United Kingdom Royaume-Uni Vereinigtes Königreich. Report Q173

Transcription

1 United Kingdom Royaume-Uni Vereinigtes Königreich Report Q173 in the name of the UK Group by Richard ABNETT, Michael BRUNNER, Denise MACFARLAND, Jane MUTIMEAR Issues of co-existence of trademarks and domain names: public versus private international registration systems 1. Analysis of current domain name registration procedures 1.1 Nature of signs What is the status of a domain name in your country? Does the registration of a domain name confer exclusive rights to the proprietor? Can domain names be the subject of dealings such as assignment, mortgage and the like? A domain name in the UK is best seen as a contractual licence from the Registry. Technically, the registration of a domain name gives right to the exclusive right to use that domain, but registration, in itself, does not give rise to any further legal rights in the name. It is only the use of the domain name as a trade mark or registration of the domain name as a trade mark which would give rise to proprietary rights. In the UK a domain name may be the subject of assignment, licence and legal mortgage (which would operate by way of assignment and licence back during the redemption period). It is possible for a charge or equitable mortgage to operate on a domain name, but such security cannot be perfected in that there is no formal way for the charge to be registered or for third parties to be put on notice. 1.2 Legislation Is there any legislation in your country dealing specifically with domain names and the domain name registry? If so, please describe it. No, there is no specific legislation in the UK dealing with domain names and the domain name registry. 1.3 Type of registry Which organisation has been assigned responsibility for the cctld domain in your country? Is this organisation a public or a private entity? If it is a private entity is it subject to a regulator? Is the registry's conduct of business (e.g. the setting of registration fees) subject to judicial or independent review? Nominet is the organisation which has responsibility for the.uk domain. Nominet is a notfor-profit company limited by guarantee, which performs the services on a cost recovery basis. It is not subject to any regulator (other than the remote possibility that ICANN might remove.uk from the root) and its business is not subject to judicial or independent review. However Nominet has an internal review process and consults on policy changes. 1

2 1.4 National treatment Does the applicant require legal or natural status in your country to register a domain name?.uk is split into various second level domains. The most popular of these is.co.uk. Registrants in.co.uk do not need a physical or legal presence in the UK. Other second level domains are more restricted, for example.ltd.uk and.plc.uk are restricted to UK registered companies. 1.5 Bars of registration Is the domain name registry in your country entitled to reject applications on public policy grounds? If so, on which grounds (e.g. immorality or generic terms)? No, the contract between Nominet and registrants does not permit Nominet to reject applications on public policy grounds. 1.6 Appeals Does the applicant for a domain name have the right to appeal against the refusal of the registry to register a domain name? If so, to which entity and based on what kind of procedure (e.g. arbitration or administrative procedure)? No, there is no right to appeal against refusal of the Registry to register a domain name. In relation to.co.uk (.me.uk and org.uk) such an appeal system is not needed as the allocation is first come, first served. Therefore, a domain name is only refused if it has already been registered by another party. 1.7 Publication, opposition and cancellation Is the application for or registration of a domain name made public in your country? Is there any procedure available to third parties to oppose such application (prior to registration) or registration? If so, on what (relative or absolute) grounds (e.g. prior trademark registration or generic term) and based on what kind of procedure (e.g. arbitration or administrative procedure)? Is it possible for a registered domain name to be cancelled? If so, by whom and on what (relative or absolute) grounds (e.g. prior trademark registration or generic term)? Is it possible to request cancellation of a domain name based on general statutory law (e.g. unfair competition law)? Which procedure is followed, in the case that cancellation is required? Is the cctld registry liable for domain names which infringe trademarks? There is no publication of domain names similar to the publication of a trade mark application. However, a registration of a.co.uk domain name is made public insofar as if the domain name is entered into a Nominet Whois search, a result will be given, showing whether the domain name has been registered. There is no procedure to oppose an application for a domain name prior to registration. Registered domain names can be cancelled if the domain name is, or becomes, an "abusive registration". An abusive registration means a domain name which either: i. was registered or otherwise acquired in the manner which, at the time with the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the complainant's rights; or ii. has been used in a manner which took unfair advantage of or was unfairly detrimental to the complainant's rights. 2

3 A domain name can be cancelled on the application of a complainant who establishes that it has rights. Rights, which may be relied upon in a Nominet proceeding, include (but are not limited to) rights enforceable under English Law, including trade mark registrations. A domain name cannot be cancelled solely on the basis that it is a generic term. A domain name is capable of being cancelled by a court if its registration is in breach of statutory or common law. Nominet will only cancel a domain name if the complainant can show that it has the appropriate "rights" to the domain name. Procedure for cancellation: The party aggrieved makes an application to Nominet under its dispute resolution procedure, or brings a claim before the court relying (most likely) on trade mark infringement and/or passing off. Theoretically, the cctld Registry, when put on notice, could possibly be liable for domain names which infringe trade marks. As yet, there have been no court decisions to this effect. 1.8 Maintaining the registration Must use requirements be satisfied in order to maintain the domain name registration? If so, is there any definition of what constitutes use? Is a renewal fee payable, in addition to, or in place of, a maintenance fee? No, there are no use requirements in relation to the maintenance of a domain name. Provided a renewal fee is paid, the domain name remains registered. 1.9 Generic Top-Level Domains (gtlds) Are gtlds subject to regulatory control in your country? If so, in what ways? Are there any differences to the treatment of cctlds? If so, what are they? No, gtlds are not subject to regulatory control in the UK. Therefore, there are no differences to the treatment between gtlds and cctlds. 2. Proposals for adoption of uniform rules 2.1 Nature of signs Should the registration of a domain name confer exclusive rights to the proprietor? Should domain names be subject of dealings such as assignment, mortgage and the like? Registration of a domain name automatically confers exclusive right (ability) to the use of that domain name as a domain name in the ICANN administered domain name system. It is possible for an alternate root provider to issue a domain name with the same TLD as that on the ICANN authorised root, or for ICANN to release a gtld which is used on an alternative root. An example of this is.biz which was one of the more recently approved ICANN gtlds and was already a domain name offered by the alternate domain name system operated by the Atlantic Root Network. The registration of a domain name (whether a gtld or cctld) should not give an exclusive legal right to the domain name i.e. a domain name registration per se does not and should not give rise to intellectual property rights. Domain names can become important company assets and therefore should be capable of being subject to dealings such as assignment, mortgage and the like. It would be advantageous to registrants if a field was added to the Whois database enabling notification of charges to be entered. 3

4 2.2 Legislation Should legislation be enacted to deal specifically with domain names and domain name registries? We do not consider specific legislation is necessary in the UK to deal with domain names and domain name registries at present. 2.3 Type of registry Do you think the domain name system should be administered by public or private entities? If you think that the DNS should be administered by private entities should they only perform technical functions or should they also perform policy functions? If you think that they should only perform technical functions who should perform the policy functions? What do you think Government's involvement in a privately administered DNS should be? If the DNS is administered by private entities do you think that their actions should be subject to a regulator and to an independent review? If so, which institutions should perform these functions? If you think that the DNS should be administered by public entities which institutions should perform the technical and policy functions? Should the assignment of gtlds and the key internet co-ordination functions (e.g. the stable operation of the Internet's root server system) be performed by a treaty based multi-governmental organisation? If so, should an existing organisation such as WIPO or ITU be tasked with these functions or should a new one be created? Provided the domain name system operates in a fair and efficient manner, the question of whether it is run by a public or private entity is of little concern to most users. If the DNS is administered by a public entity, there is a concern that it would lack sufficient flexibility to be able to address and deal with concerns on a quick enough basis for commercial users. However, where the DNS is administered by a private entity, there should be sufficient government involvement to give the private entity sufficient legitimacy with the community it serves and the actions of the private/public entity should be capable of independent review. This would not be required to be affected by way of legislation. Certainly all registries should operate a dispute policy similar to the UDRP to enable trade mark owners to resolve disputes. The structure under the reformed ICANN is such that where any policy action affects public policy concerns, the ICANN board will request the opinion of the Governmental Advisory Committee and take into account any advice timely presented by the Governmental Advisory Committee. This amount of government involvement in the policy considerations of the DNS should be sufficient to give the system legitimacy. Also under the new ICANN structure, various accountability mechanisms are built in, namely reconsideration, independent review and an ombudsman who will provide independent internal evaluation of complaints by members of the internet community who believe that the ICANN staff, board or ICANN constituent body has treated them unfairly. We consider that this new structure should be given a sufficient trial period, to see whether it works adequately. If it fails to do so, then we would recommend consideration of alternatives such as a treaty based multi-governmental organisation. WIPO might be an appropriate body to run the DNS in such an event and should in any case be involved closely in all intellectual property considerations which arise from the operation of the DNS. Of the existing treaty based multi-governmental organisations, the 4

5 ITU may be considered to have the closest remit but it has no experience of operating any registration or similar systems. We are also concerned that a body such as the ITU would not be able to act with sufficient speed and flexibility. 2.4 National treatment Do you think domain name registries should be entitled to impose restrictions on the application process based on the nationality of the applicant? We believe that the cctld registry should be entitled to impose restrictions based on the domicile or real and effective commercial presence of applicants. The nationality of the applicant is less relevant. 2.5 Bars to registration Do you think domain name registries should be entitled to reject applications on public policy grounds? If so, on which grounds (e.g. immorality or generic terms)? Yes, domain name registries should be entitled to reject applications on grounds of immorality. In the event that a domain name registry wishes to reject applications on grounds of immorality, thought should be given as to an appropriate appeal procedure. Where the registry is not a public body, the applicant has no right to bring judicial review proceedings. Therefore, an appropriately independent appeal route should be built in to such a system. Many registries already reject applications that either do not fulfil their requirements as to locus or do not fulfil the requirements of the gtlds eligibility requirements (in particular the sponsored gtlds:.aero,.museum and.coop). In some cases this could mean that generic terms are rejected if the applicant does not otherwise meet the eligibility requirements, but we do not consider it appropriate to permit registries to refuse generic names per se. 2.7 Publication, opposition and cancellation Do you think that the application for or registration of a domain name should be made public? Do you think that there should be a procedure available to third parties to oppose such application (prior to registration) or registration? If so, on what (relative or absolute) grounds (e.g. prior trademark registration or generic term) and based on what kind of procedure (e.g. arbitration or administrative procedure)? Do you think that it should be possible for a registered domain name to be cancelled? If so, by whom and on what (relative or absolute) grounds (e.g. prior trademark registration or generic term)? Do you think it should be possible to request cancellation of a domain name based on general statutory law (e.g. unfair competition law)? If so, which procedure should be followed? Do you think domain name registries should be liable for domain names which infringe trademarks? We do not believe that there is a need for publication but the domain name registrations should be made public in that there should be a fully accessible and searchable Whois database. We do not consider it necessary to have a procedure whereby third parties can oppose a domain name application prior to registration. Registries should operate dispute policies which would enable a third party to be able cancel the registration of a domain name based on prior trade mark rights (relative grounds) e.g. an abusive regulation (see answer 1.7 above) and where the domain name is in breach of the relevant eligibility requirement of the tld. 5

6 A domain name should be capable of being cancelled as a result of the court finding that it breaches general statutory or common law. Whether it is appropriate for an independent dispute resolution panel to deal with such matters as opposed to a court, will depend on the expertise of the arbitrators available. The procedure should either be by application to the Registry through its dispute resolution services or to the relevant national court. Generally speaking, the mere operation of a first come, first served registration system, with an accessible Whois database, should not give rise to liability on the part of registries for domain names which infringe trade marks. This is even more the case where a dispute policy is provided to address problems. 2.8 Maintaining the registration Do you think that use requirements should be satisfied in order to maintain the domain name registration? If so, what should constitute use? Should a renewal fee be payable, in addition to, or in place of, a maintenance fee? No, we do not believe that there should be use requirements in order to maintain a domain name registration. Trade mark owners may wish to register domain names defensively, in order to prevent their use by third parties, even though they do not wish to use the domain name themselves. All domain names, whether used or not, should be subject to the normal renewal fee. (We do not understand what is intended to be the difference between a renewal fee and a maintenance fee.) 3. Assessment of the trademark registration system Do you think that the publicly administered trademark registration system is adequate and sufficiently efficient as compared with the privately administered system of domain name registration? If not, please explain. The publicly administered trade mark registration system in the UK is extremely efficient. The web site operated at not only provides all the necessary information in relation to registration of trade marks, it also provides on-line search facilities which enable searches of the register of trade marks to be carried out on: - The application or registration number; - The exact text or starting words of a text based trade mark; - The proprietor details. Currently, this provides more information than is publicly accessible from Nominet in relation to UK domain name registrations. 4. Miscellaneous The UK group is concerned as to the lack of publicly available Whois data on a global perspective and on the difficulties of searching this data. It is notable that as the national and regional trade mark systems become more freely accessible on-line, information concerning domain names and domain name registrants has become less accessible and reliable. Summary Domain names are not a form of intellectual property, they are a licence between the registrant and the registry (often via a contract with a registrar). Although it is not appropriate to treat domain names as intellectual property rights, they can become important assets to companies and 6

7 individuals and therefore should be capable of being subject to normal commercial dealings such as assignment, licenses and mortgages. Registrants would benefit from an alteration of WHOIS databases to enable notification of a charge on a domain name. Registries can be properly run by private entities, but where they are, adequate procedures should be in place to ensure fair treatment of registrants. This should include a dispute resolution policy similar to that operated under ICANN (the UDRP). A reliable, fully searchable, Whois database for domain names is required from the perspective of intellectual property owners. Résumé Les noms de domaine ne sont pas une forme de propriété intellectuelle, ils constituent une "licence" passée entre celui qui a procédé à l'enregistrement et la société chargée de centraliser les informations relatives aux noms de domaine, à savoir le Registry (souvent par le biais d'un accord conclu avec un prestataire de services dénommé " Registrar "). Bien qu'il ne soit pas opportun de traiter les noms de domaine comme des droits de propriété intellectuelle, ils peuvent cependant devenir des éléments d'actifs considérables pour les entreprises et les personnes physiques et en conséquence devraient pouvoir faire l'objet d'opérations commerciales telles que des cessions, des licences et des hypothèques. Les personnes ayant procédé à l'enregistrement d'un nom de domaine bénéficieraient d'une modification des bases de données WHOIS pour permettre la notification d'une inscription marginale portant sur un nom de domaine. Les Registries peuvent être dirigés par des entités de droit privé, mais selon leur localisation, des procédures adéquates devraient être instaurées afin d'assurer un traitement juste des personnes ayant procédé à l'enregistrement d'un nom de domaine. Elles devraient inclure une politique de résolution des conflits similaire à celle fonctionnant sous l'icann (à savoir les Principes directeurs concernant le règlement uniforme des litiges relatifs aux noms de domaine, dits principes UDRP). Une base de données WHOIS pour les noms de domaine, fiable et qui permet une recherche complète, est nécessaire pour les titulaires de droits de propriété intellectuelle. Zusammenfassung Domain-Namen sind nicht eine Form des geistigen Eigentums, sie sind vielmehr eine Lizenz zwischen dem Registrierenden und dem Registrator (oftmals mittels eines Vertrages mit dem Registrator). Obwohl es nicht angemessen ist, Domain-Namen wie geistiges Eigentum zu behandeln, koennen sie erheblichen Vermoegenswert fuer Gesellschaften und Individuen darstellen. Daher sollten sie Gegenstand von handelsueblichen Rechtsgeschaeften etwa wie Abretungen, Lizenzierungen und Hypotheken sein koennen. Die sich Registrierenden wuerden von einer Veraenderung der WHOIS Datenbank dahingehend profitieren, dass aus dieser auch Belastungen bezueglich des jeweiligen Domain-Namens erkennbar werden. Registrierungsstellen koennen von privaten Unternehmen betrieben werden. Dort wo diese Stellen existieren, sollten angemessene Verfahren bereitstehen, die eine faire Behandlung der sich Registrierenden sicherstellen. Dies sollte ein Schlichtungverfahrung zur Streitbeilegung miteinschliessen, aehnlich dem wie es bereits unter ICANN arbeitet (das UDRP). Eine verlaessliche, komplett durchsuchbare WHOIS Datenbank fuer Domain-Namen ist aus dem Blickwinkel der geistigen Eigentuemer erforderlich. 7