The recommendation has been made in a report submitted to ICANN,
the body that manages the internet's domain name system, which
asked WIPO for expert advice on IP issues involved in the
introduction of gTLDs last year.
The seven original top-level domains – .com, .net, .org, .gov,
.int, .mil, .edu – were created in the 1980s. In November 2000,
seven new names were created: .biz, .info, .name, .pro, .aero,
.coop and .museum, and ICANN is now in the middle of assessing ten
new proposed gTLDs, two of which, .jobs and .travel, have been
approved so far.
But new gTLDs create problems for the owners of trade marks,
geographical indicators and other intellectual property rights, who
can find themselves competing with cybersquatters to gain control
of their mark-related domains.
"The introduction of a new gTLD presents particular challenges
for IP owners seeking to protect their domain names against
unauthorised registration by third parties. With the growth of
internet usage and electronic commerce, the strategic importance of
domain names as business identifiers has grown significantly," said
Mr Francis Gurry, WIPO Deputy Director General.
Mr Gurry added that registering their entire trade mark
portfolio might often be the only way for IP owners to protect
their identifiers from being grabbed by cybersquatters.
Until now their only serious remedy has been to take
retrospective action against unauthorised registrations by means of
registry dispute resolution procedures or under WIPO's Uniform
Domain Name Dispute Resolution Policy.
WIPO hopes that its new recommendation will complement these
existing remedies by preventing unauthorised registrations in the
first place.
The report, "New Generic Top-Level Domains: Intellectual
Property Considerations," focuses exclusively on the IP aspects
that need to be taken into account if and when extensions of the
domain name space take place, and does not comment on whether
further extensions are necessary or desirable.
The report summarises the WIPO Arbitration and Mediation
Center's domain name dispute experience, and notes that the number
of such disputes – based on the case filing rate – has remained
stable over the last years and recently even increased. An
additional mechanism to prevent unauthorised registration of domain
names during the critical introductory phase of a new gTLD would
therefore strengthen the ability to combat the still widespread
practice of cybersquatting, it says.
Drawing on WIPO's experience in implementing various IP
protection mechanisms in more recent gTLD introductions, the report
notes a trend among TLDs towards sunrise mechanisms – which allow
IP owners to register their identifiers before the general
public.
Experience shows that the need for IP protection mechanisms is
most tangible in open gTLDs, which are not subject to clearly
defined and policed registration restrictions, and which accept
domain name applications from the general public, says the report.
The fewer restrictions and prior verification requirements
associated with the registration process, the greater the risk of
abusive registrations.
It recommends implementing a single uniform preventive IP
protection mechanism across all new gTLDs.
Specifically, says the report, new gTLDs should be required to
offer IP owners the option of registering their protected
identifiers during a specified period before opening registration
to the general public. In sponsored or restricted gTLDs where IP
owners may not be eligible to register domain names, IP owners
could instead be given the option of obtaining defensive
registrations during this initial period. Such a uniform mechanism
would have a number of advantages:
- Operators of new gTLDs would not be required to develop their
own IP protection mechanisms, a task for which they are not
necessarily equipped;
- ICANN would not be required to monitor the correct
implementation of multiple protection mechanisms applied by
different gTLDs;
- IP owners would not be required to devote significant resources
to understanding and using multiple different IP protection
mechanisms; and
- The general public would benefit from enhanced reliability and
credibility of domains.
