Dear Sirs:
Date: December 15, 1999
From: Japan Network Information Center (JPNIC)
Re: Appointing a "Domain Name Dispute Resolution Task Force"
Contents:
1. Background and Outline
2. Positioning of the Task Force and its Makeup
3. Agenda for Deliberation
4. Schedule
1. Background and Outline
* WHAT IS THE PROBLEM? -- CYBERSQUATTING (ABUSIVE REGISTRATION AND USE
OF DOMAIN NAMES)
Over the past few years, the problem of "cybersquatting" has become
the focus of attention in relation to dot-com domains. Cybersquatting
is the act of registering a domain name primarily for the purpose of
selling it to the actual owner of a trademark or service mark for a
high price, or registering a domain name to exploit the fame by
deliberately attracting many users to a web site by creating a
likelihood of confusion with the famous trademark or service mark.
* FUTURE OF JP DOMAIN NAME SPACE AND MEASURES TO DEAL WITH CYBERSQUATTING
In the United States, there have already been several trial cases
concerning disputes over domain names. In Japan, meanwhile, the
existence of some domain names violating trademarks has been
indicated, but very few cases have been brought into court for
resolution. One of the main reasons for fewer disputes in Japan is
probably JPNIC's rules such as "one domain name for one organization"
and "prohibition of transferring domain names." However, as the
Internet rapidly becomes widespread in Japanese society, there is
growing demand to abolish these rules and institute freer domain name
registration.
JPNIC is studying liberalization of domain name transfer based on
mutual understanding between the parties and introduction of a general
purpose SLD (Second Level Domain) under which one organization can
register multiple domains. In order to achieve this goal, it will be
necessary to prevent disputes arising between domain names and
intellectual property rights (trademarks in particular) and to
formulate procedures for resolving such disputes.
* MOVEMENTS AT GLOBAL LEVEL -- ICANN'S ATTEMPT
Meanwhile, in the area of gTLDs, including COM domains, significant
progress is being made following discussions over the past few years.
In accordance with a White Paper issued by the United States
Department of Commerce in June 1998, the ICANN (Internet Corporation
for Assigned Names and Numbers) was approved in autumn, 1998. Also,
the White Paper requested the WIPO (World Intellectual Property
Organization) to prepare a series of recommendations on the issue of
resolving disputes over trademarks and domain names. At this request,
the WIPO commenced the Internet Domain Name Process in July
1998. After receiving comments provided at its request made three
times and as a result of public hearings held around the world, WIPO
submitted a Final Report to ICANN in April 1999.
In response to the report, ICANN began deliberations on "Chapter 3:
Resolving Conflicts In A Multijurisdictional World With A Global
Medium" in the Report. After it was decided to basically support the
WIPO Final Report, ICANN advanced to producing specific documents. The
board meeting held in late October approved the adoption of a "Uniform
Domain Name Dispute Resolution Policy" and "Rules for Uniform Domain
Name Dispute Resolution Policy." Meanwhile, a number of organizations
called "dispute resolution service providers" that resolve disputes in
accordance with the policy and rules have been established. The
policy and rules were adopted in December 1, 1999 except for a few
registrars, and a claim for resolving a dispute was already made
against an existing domain name as of December 2.
The main feature of the dispute resolution policy adopted by the ICANN
is that those disputes resulting from "abusive registration and use of
domain names in bad faith" shall be resolved in accordance with a
"mandatory administrative dispute resolution procedure" stipulated in
the policy, while other domain name disputes (e.g. when both parties
have legitimate rights) shall be resolved through conventional ways
such as trials and arbitration.
It is difficult to determine whether registration and use of a domain
name has been made in bad faith. The policy stipulates the following
as evidence of the registration and use of a domain name in bad faith:
(1) an offer to sell, rent or transfer the domain name to the owner of
the trademark or service mark, or to a competitor of the owner of
the trademark or service mark, for a value exceeding the actual
amount required for the registration
(2) registration in order to prevent the owner of a trademark or
service mark from reflecting the mark in a corresponding domain
name, provided that the domain name holder has engaged in a pattern
of such conduct
(3) registration in order to disrupt the business of a competitor
(4) an attempt to attract, for commercial gain, Internet users to the
domain name holder's website, by creating confusion with the
trademark or service mark
In terms of procedures, the policy has several characteristics
including:
- Non-involvement of the registrar (non-participation in the procedures,
immunity from responsibility for the result)
- Mandatory (party who has registered the domain name via a registrar
who adopts the policy must submit to the dispute resolution procedure
executed by a dispute resolution service provider if a third party
has made a claim)
- Unbinding (complaint can be submitted to a court during or after the
procedures by a dispute resolution service provider)
- Speedy (dispute resolution processes will in principle all be
performed online; the time from the commencement of the procedures
until the result is reflected on DNS will take approx. 55 days)
- Low cost (approx. US $1,000 if one panelist is involved)
* LOCALIZATION OF ICANN'S DISPUTE RESOLUTION POLICY TO JAPAN
Given these efforts/achievements by ICANN and looking into the future
of JP domains in pursuit of freer registration, JPNIC's Domain Name
Working Group (DOM-WG) has decided to form a "Domain Name Dispute
Resolution Task Force (DRP-TF)" consisting mainly of legal experts in
intellectual property rights and unfair competition and existing
mediating and arbitrating bodies/personnel.
This Task Force will perform its tasks with the main aim of localizing
the "Uniform Domain Name Dispute Resolution Policy" and "Rules for
Uniform Domain Name Dispute Resolution Policy" formulated by ICANN
while carefully considering the Japanese legal system and mediation
and arbitration systems. In addition, the Task Force will also take
into account the characteristics of the Internet as a globally
borderless media in view of possible international disputes in
performing its tasks.
A result produced by the Task Force will be submitted to the JPNIC
Steering Committee as a recommendation, then publicized in order to
receive comments from the public as well.
2. Positioning of the Task Force and its Makeup
The Task Force will be positioned as an external reporting
subcommittee of the Steering Committee and report on deliberation
results to the Steering Committee.
The name, objective and makeup of the Task Force are as follows:
Name: Domain Name Dispute Resolution Policy Task Force
Abbreviation: DRP-TF
Objective:
Deliberate a policy for resolution of domain name disputes and
specific measures and ways to implement the policy.
Makeup (titles omitted from names; listed in the order of the Japanese
syllabary):
Chief Examiner
Kazuko MATSUO
Attorney-at-Law and Patent Attorney at Nakamura and Partners; former
chairman of Intellectual Property Committee at the Japan Federation of
Bar Associations; currently chairman of the Design and Trademark Sub-
committee of the Intellectual Property Committee; Managing Director of
the Japan Trademark Association
Members
Yasuhiko OSHIMOTO
Patent Attorney at Oshimoto Patent and Trademark Office; former
chairman of Trademark Committee of Japan Patent Attorneys
Association; Deputy manager of Japan Trademark Association Office
Hisashi ODA
Legal Division, Fujitsu Ltd.; member of JEIDA, EIAJ, and JBMA
Information Appliance Committee Intellectual Property Subcommittee;
Member of the JPNIC Domain Name Working Group
Masanobu KATO
General Manager of Fujitsu Washington Office; member of the ICANN DNSO
Names Council
Takeshi KIKUCHI
Attorney-at-Law at Shinbashi International Law Office; Vice president
of Japan Industrial Property Arbitration Association; Director of
Japan Commercial Arbitration Association
Tsugizo KUBO
Former Chairman of the Trademark Committee of Japan Intellectual
Property Association (JIPA); Former member of the Panel of Experts for
the WIPO Internet Domain Name Process; Member of the JPNIC Domain Name
Working Group
Takeshi KOJIMA
Professor of Law at Chuo University Faculty of Law; Ministry of
Justice Legislative Council on Civil Procedure; former president of
Japan Civil Procedure Law Association
Keita SATO
Associate Professor of Law at Chuo University Faculty of Law
Kensuke NORICHIKA
Excecutive director of Software Information Center (SOFTIC); panel of
experts for the WIPO Internet Domain Name Process
Naomasa MARUYAMA
Vice President of JPNIC
Naoki MIZUTANI
Mizutani Law and Patent Office; Attorney-at-Law; Patent Attorney;
member of Intellectual Property Law Committee of Japan Federation of
Bar Associations; special researcher of Software Information Center
(SOFTIC)
Masami MUROMACHI
Attorney-at-Law; Tokyo Marunouchi Law Office
Kozo YABE
Attorney-at-Law
Yuasa and Hara
Vice Chair of Legal System Commitee, the Japan Trademark Association
Member and Coordinator
Toshihiro TSUBO
Member of the JPNIC Domain Name Working Group; President of Global
Commons, Inc.
Observers
Ministry of International Trade and Industry; Japanese Patent Office;
Ministry of Posts and Telecommunications
In order to facilitate the Task Force's operation, a Drafting
Subcommittee will be formed with the following makeup.
Drafting Subcommittee (titles omitted from names; listed in the order
of the Japanese syllabary)
Members:
Tsugizo KUBO, Toshihiro TSUBO, Naomasa MARUYAMA, Masami MUROMACHI,
Kozo YABE
3. Agenda for Deliberation
The Task Force will deliberate the following agenda.
(1) Policy for resolution of domain name disputes
(2) Procedural rules for the dispute resolution policy
(3) Connection with domain name registration rules
(4) Others
- Selection of dispute resolution service providers
- Establishment of laws/regulations for the prevention of abusive
domain name registration
4. Schedule
The Task Force will be formed and proceed with deliberation in
accordance with the following schedule.
Early December, 1999
Members determined
Notify the public of the establishment of the Task Force
Initiate drafting for agenda items (1), (2) and (3)
December 16
Internet Week '99 DOMAIN-TALK meeting
Late December
1st DRP-TF
Topic: Clarification of point at issue
Late January, 2000
2nd DRP-TF
Topic: Deliberation of draft document
Late February
3rd DRP-TF
Topic: Deliberation and determination of report document
Mid March
Domain Name Working Group March meeting
Topic: Examination of report document
Mid March
Steering Committee
Topic: Examination of report document
Late March
Notification to the public; call for public comments (2 months)
Late May
Formulation and publication of final document
