interim Policy Oversight Committee

May 23, 1997

[REVISED] SUBSTANTIVE GUIDELINES CONCERNING ADMINISTRATIVE DOMAIN NAME CHALLENGE PANELS

TABLE OF CONTENTS

I. INTRODUCTION

A. Background

B. The gTLD-MoU Dispute Policy Regarding Intellectual Property Rights

C. Legal Basis for the Determinations of an Administrative Domain Name Challenge Panel (ACP)

II. INTERPRETATION OF THE gTLD-MoU POLICY

III. CHALLENGES AND PETITIONS

A. Challenges

B. Petitions

(a) Petition for pro-active exclusion

(b) Petition to re-open, on the basis of significant evidence not considered

(c) Petition for exception from exclusion

(d) Petition for modification or cancellation of exclusion

C. Suspension of the Domain Name

IV. OBJECTIVE STANDARDS AND CRITERIA

A. "Internationally known"

B. "Demonstrable intellectual property rights"

C. "Identical or closely similar"

D. Exceptional Cases: "Globally Known"

V. DETERMINATIONS

A. Determinations with Respect to Challenges

B. Determinations with Respect to Petitions

C. Appeal

D. De Novo Hearing by National or Regional Courts

I. INTRODUCTION

A. Background 

One of the difficult problems in relation to domain names is the unauthorized registration or "warehousing" of second-level domain names which correspond to existing intellectual property rights, for the purpose of trading off those rights or of selling those domain names to the owner of the intellectual property right. Litigation in national or regional courts does not provide a comprehensive solution to these problems because of the world-wide character of the use of domain names. Further, it would be inappropriate for Registrars in the new CORE­gTLD spaces to resolve, or to administer procedures for the resolution of, domain name disputes.

Consequently, the ethics of the Internet and the stability of the domain name system require a procedure in which an intellectual property holder may challenge a second-level domain name itself in a convenient international administrative forum, to determine if that domain name violates the basic policy of the CORE­gTLD spaces.

B. The gTLD-MoU Dispute Policy Regarding Intellectual Property Rights 

Section 2 of the Memorandum of Understanding on the Generic Top-Level Domain Name Space of the Internet Domain Name System ("gTLD-MoU") contains the following policy:

"The following principles are adopted:

...

(f) a policy shall be implemented that a second­level domain name in any of the CORE­gTLDs which is identical or closely similar to an alphanumeric string that, for the purposes of this policy, 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 second­level domain name by a third party that, for the purposes of this policy, is deemed to have sufficient rights."

Registrars shall not apply this policy themselves. Rather, the policy will be implemented by administrative domain name challenge panels ("ACPs") authorized under Section 8 of the gTLD-MoU. Rules for the establishment of these panels, and for the conduct of the administrative challenge procedures, will be administered by the Arbitration and Mediation Center of the World Intellectual Property Organization (the "WIPO Center").

The present document contains substantive guidelines to be applied by ACPs. Procedural guidelines for ACPs will be prepared by the WIPO Center (WIPO ACP Rules). Disputes will not be decided by the WIPO Center but by the panels that will be constituted in accordance with the WIPO ACP Rules.

C. Legal Basis for the Determinations of an Administrative Domain Name 

Challenge Panel (ACP) 

The legal basis for the determinations reached by ACPs is the authority of the gTLD­MoU system to manage the domain name space in the public trust, including the gTLD-MoU policy mentioned above and incorporated into the charter for each CORE­gTLD.

The jurisdiction of an ACP is over a second-level domain name only. The ACP does not constitute a legal authority, and does not have jurisdiction over persons, or over the interpretation and enforcement of national or regional intellectual property laws. Rather, it is an administrative function which evaluates the conformance of domain names with the above­mentioned policy. Since the ACP has jurisdiction only over challenges based on an assertion that a second-level domain name which has been or may be registered under a CORE-gTLD does not conform to the charter of that gTLD, the establishment of this procedure is not in any way the creation of an international law, nor the establishment of an international court.

In particular, and importantly, the challenge procedure does not preclude resort to a national or regional court.

II. INTERPRETATION OF THE gTLD-MoU POLICY

Each phrase of the gTLD-MoU policy is explained below.

"The following principles are adopted: 

... 

a policy shall be implemented that" 

This policy is adopted and is intended to be implemented to prohibit, in the new gTLDs, practices such as trademark piracy or warehousing (cyber-squatting) which are currently widespread, and which add nothing positive to the Internet, but rather result in instability, uncertainty and mis-direction of resources.

"a second­level domain name" 

It is typically the second-level domain name which contains the name of a trademark for the purpose of piracy or warehousing: for example, "famoustrademark.firm."

"in any of the CORE­gTLDs" 

This policy is binding only with respect to top­level domains which fall within the purview of the gTLD-MoU. In particular, it will not apply to .com, .org and .net until they are shared among CORE Registrars. Once existing gTLDs become CORE-gTLDs this policy will be binding on existing registrations upon renewal.

"which is identical or closely similar" 

This phrase was chosen, since it is recognized that a trademark may also be injured by use in commerce of a sign which is not identical to the trademark.

Objective standards and criteria for applying this phase are discussed in these guidelines, below.

"to an alphanumeric string" 

This policy would apply in the case of rights relating to strings of alphanumeric characters only. For example, trademarks which comprise graphical representations would not be covered; however an alphanumeric string used in conjunction with a graphical representation may be covered.

The term "alphanumeric string" was adopted instead of the simpler "name" or "word," to account for trademarks which are not names but which are alphanumeric strings (for example, numbers or combinations of letters and numbers).

"that, for the purposes of this policy," 

This phrase is intended to make it absolutely clear that the administration of this policy would not in any way usurp the role, the authority or the prerogative of national, regional or international authorities to adopt, apply or interpret standards relating to any intellectual property rights, including standards for determining whether or when a particular right is a "well-known" or a "famous" right, whether or when a given right is infringed under national or regional law, and what the relationship may be between domain names and intellectual property rights in the context of any national or regional legal system.

The determinations made under this policy are made for the purposes of the administration of the CORE-gTLD name space, and for no other purpose.

"is deemed to be internationally known," 

The wording of this standard was chosen to avoid any confusion with existing national, regional and international standards (which use words such as "well-known" and "famous").

This standard is an "entry standard." That is, a showing must be made that the string meets this standard in order to qualify for the administrative challenge panel procedures.

The phrase "is deemed" means "is deemed by the ACP which administers this policy in a given proceeding."

The phrase "internationally known" means that the alphanumeric string should be known beyond a local area only; this recognizes the inherently international character of the ACP system. The purposes of this policy would probably require the string to be known in a number of countries, the exact number depending on the population and market size of the countries.

Objective standards and criteria for applying this phrase are discussed in these guidelines, below.

"and for which demonstrable intellectual property rights exist," 

This determination would naturally require an examination of existing national or regional rights. However, the term "demonstrable" has been chosen to indicate that such rights must already be susceptible to documentary or other tangible demonstration; the existence of such rights cannot be established for the first time in these administrative proceedings.

The term "intellectual property" includes not only trademarks, but other intellectual property rights which are susceptible to documentary or other tangible demonstration.

Objective standards and criteria for making such a showing are described in these guidelines, below.

"may be held or used only by, or with the authorization of, the owner of such demonstrable intellectual property rights." 

This is the basic policy statement. Once an alphanumeric string has been deemed, for the purposes of this policy, to be internationally known, and existing intellectual property rights have been demonstrated, an exclusion could be decided by an ACP, subject to consideration of rights held by others.

ACP procedures would allow for two types of exclusion. First, the second-level domain name which was challenged could be excluded (that is, from the particular gTLD in which it was registered without the authorization of the owner of the intellectual property right). Second, a broader exclusion from some or all of the CORE-gTLDs could be applied for, in "exceptional cases." Such cases would include at least trademarks which are globally known.

Objective standards and criteria for exclusions are discussed in these guidelines, below.

"Appropriate consideration shall be given to possible use of such a second­level domain name by a third party that, for the purposes of this policy, is deemed to have sufficient rights" 

It is recognized that many intellectual property rights, even those which are internationally known, are not unique. A trademark may be known throughout the world, and still be legitimately held by another person, for example in a given country or in a different field of commerce.

This sentence of the policy makes it appropriate for an ACP to take such other rights (not limited to intellectual property rights) into account in deciding whether or not a third party should be able to obtain and use a domain name which is identical or closely similar to one which would otherwise be subject to an exclusion.

Objective standards and criteria for such considerations are discussed in these guidelines, below.

III. CHALLENGES AND PETITIONS

A. Challenges 

Any person may file a challenge with an ACP, requesting that a second-level domain name which has been registered in a particular gTLD, or in more than one gTLD by the same person, be excluded; that is, that the registration be cancelled and the second-level domain name not be registered in the named gTLD(s) in the future.

Any person may, in the context of a challenge which has been lodged, request one or more of the following:
  1. that the challenged second-level domain name, in the gTLD which is mentioned in the challenge, be transferred to the challenger in lieu of an exclusion;
  1. that the second-level domain name be excluded from one or more of the CORE-gTLDs that were not mentioned in the challenge, on condition that the second-level domain name has not yet been registered in those gTLDs.
An ACP may, on its own initiative, decide to modify the challenged second-level domain name, in lieu of an exclusion.

B. Petitions 

Any person may file one or more of the following petitions:
  1. Petition for pro-active exclusion
Any person may petition an ACP for a pro-active exclusion; that is, it may request an ACP to consider an exclusion before a conflict arises.

(b) Petition to re-open, on the basis of significant evidence not considered

Where a person believes, on the basis of demonstrable evidence, that a determination of an ACP was made in error, that person may petition the ACP which made the determination to re-open the proceedings in order to consider that evidence. The persons which participated in the original challenge shall be given the opportunity to participate in the re-opened challenge.

(c) Petition for exception from exclusion

Where a second-level domain name has been excluded from any of the CORE­gTLDs, future applicants may obtain the registration of that second-level domain name in one of those CORE­gTLDs only upon petition to an ACP, based on a showing of some independent right to use the name; the original challenger will be given the full opportunity to be heard before a determination is made.

(d) Petition for modification or cancellation of exclusion

A third party may bring a petition to have an exclusion modified or canceled, based upon a showing that the circumstances on which the exclusion was granted have since materially changed (for example, lapse of the trademark registration(s)). The challenger in the original challenge which resulted in the exclusion shall be notified and shall have the opportunity to participate fully.

C. Suspension of the Domain Name 

Challenge lodged within 30 days. If any challenge is lodged within 30 days of the date on which the information concerning the registration of the domain name becomes publicly available, use of the domain name by the registrant shall be automatically suspended, upon posting of a bond by the challenger, for the duration of the challenge procedure. In any such case, the domain name holder may apply to the ACP to cancel the suspension, based on a showing of the relative harm that will be suffered by the domain name holder and the challenger.

Request for general exclusion in the context of a challenge. Where a request for exclusion from several or all gTLDs is lodged in the context of a challenge, registration of the second­level domain name for which exclusion is requested shall be suspended in all of the gTLDs named in the request and in which the second­level domain name has not yet been registered. The suspension shall remain in effect during the pendency of the challenge.

Pro-active petition for general exclusion. Where a pro-active petition for exclusion is filed, registration of the second-level domain name for which the exclusion is requested shall be suspended in all of the gTLDs named in the petition. The suspension shall remain in effect during the pendency of the consideration of the petition.

IV. OBJECTIVE STANDARDS AND CRITERIA

The following objective standards and criteria shall be applied by ACPs. These initial standards are set at a certain level, to make the ACP process manageable. The standards could be modified in the future, after public comment, to include a broader range of conflicts.

There may be several criteria under which standards can be met. Some criteria are conclusive ("shall"); if met, they automatically result in fulfillment of the standard. Others are presumptive ("shall, subject to rebuttal"); that is, if met, they result in fulfillment of the standard, but subject to rebuttal. Still others are possible ("may"); that is, they may or may not result in fulfillment of the standard, depending on the circumstances.

The criteria in each section are in the alternative (not cumulative). That is, fulfillment of one of the criteria is enough in each category. However, ACPs shall ultimately decide challenges based on a comparison of the relative circumstances and rights of the persons involved.

A. "Internationally known"

Based on number of trademark registrations. An alphanumeric string shall be deemed, for the purposes of this policy, to be internationally known, if that alphanumeric string is the subject of trademark registrations held by the same person, for the same goods or services, with effect for 35 or more countries in at least 4 geographical regions as defined in Section 4.1.1 of the gTLD-MoU. (Throughout these guidelines, a regional or international registration shall be considered as having effect for the number of countries in which that registration has effect.)

Based on actions of domain name holder. Subject to rebuttal, an alphanumeric string shall be deemed, for the purposes of this policy, to be internationally known, if
  1. the ACP determines that the holder of the domain name had made a spontaneous offer to sell or rent the domain name, either to the challenger in particular or to the public at large; or
  1. the ACP determines that the holder of the domain name in question is also the holder of additional domain name registrations which are identical or closely similar to alphanumeric strings which are the subject of intellectual property rights of others, and in which the domain name holder has no demonstrable rights.
Based on combination of objective factors. An alphanumeric string may be deemed, for the purposes of this policy, to be internationally known, based on an appropriate combination of factors including some or all of the following:

- Third-party recognition (letters from others in the trade, press reports, analyst reports, documents from third party, etc.)

- Advertising

- Number of countries in which the intellectual property right is found to exist

- The population and market size of the countries in which the intellectual property right is found to exist

- Uniqueness (whether, for example, the alphanumeric string is a coined term, a generic term or a geographical indication, etc; lack of trademark registrations by persons other than the challenger as demonstrated by accepted search techniques; etc.)

- Use (on the Internet, off the Internet, length and type of use, advertising, sales volume, number of countries in which the associated product or service is marketed, market share and capital volume, etc.)

- Evidence of bad faith

- Spontaneous offer to sell or rent the domain name by the holder

- Number of additional domain names, held by the domain name holder, which correspond to the intellectual property rights of others

- Survey evidence (consumers surveys; Internet surveys)

- Evidence of credible plans to use the intellectual property right

- Capital value of the intellectual property right

B. "Demonstrable intellectual property rights"

An alphanumeric string shall be deemed to be the subject of demonstrable intellectual property rights based on the submission of documentary evidence of one or more of the following:

- Intellectual property registration certificates

- Intellectual property search report showing existence of the intellectual property right, subject to rebuttal

- Court or other authoritative government opinions showing the existence of intellectual property rights

- Declarations or attestations of relevant government authorities

- Other tangible evidence of the existence of the intellectual property right

An assertion of existing rights which are not demonstrable in the context of this policy would be common-law rights which have not been established by authoritative government sources (and must therefore be proven under national legal principles); rights of unfair competition; tradename rights which are not the subject of registration with a governmental authority, etc. ACPs are not qualified to make such determinations.

C. "Identical or closely similar"

Identical. The second-level domain name in question shall be deemed to be identical to the alphanumeric string in question if the second-level domain name and the alphanumeric string are made up of the identical alphanumeric characters and punctuation marks in the identical order. (Throughout these guidelines, the term "punctuation marks" shall include hyphens, underlinings, periods, etc.) "Identical" in this context is thus intended to mean identical character­by­character, such that another domain name would not be allotted in the same top­level domain under the "first­come­first­served" rule. Punctuation marks are taken into account in determining "identical."

Closely similar: ignoring punctuation. Subject to rebuttal, the second-level domain name in question shall be deemed to be closely similar to the alphanumeric string in question if the second-level domain name (or the second­level domain name plus the top­level domain name) and the alphanumeric string would be made up of the identical alphanumeric characters in the identical order if punctuation marks were ignored. Thus, "famous­trademark" would be closely similar to "famoustrademark" for the purposes of this policy, and "famoustrademark" would be closely similar to "famoustrade.mark", if .mark were a top­level domain.

Closely similar: minor changes. Subject to rebuttal, the second-level domain name in question shall be deemed to be closely similar to the alphanumeric string in question if the second-level domain name and the alphanumeric string are made up of the same alphanumeric characters in the same order, but differ only by a minor change or minor changes of spelling (misspelling or homonyms), or similar character replacement. "Closely similar" thus should also include, in most proceedings, obvious misspellings ("famustrademark"), homonyms ("famoustraidmark", if "traid" were a word), replacement of letters by similar numerals ("fam0ustrademark"), etc.

Closely similar: translations. Subject to rebuttal, the second-level domain name in question shall be deemed to be closely similar to the alphanumeric string in question if the second-level domain name is a translation of the alphanumeric string. "Closely similar" thus should also include "marquenotoire."

Closely similar: clearly misleading . The second-level domain name in question may be deemed to be closely similar to the alphanumeric string in question if the second-level domain name and the alphanumeric string are made up of the same alphanumeric characters in the same order, but differ only in ways that would be clearly misleading to a user of the Internet. "Closely similar" thus could include, depending on the circumstances, modified versions, for example, "famousmark.firm" or "trademarkfamous.firm", phonetic variations, for example, "foryou.firm" v. "4u.firm", etc.

D. Exceptional Cases: "Globally Known" 

A proceeding shall be deemed to be an exceptional case qualifying for a general exclusion, effective for several or all of the gTLDs, if the alphanumeric string in question is deemed, for the purpose of ACP proceedings, to be "globally known".

An alphanumeric string shall be deemed to be globally known if it is the subject of trademark registrations held by the same person, for the same goods or services, with effect for 75 or more countries.

An alphanumeric string may be deemed to be globally known qualifying for general exclusion based on an appropriate combination of the factors set out in Section IV.A, last paragraph, above, which are deemed to amount to the equivalent of the standard set out in preceding paragraph.

V. DETERMINATIONS

A. Determinations with Respect to Challenges 

ACPs shall make their determinations based on the above standards, and on a balancing of relative circumstances and rights of the domain name holder and the challenger.

An ACP shall give appropriate consideration to possible use of the second-level domain name in question by a party other than the challenger (including the domain name holder) that, for the purposes of the gTLD­MoU policy, is deemed to have sufficient rights. Rights that may, in this connection, be deemed to be "sufficient rights" may include, but are not limited to, the following:

- Demonstrable intellectual property rights

- Rights of publicity

- Rights based on use of the domain name on the Internet (2 years = presumption)

- Evidence of public recognition on the Internet

- Other prior rights to use the name

- Personal name in a gTLD which is dedicated to personal names

The following factors may, in particular, be taken into account in making a determination:

- Rights of the domain name holder

- Existence of other second-level domain names held by third parties

- Contents of the web page associated with the second-level domain name in question

- Impact on the intellectual property right holder's business

- Impact on the intellectual property right holder's visibility on the Internet

- Prior right to use the name

- Prior use on the Internet

- Abandonment or extended non-use of the domain name

- Impact on the domain name holder's business

- Impact on the domain name holder's visibility on the Internet

- Whether a particular gTLD carries a specialized meaning that has bearing on the conflict.

ACPs may make the following determinations:
  1. a determination that the allocation of the challenged second­level domain name in question should be excluded, and transferred, upon request, to the challenger. This means that the domain name will not be available for use by any person other than the challenger (or someone authorized by the challenger);
  2. if requested by the challenger, a determination in an exceptional case (for example, in the case of a trademark that is deemed to be globally known) that the second­level domain name should be excluded from several, or all, of the CORE­gTLDs. There shall be a publication period for comment before such a determination is made;
  1. modification of the second-level domain name held by the domain name holder, to avoid conflict with the rights of the challenger;
  1. a determination that a sufficient showing has not been made, for the purposes of the gTLD-MoU policy, to determine that an exclusion or modification should be effected;
  1. a determination that the proceeding is not appropriate for ACP procedures. This determination would be appropriate, for example, in a proceeding which involved conflicting rights which were relatively evenly balanced; in such proceedings, an ACP may, if it chooses, recommend that the dispute be submitted to mediation, arbitration, or other means of dispute resolution, including resort to national or regional courts.
No other determination may be made by an ACP.

A determination of an ACP shall carry no precedential weight in any later national or regional court proceeding.

B. Determinations with Respect to Petitions 

ACPs shall consider a petition for a pro-active exclusion, from one, several or all CORE-gTLDs, utilizing the same criteria and standards as if the petition were filed as a request in the context of a challenge (for example, a general exclusion would be available only in an exceptional case, etc.).

Where a petition to re­open on the basis of significant evidence not considered is lodged, if, upon consideration of the evidence presented, the ACP considers that a material error had been made in coming to its determination, it may re-open the challenge procedure.

ACPs shall consider a petition for an exception from an exclusion utilizing the same criteria and standards as would be used in a challenge.

In the case of a petition for modification or cancellation of exclusion, upon a showing of a material change of circumstances, ACPs shall consider the modification or cancellation of the exclusion based on the new circumstances shown, utilizing the same criteria and standards as would be used for a challenge.

C. Appeal 

Appeals shall be based on the same information and materials that were presented to the ACP in the proceeding that is being appealed, and shall be decided on the basis of whether there was an obvious mistake of fact, or whether the determination of the ACP in that proceeding was, based on those materials, manifestly unreasonable. An appeal may be dismissed without examination if it is apparent that there were no obvious mistakes of fact and the determination of the ACP was not manifestly unreasonable.

D. De Novo Hearing by National or Regional Courts 

Any dispute which has been submitted to an ACP may be brought, at any time before, during or after the administrative challenge procedure, to a national or regional court, which would hear the dispute under its normal jurisdictional and substantive rules.

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