From: Rhonda Steele Sent: Tuesday, 27 March 2001 10:41 AM To: jo.lim@auda.org.au Subject: Domain Name Advisory Panel - Submission in respect to Public Consultation Report Domain Name Advisory Panel ? Submission in response to Public Consultation Report Effem Foods Pty Ltd (Effem Foods), a member of the Mars, Incorporated group of companies, welcomes the opportunity to respond to the Second Public Consultation Report ("the second report") issued by the auDA Name Policy Advisory Panel ("the Panel"). 1. Summary Effem Foods supports the following aspects of the second report: · the desirable attributes of a good domain name policy; · the relaxation of the eligibility criteria for domain name registration to include registered trademarks; · the removal of the limit of one domain name per entity; and · the implementation of a standard dispute resolution procedure into domain name licences. Effem Foods suggests: · further relaxation of the eligibility criteria; · implementing a more effective method for the transfer of domain names; · allowing the nomination of a position within an entity, rather than an individual, as the administrative contact person. 2. Desirable attributes of good domain names policy Effem Foods agrees with the desirable attributes stated by the Panel in the First Public Consultation Report. Domain names are now considered to be valuable business assets, thus a strong domain name policy which is coherent, flexible, simple, predictable and fair is vital. 3. Recommendation 3.1.2 (g) The domain name licence applicant must agree to be bound by any Dispute Resolution procedure specified by auDA. Effem Foods agrees that dispute resolution procedures are crucial in providing a stable domain name policy in which consumers and businesses will place their trust and respect. By implying the standard dispute resolution procedures into each domain name licence, there will be consistency and increased confidence in the system. However, it is then even more important that the dispute resolution procedures are accessible, cost effective and reliable. Please see comments below at paragraph 5 on dispute resolution procedures. 4. Relaxation of the eligibility criteria to include registered trademarks and removal of the limit of one domain name per entity. Effem Foods supports the relaxation of the eligibility criteria to include registered trademarks. In many businesses, consumers are familiar with products marketed using a trademark but are not necessarily familiar with the origin of the product. The option of registering a domain name using the trademark is beneficial. However, Effem Foods sometimes wishes to use particular domain name addresses to complement customer and consumer promotional activity; these domain name addresses are invariably in the form of the name of the promotion rather than the particular trademark to which the promotional activity relates and it would not, in the ordinary course, seek trademark protection for these promotional names. Additionally, it is sometimes necessary to launch a product using a trademark for which an application has been filed but in relation to which registration is unlikely to issue for quite a few months. The delay in being able to obtain the domain name whilst the trademark registration process is completed could prejudice the ultimate acquisition of the domain name as someone else could obtain it independently via the business or company name route in the intervening period. The removal of the limit of one domain name per entity is also strongly encouraged. Effem Foods uses a number of trademarks to market its various products and the possibility of having separate domain names for these products without registering separate business or company names that serve no other purpose reduces unnecessary business costs and opens more business opportunities. However, Effem Foods believes that the relaxation does not extend far enough. The criteria are still too restrictive and impose unnecessary costs on Australian businesses. The following are examples of genuine entities which, under the present system, are unable to register a domain name in the .com.au domain space: · businesses who are just "testing the water" in the on-line environment, but as yet do not wish to go to the expense of registering a business name or trademark; · other legitimate businesses without registered business names or trademarks; and · trademark licensees. The second report mentions the abuses of the business name registration system which have arisen as a result of the current domain name policy. Despite the fact that the trademark application process is more expensive and more detailed, the inclusion of trademark registrations as a sufficient basis for a domain name registration opens the trademark registration system to the possibility of the same abuses ie people registering trademarks which they have no intent to use in order to obtain domain name registrations. The trademark could be filed in any of the 42 classes and it would be easy to avoid obstacles presented by the registration of a well known mark in one class by simply filing for very different goods in a different class. The costs of any of these types of requirement far outweigh any benefits of such imperfect filtering mechanisms. Effem Foods suggests that removing the restrictions of the eligibility criteria for domain name registration would not result in an overload of registrations nor an increase in cybersquatting in the Australian domain space. This has not been the experience in the United States or New Zealand where no such restrictions exist. There are several mechanisms already in place in Australia which would be sufficient to ensure that only bona fide domain name registrations occur: · the dispute resolution procedures in domain name licence agreements for dealing with bad faith registrations; · the bona fide intention declaration recommended under 3.1.3 (c) of the second report; · the misleading and deceptive conduct provisions under the Trade Practices Act (1974); and · the possibility of a passing off action under common law. Additionally, Effem Foods suggests that implementing a procedure for the deregistration of a domain name for non-use would assist entities if a competitor or cybersquatter registered a domain name to prevent access by the rightful registrant with no intention to use the domain name for a proper purpose. Entities should be able to deal with a domain name as they would any other business asset, including selling or transferring it. However, under the current registration criteria, unless the entity sells the business name or the trademark as well, the purchaser is unable to register the domain name unless it can be derived from their own business name or trademark registration. Equally, an entity which licences the use of a trademark to a third party should be able to transfer that domain name registration into the third party's name. Currently this is not possible. 5. Recommendation 6.2.1 ? Dispute resolution procedures should apply to all open 2LDs, and to closed 2LDs on an opt-in basis, with appropriate modifications if necessary. Effem Foods strongly agrees with the recommendation that dispute resolution procedures apply to all open 2LDs and, as discussed above, Effem Foods believes that auDA should implement a dispute resolution procedure which is implied into every domain name licence. Effem Foods recommends that auDA adopts the Internet Corporation for Assigned Names and Numbers ("ICANN") Uniform Dispute Resolution Procedure ("UDRP") in its present form for dealing with bad faith domain name registrations. The ICANN UDRP has worked effectively to date and has been adopted in several countries in the region, for example American Samoa, the Philippines and Guatemala. It is a process which is inexpensive, efficient and binding. The Internet is an international medium which covers multi-jurisdictions. However, in order for user confidence in the system to allow the Internet to continue to develop, consistency is important. By adopting the ICANN UDRP in Australia this consistency will be increased. Presently there are several WIPO panellists approved by ICANN in Australia. However, as there are no hearings involved in the ICANN process, all submissions are made in writing to be considered by the panellist/s, thus the location of the panellists is not crucial. A uniform, accessible, effective dispute resolution procedure is essential for the resolution of domain name disputes involving bad faith. The ICANN UDRP has been tested and found to satisfy these requirements. Effem Foods recommends adopting this procedure in Australia for use with all open 2LDs. 6. Further comments on Domain Name Registration 6.1 Transferring of domain names Effem Foods recommends that a more effective method of transferring domain names be adopted by auDA for domain names in Australia. Presently, the registrant of a domain name has to cancel their registration and then the new entity has to re-register in order to use the domain name, unless the current registrant consents to the cancellation. This process is time consuming and there are risks associated with the time delay between the cancellation of the registration and the registration by the new owner. In this time, a third party could apply for registration and be accepted. 6.2 Administrative contact person At present, an entity is required to nominate a person who will be the contact should an issue arise with the domain name registration. Effem Foods suggests that there be provision for a position within an entity to be nominated rather than an individual person. Individuals may leave or be transferred during the registration period, whereas if a position is nominated, there will always be a domain name contact within the entity. An additional concern arises from the publication of the individual's details on the Internet. Some individuals object to this publication of their name and details. A position is more generic and will overcome this concern. * * * * * Effem Foods supports the majority of the recommendations made by auDA in the second report. It believes however that those recommendations can and should be significantly strengthened to the great benefit of businesses in Australia and without any material adverse impact on consumers. Yours sincerely Rhonda A. Steele For and on behalf of Effem Foods Pty Ltd