WRITTEN QUESTION E-3272/02

by Michl Ebner (PPE-DE) to the Commission

(19 November 2002)

Subject: Protection against unfair competition on the Internet domain-grabbing

In Regulation (EC) No 733/2002(1) of 22 April 2002 the EU has established an important and necessary instrument for the introduction of the .eu top level domain. Two of the objectives pursued by the European Union in this Regulation are to protect firms against the speculative and abusive registration of domain names and to provide a special pre-registration period for public bodies to register their domain names (see in particular Recital 16 and Article 5 of the Regulation). However, what action should be taken as regards generic top level domains such as .com, .info, .biz, etc., where the rules are strongly influenced by the American system? The practice of domain-grabbing is now more widespread than ever, causing serious damage for firms. When businesses are set up, they often find that the name of the new firm has already been registered as a second level domain by a domain grabber with the sole intention of selling it again. Where the firm concerned does not possess a registered trademark, it generally encounters serious difficulties in having the domain transferred. This often poses a serious obstacle to a successful and carefully planned Internet launch. The result is that the free movement of goods within the European internal market is hindered. Transparency and hence security on the Internet are particularly jeopardised in the area of geographical designations, which cannot be protected by trademark registration. This concerns geographical names which are of interest from the point of view of tourism (valleys, mountain slopes, villages, districts, tourist areas, etc.).

1. Does the Commission consider domain-grabbing to be a practice which runs counter to transparent and fair competition and has particularly adverse implications for consumers, for which reason it should be banned throughout the Community?

2. If so, what concrete steps will it take against domain-grabbing?

3. More specifically, will the Commission seek to ensure that geographical designations in the widest sense receive special protection in relation to domain names, on a Community-wide basis?

4. If so, what specific form will such action take?

(1) OJ L 113, 30.4.2002, p. 1.

Answer given by Mr Liikanen on behalf of the Commission

(21 January 2003)

The Commission is aware of the practices concerning Internet domain names highlighted in the Honourable Member's enquiry.

As the Honourable Member points out, the Union has sought to protect companies from certain abusive practices through provisions included in Regulation (EC) No 733/2002 of the Parliament and of the Council of 22 April 2002 on the implementation of the .eu Top Level Domain (TLD). These provisions foresee the protection of geographical concepts.

In addition to the public policy measures to be taken in the context of the .eu TLD which shall include aspects of inter alia prior rights, protection of geographical concepts, and treatment of intellectual property and other rights, the Commission has launched in August 2002 an on-line survey on the phenomenon of cybersquatting and will launch an in depth study next year. The results of these initiatives will help the Commission assess the need for any further action.

With regard to generic Top Level Domains (gTLDs) no harmonisation on a global level as to which rules that apply has been achieved. For trademarks, in particular, legal protection is generally provided by national laws and/or by the Uniform Dispute Resolution Process (UDRP) principles adopted by the Internet Corporation

for Assigned Names and Numbers (ICANN) in consultation with the World Intellectual Property Organisation (WIPO). With regard to other types of names, like trade names, personal names or geographical names, they may only rely on national law for their protection.

The World Intellectual Property Organization (WIPO), aware of this situation, has undertaken an extensive consultation process on domain names and has concluded at a meeting at the end of September 2002 that it would not, at this stage, submit additional proposals concerning the extension of the UDRP to deal with domain-grabbing involving personal names. During that meeting, it was also agreed to continue monitoring the situation with regard to international non proprietary names of pharmaceutical products (INNs) and trade names while recommending specific types of protection for intergovernmental organisations (IGOs) and country names. As concerns Geographical Indications, the Commission, with the full support of the Member States, has insisted in ensuring the highest possible level of protection for geographical indications in the Domain Name System. Hence, during the 9th session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (WIPO SCT) which took place in Geneva from 11 to 15 November 2002, the Commission Delegation requested the International Bureau to prepare a paper summarising the discussions that have taken place on this in this fora. That document shall constitute the basis of a substantive discussion during the tenth session of the WIPO SCT in May 2003.

The Honourable Member may find more detailed information in http://ecommerce.wipo.int/domains/ and http://www.wipo.int/sct/en/.