- Subject Matter Concerns
- Annex: Preliminary Analysis of the Recommendations
- Names and Acronyms of IGOs
- Country Names
The Interim At-Large Advisory Committee
thanks the Board for the
comment on the recommendations
concerning the protection of the names and acronyms of intergovernmental
organizations (IGOs) and of country names in the DNS, communicated to ICANN by
the World Intellectual Property Organization (WIPO) on February 21, 2003.
The present comments focus on the ALAC's basic concerns with the subject
matter of these recommendations, which appears to be out of scope of ICANN's
limited mission. We would submit a more detailed analysis of the recommendations
proper if and when WIPO's recommendations are subject to policy-development
ICANN's mission and core values have a clear focus on the organization's
technical coordination function -- ICANN is clearly not intended to be an
international law-making body. Rather, ICANN acts within a framework of national
and international laws. It serves to provide architectural support for existing
laws, not to make new laws.
Both ICANN and WIPO have followed this principle relatively successfully in the
past, when establishing the UDRP as an inexpensive method to address the bad
faith registration of others' trademarks as domain names, while deferring to the
courts in situations in which several parties may have legitimate claims to a
domain name. Underlying the UDRP is a body of law which is reasonably uniform,
In the Committee's view, two key features of the UDRP help to keep ICANN out of
any lawmaking role.
First, the UDRP addresses only situations where a complainant has rights under
existing trademark laws. Decisions are specifically required to be made in
accordance with the rules and principles of law that the panel finds applicable.
The UDRP implements existing law which has been developed by well-established
governmental law-making mechanisms. It does not create new trademark law.
Second, parties dissatisfied with UDRP rulings can obtain judicial review in an
appropriate court. This helps to ensure that the UDRP does not supersede
applicable national law.
The Committee is concerned to observe that WIPO's recommendations on the
protection of the names of IGOs and countries seem to contemplate creation of
rights in names without support in existing law. Indeed, WIPO's September 2001
Report of the Second WIPO Internet Domain Name Process (The Recognition of
Rights and the Use of Names in the Internet Domain Name System, September 3,
2001, "WIPO Report") recognizes that there is no basis in existing law for the
rights in domain names that the current recommendations seek to have implemented
through forced cancellation or transfer of domain names.
In the case of the WIPO recommendations on IGOs, paragraph 138 of the WIPO
Report describes the limited nature of rights of IGOs in their names and
abbreviations under Article 6ter of the Paris Convention. In paragraph 168, the
WIPO Report recognizes that cancellation or transfer of domain names through an
ICANN-mandated administrative procedure:
would involve, at least in cases not involving the use of domain names as
trademarks, the creation of new international law. It would represent an
extension of the principles in Article 6ter of the Paris Convention, the
Trademark Law Treaty and the TRIPS Agreement. While it is believed that such an
extension is desirable, it would require a legitimate source in international
law. It would be for States to determine the appropriate basis for such an
extension of law, either in the form of a resolution of a competent treaty
organ, a memorandum of understanding duly accepted by national authorities or a
Despite these observations, WIPO has now transmitted recommendations calling for
creation of a mandatory administrative procedure, disregarding existing law's
limitations on rights in IGO names and abbreviations. The recommendations would
also remove the current UDRP's assurancethat existing legal principles will be
observed. Instead, the recommendations replace the right to review in a national
court applying national law with only a binding arbitration mechanism applying
the "extension of principles" of established law, as described in the WIPO
In the case of the WIPO recommendations on country names, the WIPO Report is
even more direct about the lack of basis in existing law. It states in
paragraphs 286 and 287:
286. . . . Rather than expressing agreement or disagreement with this position
[favoring exclusive rights in country names], we draw attention to the following
fundamental characteristics of the debate, as they have emerged from the Second
(i) The question of the appropriateness of the registration of country names in
the gTLDs is inextricably linked by some governments to what they perceive to be
their national sovereign interest.
(ii) Protecting country names in the gTLDs would require or amount to the
creation of new law, a function traditionally reserved for States.
287. Both points lead us to conclude that we have reached the limits of what can
be achieved legitimately through consultation processes, such as the WIPO
Internet Domain Name Processes or any similar ICANN processes. In other words,
we agree with those commentators who are of the view that this particular
question is more appropriately dealt with by governments.
Despite this clear recognition that there is no basis in current law for
recognition of exclusive rights to country names, the current WIPO recommendations
propose amendment of the UDRP to implement those "rights."
We believe that it would be inappropriate for ICANN to assume the role of an
international legislator, and to try to establish such new law through its
contracts and policy processes. For this reason, any policy-making processes
which are based upon WIPO's recommendations in the areas of the protection of
IGOs' and countries' names must pay close attention to staying within the
confines of supporting existing, internationally uniform law.
In view of these new difficulties -- which are less evident in the
trademark-centric review of the UDRP currently underway -- the Committee
supports the GNSO Council's recommendation to separate the UDRP's review from
discussions about implementation of WIPO's recommendations, and to address the
additional WIPO requests in a separate policy-making process.
The Committee also recommends to the Board that any separate policy-making
process begin with a careful review of the legal basis for rights that are
proposed to be created or implemented. The September 2001 WIPO Report strongly
indicates that the current WIPO recommendations propose to implement "rights"
that are not supported by existing law. The Board, in common with other ICANN
bodies, has a responsibility to take care that ICANN adhere to its limited
mission. The Committee urges the Board to ensure that ICANN's policy
development proceed only where there is a solid legal foundation and a full
understanding of the limits of existing legal consensus.
Annex: Preliminary Analysis of the Recommendations
We note that a more precise analysis will be necessary for a final assessment of
the extent to which an implementation of WIPO's recommendations would indeed
amount to the creation of new international law. We do not provide that analysis
in this document, but will focus on a number of remarks on the merits of the
We would ask in the first instance whether there is any real problem of
mis-registration of names of IGOs and Countries, or whether perceived problems
can be solved without new ICANN intervention, for example through use of the
existing restricted .int TLD and countries' own ccTLDs. Where such a minimally
disruptive alternative is available, that should be examined thoroughly before
more extensive regulation is proposed.
- The committee notes that the WIPO Report disparages the .int top-level domain
for its internal limitations and lack of public awareness. Rather than reshaping
the rest of the domain name system to solve those deficiencies, the Committee
proposes that the .int TLD should be re-examined as a dedicated TLD for IGOs.
The language proposed by WIPO seems to apply to past and future registrations.
- The committee notes that, given that most IGOs' acronyms are short, there is a
high likelihood that these might be used as good-faith acronyms for other
entities, and may have been registered in good faith. The settled expectations
of existing domain name holders should not be upset.
- Recommendation 1.A suggests a complaint system based on "registration or use" of
a domain name which need to be of a certain "nature" in order to justify a
complaint. This wording, and the subjectivity of the determination it entails,
bears a considerable risk of extending policy-based dispute resolution
mechanisms to areas touching upon the regulation of net content. We recommend
that such disputes be left to regular courts.
- Recommendation 1.B's wording is rather comprehensive -- as presented, this
recommendation would not be limited to IGOs' names and acronyms as registered
according to Paris Convention art. 6ter, but may cover any names and acronyms
covered by any international contract. The right to complain would be given to
any IGO. This recommendation may be misread as an attempt to use ICANN policies
as an instrument for the enforcement of arbitrary international contracts. The
Committee suggests that ICANN should seek clarification of this recommendation
- The language on country names once again relies upon criteria applied to the
"registration or use" of domain names. The same concerns as above apply.
- Once again, it seems more appropriate to give each country control of its name
(and any other character strings it chooses) in its unique ccTLD, not to grant
it monopoly rights in strings across all TLDs.