is seen as timely. However while there may be some benefit in providing a
cheaper and faster way of dispute resolution, this could possibly lead to more disputes.
There may be also a need to differentiate procedures and substantive law. While the
approach may be different, the same legal rules should apply. Procedures which are
strictly administrative may not be able to deal with issues relating to ownership or
proprietorship.

Alternative dispute resolution approach

It is also difficult to envisage restricting the dispute resolution mechanisms to
certain designated procedures. Unless enforced at the international level by means of an
international convention which is ratified by individual countries, there will be no
possibility of subjecting claimants to such procedures even if the registrants agree to be
bound under the registration contract and the registries agree to abide by resulting
determination. To put in place such a convention would be long-drawn. On the other hand if
no such convention exists, the registries’ and registrant’s acquiesce will not
preclude the claimant from using other forms of resolution like litigation or arbitration.

A few features would be critical for an alternative dispute procedure to work:

Differentiating cyberpiracy and legitimate claims

We agree that there should be no difference between cases involving cyberpiracy and
conflicts between bona fide parties. These are just different manifestations of the same
problem.

Time-bar

On time-barred system, the time should start running upon registration as compared to
when the cause of action arise. Any cause of action arising should be dictated by existing
limitation periods. To work, the time-bar must be the same across registries of different
jurisdictions.

C. Process for the Protection of Famous and Well-known Marks in the Generic
Top-Level Domains

General

The first-come-first-serve policy of SGNIC is in conflict with the concept of
protection for famous and well-known marks. The first-come-first-serve policy helps ensure
the neutrality of SGNIC in that SGNIC does not have to decide if a domain name applied for
is a well-known mark belonging to some other party and not the applicant.

Protection for well known marks

To accord protection to well-known marks is however not totally unfavourable provided a
well-defined criteria, which are applicable at an international level and accepted by all
registries, can be established on what constitutes "well-known" marks. This
means all registries must recognise a common list of "well-known" marks for the
purposes of domain names. It is also important to coincide marks accorded protection for
the purposes of Internet domain names with those under the Paris Convention and TRIPs to
avoid confusion in countries which are signatories to the two treaties. However many
countries may also have marks which are well known locally or regionally but not
worldwide. If these marks are not protected there would be a disadvantage to the owners of
such marks but to consider including them into the "well-known" list for any
ccTLD would also require a judgment call from the ccTLD registry. This is something SGNIC
does not wish to engage itself in and it would be preferable for some independent
authority to make that decision.

Use of database and cancellation procedures

The development of a database on such marks and its status is certainly critical for
protection of "well-known" marks to be effective. Likewise the availability of
procedures to obtain the cancellation of such protection. Again administration of the
database and the procedures must be handled by an independent body.

D. Addition of New Generic Top-Level Domains and Related Intellectual Property
Rights

SGNIC thinks the number of domain disputes will escalate if additional substructures or
new gTLDs are added. Existing domain name holders are likely to make a grab for the gTLDs.
Further new substructures will also mean longer domain names which at a certain point will
be quite cumbersome and difficult to remember.

Concluding remarks

SGNIC recognises the fact that it would be difficult to separate ownership issues and
matters pertaining to intellectual property rights from domain names. However the current
association of trade marks with domain names by trying to fit domain names into the trade
mark regime has created more problems and confusion. Instead if a solution is to be found,
it is likely to be a completely new regime with perhaps new types of rights and new
dispute resolution mechanisms. Such a regime may apply existing legal rules on ownership
and proprietorship. For dispute resolution, the outcome of any new approach must be
binding and final. To be effective, all registries must agree to adopt the approach and
countries must agree to "ratify" it. Finally an independent supervisory
authority must be appointed to oversee the administration of the new regime and it would
be preferable that the domain name registries remain neutral.