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Public
Comments on the "Consultation Paper on the Review on Administration
and Assignment of Internet Domain Names and Internet Protocol Addresses
in Hong Kong"
| Reference
No. |
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DN19 |
| Date
of Submission |
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14.07.2000 |
| Submitted
by |
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Ms
Eva Chan |
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General
Manager, Regulatory Advocacy |
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Cable
& Wireless HKT Limited |
Consultation
Paper on the Review on Administration & Assignment of Internet
Domain Names and Internet Protocol Addresses in Hong Kong
CWHKT
welcomes this opportunity to comment on the administration and assignment
of Internet domain names and Internet protocol addresses in Hong
Kong.
CWHKT's
Views
CWHKT
is broadly supportive of the recommendations put forward by the
Taskforce in its report. CWHKT welcomes the Taskforce's statement
that appropriate registration policies should be drawn to strike
a balance between encouraging the development of electronic commerce
in Hong Kong and guarding against cyber squatting. CWHKT believes
that as expressed in the World Intellectual Property Organisations
Final Report of the WIPO Internet Domain Name Process (the WIPO
Report) that it is important that proposed registration practices
do not hamper or distort the speed with which events are able to
occur in the Internet world. Overly restrictive registration practices
will not only distort the speed with which activities on the Internet
occur but will also result in a stifling of other key strengths
of the Internet which include its ability to foster innovation and
encourage diversity. CWHKT also believes that given
the global nature of the Internet the practices adopted by Hong
Kong must be in line with those adopted internationally.
Given
these fundamental principles, there are a number of recommendations
on which CWHKT would like to comment. These recommendations
are set out below.
Reserved
List
The
Taskforce recommends that the registration authority should draw
up a reserved list of well-known international trademarks, services
marks and brand names and make the list available on the Internet.
It is suggested that such a list could be based on the reserved
lists prepared by other cc TLD registration authorities. CWHKT
suggests that in developing any such list of names the registration
authority could be guided by the WIPO Report in terms of the factors
that should be taken into account in determining whether a mark
is well known. The non-exhaustive criteria that have been
put forward in the WIPO Report include:
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the degree of knowledge or recognition of the mark in the relevant
sector of the public;
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the duration, extent and geographical area of any use of the mark;
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the duration, extent and geographical area of any promotion of
the mark including advertising or publicity and the presentation,
at fairs or exhibitions, of the goods and/or services to which
the mark applies;
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the duration and geographical area of any registrations, and/or
any applications for registration, of the mark, to the extent
that the reflect use or recognition of the mark;
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the record of successful enforcement of rights in the mark, in
particular, the extent to which the mark was recognised as well
known by courts or other competent authorities; and
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the value associated with the mark
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evidence of the mark being the subject of attempts by non-authorised
third parties to register the same or misleadingly similar names
as domain names.
Format and business nature of a domain name
The Taskforce recommends that the second level domain name category
being selected for a particular domain name application should similarly
correspond to the business nature of the applicant and suggest that
it might seek evidence from the relevant business registry in order
to confirm that this is the case.
CWHKT appreciates that the motivation behind this recommendation is
to deter cybersquatting. However CHWKT believes that this approach
is likely to limit the ability of parties to develop new businesses
and seek out new opportunities if they are to be limited to registering
a name that corresponds to their existing business name or which is
in accordance with their current provision of goods or services. CWHKT
believes that there are more appropriate ways to deal with the issues
of cybersquatting than by providing overly restrictive rules on the
domain names that particular parties can register.
Multiple Registrations
CWHKT firmly supports the ability of a party (other than an individual)
to register multiple domain names provided that other steps to deter
cybersquatting are taken in parallel with this approach.
Transferability of domain names
CHWKT supports the transferability of domain names on valid grounds
such as the ownership or distribution right of a company, its products
or services has been transferred. CWHKT also believes that there should
be some limited scope for the commercial transferability of domain
names. CWHKT does not support purposeful resale of domain name for
commercial gain. CWHKT can envisage circumstances where commercial
transfers would be appropriate such as in circumstances where a company
with a legitimate right to a domain name goes into liquidation, for
example, and the liquidator in charge of that company could obtain
a commercial price for the transfer of that name. In such circumstances
CWHKT believes that there should be no bar on the commercial transfer.
Clear guidelines on circumstances under which domain names could be
transferred should be made public.
First Come, First Served
While CHWKT supports the first come, first served principle on the
basis that such a principle avoids unnecessary delays involved with
requiring a registrar to search all of the applicable information
to determine whether there is a party with a more legitimate right
to the domain name then the applicant, CHWKT agrees that the applicant
must be required to give a representation that to the best of the
applicant's knowledge that the domain name does not interfere with
or infringe the intellectual property rights of another party.
CWHKT would suggest that the Taskforce should perhaps consider the
wording adopted by ICANN which requires the applicant to represent
that to the best of its knowledge and belief, neither the registration
nor the manner in which it is directly or indirectly used infringes
the legal rights of a third party. CHWKT also believes that the applicant
should be required to make a representation that all of the information
provided by the applicant is true and accurate.
Renewal of domain names
CWHKT supports the Taskforce's recommendation that domain names should
be subject to a renewal process and that the renewal fees should cover
the administrative costs of the process and enable the registration
authority to operate on a self-financing basis. CHWKT believes that
the Taskforce should consider the recommendation put forward in the
WIPO Report that failure to pay the renewal fee within a specified
time should result in cancellation of the registration.
CHWKT also suggests that the Taskforce should consider whether if
at the time of renewal of a registration of a domain name, applicants
who have yet to commence using the domain name should be required
to make a statement as to their intention to use the domain name during
the period of the next renewal. While CWHKT acknowledges that
in the WIPO report it was recognised that there are circumstances
in which it might be legitimate to register a domain name and to hold
it "without" use and that therefore a statement of intention to use
should not be required, CWHKT believes that the issue requires further
consideration particularly given that there has been no discussion
of how long a renewal period should last for. CHWKT believes that
if long renewal periods are to be chosen then there may well be benefits
in introducing a requirement that on renewal, a party who has yet
to commence using their domain name should be required to make a statement
as to their intention to use the domain name within the next renewal
period.
Individual Domain Names
While supportive of the proposal that individuals should be allowed
to register their names in a new second level domain under. hk, CWHKT
queries how exactly the requirements that such domain names should
be required to be derived directly from the names appearing on their
Hong Kong identity cards will be resolved alongside the obvious problem
of individuals with identical names. CHWKT believes that there
are a number of issues which will require careful resolution before
this policy can be proceeded with.
Dispute Resolution for .hk Domain Names
The Taskforce's recommendations with respect to dispute resolution
issues relating to domain names is that:
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the registration authority may appoint organisations which provide
arbitration and mediation services to act as domain name dispute
resolution service providers. The registration authority and the
dispute resolution service providers will agree on a stipulated
service level (e.g. turn around time, availability of qualified
panellists to serve the arbitration panels, factors to be taken
into consideration in deciding disputes etc)
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the dispute resolution procedure will be invoked if the claimant
is able to produce the following evidence to one of the service
providers-
- the
registered domain name is identical or confusingly similar
to a trademark or service mark to which the claimant has rights;
- the
registrant has no rights or legitimate interests in respect
of the domain name; and
- the
registered domain name is being used in bad faith.
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the dispute will be handled by an independent arbitration panel
provided by the dispute resolution service provider.
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the arbitration panel will inform the disputed parties once a
decision has been made. In the event that the registrant loses,
an appeal against the decision may be made to the courts in Hong
Kong within a specified period. If no appeal is made within
the stipulated period, the domain name of the registrant will
be deleted from the domain name database.
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the domain name registrar receiving complaints against domain
name will take no action until it receives instructions from the
registrant or an order of a court or a dispute resolution service
provider handling the concerned dispute.
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notwithstanding the establishment of an alternative dispute resolution
procedure parties involved in domain name disputes may go
to the court to resolve their dispute before the alternative dispute
resolution procedure commences or to contest the result of the
dispute resolution.
CWHKT
supports the idea of a dispute resolution process to provide a speedy,
efficient and cost effective alternative to litigation. CHWKT agrees
however that the overall right to litigate should be retained for
the parties. CWHKT would also suggest that the Taskforce should
consider mandating a requirement as that domain name applicants
should in the domain name agreement be required to submit without
prejudice to other potentially applicable jurisdictions to the jurisdiction
of the courts of the country where the registrar is located.
A similar requirement that domain name applicants be required to
submit to jurisdiction was recommended in the WIPO Report.
CWHKT
believes that it is important for the dispute resolution procedure
to ensure as far as possible that the decisions that are made by
arbitration panels are based on consistent principles.
CWHKT also believes that in order to ensure the speedy resolution
of disputes the arbitration panel should only be entitled to rule
on the validity or otherwise of the applicants claim to the domain
name, the transfer of the domain name registration to the third
party complainant and the allocation of the responsibility for payment
of the costs of the proceedings.
CWHKT
believes that in assessing the question of whether a domain name
has been registered in bad faith the following factors which were
put forward in the WIPO Report should be considered as evidence
of the registration and use of a domain name in bad faith:
(i) an offer to sell, rent or otherwise transfer the domain name
to the owner of the trade or service mark, or to a competitor
of the owner of the trade or service mark for valuable consideration;
or
(ii) an attempt to attract for financial gain, Internet users to
the domain name holders website or other on line location, by creating
confusion with the trade or service mark of the complainant; or
(iii) the registration of the domain name in order to prevent the
owner of the trade or service mark from reflecting the mark in a
corresponding domain name, provided that a pattern of such
conduct has been established on the part of the domain name holder;
or
(iv) the registration of the domain name in order to disrupt or
cause inconvenience to the business of a competitor.
CWHKT
also believes that a key issue relating to the alternative dispute
resolution process with respect to domain names is the level of
costs above. CWHKT agrees with the WIPO Report findings that
the dispute resolution procedure is likely to entail the following
cost elements;
(i) an administration fee to be paid to the dispute resolution service
provider;
(ii) the fee to be paid to the panel of decision makers;
(iii) other fees that may be incurred in relation to the proceedings.
CHWKT
believes that while the third party claimant should be required
to pay an administration fee at the outset of the process, the sharing
of costs and perhaps the reallocation of the liability for
the administration fee between the parties is a matter that CWHKT
believes can be fairly left to the arbitration panel to be decided
on conclusion of the arbitration process.
CWHKT
also believes that the procedures to be adopted by the arbitration
panel should be as speedy and efficient as possible. In this case
CWHKT believes that the use of electronic or on line filings as
suggested in the WIPO Report should be considered.
Proposed
Institutional Arrangements
While CUHK is the only registrar in Hong Kong now, it is CWHKT's
view is that if there are other qualified parties interested to
provide the service, these parties should be invited to be the registrar.
CWHKT appreciates that more competition may drive down the cost
and improve service quality.
Regardless
of whether the new non-statutory, non-profit making corporation
is to be spun off from JUCC, it is important that the organization
has an appropriate level of transparency, in particular in making
its new rules and decision. It is also desirable if an appeal
mechanism can be established for check-and-balance.
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