March 1, 1999 Japan Network Information Center Policy Toward Domain Name Dispute 1. Introduction Despite the fact that there has been no court judgment about domain name in Japan as in many other countries, the policy toward the Domain Name Dispute is becoming an integral part of the responsibility in registering domain names. This document explains policies of the Japan Network Information Center(JPNIC) toward this issue. 2. Background Current JPNIC policies about domain name registration are as follows: i. first come, first served, ii. one domain name per organization, iii. restriction of domain name transfer, iv. local presence in Japan. Among these four, JPNIC believes that "one domain name per organization" and "restriction of domain name transfer" provide deterrent effects against cyber squatting, one of the typical causes of domain name dispute relating to trademark and trade-name. Under these fundamental policies and considerations, JPNIC did not further establish procedures for preemption of abusive registration, or for challenge against registered domain names based on claims of trademark or trade name rights. However, recent explosion of domain name registration leads the JPNIC to reconsider domain name dispute policy, and how intellectual property issues relate to it. 3. New revision of Domain Name Registration Rules In March 1998, JPNIC effectuated a new revision of the Domain Name Registration Rules, and the above-mentioned policies have been retained as important parts of the new rules. In establishing the revision, JPNIC basically identified two categories of disputes for domain names: i. dispute between JPNIC and an applicant, relating to the procedure for domain name registration; ii. dispute between a domain name holder and an owner of a trademark or trade name, for example as in a dispute based upon the Trade Mark Act of 1960 or the Unfair Competition Prevention Act of 1994. For the later case, the JPNIC considered four possible methods to resolve the dispute; i. introducing a "preemption system" based upon trademark or trade name; ii. empowering the trademark or trade name owner against the domain name holder based upon that trademark or trade name, thus allowing the trademark or trade name owner to demand JPNIC to suspend the domain name. iii. providing a "panel" by JPNIC to handle the dispute between the parties, which would have a similar function to an arbitration organization or a mediation authority; iv. establishing a structure able to enforce the legal decision which prohibits a domain name holder to use the registered domain name. Each of these four methods has merits and demerits. From the JPNIC's consideration, the first three of the above-mentioned methods are not realistic unless an available data-base of trademark, trade name and clear judicial precedents is established. Hence the last method is the only available one which the JPNIC can currently adopts. 4. Dispute Policy in the New Rule Considering the above viewpoints, the JPNIC establishes the following provisions. Article 30. (Revocation) JPNIC may revoke any domain name; (1) when it is found that there is just cause to reject a domain name registration application; (2) when its Registrant fails to comply with any request pursuant to Article 4.2 or any of its obligations under Article 26.2 or Chapter 7; (3) when a certified copy of any final court decree, settlement agreement or stipulation, conciliation agreement or arbitration judgment which prohibits use of such domain name and which is enforceable in Japan or any other document analogous thereto is provided by any third party; or (4) when any circumstances arise under which the registration of such domain name shall be clearly and presently inadmissible to the public. Article 31. (Revocation Proceedings) 31.1 Any decision for revocation set forth in Article 30 shall be made, upon the Secretariat's advice, after scrutinies, by the Board of Trustees or a Reviewing Committee consisting of at least three (3) members of the Board of Trustees to be appointed by the Board(the Board of Trustees and such review committee being hereinafter sometimes collectively referred to as the "Reviewing Committee"). 31.2 In the event the Reviewing Committee scrutinizing any proposed revocation case pursuant to Section 31.1, it shall provide the relevant Registrant with prior notice of hearing specifying, among other things, the date, time and place on or at which a hearing shall be held at least two (2) weeks before the day set for the hearing. This structure doesn't provide an active domain name solution policy, but just a contractual frame work in which the JPNIC can revoke the registered domain name under a final court decree or anything resembling that. From the JPNIC's points of view, however, the responsibility of the JPNIC toward the domain name dispute is not to establish a legal structure which would compromise the conflicting interests of the domain name holder and the trademark or trade name owner, but to establish a framework under the Domain Name Registration Rule that would reflect the judicial decree, etc... and resolve disputes in accordance with existing legal apparatus and public policy. 5. Conclusion The JPNIC realizes the chaos of conflicting interests. It also understands there are several alternatives to be considered for the framework of handling domain name disputes. JPNIC shall make its best effort to study the issues and continue searching for more appropriate solutions. Dialog with the Arbitration Center for Industrial Properties March 1, 1999 Japan Network Information Center Naomasa Maruyama The Arbitration Center for Industrial Properties was founded jointly by Japan Patent Attorney Association(JPAA) and Japan Federation of Bar Associations(Nichibenren) in March of 1998. At that time, JPNIC had just finished the renewal of Domain Name Registration Rules, and was further looking at possibilities of so-called "Alternative Dispute Resolution(ADR)" in Japan. Fortunately, the Arbitration Center showed interest in ADR, so we started to hold a discussion on this topic. This discussion is, in some sense, similar to the discussion about ADR for Generic TOP level domains(gTLDs), which is taking place under the initiative of the World Intellectual Property Organization(WIPO). In spite of discussions which have continued for about ten months, we still can not find a way to start the ADR, but have been able to reach some common understandings: 1. A system like ADR is quite important to prevent "Cyber squatting". 2. The domain name itself does not automatically constitute "use" of a trademark in the sense of the Trademark Act. 3. In almost all cases of domain name dispute, it is necessary to take the Unfair Competition Prevention Act into account, as well as the Trademark Act. The second point is very important for Domain Name registries: it means that it is not so easy to apply Trademark rights to domain name policies. In this sense, JPNIC can not completely accept the current Domain Name Dispute Policy of NSI. The third point is also an important observation. This means that ADR might go beyond the patent attorneys' scope of practice, and because the Arbitration Center for Industrial Properties is co-founded by JPAA and Nichibenren, this might constitute a rather high barrier preventing the Center from running ADR. Recently, Nichibenren sent their opinion to the Japan Patent Office asserting that the current restriction for the patent attorneys' scope of practice should be relaxed to include the cases of unfair competition which are closely related to intellectual properties. This is, perhaps, a good sign for the possibility of creating ADR under the Center.