Keusuke Norichika, JPNIC Trustee

The gTLDs of American company NSI (in particular, the .com space, which accounts for an overwhelming majority of registered domain names worldwide) are open domain name spaces in which low-cost registrations can be made on a first-come, first-served basis. This setup, however, has opened the door for the unrestricted activities of so-called cybersquatters who register existing trademarks and other properties of others as their own domain names, free-riding on or diluting the goodwill of the rightful owners, or registering numerous domain names identical or very similar to existing trademarks and other properties belonging others as part of an attempt to sell them back to their rightful owners or to third parties at exorbitant prices. The conflicts that have been occurring with increasing frequency in domain name spaces between illegal squatters and rightful trademark owners are becoming problems that can no longer be ignored, as the Internet is poised for rapid growth thanks to the emergence of Internet e-commerce and other commercial endeavors.

At the request of the U.S. Government, WIPO (World Intellectual Property Organization) drafted recommendations regarding domain name and trademark dispute resolution, and in April 1999 released it to the public in the form of a WIPO report (the WIPO Internet Domain Name Process).

Acting on this development, ICANN in October 1999 adopted the WIPO-recommended domain name and trademark dispute resolution system almost in its entirety, and enacted the Uniform Domain Name Dispute Resolution Policy (UDRP) and the Rules for the same (UDRP Rules). The following points characterize the UDRP:

1. Only cases of domain names registered and used in bad faith will be dealt with. The domain name(s) must be identical or confusingly similar to the trademark(s) of the complainant.
2. The filing process will be reasonable in cost and expeditious. The fee will be US $1,000 per domain name and per arbitration board panelist under the WIPO regime. As a rule, filing will be carried out on-line. The entire time frame from the filing of a complaint (demanding the transfer of a domain name registered by a cybersquatter to its rightful owner, or the cancellation of the registration) to the ruling will be no more than 55 days, and the duration of panelist deliberations restricted to no more than 14 days.
3. After the UDRP process has begun, either party can still take the case to a court of law, even after the ruling has been handed down. With no binding arbitration agreement, this process represents a new and unique approach to dispute resolution, quite unlike conventional arbitration.

The WIPO Arbitration and Mediation Center, the first of its kind to be certified by ICANN as a dispute resolution organ, has already received more than 600 filed complaints. If we add to this figure the cases filed with three subsequently certified dispute resolution organs, more than 1,200 dispute resolution request cases have been filed, more than half of which have already been ruled on. Of these, about 80% were cases in which domain name transfers or cancellations were found for as originally requested by complainants, showing that the UDRP process is beginning to function as a new and effective international extrajudicial approach to dealing with cybersquatters.

In the United States, as a result of legislation aimed at regulating rampant domestic cybersquatting activity, the Anticybersquatting Consumer Protection Act (ACPA) was passed and signed into law at the end of November 1999.

In Japan, cybersquatting-triggered conflicts have not been as frequent as those concerning gTLDs, because JPNIC has held firm to adherance of the following principles: (1) A limit of one domain name per organization; (2) A prohibition on domain name transfers; and (3) Local presence in Japan. According to one report, however, real conflicts do appear to be occurring widely, and it seems necessary to place cybersquatting control measures in place in Japan, too.

Taking a step further forward, JPNIC should also have in place a Japan-localized version of ICANN's UDRP and Rules as it prepares to provide user-friendly, new JP domain name space services. Guided by this awareness, JPNIC, in December 1999, established the JP Domain Name Dispute Resolution Policy Task Force (DRP-TF). The officers in charge drafted the document with exemplary diligence, some even at the cost of their Golden Week holidays in May. The first drafts of the "JP Domain Name Dispute Resolution Policy" and "Rules for the JP Domain Name Dispute Resolution Policy" were made public on JPNIC's Web site after the holidays. Numerous comments were sent in by members of the public in May and June.

The Task Force took these comments into consideration while revising the first draft; in early July, the Final Recommendation was completed and submitted to the Steering Committee. It is open to further public comments, and is scheduled to be adopted and implemented in October 2000. In localizing the ICANN UDRP to conform with Japanese laws, the Task Force made a point of preserving international compatibility, so as to conform to the UDRP as much as possible. In the process, however, some interesting arguments were advanced. For example, under the heading of "Conflicts for which the Resolution Policy is Recognized as Applicable," there was one reported case in which the ruling stated explicitly that the names of famous actresses and singers are protected against cybersquatting. This led to the phraseologically expanded expression of "trademarks and other expressions." Furthermore, in localizing UDRP rules, some modifications were made to conform to the reality of the Japan-specific social environment, such as provisions for conventional paperwork submission as well as on-line filing and sending, and the use, in principle, of the Japanese language for procedural filing purposes.

During that time, we started to hold meetings with the Industrial Properties Arbitration Center, which is expected to work as a certified dispute resolution organ, as to proactively seek consensus of opinion. Thanks to the exertions of those involved, the necessary preparations are moving steadily toward operational start-up. As someone who, as a patent attorney with corporate experience, became involved with this matter midway through its course as a member of the Center's Steering Committee, I am doing all that I can to ensure that the Center will be the first to be certified as a JPNIC dispute resolution organ.

Internet use accelerated on a popular level thanks to the clever data management idea of converting the IP address, a highly technical and tasteless identifier, into an easy to remember domain name. And the domain name itself, no longer just a mechanical identifier, has come to assume the added function of displaying the origin and quality of services and products; it now stands ready to constitute in itself a whole trademark, an embodiment of creditability and goodwill. Of course, this is not unique to domain names. As an example, such common identifiers as place names and personal names are used as trademarks of corporations and products in innumerable cases. However, there is a high possibility that domain names will attain international use. Decisions regarding which country's trademark laws should be applied, jurisdiction of the respective courts of law, theoretical issues regarding the use of trademarks on the Internet, and other legal issues, must still be addressed. As an effective means of resolving conflicts caused by cybersquatters between themselves and the rightful owners, it is important that the UDRP and the Rules become fully established as a practical, working system.

Refereuce

1. "Regarding the Launch of the Dispute Resolution Policy Task Force (DRP-TF)," JPNIC Newsletter No. 15, December 1999, pp. 11-14.
2. "Domain Name Dispute Resolution Policy Task Force (DRP-TF)," an Activity Report, JPNIC Newsletter No. 16, April 2000, pp. 28-29.
3. "The Latest in the Operation of the Domain Name and Trademark Dispute Settlement System, and its Introduction to Japan, " by Tsuguzo Kubo, pp. 34-39,
4. The Jurist magazine, July 1, 2000 (No. 1181) issue. JPNIC Announcement: "Concerning the Establishment of the JP Domain Name Dispute Resolution Policy and the Amendment of Registration Rules
   http://www.nic.ad.jp/jp/topics/archive/20000719-91.html