Japan Network Information Center (JPNIC)
Domain Name Dispute Resolution Policy Task Force (DRP-TF)
Date posted: May 8, 2000

Contents

1. Introduction
2. Configuration and contents of the first draft documents
3. Policy-making by the DRP-TF
4. Parts adopted from the ICANN Uniform Domain Name Dispute Resolution Policy
5. Localized parts of the ICANN Uniform Domain Name Dispute Resolution Policy
6. Issues for continuous discussion in the DRP-TF
7. Consistency with the present JPNIC Registration Rules
8. Dispute resolution service provider
9. Application of the Policy to JP domain name registrants
10. Implementation schedule
Appendix: References

1. Introduction

Since its inauguration on December 15 last year, the Domain Name Dispute Resolution Policy Task Force (hereafter, "DRP-TF") has been drawing up the JP Domain Name Dispute Resolution Policy (the "Policy") for resolving disputes over JP domain names and the Rules for JP Domain Name Dispute Resolution Policy (the "Rules of Procedure") that stipulate the administrative proceedings for resolving disputes. The DRP-TF has also been studying how to implement the Policy and the Rules.

The DRP-TF held four meetings and started a mailing list for continuous discussions. The results of these discussions were reflected in the first draft documents, which were submitted to the JPNIC Steering Committee and approved on April 26, 2000. These draft documents are published for the purpose of inviting public comments.

The purpose of this Task Force Report is to show the public from where the DRP-TF started the discussions, the main items that were discussed, and what items remain to be discussed before the documents can be finalized.

We hope that many people will read this report along with the Policy and the Rules of Procedure, and feed back their candid opinions to us.

2. Configuration and contents of the first draft documents

The first draft documents consist of two documents with the following contents:

(1) JP Domain Name Dispute Resolution Policy (The First Draft)

This Policy will be incorporated by reference into the Domain Name Registration Rules ("JPNIC Registration Rules"). The Policy sets forth the terms and conditions in connection with a dispute between a domain name registrant and a third party (e.g. trademark holder) over the registration and use of a JP domain name.

(2) Rules for the JP Domain Name Dispute Resolution Policy (The First Draft)

The Rules of Procedure set forth the rules for the administrative proceedings for resolving JP domain name disputes specified in Paragraph 4 of the above Policy. Dispute resolution proceedings will be conducted by the administrative-dispute-resolution service providers approved by JPNIC in accordance with these Rules of Procedure.

3. Policy-making by the DRP-TF

The problem of cybersquatting (registration and use of domain names in bad faith) has arisen in the past few years, particularly in the .com domain, and a number of lawsuits have been filed in the United States. In Japan, some existing domain names are said to infringe on trademark rights, but there has been no marked trend toward initiating legal proceedings.

The small number of domain name disputes in Japan is largely the result of JPNIC's rules of "one domain name per entity" and "prohibition of domain name transfers." However, users are requesting these rules to be eliminated, and so JPNIC is considering eliminating the rules in future. However, the rules can be eliminated only after measures against cybersquatting have been taken, and so we must quickly introduce such measures as a dispute resolution policy.

In the area of gTLDs (.com, .net, and .org), ICANN adopted the Uniform Domain Name Dispute Resolution Policy (the "ICANN Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy (the "ICANN Rules of Procedure") in October 1999 to comply with the recommendation of the World Intellectual Property Organization (WIPO) given in April 1999. Following this, registrars approved by ICANN began to adopt the Policy on December 1, 1999. Dispute resolution service providers also started conducting administrative proceedings in accordance with the ICANN Rules of Procedure. These proceedings have so far been working well. (The number of disputes over domain names totaled about 900 as of May 2, of which 362 disputes have already been resolved.)

The ICANN Policy is characterized by its "minimal approach". That is, ICANN is not concerned with disputes between rightful claimants but deals only with the registration and use of domain names in bad faith. The administrative proceeding is intended to serve as a new means of dispute resolution that is neither a lawsuit nor an arbitration.

The DRP-TF considers the basic approach of the ICANN Policy to be extremely useful in resolving disputes over JP domain names, and so has therefore decided to adapt (localize) the ICANN Policy and the ICANN Rules of Procedure for Japan.

4. Parts adopted from the ICANN Uniform Domain Name Dispute Resolution Policy

The following parts of the ICANN Uniform Domain Name Dispute Resolution Policy have been adopted in the first draft documents.

(1) Unique dispute resolution procedure that is neither a lawsuit nor an arbitration

A dispute usually takes time and cost to resolve by a lawsuit. Meanwhile, in arbitration the parties concerned tend not to strike an agreement because the judgment given by arbitration is binding (in principle, arbitration judgement is binding on the parties concerned, so they are not allowed to appeal to a court). On the other hand, domain name disputes need to be solved quickly and simply (refer to Item (4) for further details), so conventional dispute resolution means are not ideal. The administrative proceeding for JP domain name dispute resolution has been established as a unique dispute resolution procedure to overcome these obstacles (Paragraph 4 of the Policy).

(2) Registration and use of domain names in bad faith

The administrative proceeding for JP domain name dispute resolution is applicable only to a dispute between a domain name registrant and a third party over the registration and use of a domain name in bad faith. Disputes between rightful claimants shall be resolved through a court, arbitration or other proceeding that may be available (Paragraph 4 (a) and Paragraph 5 of the Policy).

(3) Types of conduct considered as the registration and use of a domain name in bad faith

The Policy sets forth circumstances that shall constitute registration and use of a domain name in bad faith (Paragraph 4 (b)). These circumstances are presented merely as "examples" and do not exclude others.

• When a domain name is registered for the purpose of reselling for a consideration in excess of the actual costs
• When a domain name is registered for the purpose of preventing the owner of a trademark from reflecting the mark in a corresponding domain name, and such conduct is repeated several times
• When a domain name is registered for the purpose of disrupting the business of a competitor
• When a domain name identical to a trademark of a third party is registered for the purpose of creating confusion among Internet users

At the same time, the Policy sets forth circumstances in which the registrant is deemed not to register or use the concerned domain name in bad faith and has rights to the name. These circumstances are presented merely as "examples" and do not exclude others.

• When the registrant uses the domain name or a name corresponding to the domain name without any unlawful purpose before receiving notification of the dispute
• When the registrant is commonly known by the domain name regardless of whether or not the name is registered as a trademark
• When the concerned domain name is not used to obtain commercial gain by misleadingly diverting consumers, or the domain name is used for noncommercial or fair use without intent to tarnish the trademark of the complainant

In the administrative proceeding for JP domain name dispute resolution, the dispute-resolution service provider will examine a complaint submitted by a third party and a response prepared by a domain name registrant. The proceeding is thus designed to eliminate only the registration and use of domain names in bad faith.

(4) Speedy, simple, low-cost and non-binding Administrative Panel

The administrative proceeding for JP domain name dispute resolution will be conducted by an Administrative Panel comprising one or three panellists.

The administrative proceeding is simple (no hearing is conducted other than in exceptional cases, and a decision is made only on the basis of submitted documents; Paragraphs 3, 5 and 13 of the Rules of Procedure), inexpensive (fees are kept low so as not to reduce the complainant's incentive, and the proceeding places no excessive load on the registrant; fees are specified in the provider's supplemental rules), speedy (an Administrative Panel only judges whether a domain name is registered and used in bad faith and decides a dispute within 14 days; Paragraph 15 (b) of the Rules of Procedure) and non-binding (the Panel's decision is only a form of intermediate judgment based upon contract relations; any party objecting to the decision can file a suit; Paragraph 4 (k) of the Policy).

(5) Fair selection of panellists

An Administrative Panel comprises one or three panellists, and the number of panellists is elected by the parties concerned. When both parties prefer a single-member panel, the Panel will consist of a single panellist. When either party prefers a three-member panel, the Panel will consist of three panellists.

In case of a single-member panel, the Provider shall appoint a single panellist from its list of panellist candidates (Paragraph 6 (b) of the Rules of Procedure).

In case of a three-member panel, both the complainant and the registrant shall select three candidates for appointing one of the three panellists (Paragraph 3 (c)(vii), Paragraph 6 (d) and Paragraph 5 (b)(v) of the Rules of Procedure). Then, the Provider shall appoint one panellist each from the three candidates selected by each party. The third panellist shall be appointed by the Provider from a list of five candidates submitted by the Provider to both parties. The Provider's selection from the five shall be made in a manner that reasonably balances the preferences of both parties (Paragraph 6 (e) of the Rules of Procedure).

(6) The complainant pays all dispute resolution fees in principle.

In principle, the complainant shall pay all the fees charged in connection with the administrative proceeding for JP domain name dispute resolution. Only when the complainant elects to have a one-member panel and the registrant a three-member panel, then all the fees will be split evenly between the two parties (Paragraph 4 (g) of the Policy, Paragraph 6 (b) and Paragraph 19 of the Rules of Procedure).

(7) Publication of decisions

All decisions will be published in full on the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision (Paragraph 4 (j)).

(8) Domain name cancellation or transfer available as only remedies to a complainant

The remedies available to a complainant pursuant to the administrative proceeding for JP domain name dispute resolution shall be limited to requiring the cancellation or transfer of the domain name. No compensation for damages shall be required by the administrative proceeding (Paragraph 4 (i) of the Policy). If a provision for compensation of damages were included, it would be necessary to prove any damages done, which would take much time and energy. This runs counter to the objective of the administrative proceeding, which is to resolve disputes quickly, simply and inexpensively.

(9) JPNIC (registration authority) is not involved in the administrative proceeding.

JPNIC, the registration authority of JP domain names, does not participate in the management and conduct of the administrative proceeding for JP domain name dispute resolution. In addition, JPNIC will not be liable for a result of any decisions rendered (Paragraph 4 (h) of the Policy).

(10) Decisions are not binding, and court proceedings are available.

Either the complainant or the registrant shall not be prevented from taking the dispute to court, whether before the administrative proceeding has commenced, during the proceeding or after such proceeding is concluded.

If a decision requiring the cancellation or transfer of a domain name is made, JPNIC will wait ten days before implementing that decision. If the registrant has commenced a lawsuit against the complainant during the ten-day period in a mutual jurisdiction, JPNIC will not implement the decision (Paragraph 4 (k) of the Policy).

5. Localized parts of the ICANN Uniform Domain Name Dispute Resolution Policy

The following parts of the ICANN Uniform Domain Name Dispute Resolution Policy have been modified to suit Japanese circumstances:

(1) Overall review in consideration of Japanese laws, dispute resolution means available in Japan and the JP domain name data registration system

The DRP-TF has formulated a dispute resolution policy on the basis of the ICANN Policy and the ICANN Rules of Procedure. In this process, the DRP-TF made overall modifications in consideration of Japanese laws (e.g. Trademark Law, Unfair Competition Prevention Law), dispute resolution means available in Japan (e.g., lawsuit, arbitration), and JP domain name data registration system (e.g., roles of contacts registered as part of domain name data, whois database functions). Though items (2) and after describe parts that differ greatly from the corresponding provisions of the ICANN Policy and the ICANN Rules of Procedure, localization extends to the entirety of the policy and the rules, including not only major modifications but also minor ones.

(2) One of the mutual jurisdictions is fixed to the Tokyo District Court.

The ICANN Rules of Procedure provide that one of the mutual jurisdictions shall be "at the location of the principal office of the registrar". The DRP-TF has chosen the Tokyo District Court as one of the mutual jurisdictions (Paragraph 1 (f) of the Rules of Procedure). This is because JPNIC is the only registration authority adopting the JP Domain Name Dispute Resolution Policy and its principal office is located in Tokyo.

(3) The method of submitting a complaint and a response has been changed to the method commonly used in Japanese court and arbitration proceedings.

The ICANN Rules of Procedure provide that a complaint shall be forwarded by the Provider to the registrant and, at the same time, the complainant shall directly send it to the registrant in advance. The ICANN Rules also provide that a response shall be sent directly from the registrant to the complainant. In Japanese court and arbitration proceedings, documents are not exchanged directly between the parties concerned; instead, a dispute resolution organization usually comes in between. For this reason, no written communications shall be made directly between the parties concerned, but a dispute resolution service provider shall play a mediating role in the administrative proceeding for JP domain name dispute resolution (Paragraph 3 (a), Paragraph 2 (a), Paragraph 5 (a) and Paragraph 5 (e) of the Rules of Procedure).

When an administrative proceeding is conducted pursuant to the ICANN Rules of Procedure, the registrant can have access to the complaint before the administrative proceeding is commenced formally. This entails a risk that the registrant will change the registrar for registering the concerned domain name or transfer the name to a third party for the purpose of avoiding a dispute or deliberately delaying the administrative proceeding (such conduct is called "cyberflight" or "cyberhopping"). (Registrar change is not possible with JPNIC because it does not adopt the registry-registrar system, but domain name transfers to third parties will become possible when JPNIC's rule of transfer prohibition is abolished.) Such risks can be prevented by depriving the parties concerned of opportunities for direct written communications.

(4) Addresses for sending a complaint to the registrant have been changed to suit the JP domain name data registration system.

Since contact information noted in applications for gTLD registration is often inaccurate, the ICANN Rules of Procedure stipulate that a complaint be sent to all people concerned (administrative contact, technical contact, billing contact, any e-mail address shown or e-mail links on the Web page). In the administrative proceeding for JP domain name dispute resolution, a complaint shall be sent to the representative and administrative contact of the entity that registers the concerned domain name (Paragraph 2 (a) (i) of the Rules of Procedure).

This is because technical and billing contacts are not expected to take any part in the administrative proceeding of this sort of dispute. In many cases, the roles of these two contacts are taken by personnel in the Internet service provider that the domain name holder is using. E-mail addresses and e-mail links shown on the Web page may be even more unlikely to be related to the persons concerned, so they have also been eliminated from the list of recipients.

(5) Japanese is the language of proceedings.

In the ICANN Rules of Procedure, the language of the administrative proceeding shall be the language of the Registration Agreement (equivalent of the JPNIC registration rules). In the world of JP domain names, all the registration rules are written in Japanese, so the language of proceedings shall be Japanese.

(6) Compliance with Japanese laws

Compliance with Japanese laws is indicated clearly. By doing so, JPNIC will not have to deal with any claims made by a party concerned with a dispute who wishes to have foreign laws applied to the dispute. The DRP-TF believes that this provision will make the administrative proceeding simpler and faster.

(7) "in bad faith" translated as "FUSEI NO MOKUTEKI" in Japanese

The ICANN Policy states that the administrative proceedings will be applied to "registration and use of a domain name in bad faith". The expression "in bad faith" could be translated as "AKUI" in Japanese, but the JP Domain Name Dispute Resolution Policy uses the Japanese expression "FUSEI NO MOKUTEKI", instead of "AKUI".

In the Japanese laws, "AKUI" simply describes the conception of an intention, but in the social sense of the word, "AKUI" sometimes means "an act deliberately performed to harm others". The ICANN Policy uses "in bad faith" to actively and comprehensively indicate conduct that is not only "AKUI", a legal term used to describe a subjective condition in Japan, but also an objectively recognizable "act deliberately performed" by a domain name registrant "to harm others". The Japanese expression "FUSEI NO MOKUTEKI" is used to indicate all these meanings. This expression is also used in Item 2, Clause 1, Article 11 of the Unfair Competition Prevention Law and Item 19, Clause 1, Article 4 of the Trademark Law.

6. Issues for continuous discussion in the DRP-TF

The DRP-TF is continuously discussing the following issues:

(1) Can only "trademarks or service marks" be reasons for complaints?

The first draft documents state that only "trademarks or service marks" can be grounds for complaints. The DRP-TF interprets that the term "trademarks or service marks" refers to all marks without regard to whether they are registered or unregistered (within the scope of protection provided by the Trademark Law and the Unfair Competition Prevention Law), and Japanese or foreign.

Unregistered trademarks or service marks include pending marks, such as the names of new products or services that are expected to spread rapidly or the names of new companies that are launching such products or services into the market. Another example is the name of a new company established by the merging of two well-known large companies. Since these pending marks can be easy targets of cybersquatting, the DRP-TF finds it necessary to take definitive measures for their protection in the Policy.

The DRP-TF will continue to discuss and gather opinions on the remaining issues: the range of unregistered trademarks or service marks to be protected, handling of trademarks or service marks not used for a long time, and protection of foreign trademarks or service marks.

The DRP-TF members have reached a broad consensus that grounds for complaints should be limited to "trademarks or service marks". In the course of discussions, however, some suggested that "sales indications or sales marks" (company names or company symbols that are not regarded as trademarks or service marks) covered by the Unfair Competition Prevention Law should be included. Others suggested that consideration should also be given to "personal names" (names of politicians, athletes, singers, etc.), which is a topic of studies being conducted under the Anticybersquatting Consumer Protection Act in the United States.

(2) Legal validity of criteria used to determine registration and use of a domain name in bad faith

The DRP-TF discussed the legal validity of criteria (Paragraph 4 (b) of the Policy) used to judge the registration and use of a domain name in bad faith.

The main problem here is that, in the framework of the Japanese laws at present, an act of cybersquatting itself cannot be immediately judged to infringe on trademark rights or readily interpreted as conduct of unfair competition stipulated in the Unfair Competition Prevention Law. On the contrary, there is in effect absolutely no legal grounds for justifying an act of cybersquatting. As a result, this Policy is formed on the basis of the principle that "unlawful behavior" should be the object of elimination.

Judicial precedents need to be accumulated and pertinent laws established in order to clarify this issue. However, to keep pace with the rapid expansion of the Internet, it is urgently needed and seems best to set up voluntary rules and solve problems now based upon the agreement of all parties concerned.

Along with the above issue, the DRP-TF discussed the case in which either party files a lawsuit after the dispute is decided; what legal grounds shall the court refer to when no pertinent laws are substantiated?

Japan has no legal equivalent of the Anticybersquatting Consumer Protection Act (amendments of the Federal trademark laws) of the United States. Accordingly, when an act of cybersquatting is put on trial, the court must identify any of the circumstances described in Paragraph 4 (b) of the Policy that may be considered as illegal trademark "use" pursuant to the present Trademark Law, then judge whether certain circumstances infringe on the trademark right. Otherwise, the court will have to deliberate unfair competition on the assumption that given circumstances are similar to some types of unfair competition discussed in the past (for example, to cause confusion with well-known marks as stipulated in Item 1, Clause 1, Article 2 of the Unfair Competition Law or use famous marks with malicious intent as stipulated in Item 2, Clause 1, Article 2 of the same Law). There is currently a strong demand for enforcement of laws to prohibit acts of cybersquatting.

7. Consistency with the present JPNIC Registration Rules

The Policy and the Rules of Procedure submitted will eventually have to be incorporated into the JPNIC Registration Rules. Adoption of the Policy and the Rules of Procedure will require the present JPNIC Registration Rules to be revised as described below. The JP Domain Name Working Group (DOM-WG) is planning to study these revisions separately.

(1) Include a reference to the JP Domain Name Dispute Resolution Policy and the Rules for JP Domain Name Dispute Resolution Policy.
(2) Enable domain name cancellations and transfers in accordance with decisions reached by the administrative proceedings of JP domain name dispute resolution.
(3) How to deal with the principle of "one domain name per entity" when a decision is made to transfer a domain name to a complainant who already has another JP domain name
(4) How to deal with the principle of "local presence" (JP domain name registrants should have addresses in Japan) when a decision is made to transfer a domain name to a complainant from abroad

8. Dispute resolution service provider

JPNIC is conferring with Japanese arbitration organizations with a view to appointing dispute resolution service providers who will conduct the administrative proceedings of dispute resolution. To increase choice for users, it is acceptable to have more than one independent service provider.

9. Application of the Policy to JP domain name registrants

As mentioned in Item 7 above, the Policy and the Rules of Procedure submitted will be incorporated into and made a part of the JPNIC Registration Rules.

Paragraph 43 "Change of Rules" in the JPNIC Registration Rules provides that "JPNIC is able to change these rules by a resolution of the Board of Directors. Changes of the rules will be applied to all the registrants." Therefore, when the JP Domain Name Dispute Resolution Policy goes into effect and the JPNIC Registration Rules are changed to incorporate the Policy, the Policy will be applied to all the registrants of JP domain names.

10. Implementation Schedule

The implementation schedule is as follows:

• May 8, 2000: Commencement of inviting public comments on the first draft documents
• May 16, 2000: Explanatory meeting on the JP Domain Name Dispute Resolution Policy
• June 11, 2000: Deadline for the submission of public comments on the first draft documents
• Mid-June: Study by the DRP-TF
• Late-June: Submission of the final report to the JPNIC Steering Committee
• July 2000: Publication of the JP Domain Name Dispute Resolution Policy
• October 2000: The JP Domain Name Dispute Resolution Policy goes into effect.

Appendix: References

• Establishment of the "Domain Name Dispute Resolution Policy Task Force"
• ICANN Uniform Domain Name Dispute Resolution Policy (Japanese translation)
• Rules for ICANN Uniform Domain Name Dispute Resolution Policy (Japanese translation)
• Anticybersquatting Consumer Protection Act (United States) (Japanese translation)