Today many
developing countries are revising their legal framework to take
advantage of the opportunities afforded in the digital environment.
One common issue that arises is how to deal with cyberpiracy in
the top level country code (ccTLD). Policymakers and lawmakers
at a local level will benefit from following international developments.
Cyberpiracy
is the deliberate, bad faith registration as domain names of "well-known"1
and other trademarks. This is done by persons hoping either to
sell the domain names to the owners of those marks, or take unfair
advantage of the reputation attached to those marks.
The problem
of cyberpiracy has been facilitated by the differences of the
two systems for business identifiers-the domain name system (DNS)
which facilitates electronic commerce, and the traditional system
of intellectual property rights protection. The DNS system is
largely privately administered and gives rise to registrations
that result in a global presence, accessible from anywhere in
the world. The intellectual property rights system is publicly
administered on a territorial basis and gives rise to rights that
are exercisable only within the territory concerned.
Handling
cyberpiracy
Internationally
cyberpiracy is currently being fought on two fronts: legislative
action and improved domain name registration procedures (including
dispute resolution) at the level of the registration authorities.
A number of countries have introduced legislation to combat cyberpiracy.
However, until a more uniform systematic approach is formulated
at the international level, the mere enactment of legislation
in developing countries will not be the most desirable method
for dealing with cyberpiracy. This is because:
- The nature
of the infringement of the Domain Name System changes rapidly.
While trademark infringement is the major problem, abuses of
other recognized identifiers, such as trade names and geographical
names are increasing.2
Policies aimed at dealing with cyberpiracy will likely need
to be updated on a regular basis. However, the nature of the
legislative process is such that it does not lend itself easily
to frequent revisions.
- If countries
choose to enact legislation ostensibly designed to combat cyberpiracy
without harmonizing their efforts, what is likely to emerge
is a body of inconsistent laws and regimes. This will result
in difficulties in the application and enforcement of the laws
particularly with respect to questions of jurisdiction and applicable
law.
- Legislation
leaves the issue of enforcement to the courts. Court proceedings
are generally expensive and slow, and the results are difficult
to enforce in an international context. Further, there is a
dearth of expertise in this area at the judicial level in many
countries.
Consequently,
most international current efforts to curb infringements of the
Domain Name System are aimed at creating better registration practices
and dispute resolution procedures of domain registration authorities.
This is the case both in the generic top-level domains, as well
as in the country code-level domains. In light of the above, alternative
dispute resolution procedures, based on policies adopted by domain
name registration authorities, have met with considerable success.
As these policies are based on contract they are far easier to
revise than laws. A uniform standard for alternative dispute resolution
procedures has emerged in the form of ICANN Uniform Domain Dispute
Resolution Policy.
ICANN
and the Uniform Dispute Resolution Policy Process
Internet Corporation
for Assigned Names and Numbers (ICANN), the corporation established
for the technical management of the domain name system, has instituted
the Uniform Dispute Resolution Policy (URDP) for domain name disputes.
Four alternative
dispute resolution (ADR) providers have been selected by ICANN.
The World Intellectual Property organization (WIPO), National
Arbitartion Forum, Disputes.org/eResolution Consortium, and the
CPR Institute for Dispute Resolution.
While the
URDP applies primarily to the domain names in the .com .net .org
.biz and .info top level domains, a number of developing countries,
including Anguilla, Antigua and Barbuda, Bahamas, Guatemala, Namibia,
Niue, Philippines, Trinidad and Tobago and Venezuela have adopted
a version of the URDP. This allows disputes involving domain names
in those country code top-level domains to be resolved under the
URDP process.3
There are
several advantages to using the UDRP- speed; decisions are handed
down in about 45-60 days. In most developing countries the courts
tend to be overburdened, and cases may take years to resolution-definitely
not the best scenario in the world of e-commerce. The URDP is
also inexpensive; an important consideration when one of the parties,
particularly the complainant, is from a developing country and
the other is not.
The process
is also quite simple in practice. Each party submits only one
document. There is no need for the complainant to track down the
other party to effect service of documents, as in traditional
cybersquatting litigation.
To develop
consistency in the decisions of the arbitrators, ICANN has formulated
rules for the standards governing domain name disputes. ICANN
has also provided illustrative examples of conduct, which is consistent
with legitimate interest, and conduct that constitutes bad faith.
WIPO's
ccTLD program
WIPO has launched
a ccTLD Program, the objective of which is to provide assistance
to the administrators of the ccTLDs in the following areas:
- the design
of appropriate domain name registration practices aimed at preventing
friction between domain names and intellectual property rights;
- the design
of appropriate dispute resolution procedures, to complement
traditional court litigation, aimed at resolving domain name
disputes expeditiously and at a moderate cost; and
- the provision
of dispute resolution services through the WIPO Arbitration
and Mediation Centre to any ccTLD administrator who wishes to
retain it for that purpose.
WIPO has published
"ccTLD Best Practices for the Prevention and Resolution of
Intellectual Property Disputes " which is available at http://ecommerce.wipo.int/domains/cctlds/bestpractices/bestpractices.doc
