COMPUTER ##### #### ##### ##### ##### # ### ##### ##### LAW # # # # # # # # # # # # # # # #### ### ### #### # # ### #### # # # # # # # # # # # # # ##### #### ##### ##### # # # ##### # # ============================================================= October, 1997 Computer Law Observer Issue No. 28 ============================================================= The Computer Law Observer is distributed monthly for free by Challenge Communications and is edited by William S. Galkin, Esq. or http::/www.lawcircle.com/galkin. Back issues of the CLO are at http://www.lawcircle.com/observer. To subscribe to the Computer Law Observer, simply send an e-mail message to listserv@maelstrom.stjohns.edu with the words "subscribe lawobserver" (without the quotation marks) typed into the message area. After subscribing, you will receive a message requesting that you confirm your subscription. You will need to reply "ok" (without the quotation marks) to this message to confirm your subscription. To unsubscribe, follow the same procedure, substituting the word "unsubscribe." ********************************************************************** The following article has been published in Computer and Telecommunications Law Review - October 1997 (Sweet & Maxwell, London) and will be published in European Intellectual Property Review Special Issue on the Internet - December 1997 (Sweet & Maxwell, London). This article is redistributed here with permission of the publisher. For more information, please refer to http://www.smlawpub.co.uk . Copyright 1997. ********************************************************************* **CALL FOR PAPERS** If you have written an article or a paper discussing a technology law topic that you would like to have considered for circulation to the more than 11,000 members of the Computer Law Observer list, please submit an e-mail copy to the editor at: wgalkin@lawcircle.com . ++++++++++++++++++++++++++++++++++++++++++++++++++++++ INTERNET DOMAIN NAMES AND RIGHTS IN DISTINCTIVE MARKS Analysis from a German and Austrian Perspective ++++++++++++++++++++++++++++++++++++++++++++++++++++++ By Reinhard Schanda Attorney at Law, Vienna Schanda@ping.at I. Introduction A. The Collision of Interests B. The Current Domain Name System C. Specific Problems of Domain Names II. Current Discussions A. IAHC / gTLD-MoU B. WIPO C. United States Patent and Trademark Office D. European Union E. International Trademark Association F. Other NGOs III. The Relevant Issues A. Applicable Law B. Evaluation according to Austrian and German Laws on Distinctive Marks 1. Collisions between Domain Names and Rights in Distinctive Marks a) Trade Marks b) Company Symbols c) Firm Names d) The Right to Bear a Name e) Unfair Competition f) Removal; Cancellation 2. Registriation of Generic and Descriptive Terms; Need for Reservation for Public Use 3. Summary of the Evaluation according to German and Austrian Laws on Distinctive Marks C. Policies of International Domain Name Registrars 1. Old International Sytem (NSI) 2. New International System according to the gTLD-Mou D. Relations between decisions of ACPs / CORE and National Courts I. Introduction A. The predictable Collision of Interests The allocation and use of Internet Domain Names has recently raised concerns with respect to their relation to trademarks (and other rights in distinctive marks). Disputes can arise between trademark owners and "extortionists" (those who deliberately obtain a Domain Name that mirrors a well-known trademark or name for the purpose of selling it to the trademark owner or the highest bidder) and between trademark owners and holders of Domain Names for legitimate business or personal use. Up to now trademark considerations have not, for the most part, been taken into account in the context of Domain Name allocation, which has led, as electronic commerce has exploded, to a predictable collision between Domain Name allocation and national trademark law. B. The Current Domain Name System (DNS) A domain name must have at least two parts: a top level domain name (TLD), and a second level domain name (SLD). The levels of the domain names are counted from right to left. There can be only one of each particular SLD in each TLD. A number of TLD registries already exist: one for each country (according to the ISO 3166 country codes such as .uk, .fr, .us, .de, .at, etc) and a small number which are international (iTLD) such as .com, .org, ..net and .int. SLDs are allocated on a first-come, first-served basis within each TLD. The old (but still present) system for assigning the international TLDs ..com, .org and .net was established by several private and US government organization working together, including the (US) National Science Foundation (NSF), Internet Society (ISOC) and Internet Assigned Number Authority (IANA) among others. Together they established InterNIC (Internet Network Information Center), a virtual organization, to provide services in the US. InterNIC, through NSF, contracted with Network Solutions, Inc. (NSI), a private company, to register names for domain names with the TLDs .com, .org and .net. NSI, like most registries, assigns domain names on a first come, first served basis. Currently, there is only one international TLD available to companies and individuals, namely ".com". By the end of 1995, the number of ".com" domain names exceeded 200.000 and by the end of 1996, the number of ".com" domain names exceeded 600.000. As a result, domain names including the ".com" suffix now form the overwhelming majority of names on the Internet and the longer one waits to apply to NSI for a ".com" name, the greater the chance that one's choice will not be available. The recent explosive commercialization of the Internet has produced a requirement for enhanced assignment procedures. Also the human-friendly quality of domain name strings has made them commercially valuable. C. Specific Problems of Domain Names in Comparison to Trademarks In the trademark system, the same name can be registered as a trademark by different entities, for example in connection with different goods or services, or in different countries. In the domain name system, each domain name must be unique, so that a particular domain name in a TLD can be registered and used by only one entity world wide. Also current domain name allocation procedures allow the holding of generic names as SLD. Internationally accepted intellectual property principles do not allow individuals to obtain exclusive use of generic terms, at least in the commercial fields to which the generic terms are relevant. At present the exclusive use of a SLD cannot be challenged on the basis of genericness, since there is no rule that generic terms may not be held as domain names. This exclusive use also cannot be challenged on the basis of rights of others, since there cannot exist any intellectual property rights in a generic term. II. Current Discussions The above mentioned problems was and is subject to discussions in various fora: A. IAHC / gTLD-MoU The International Ad Hoc Committee (IAHC) was formed at the initiative of ISOC and IANA. ISOC is, according to its own description, a non-governmental International organization for global cooperation and coordination for the Internet and its internetworking technologies and applications. IANA has responsibility for the maintenance of administrative tables for Internet services, including TLDs and the delegation of their maintenance to approppriate agencies. The IAHC was undertaking the task of designing changes to the Internet Domain Name System (DNS), to try to alleviate trademark problems, among others. Also WIPO was represented on the IAHC. On February 4, 1997 the IAHC has presented its Final Report. On February 28, 1997, a "Memorandum of Understanding on the Generic Top Level Domain Name Space of the Internet Domain Name System" (gTLD-MoU) has been established. With this MuO the signatories agreed to voluntarily cooperate and establish a new system of administration and management of domain names. The MuO provides for the establishment of a Depository of the gTLD-MoU (the Secretary-General of the International Telecommunications Union, ITU), a gTLD-MoU Policy Advisory Body (PAB), a gTLD-MoU Policy Oversight Committee (POC), a Council of Registrars (CORE) and Administrative Domain Name Challenge Panels (ACPs). Pending the creation of CORE, an interim Policy Oversight Committe (iPOC) shall consist of the regular members of the IAHC (which have been appointed by IANA, ISOC, IAB, ITU, WIPO and INTA]). The MoU also provides that seven new TLD will be added for Internet addresses: ..firm for businesses or firms ..store for businesses offering goods to purchase ..web for entities emphazising activities related to the WWW ..arts for entities emphazising cultural and entertainment activities ..rec for entities emphazising recreation/entertainment activities ..info for entities providing information services ..nom for those whishing individual or personal nomenclatura Until May 1, 1997, the gTLD-MoU was signed by 80 organizations. IAHC was declared dissolved and - pending the creation of CORE - iPOC has been set up. When CORE appoints its representatives at its first plenary meeting, iPOC will be dissolved and POC will be set up. CORE will be set up upon the selection of the initial registrars under the Swiss Civil Code. CORE shall manage and maintain the central database for each gTLD, all shared by the new Registrars. Registration procedures, and the obligations and responsibilities of the Registrars, will be governed by CORE under a memorandum of understanding to be concluded among the registrar members of CORE (CORE-MoU). CORE will be responsible to the POC which will derive its direction from PAB whose members come from the signatories to the gTLD-MoU. B. WIPO A decision of the WIPO General Assembly of October 2, 1996, states that "the International Bureau would carry out a study, with the help of consultants, on international intellectual property issues arising from the new global information infrastructure, including the Internet". Pursuant to that decision a WIPO Meeting of Consultants on Trademarks and Internet Domain Names was held on February 12 to 14, 1997, at WIPO Headquarters in Geneva. Several consultants participated in the meting, including individuals from national trademark offices and members of the International Ad Hoc Committe (IAHC), along with WIPO officials. During this meeting also the Final Report of the IAHC was discussed, including those aspects which would involve ongoing activties on the part of WIPO. On May 26 to 30 a further "WIPO Consultative Meeting on Trademarks and Internet Domain Names (First Session)" was held in Geneva. The International Bureau (IB) had prepared two Memorandums for that meeting. The IB therein finds that "Domain Names by their nature are trademark-like, and are often used to direct users to the home page of a company whose domain name is also its trademark". Various issues are discussed and several questions were prepared for the meeting in these Memorandums. According to the Chairman's Summary of the meeting many questions and comments were presented concerning the details of the substantive guidelines that are under preparation. Additional discussions concerning ACPs were scheduled to take place at a second session of the WIPO Consultative Meeting on Trademarks and Internet Domain Names, to be held on September 1 and 2, 1997, in Geneva.33a C. United States Patent and Trademark Office The United States Patent and Trademark Office intended to solicit public comments and hold public hearings on the domain name trademark issue in January 1997. It has not yet, however, published results to the public on the WWW so far. D. European Union The European Union has circulated a questionnaire to industry concerning trademarks and domain names. The paper mainly summarizes the activities of IAHC and WIPO as approximately of March 1997. This procedure may result in the creation of a green paper on the domain name-trademark issue. E. International Trademark Association The International Trademark Association (INTA) puplished a "White Paper" on the topic "The Intersection of Trademarks and Domain Names" containing information also on court decisions and disputes on registrations as well as a own proposal for a new domain name dispute resolution. F. Other NGOs Various other non-governmental organizations, such as the International Chamber of Commerce (ICC), are in the process of studying the trademark - domain name issues. III. The Relevant Issues Can the owner of a name, a firm name, a company symbol or a trademark prohibit the use of an identical domain name by its owner? Can the owner of such distinctive marks enforce the withdrawal of an identical domain name, and if so, enforce that he obtain the identical domain name himself? May generic and descriptive terms be registered as domain names? A. Applicable Law Before judging whether the registration and/or use of a domain name infringes (national) rights in distinctive marks, the appliccable substantive law must be determined. "Shall an act of infringement on the Internet be considered to have taken place in the territory [from] which a transmission is sent over the Internet, or in the territory in which the transmission is received?" This question is still open for discussion. The national courts' decisions regularly apply (their own) law of the place in which the transmission is (also) received. B. Evaluation according to Austrian and German Laws on Distinctive Marks 1. Collisions between Domain Names and Rights in Distinctive Marks The first court decision in the German-Speaking World on this subject was made by the Landgericht Mannheim, and stated that the City of Heidelberg could demand injunctive relief of the further use of the address "heidelberg.de". This decision is based on the Right to Bear a Name ("Namensrecht") according to Sect 12 of the German Civil Code (below refered to as dBGB. By using the above mentioned internet address, the defendants used the plaintiff's name. A significant part of Internet-users would associate the domain name "heidelberg.de" with the plaintiff. The denomination of the domain name would cause conclusions to the person, resulting in a confusion of attributions. The Landgericht Köln decided quite to the contrary: The City of Kerpen's claim to prohibit the use of the domain name "kerpen.de" by the defendant was dismissed. The denomination "kerpen.de" on the Internet does not perform the funcion of a name in terms of Sect 12 dBGB. The Landgericht Köln decided correspondingly in the cases of domain names "huerth.de" und "pulheim.de". The Landgericht München I decided on 9 Jan 1997 that the registration of domain names "dsf.de", "eurosport.de" and "sportschau.de" for the sole purpose of subsequent negotiations with the name owners concerning a cooperation with regard to the Internet is contrary to public policy, and therefore constitutes an infringement of fair competition in terms of Sect 1 of the German Unfair Competition Act (below refered to as dUWG; Sect 1 prohibiting unfair competitive practices). The Landgericht Braunschweig decided on 28 Jan 1997 that the City of Braunschweig has the right to demand that the defendant cease further use of the address "braunschweig.de", and release the name for use by the City of Braunschweig. The defendant made use of the plaintiff's name without being authorized to do so by the plaintiff, and without being able to derive this right from other legal grounds. This suggests a connection between the name owner and the defendant, which in reality does not exist, causing confusion of attribution. The application for registration of an internet address under someone else's name can be compared to a trademark application in bad faith in terms of Sect 50 para 1 Subsection 4 of the German Trade Mark Act (below refered to as dMarkenG). (A trademark application must be considered to be in bad faith if it is made with the intention of hindering third parties in using this denomination or making use more difficult.) The Landgericht Lüneburg decided on 29 Jan 1997 that the defendant should "refrain from offering services and reserving the right to offer services by isolated use of the name Celle, particularly under the addresses 'www.celle.de' and 'www.celle.com'". Furthermore, the defendant was condemned to release the address "www.celle.de" for use by the plaintiff. The court based its decision on the injunctive relief according to Sect 12 in connection with Sect 1004 Abs 1 dBGB. A name serves the purpose of distinguishing a subject from others, and has the function of individualising on one hand, and identification on the other hand. Internet domain names have the same function. Therefore there is a danger of confusion of attribution. The court based the plaintiff's claim to demand that the defendant renounce the reservation of the name "celle.de", i.e. to make a corresponding declaration of release to the German Network Information Center (DENIC) on Sect 249 dBGB by the court. By court ruling dated 24 Feb. 1997, the Landgericht München I decided that an enterprise using the firm name "SAT-SHOP" could demand injunction of use of the domain name "sat-shop.com" on grounds of trademark and competition law. By judgement dated 3 March 1997 the Landgericht Frankfurt/Main condemned the defendant both to refrain from laying claim to, using, or letting third parties use the domain name "www.das.de" in the internet, as well as to make a corresponding declaration waiving the domain, for the benefit of the plaintiff (Deutscher Automobilschutz Allgemeine Rechtschutzversicherungs-AG) towards the DENIC. The court based the claim on Sect 12 dBGB. A domain address has the function of a name. The Landgericht Köln's considerations were expressly rejected. The most extensive statement of reasons for granting a claim to a domain name was given in the case of the company Epson, whose claim to the domain name "epson.de" was granted by the Landgericht Düsseldorf on 4 April 1997. First the court held that in the case of anticompetitive conduct in a mass media, be it the press, radio, television, teletext or BTX (viewdata), the general principle is appliccable according to which the place in which the offence is committed is not solely the place of publication (in the case of the internet, p.e. the place of the server), but also the place in which the medium is brought to third parties' knowledge purposely, and not just by chance. Otherwise it would be possible for every supplier to escape legal prosecution by choosing a location for his server in a country in which effective legal protection cannot be obtained reasonably. a) Trade Marks According to trademark law, the plaintiff's claim arises from Sections 4, 14, para 1, 2 Subsection 1 and para 5 dMarkenG. Use of the domain name infringes another person's trademark right. Speculative registration of a domain name by someone who does not use that name commercially ("domain-grabbing") presents a sufficiently specific danger of infringement that may be stopped by preventive application for injunctive relief. As far as it is controversial under new German trademark law whether the infringing denomination, i.e. the domain name in dispute, must also be used commercially in a distinguishing function (i.e. to identify products or services; "kennzeichenmäßig") or whether any use in the course of trade will suffice, there was no cause for the court to state its opinion, as it proceeded on the assumption that in the case at hand, also the use of the domain name in a distinguishing function was threatened. A domain name serves the purpose of enabling the user to distinguish a certain homepage from countless other homepages in the internet. One can therefore presume that the use of the domain name "epson.de" in a distinguishing function is threatened. b) Company Symbols The impending use also represents the danger of confusion with respect to the plaintiff's company symbols ("Unternehmenskennzeichen"), resulting from both the sysmbol' as well as the goods/services' identity or similarity, according to Sections 5, 15 para 2 dMarkenG. The court was convinced that when assessing the similarity of goods it is of no importance which goods or contents are possibly offered on a homepage. The goods or the services subject to possible confusion is the domain-name-assigned homepage itself. The situation is no different from the case in which two magazines are published under the same title, and in which it is dispensable to determine whether they are similar with respect to the contents. Not the contents, but the product itself constitute the goods or services in terms of dMarkenG. An offer from a person different from the plaintiff, given on the Internet under the domain name in dispute, triggers the association with the addressed Internet users that the contents of the homepage are in some way official, or at least authorized by the plaintiff. The court went on to say that such danger of confusion is given even more in the case of a made-up name such as "Epson" than if the name of a city is used as a domain name. An Internet user will generally proceed on the assumption that there is a relationship to the plaintiff, and therefore danger of confusion in terms of Sect 14 dMarkenG exists. c) Firm Names The court also based the plaintiff's claim on a firm name consideration pursuant to Sections 5, 15 para 1, 2 and para 5 dMarkenG and said that the plaintiff is protected against the use of the trade designation in a manner that could cause the danger of confusion. It is crucial whether a domain name is basically suitable to cause dangers of confusion with the plaintiff's company. The court said that this is the case, and that there could be no doubt that the addressed persons would view the domain name as a short form of the company's name. d) The Right to Bear a Name In addition to this, the court based the claim on Sect 12 dBGB. A company's firm name such as the plaintiff's is its name in terms of Sect 12 dBGB. In the case of infringement of Sect 15 dMarkenG, Sect 12 dBGB, which is more extensive, is also infringed as a general rule. Use of his name as a domain name in the Internet poses the threat of usurpation of a name to the plaintiff. This use infringes plaintiff's rights that are worthy of protection, even when one considers that a firm name that is merely made-up is only protected insofar as its use affects the business interests of the person bearing that name. This interest worthy of protection is given if confusion in terms of Sect 15 dMarkenG is likely, as the protection of the name pursuant to Sect 12 dBGB is more extensive than the protection of trademarks pursuant to Sect 15 dMarkenG. Arguments stated above concerning proximity to other trades or goods (homepage as goods or services) are also appliccable for Sect 12 dBGB. e) Unfair Competition The court also based the claims on Sect 1 dUWG, because the defendant was engaging in competitive acts contrary to fair competitive practices. This impediment to the plaintiff's use of distinctive marks as a domain name would not constitute unfair competitive practice only if the registration by the defendant were sufficiently justified, particularly if registration had occurred in order to protect his own rights. This is not the case if the registration had occurred only in order to enforce the conclusion of an agreement concerning the domain name. The defendant's conduct constitutes an unfair operational disturbance, which is contrary to fair competitive practices in terms of Sect 1 dUWG. f) Removal; Cancellation The claim to the declaration vis-à-vis the DENIC with which the reservation of a domain name is cancelled can be concluded from Sections 14, 18 para 3 dMarkenG, Sect 1004 para 1 dBGB. Sect 18 para 3 dMarkenG enables the application of claims to removal as well as Sect 1004 para 1 dBGB, according to which the disturber is obliged to end any impairment created by the disturber. Not removing this threat is equal to continuing the disturbance. In such cases the claim to removal runs parallel to the claim to injunctive relief. In the case at hand permanent removal of the danger is only possible by cancellation of the defendant's reservation of the domain name with DENIC. 2. Registration of Generic and Descriptive Terms; Need for Reservation for Public Use On 13. February 1997, the OLG Frankfurt/Main commented on the registration of the domain name "www.wirtschaft.online.de" by a publisher specialising in business publications. The applicant for preliminary injunction objected to the opponent's choice of the purely descriptive and therefore non-reservable term "Wirtschaft" and "Wirtschaft-Online" as a domain name. The court rejected the anologous application of Sect 8 para 2 Subsection 1 and Subsection 2 dMarkenG. The consequences as provided by the dMarkenG for not satisfying the material requirements for protection are the refusal of registration or the cancellation by the Patent Office. These consequences require a public examining and supervision machinery which is not available for online-addresses as the law stands. The limits for the choice of descriptive online-addresses that do not infringe other peoples' rights in distinctive marks could only ensue from general provisions of competition law (Sections1, 3 dUWG). The court went on to say that there was no misleading statement at hand, nor an infringement of Sect 1 dUWG by the opponent. The appliccant is not hindered in an unfair competitive way in its possibilities to choose an online-address, because it could still use the term "Wirtschaft" with modifications or additions in its online-address. The appliccant in any case has no more right to use the online-addresses to which objection was made than the opponent. That the opponent's online addresses are contrary to fair competition neither results from the "channelling function" of purely descriptive domain names which, according to the plaintiff, should therefore be reserved for public use. The described channelling effect is excluded as far as the online-address is only used in the company's advertising, because then there would be no possibility for selection from several offers that could be influenced by the denomination of the address. In an overall view, judgement depends on user habits in the field of online-media, (which are not known to the court, according to its own statement). This could not be solved in expedited proceedings. The court also held that the opponent gained no unfair competitive advantage by breach of law. As long as no laws concerning the registration and use of online-addresses existed that the opponent could infringe, no law was breached. 3. Summary of the Evaluation according to German and Austrian Laws on Distinctive Marks The riveting question whether, according to national laws aligned with the trademark directive, the trademark owner can only prohibit use in a distinguishing function, or if he can prohibit any other use in the course of trade, will generally not be raised in cases concerning the collision of trademark rights and domain names, because such claim will arise, as a rule, from the more extensive provisions for the protection of a name pursuant to Sect 12 dBGB and Sect 43 of the Austrian Civil Code (öABGB): Use of a name is inadmissible if its use causes the impression that the offered services or goods can be attributed to the named person, and therefore causes confusion of attribution, but also if the bearer of the name is limited in the use of his own name, because in this case the protected right to use a name is impaired also. This would be the case if the impression is given that a relationship exists between the owner of the name and the infringer. What is crucial is the effect the use of the name has on a not completely insignificant part of the addressees. Whether the registration of generic or descriptive terms as domain names can be prevented according to national law if these terms are non-registrable pursuant to national trademark law, is questionable. Most likely it will be neccessary to consider whether such registration constitutes hindering competition contrary to fair competitive practices in terms of Sections 1 dUWG (and Sect 1 of the Austrain Unfair Competition Act). As the OLG Frankfurt correctly declared, this depends on user habits in the online-field, which are subject to constant change. This question has yet to be answered. C. Policies of International Domain Name Registrars 1. Old International Sytem (InterNIC / NSI) For trademark dispute purposes, the current NSI Policy include the following: (1) An Applicant must submit a statement that states, to its knowledge, the domain name requested does not interfere with or infringe the right of third parties. (2) An Applicant must have a bona fide intention to use the Internet domain name on a regular basis. (3) An Applicant must not seek the domain for unlawful purpose. (4) The owner of a U.S. federal or foreign trademark registration may challenge NSI's assignment of an "identical" SLD if the domain name holder began use after the challenger's trademark registration or first use date. The challenger sends NSI a certified copy of its registration and a copy of its protest letter to the domain name holder. Once NSI's dispute policy is invoked, NSI gives the domain holder 30 days to prove either that its use of the domain predates both the first use of the challenging party's registration and the effective date of that registration or that the domain holder has its own trademark registration, in which case the domain holder will be able to keep the domain, subject to an obligation to indemnify NSI. If, however, the domain holder cannot demonstrate the required prior domain use or produce a trademark registration certificate, then the domain holder must give up the domain, with a 90 day phase out. The disputed domain then goes into a "hold" status, where it is not available to anyone, pending the outcome of the dispute between the parties. Without a court order or a decision from an arbitration panel, the best result a challenger can expect is for NSI to place the domain name registration on hold. 2. New International System according to the gTLD-MoU According to the gTLD-MoU (Pt II. Sect 7 lit e) each CORE-gTLD Registrar may assign SLDs in any gTLD, described or created under the provisions of the MoU and the CORE-MoU, on a fair-use, first-come, first-served basis. A comprehensive system for dispute settlement involving on-line mediation, mandatory arbitration and a fast-track on-line administrative domain name challenge procedure, however, shall be established. The MoU in Pt. I Sect 2 lit f) provides: The following principles are adopted: "A policy shall be implemented that a second-level domain name in any of the CORE-gTLDs which is identical or closely similar to an alphanumeric string that, for the purposes of this policy, is deemed to be internationally known, and for which demonstrable intellectual property rights exist, may be held or used only by, or with the autorization of, the owner of such demonstrable intellectual property rights. Appropriate consideration shall be given to possible use of such a second-level domain name by a third party that, for the purposes of this policy, is deemed to have sufficient rights." This policy shall by executed by the ACPs. The procedures for creating these panels and for bringing challenges before the panels shall be defined in the CORE-MoU. The CORE-MoU shall in particular stipulate that Registrars shall be obligated to honor all decisions of ACPs. Art 8 of the draft of the CORE-MoU as of May 14, 1997 contains the following provisions: "(b) Registrars shall include in their Registration Agreement and application forms for assignment of SLDs the following paragraphs: (I) The applicant acknowledges that, by virtue of the provisions of the gTLD-MuO, any third party may challenge the assignment to or use by the applicant of the domain name before an Administrative Domain Name Challenge Panel ("ACP") in accordance with the WIPO ACP Rules. The applicant further achnowledges that the decisions of an ACP may determine rights of applicant or other parties or both to the use of a particular domain name, and that, with respect to its right to use a particular domain name or names, it will be bound by ACP decisions. (II) The applicant agrees that any dispute, controversy or claim between the applicant and a third party, arising out of or relating to this application or any registration made upon this application shall, upon the filing of a request by a third party with the WIPO Center, be submitted to on-line mediation in accordance with the WIPO Mediation Rules. If, and to the extent that, any such dispute, controversy or claim has not been settled pursuant to the mediation within 30 days of the commencement of the mediation, or if, before the expiration of 30 days, either party fails to participate or to continue to participate in the mediation, the dispute, controversy or claim shall, upon the filing of a Request for Arbitration by the third party, unless the applicant declined mandatory submission to arbitration by checking the box below, be referred to and finally determined by on-line arbitration in accordance with the WIPO Expedited Arbitration Rules. The language to be used in the mediation or arbitration shall be English, unless the parties agree otherwise. Where the third party chooses arbitration, the place of arbitration shall, unless the parties agree otherwise, be either the location of the applicant as indicated in the Registration Agreement or the location of the Registrar, at the option of the third party. [Option:] The applicant declines a mandatory submission to arbitration. (c) Registrars and CORE shall cooperate with the WIPO Center by promptly providing any information or materials requested by the Center in the context of domain name disputes, and shall be obligated to honor all decisions of ACPs and of any WIPO arbitration and mediation proceedings concerning SLDs in the CORE-gTLDs. The WIPO Center shall notify CORE of any results and decisions of ACP, mediation or arbitration proceedings that require action." The procedures for creating the panels and for bringing challenges before the panels shall be administered by the existing WIPO Arbitration and Mediation Center ("WIPO Center") in Geneva. WIPO staff shall however not be members of the panel (Pt II. Sect 8 lit b gTLD-MoU). It will merely provide the procedural framework within which those decisions can take place. WIPO will make several arrangements to accommodate its Mediation and Arbitration Centre with these new procedures. These include, the selection of specialised arbitrators, developing technical features to allow "on-line" mediation/arbitration and the protection of privacy, and the development of a new fee policy (for mediation, the cost is expected to be around 100 or 200 USD, and for arbitration the cost is expected to be around 500 USD, plus the arbitrators fee. The draft of the CORE-MoU contains the latest version of the Substantive Guidelines concerning Administrative Domain Name Challenge Panels. These guidelines contain proposed interpretations of the dispute policy of the gTLD-MoU and tries to set out objective standards and criteria for interpreting the terms of this policy such as "which is identical or closely similar" or "is deemed to be internationally known" to be executed by the ACPs. The WIPO Center also distributed a draft of "WIPO Rules for ACP Procedures concerning Internet domain names" ("WIPO ACP Rules") providing detailed procedural provisions for the ACP dispute settlement.78a D. Relation between decisions of ACPs and National Courts The gTLD-MoU clarifies that "no decision of an ACP shall inhibit, affect or prevent the power of the appropriate national or regional courts to hear cases interpreting and enforcing intellectual property rights that fall within their jurisdiction. Likewise, nothing in this Section shall prevent any party, at any time, from bringing any case before such national or regional courts that could otherwise be brought, nor from initiating arbitration or mediation procedures that are otherwise available" (Pt II. Sect 8 lit c). An ACP would have authority only over the SLD under the gTLDs administered by CORE, and not over persons, since its authority derives only from the gTLD-MoU. No execution of the ACP's decision is neccessary (such as in terms of the execution of an arbitral award), as the ACPs only decide on domain names, and the new system of domain name administration (by the registrars) is able to "execute" the ACPs' decisions itself. If a challenger is successful at the ACP no further steps in national courts will be neccessary. The competent registrar will remove the domain name or tranfer it to the challenger. Such decision could be carried to national courts by the former owner of the domain. The court would then examine the agreement between the former domain name owner and the registrar (with submission pursuant to quoted Art. 8 of the draft of the CORE-MoU) . It seems probable that national courts would accept the validity of this submission and it is unlikely that the trade mark aspects would be dealt with again. If a challenger remains without success he will possibly apply to national courts. As only the domain name applicant but not the challenger (the owner of national distinctive marks) has submitted himself to the ACPs' jurisdiction, no valid arbitration agreement (in favour of the ACPs) is at hand. The national courts will then be obliged to solve the above mentioned problems independently, without regard to the gTLD-MoU rules, in accordance with appliccable national laws.