NEW SYSTEM FOR DOMAIN NAME CHALLENGES

The International Ad Hoc Committee (IAHC) has announced a new plan to use international expert panels to address challenges to domain name registrations. In its Final Report offering recommendations for changing the Internet Domain Name System, the IAHC proposes voluntary mediation or arbitration of domain name disputes by Administrative Domain Name Challenge Panels of one or more experts on intellectual property and domain name issues. IAHC's plan excludes domain name registrars from playing a role in resolving domain name disputes. A likely roll-out of this alternative dispute resolution system is late 1997 or early 1998.

THE IAHC

The IAHC is a coalition of international participants from the Internet community working to enhance the Internet's global Domain Name System. To address unauthorized registration of domain names corresponding to existing intellectual property rights, the IAHC has proposed a procedure in which an intellectual property holder may challenge a second-level domain name in a convenient international administrative forum to determine if that domain name violates the basic policies of the domain name space.

CHALLENGES TO DOMAIN NAME REGISTRATIONS

IAHC has expressly recognized that domain names are capable of infringing trademark rights. The IAHC plan, however, excludes domain name registrars, such as NSI, from playing a dispute resolution role in domain name challenges. Instead, IAHC proposes to handle trademark disputes by an Administrative Domain Name Challenge Panel of one to three international experts with the authority to exclude a domain name registration. This expert panel, administered by the World Intellectual Property Office (WIPO), will attempt to resolve disputes within 30 days if a challenger brings its challenge within 60 days of registration of the disputed domain name. Since there is no universally accepted international trademark laws, the panel will determine whether the domain name registration violates IAHC policy rather than try to enforce national or regional trademark rights. The IAHC plan does not stop a trademark owner from seeking conventional litigation remedies in an appropriate local or regional court.

As part of the registration process, applicants for a domain name must (1) agree to accept mediation or arbitration in the event of a challenge, (2) name an agent for service of process and (3) accept jurisdiction if a domain name dispute arises. The IAHC suggests that applicants accept on-line publication of domain names for a 60 day period prior to registration to encourage resolution of legitimate disputes before a significant investment is made in a domain name. If the applicant observes the voluntary 60-day waiting period and gets a registration, then the domain name holder may have a defense to a challenge raised later by a trademark owner. Domain name registrations will be published on a web site and must be renewed annually.

VIOLATIONS IAHC POLICY

IAHC proposes to implement a policy that a second-level domain name which is identical or closely similar to an alphanumeric string that is deemed to be internationally known, and for which demonstrable intellectual property rights exist, may be held or used only by, or with the authorization of, the owner of such demonstrable intellectual property rights. Appropriate consideration shall be given to possible use of such a second-level domain name by a third party that is deemed to have sufficient rights. The IAHC policy specifically targets the unauthorized registration or warehousing of domain names.

HOW CHALLENGES WORK

To initiate a challenge, a party submits a completed challenge form to the WIPO Center, and pays the appropriate fee. In response to the challenge form, the WIPO Center will notify the domain name holder and place information regarding the challenge on a publicly available web site. Third parties can respond to the public notice by applying with the WIPO Center to participate in the challenge proceedings, provided justification exists for such participation. If the challenge is filed within a specified time period after the domain name registration, the domain name will be automatically suspended for the duration of the challenge procedure. This automatic suspension requires payment of a bond by the challenger. The domain holder can attempt to cancel the suspension based on a showing of relative harm suffered as a result of non-use of the disputed domain name. Challenge procedures are preferably conducted on-line and supplemented, as required, by the exchange of written documents.

The IAHC plan also proposes (1) the creation of new generic top-level Internet domains to supplement existing .com, .org, and .net domains and (2) new competing registrars to register domain names on an international basis. New domain name levels include: .firm for businesses or firms; .store for businesses offering goods for purchase; .web for entities offering activities related to the World Wide Web; .arts for cultural and entertainment activities; .rec for recreation and entertainment activities; .info for information service providers; .nom for people desiring individual or personal nomenclature. These new domain name levels would be shared among all registrars.

HOW THE IAHC PLAN AFFECTS TRADEMARK OWNERS

The IAHC plan takes domain name disputes from the hands of registrars, such as NSI, and relies on expert panels as an alternative administrative mechanism for resolving a domain name dispute between a trademark owner and a domain name holder. In contrast to the present NSI dispute policy, the IAHC plan allows the owner of an identical or similar trademark to challenge a domain name. For a trademark owner to succeed in a challenge, however, the owner must show that its trademark is internationally known, preferably in a number of countries, and that documentary evidence is available to demonstrate international intellectual property rights. The IAHC plan represents an alternative administrative dispute resolution system and does not bar a trademark owner from seeking a remedy via litigation.