Singapore Singapour Singapur. Report Q173. in the name of the Singapore Group by Susanna LEONG, Max NG, Colin BUAY

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1 Singapore Singapour Singapur Report Q173 in the name of the Singapore Group by Susanna LEONG, Max NG, Colin BUAY 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 registrant of a domain name in Singapore is required to enter into a contract with the Registry. Use of the domain name is governed by the terms of this contract. Under this contract, the registrant is merely given the right to use the domain name on the Internet. He does not, however, own the domain name, nor does he have the right to sell, trade, assign or transfer the domain name to another party. He may only transfer the domain name to another party with the approval of the Registry. 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. There is presently no specific legislation in Singapore 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? The Singapore Network Information Centre (SGNIC) Private Limited operates and controls the.sg domain name in Singapore. SGNIC is a private entity but is wholly owned by the Infocomm Development Authority of Singapore (IDA). IDA is a statutory body that was established to regulate the information and communications industry in Singapore. 1.4 National treatment Does the applicant require legal or natural status in your country to register a domain name? The.sg domain name is divided into several categories of second level domains. 1

2 The ".com.sg" domain name is reserved for commercial entities which are registered with the Singapore Registry of Companies and Businesses (RCB). A foreign company which is not registered with the RCB may apply for such a domain name if it appoints a locally registered entity to act as its administrative contact. The ".net.sg" domain name is reserved for Info-comm Operators or Internet Network Providers in Singapore. The ".org.sg" domain name is only available for non-governmental, and non-profit making organizations which are registered with the Singapore Registry of Societies. The ".edu.sg" domain name is reserved for educational institutions registered with the Singapore Ministry of Education. The ".gov.sg" domain name is only to be used by the Government of Singapore. The ".per.sg" domain name is only available to Singapore citizens or permanent residents. 1.5 Bars to 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)? The contract between SGNIC and the registrant expressly provides that certain domain names are not registrable. The following are some domain names that cannot be registered: (i) Domain names containing words which can mislead people into thinking that there is a link with the Singapore Government; (ii) Domain names containing "SGNIC", "NIC" and its variations; (iii) Domain names which are obscene, or contrary to law or morality; (iv) Domain names which are geographical names or names of countries; (v) Domain names which are two-letter top-level domain names (cctlds) of country codes; (vi) Domain names which are abbreviations of existing generic top-level domain names (gtlds); (vii) Domain names such as "www", "http", "https" or "http-www"; (viii) Domain names which are similar or identical to other domain names registered under another domain name space, and which SGNIC deems undesirable; (ix) Domain names consisting solely of numerals 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)? There is no right of appeal from a refusal of the Registry to register a domain name, although one may conceivably commence an action in the courts for judicial review. The contract between SGNIC and a registrant however expressly gives SGNIC the right not to register a domain name even if the domain name is not caught by any of the bars to registration. 2

3 1.7 Publication, opposition and cancellation Is the application for or registration of a domain name made public in your country? No, the application for a domain name is not made public. However, a domain name once registered, will appear in a "Whois" search that is conducted on SGNIC's website. 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)? There is presently no formal procedure available to a third party to oppose an application prior to registration. A third party may, however, seek the cancellation of a domain name after its registration. 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? The contract between SGNIC and the registrant expressly sets out situations in which a domain name registration may be deleted. In particular, SGNIC may delete a domain name registration if: (i) in SGNIC's determination, the continued entry of the domain name on the database would be wrongful or where fraud has been committed in the registration process for the domain name. (ii) ordered to do so by a court of law in Singapore; (iii) directed by a decision of an Administrative Panel conducted under the Singapore Domain Name Dispute Policy (SDRP). The SDRP establishes a framework for the resolution of.sg domain name disputes. There is presently no decision yet by the local courts ordering SGNIC to delete a domain name registration. It is, however, very likely that the Singapore courts would order such a deletion if a third party successfully establishes a claim of trade mark infringement or passing off. The Administrative Panel conducted under the SDRP would direct a domain name to be deleted if a Third Party is able to show that the domain name is identical or confusingly similar to a trade mark in which the Third Party has rights; and the Registrant has no rights or legitimate interests in the domain name; and the domain name has been registered or is being used in bad faith. Is the cctld registry liable for domain names which infringe trademarks? There has yet to be a court decision to this effect. The contract between SGNIC and the registrant states that SGNIC is not to be a party in any domain name dispute. The registrant also agrees to indemnify SGNIC for all liability incurred by SGNIC from any claim arising out of the registration and use of the domain name. 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? 3

4 The contract between SGNIC and a registrant allows SGNIC to delete the domain name if the name servers listed in the application are not fully set up, operational and connected to the Internet within 30 days after the domain name is activated; or that the name servers persistently do not respond to any queries for the domain name. Apart from this provision, there are no other use requirements. A domain name will continue to be registered so long as the renewal fees are paid. 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 Singapore. 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? Presently, the registration of a domain name confers upon the registrant the exclusive right to use the domain name on the Internet. Such exclusive rights already confer an interest in the name to the registrant, even if ICANN believes that no one party should have any substantive rights or interests in the Internet. It is however difficult to reconcile such interests with that which is derived from trade mark registration. A working company should therefore be formed to determine exactly what rights and interests registrants may have in their domain names, because to deny that any such rights exist is to deny the reality of the domain name system in place today." 2.2 Legislation Should legislation be enacted to deal specifically with domain names and domain name registries? We believe that the current system lacks some validity, because it is not backed by any specific legislation. There is therefore a need for some legislative reform in this area, and preceding that, an agreement on standards to be adopted by all nations, preferably through a treaty 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, 4

5 should an existing organisation such as WIPO or ITU be tasked with these functions or should a new one be created? We are of the view that the domain name system, like the Registry of Trade Marks or the Registry of Businesses, performs a public service. As such, it must be that a public institution also administers this system. The specific public institution should be determined by the respective countries. At the international level, we would suggest that a new organisation be established to deal with the technical and policy concerns of such a system. Perhaps a new agency under the auspices of WIPO or the WTO can be established for such purposes. 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? No, we do not believe that any restrictions should be imposed, based solely on the nationality of the applicant. However, the domain name registries should be entitled to reject applications from persons who do not have a real and effective commercial presence in the jurisdiction. 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, we believe that registries should be entitled to reject applications on public policy grounds (perhaps couched in similar terms to those applicable to the registration of trade marks), subject to a right of judicial review. 2.6 Appeals Do you think that the applicant for a domain name should 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)? Yes, we believe that an applicant should have the right to appeal against the refusal of the registry to register a domain name, especially when the domain name in question does not appear to be caught by any of the bars to registration. As Singapore has an efficient and cost-effective judicial system, we feel that an appeal to the courts is the appropriate remedy in this case 2.7 Publication, opposition and cancellation Do you think that the application for or registration of a domain name should be made public? No, we do not see a need for applications for a domain name to be made public. Registered domain names, however, are and 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? No, we do not think there should be a procedure available to third parties to oppose applications prior to registration. This would only unnecessarily prolong the domain name registration process. However, there are and should be procedures allowing third parties to seek the cancellation of registered domain names. 5

6 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? In Singapore, we currently have the SDRP in place to govern the grounds and procedures for the cancellation of domain names. However, there are some views that the SDRP does not go far enough. It is our view that the laws of a particular jurisdiction have to be taken into account as well. For example, if a particular jurisdiction has competition laws, then the dispute resolution process must cater for that as well. Do you think domain name registries should be liable for domain names which infringe trademarks? Domain names registries should not be held liable for domain names which infringe trade marks, so long as they show that they have taken certain minimum steps to ensure that the registrant is bona fide. 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? Use should not be a requirement, so long as the registrant is willing to bear the cost of maintaining the registration. Renewal fees may be charged, as the respective Registry deems fit. 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. We take the view that the publicly administered trade mark system is rather efficient in Singapore, but this may of course vary from country to country. As such, while it may be sufficient to have the trade mark registry also run the domain name registry, this may not work for all jurisdictions. It should be left to the respective countries to decide who should run the domain name system as well. 4. Miscellaneous The National and Regional Groups are invited to comment on any additional aspect which they find relevant with regard to the foregoing questions and the specific aspects of trademark and domain name registration. In Singapore, the domain name and trade mark systems were put to a further test recently, when SGNIC tried to register ".SG" as its trade mark. Although this application was subsequently withdrawn, the questions remain as to whether and to what extent one should be allowed to claim trade mark rights in domain names. 6