DNS Green Paper Response
By:
The Association for the Creation and Propagation of Internet Policies, Inc. (A-TCPIP) and its working group the Domain Name Rights Coalition (DNRC) and
NetAction.
Comments to the Green Paper on Issues of Trademark/Domain Name Disputes, Jurisdiction, Openness of Process, Privacy and Balanced Representation on the Corporation’s Board of Directors
March 23, 1998
Introduction:
DNRC is a public interest organization that has been working on the rights of domain name owners for several years. DNRC represents the interests of individuals, entrepreneurs and small businesses. Its websites with comments and letters submitted to the White House, the Department of Commerce, the World Intellectual Property Organization and the International Ad Hoc Committee can be found at <http://www.domain-name.org>.
NetAction is an Internet-based grassroots organization that works to promote access to and use of information technology as a tool for community organizing, outreach, and advocacy, and to educate the public, policymakers, and the media about technology-based social and political issues. The NetAction homepage is located at <http://www.netaction.org>.
As a separate submission, DNRC, NetAction, and Professor Martin Mueller, author of the briefing paper CATO INSTITUTE BRIEFING PAPER "INTERNET DOMAIN NAMES: PRIVATIZATION, COMPETITION AND FREEDOM OF EXPRESSION" have prepared a statement entitled The Internet is For Everyone: A-TCPIP/Domain Name Rights Coalition Calls for Addition of a Principle to the Green Paper Protecting Free Speech and Open Communication. This statement has been signed by over 200 individuals and numerous leaders of Internet and community-based organizations. It shows a unified and politically diverse demand for recognition that the Internet belongs toeveryone, and that everyone has the right to use the Internet – and Internet names and addresses – to communicate, share, find and receive information. The statement can be found in this proceeding, and also at <http://www.domain-name.org>.
Professor Mueller has also submitted additional comments in this proceeding.
Both sets of Comments submitted by DNRC and NetAction share a common underlying concern: will the Internet become a medium of commerce primarily designed for the sale of goods and services of large corporations, or will it remain the robust and dynamic medium of communications for all participants that we know today?
The Supreme Court and Third Circuit Panel’s rulings in ACLU v. Reno, overturning the CommunicationsDecency Act, focused on the view that the Internet is a communications medium, open to all participants. The Green Paper appears to see the Internet as another medium of commerce for large corporations. DNRC and NetAction find within the Green Paper express and implicit requirements for individuals, small businesses and entrepreneurs to give up rights and protections that they receive under their respective nations’ and states’ laws. We do not believe that each individual, small business or entrepreneur who registers for a domain name, or in any other way participates in the Internet, must take on the legal status of a corporation.
In fact, we believe that the vision of an Internet-for-corporate-commerce is a poor one for us to use as we enter the next century. Accordingly, we offer a different vision. We see an Internet open to all – to all countries, schools and ultimately families to join, and contribute to the worldwide communication that this unparalleled system provides. Our vision is very close to the vision earlier this century of a universal phone system.
Further, our vision provides guidance about rules that will protect all Internet users. When an individual, family, small businesses or large business obtains a phone number, he/she/it acquires a location in the worldwide telecommunications system, and a way to communicate and be found so that others can communicate with them. However, the rules of telephone subscription do not require us to tell the phone company how we will use our telephone number (except perhaps to distinguish residential from commercial use); to waive jurisdiction and to be tried in whatever country the switch of our international call happens to pass through; to get trademark approval before obtaining a vanity number; or to waive our right to legal notice of lawsuits or privacy. Nonetheless, we receive our network address – their phone number – and become a part of the worldwide telephone system. These elements of phone service offer an excellent model for domain name service.
It would be cruel to undermine the momentum and enthusiasm for the Internet with a set of rules that require Internet users -- by obtaining a domain name– to waive rights and protections accorded individuals and small businesses, and live by the rules of commerce of large corporations. It also would be unfair to set up rules that lead to a protection of the rights of commercial speech over the rights of free speech, political expression and open communication. In the end, we must ask: what vision do we want to look back on 20 years from now?
DNRC and NetAction, overall, support the Green Paper. We believe it provides a common ground for dialogue, an open and public transition for Internet Governance, and a good roadmap for addressing technical and policy issues. In particular, we support:
In particular DNRC and NetAction would like to express our support for the introduction of new TLDs. Currently, there is inadequate space in the TLDs run by Network Solutions forthe wide group of individuals, organizations, and companies seeking domain names. Those companies who have secured their favorite domain name are happy with the cachet of .COM, but many individuals, companies and organizations still need domain names.
In the long run, DNRC and NetAction believe that a nearly unlimited number of TLDs can and should be supported by the Internet. In the short-run, however, we understand and support the recommendation of the Green Paper that, pending organization of the corporation, only a limited number be created. DNRC and NetAction recommend that the five TLDs be created to help better define and delimit Internet communication.
Specifically, we would like to see additional TLDs to provide communication spaces for small businesses, individuals and political organizations (analogous to the concept of zoning in a town). We recommend the inclusion of the following TLDs in the first five to be created:
.SBA for small businesses, particularly those small businesses seeking to establish a global reach for their goods and services;
.PER for personal, family and group domain names, email systems and websites; and
.POL for political organizations seeking to make their information, interaction and concerns available to everyone.
In the future we hope that the acceptance and use of directory services such as INTERNET ONE (at <http:www.io.io>) and the development of other directory services will allow TLDs to operate solely as a mnemonic device for the IP address. These directories should help Internet users to navigate easily through the redundancy of words and names used repeatedly in all languages to find the Internet resources they seek.
However, in the short term, TLDs may continue to serve as a rough directory-type system. Accordingly, we recommend separating out commercial from noncommercial speech and providing both types of speech with clearly defined areas.
While we support the overall tone and direction of the Green Paper, there are details within it that concern us. As discussed above, we fear that the continued presence and vigilance of the large corporate community – and the fears of their trademark attorneys about the difficulties of understanding and monitoring this latest of challenging new technologies – has led to a situation in which corporations want to control the rules and policies created by the new Corporation.
Since the new Corporation is being assigned public policy responsibilities for the Internet, we believe that the U.S. Government has a responsibility to create a balanced Board, a balanced set of principles, and a balanced set of rules so that the Corporation can fairly and equitably debate the commercial and noncommercialcommunication needs of the Internet.
Specifically, DNRC and NetAction are concerned about the following sections of the Green Paper:
These comments address each issue in turn:
The Green Paper states that the board of directors must be "balanced to equitably represent the interests of IP number registries, domain name registries, domain name registrars, the technical community and Internet users." It appears to us that the seats representing the IP community are international, well balanced and representative of the IP community. However, the seats representing domain name and Internet users are not similarly well-constituted.
Internet users constitute a wide and far-ranging group, including individuals, community organizations, academics and educational institutions, governments, and companies of all sizes. We certainly welcome the two seats designated for "individual end users" and "an individual or entity engaged in non-commercial, not-for-profit use of the Internet." Nevertheless, we feel these seats are insufficient when each request, each policy, and each Board recommendation from these seats can be outvoted immediately by the five seats designated for "commercial users, including trademark holders." We also feel that there is an ambiguity about who can fill these two seats, and we would like to propose clarification to eliminate doubts.
The number of seats of Internet users engaged in noncommercial speech should be equal to the number of seats of Internet users engaged in commercial speech. Because the technical community is well-represented, we recommend that the Board have greater representation from Internet users who are well-known advocates for free speech, and are knowledgeable about trademark law and its limits and exceptions.
In addition, there should be at least one seat on the Board for representatives of the academic community, a community with long-standing expertise as an Internet user and a deep commitment to noncommercial speech.
The Board also should include representativesof noncommercial organizations that represent the growing and diverse group of grassroots organizations, community groups and political groups using the Internet.
Providing greater balance to the Board of Directors is appropriate because Internet users who hold trademarks are only a fraction of Internet users. All Internet users deserve to be represented at this highest level of Internet governance.
According to the Green Paper, the CEO of the new Corporation should come from "a background in the corporate sector to bring a more rigorous management to the organization…" Given that the CEO will be leading a not-for-profit company, DNRC and NetAction question this requirement of a CEO from a corporate background. While such an individual may from time to time be the appropriate candidate for the job, setting this requirement in stone appears on its face to benefit only those whoview the Internet as a commercial medium.
DNRC and NetAction recommend that this requirement be deleted. We also recommend that the CEO be allowed and encouraged to come from a successful not-for-profit company or from a background of public service to the Internet or to other technology and policy areas. The CEO should be prepared to see all sides of controversial policy issues as well as to successfully run a not-for-profit organization.
The Green Paper promises that "new corporation’s processes should be fair, open and pro-competitive, protecting against capture by a narrow group of stakeholders." It also promises that the "decision-making processes should be sound and transparent" and the "bases for its decisions should be recorded and made publicly available." DNRC and NetAction applaud the direction, but question the details. We recognize that achieving these lofty goals will be difficult and that corporate proceedings are geared more to confidentiality than openness and input.
Nevertheless, in the case of this Corporation, openness, public input and public accountability is vital. The Board of Directors will never be able to represent the full diversity of the Internet public, and therefore the interested Internet public willhave to monitor theproceedings of the Board and share their concerns, needs and views. Further, there is no group of shareholders to whom the Board will be accountable. Accordingly, the check on the Board will be the Internet public it serves. We predict that the Internet public will become an important check on the Corporation to ensure that it does not inadvertently trample on individual rights, for example, free speech, while implementing public and technical Internet policy.
Accordingly, DNRC and NetAction strongly urge adoption of the following By-Laws to bring the promises of the Green Paper into the clear and specific mandates of the Corporation:
Open and public meetings with public participation and review provide the best way to allow the Internet public to participate. This participation will generate important input from new sources and introduce good ideas that might otherwise be shut out to come in. Finally, open and robust debate are at the core of the Internet. An open and public forum is the only forum the Internet community respects.
DNRC and NetAction propose the following two By-Laws as a check on the Corporation:
1) Staggered terms and term-limits for directors which will prevent any individual or group of individuals from dominating the workings of the corporation. This By-Law will help to prevent the situation that happened in the United Way scandal when one man remained president of the organization for over 20 years.
2) Public reports required by the Corporation initially to the U.S. Department of Commerce, and later to international bodies that request it. These reports should explain the workings of the Corporation, actions taken since the last report, and the nature of these actions – including the necessity that prompted the action and the rationale behind the action. The report should also account for the finances of the corporation, disclosing the same level of detail as the SEC mandates from for-profit corporations. The availability of these reports should be well publicized to all who participated in this proceeding and the public and should be available on the website of the corporation.
DNRC and NetAction believe that the Green Paper creation of the new corporation as a standard-setting body may provide protection against antitrust scrutiny, but it also imposes a higher level of reporting and openness requirements on the corporation. Our proposals above, we believe will further protect the Corporation from successful challenge.
Certainly, the courts have recognized that some safety and standard making functions need centralization. However, even a non-profit organization remains subject to the antitrust laws designed to prevent monopolies and even standard-setting bodies may not to do as they like. The Supreme Court and other courts have not hesitated to apply the antitrust laws to standard setting bodies when special interests have used standard setting as a means of enhancing their own market position, or as a means of excluding market entrants. See American Society of Mechanical Engineers, Inc. v. Hydrolevel Corp., 456 U.S. 556 (AMSE) (1981). The courts have made clear that to protect the pro-competitive benefits of standard making from the potential for anti-competitive abuse, a standard-setting organization must have proper safeguards. See Allied Tube & Conduit Corp. v. Indian Head, Inc., 486 U.S. 492, 510 (1988).
In order to survive, therefore, the new corporation must have safeguards incorporated into its by-laws and articles of incorporation. While no court has set down a definitive list of requirements to protect a standard-setting body from antitrust, an examination of the decisions shows courts are most concerned with openness and procedure. Standard-setting organizations that guarantee access by all interested parties to the decision making process, that have procedures to protect the decisions from capture by narrow interests, and that require that decision making take place in public rather than behind closed doors have survived scrutiny by the courts. Standard-setting organizations that work in secret or that exclude interested partieswill not survive scrutiny by the courts.
DNRC and NetAction also caution that simply making an organization a non-profit does not remove the potential for abuse. Recent history has provided with too many counter examples: The United Way scandal in the early 1990s, where the president of the United Way exercised virtually unchecked power; the NAACP scandal, where the president of the organization used NAACP funds to settle a private sexual harassment suite; and the Foundation for New Era Philanthropy which proved to be nothing more than a pyramid scheme by one non-profit to bilk other non-profits out of millions. In all these cases, the lack of accountability and the closed nature of the non-profit governance structure kept the abuses and mistakes hidden until the damage became too great to hide.
To counter the potential for such scandals and self-dealing, the Administration should place safeguards guaranteeing openness and public accountability within the basic structure of the organization. As the list above shows, simply removing the corporate profit-motive provides no defense against self-dealing. The procedural and substantive safeguards proposed by DNRC and NetAction will keep the new non-profit open and accountable, and thus protect the corporation from capture and its officers from self-dealing. Finally, the presence of these safeguards will legitimize the new corporation in the eyes of the Internet community and the world by giving everyone a chance to participate and judge the value of the organization’s decisions for themselves.
In closing, DNRC and NetAction point to one recent example that exemplifies these points. The American Bar Association (ABA) certifies law schools, and many states and private organizations regard this certificationas an important precondition for a valid law degree. Graduates of certified schools may sit for the bar in any state, graduates of uncertified schools enjoy no such assurances. The ABA conducted its certifications through a special committee behind closed doors. As a result, the Department of Justice (DOJ) received numerous complaints from those shut out of the process. The DOJ investigated, and concluded that the ABA practices violated the anti-trust laws. The parties reached a settlement which forced the ABA to incorporate the safeguards into their certification process which DNRC and NetAction propose here, including staggered terms for officers and directors, public meetings and open decision making, publication and notice and comment opportunities for decisions.
DNRC and NetAction urge the administration to avoid the potential for anti-trust violation, capture by special interests, or self-dealing by officers and directors. The safeguards we recommend will help to protect the new corporation fromoutside scrutiny and from the inside danger of capture or self-dealing.
The continuing hold of the trademark analogy to a domain name defies reason and the rule of law. Courts, even those courts which have revoked domain names, have told us time and again that domain names are not in and of themselves trademarks:
Lockheed Martin Corporation v. Network Solutions, Order Granting Defendant’s Motion for Summary Judgement, November 17, 1997, by U.S. District Court for the Central District of California– "When a domain name is used only to indicate an address on the Internet, the domain name is not functioning as a trademark." 2 Electronic Information Policy & Law Report ("EIPLR") 1247. "Domain names like trade names, do not act as trademarks when they are used merely to identify a business entity; in order to infringe they must be used to identify the source of goods or services. … This is not to say that a domain name can never be used to infringe a trademark. However, something more than the registration of the name is required before the use of a domain name is infringing." 2 EIPLR 1248.
Panavision v. Toeppen, 945 F.Supp. 1296 (C.D. Cal. 1997) – The registration of a domain name, without more, does not amount to infringement of a mark similar to the name. Panavision at 1303.
Academy of Motion Picture Arts and Sciences v. Network Solution Inc., Order Denying Plaintiff’s Motion for a Preliminary Injunction decided December 11, 1997, by U.S. District Court for the Central District of California. – "None of the cases supports the Academy’s contention that the mere registering of a domain name constitutes a use ‘in commerce.’ … The mere registration of a domain name does not constitute a commercial use." 2 EIPLR 1350.
Now, the International Trademark Association and large corporate trademark owners would like us to write policies which protect them more in cyberspace than in physical space, and which make their job of policing their marks in cyberspace easier than in physical space. We join with Professor Mueller and free speech advocates to urge the White House, Departmentof Commerce, and the new Corporation to reject the calls they will continue to hear for protections that are, at their base, contrary to public policy and contrary to the balance and limits of intellectual property law.
The mistakes of Network Solutions must be stopped now. Behind closed doors, and without public notice, comment or appeal, NSI created a Domain Name Dispute Policy in 1995 which allowed trademark owners to assert unreasonable claims to second-level domain names containing common genericterms such as "pony," and "roadrunner" and names such as "ty." Although the names were used in completely different businesses or industries – or for noncommercial communication – and although there was no "likelihood of confusion" (the basic test for both trademark infringement and dilution), NSI allowed those with federally registered trademarks to take away domain names from those with strong common law trademarks, those who were not engaged in infringements, and those who were not engaged in commercial conduct at all. In addition to the tremendous advantage that this policy gives to large companies over small companies and entrepreneurs (those who may not have federal trademarks – a process which takes over one and one-half years and to date has not been necessary because of the common law trademark protection available in every state in the U.S.), it elevates commercial speech over non-commercial speech. It gives Buick control over the term "Park Avenue" at the expense of the local New York Park Avenue residents’ association, and it gives Pony International control over the term "pony" over a children’s pony lovers group.
NSI adopted the domain name dispute policy for the sole purpose of protecting itself from lawsuits – not because it was consistent with trademark law or public policy. The Green Paper and the new corporation have the opportunity to finally set the record straight and to remove the haze of trademark concerns from domain name allocation. The timing could not be more critical.
The following points of the Green Paper are based on the invalid equation of domain names and trademarks. Based on the court cases decided about domain names and the limits written into the U.S. Lanham Act, the following points must be rejected or deleted:
rights and protections to obtain a domain name;
DNRC and NetAction agree with the Green Paper on the propositionthat registrars and registries should not be involved in questions of domain name disputes. Like the telephone companies who register telephone numbers for residences and individuals and "vanity numbers" for both, it is the obligation of the end users themselves to battle it out for control of the domain names. Intermediaries are best protected by taking no active role in the conflict, except responding to the court order.
The Green Paper states that "Trademark holders have also called for the creation of some mechanism for "clearing" trademarks, especially famous marks, across a range of gTLDs" and asked for comments. DNRC and NetAction urge the White House, Department of Commerce, and ultimately the Corporation, to reject this continuing call. This preemption request is fundamentally inconsistent with free speech and the limits of trademark law.
What the clearance procedure asks for is the right of McDonald’s restaurant to register McDonald’s as a famous mark and thereby to keep anyone from registering McDonalds, and perhaps MacDonalds, McDon, and McDonner, from any category of TLD.
The request is fundamentally unsound because it gives overbroad and constitutionally troublesome rights to trademark holders. Clearly, there is no use proven when McDonald’s Restaurant can block the registration of a domain name before it exists. Further, the request involves a basic restriction of speech and rejection of the Internet as a shared medium for noncommercial and commercial communication because it means that McDonald’s Restaurant can request and receive a block on all registrants of McDonald variations in the .pers or the .pol – personal and political categories of TLDs which we hope will be established. It is hard to envision the full impact of telling thousands of people that they no longer have access to their own last names or their clan names in any domain name. It gives to the concept of "famous mark" a meaning, a breadth, and common last names that the anti-dilution statute never envisioned.
The same scenario holds true for Apple Computer, Pony International, Network Solutions, Digital Equipment Corporation, American Telephone and Telegraph and any other mark that uses common, ordinary dictionary words as part of the corporation name. To allow broad exclusion is to grant monopoly powers over basic words. DNRC and NetAction reject this clearance/preemption process as completely inconsistent with the vision of the Internet as a shared communications system and as a legacy we do not want to leave the Internet with for the next century.
In the last paragraph of Appendix 2, the Green Paper proposes to require an automatic 30-day suspension of domain names based on any challenge, no matter how frivolous:
"If an objection to registration is raised within 30 days after registration of the domain name, a brief period of suspension during the pendency of the dispute will be provided by the registries."
Time and again this proposal has been raised by the International Trademark Association and time and again it has been rejected, most recently by the World Intellectual Property Organization. Because the domain name is not a trademark, the only basis for removal of the domain name is if its use is somehow associated with infringing activity. This requires a good faith evaluation of the use of the domain name in conjunction with any website, FTP site or email address with which it is used by an objective party.
Automatic suspension is a concept that will definitely lead to infringement of speech without adequate legal reason, and it may also lead to loss of life and loss of commercial opportunity.
Domain names are now established in forty-eight hours or less and allow noncommercial and commercial parties to quickly and easily issue powerful new messages on websites. Thus, new political organizations and coalitions can quickly obtain domain names and put up websites which provide information about and challenge bills which are moving quickly through Congress, the European Union and federal, state and province legislatures worldwide. Under the proposed automatic suspension provision, a competing political group (perhaps one with a well-established website) would have no barrier to challenging the domain name for the underlying purpose of removing access to the communication about an opposing political position. This actionessentially amounts to a prior restraint of speech – a removal of speech without regard to its content – and an illegal act under U.S. law.
Unfortunately, loss of life might follow from the revocation of a domain name and its underlying communication, and we fear that the registry and registrar are likely to be held responsible. For example, prior to the Christmas season of shopping, many people research appropriate toys which are safe for children of certain ages, or furniture such as cribs. On a regular basis, products and furniture for children are recalled when a discovery is made that they are not safe. Should a PTA wish to quickly obtain a domain name and point out recently recalled items during the Christmas rush season, the manufacturer of the products might seek the suspension to avoid adverse publicity and the site might be forced down through the end of Christmas holiday? The choking of one toddler on a toy which was recalled for easily-broken pieces, or the strangulation of one baby in a crib recalled for slats that were too wide is far too high a cost to pay for an automatic suspension policy that is already inconsistent with the principles of free speech, open communication law and the limits of trademark protection.
Finally, free speech advocates, such as DNRC, NetAction and Professor Mueller, are not the only ones to categorically reject the automatic suspension. The commercial community does as well! The objection of the Coalition for Advertising Supported Information and Entertainment (CASIE). In its comment in this proceeding submitted on March 9, CASIE stated and we agree:
"Paragraph 4.3. This provision for automatic suspension of a domain name upon challenge adopts a proposal that has been roundly criticized by many sectors of the Internet community, including CASIE. Nothing should be automatic. Anyone trying to suspend aregistration should have to meet certain minimum legal standards, object within a restricted period of time, and, where appropriate, post a bond of sufficient amount to thwart would-be reverse domain name hijackers."
The day after a new website is publicized on a SuperBowl commercial and a marketing campaign is launched, no competitor should be allowed to take down that domain name with its underlying commercial speech solely for anticompetitive purposes. Showing harm and likelihood of confusion, among other "minimum legal standards" is consistent with the requirements of Temporary Restraining Orders and Preliminary Injunctions.
C. Until competing and viable alternative dispute resolution systems are up and running, only the courts must be allowed to revoke a domain name.
Appendix 2 requires registrars, registrants and domain name holders to agree upfront that "There must be a readily available and convenient dispute resolution process that requires no involvement by registrars."
While DNRC and NetAction agree with the last part of this paragraph – that there must not be any involvement by registrars and registries in domain name disputes – we must question the first part. How can the Minimum Dispute Resolution and Other Procedures Related to Trademarks, Appendix 2, require all comers to agree to something that does not exist? There currently is no readily available and convenient dispute resolution process.
While there are forums which offer international arbitration, DNRC has found that these forums cater to large international businesses and specialize in international licensing agreements, contracts and intellectual property disputes. They are forums for large companies to face large companies. Just because an individual chooses to engage in communication on the Internet, or a small business offers a few goods and services on a website, does not put them in the position have having the expertise, resources, or legal requirement to face a large corporation in an international arbitration forum. We realize that this ADR process makes life easier for the large corporation and its attorneys, but we believe that the courts are in the best position to protect individuals, small businesses and entrepreneurs, and to balance the equities of the situation and the commercial versus noncommercial realities of the situation.
That is not to say that ADR systems will not develop over time which balance the many different needs of Internet users. DNRC is currently working with groups today on these issues. We hope that registries and registrars will soon be able to offer domain name registrants options for ADR – but those options do not exist today and should not be offered until several exist to serve the Internet community. Further, they should never be required of domain name holders, who should always have the option of turning to a court for protection against a large corporation.
D. Individuals must not be required to relinquish privacy and personal
rights and protections to obtain a domain name;
Finally, DNRC and NetAction object to many of the requirements of Sections 1 and 3 of the Minimum Dispute Resolution and Other Procedures Related to Trademarks. These requirements are premised on an assumption that is not valid: that domain name registrants and domain name owners must give up all rights and protections as individuals and small businesses and become the equivalent of large commercial players on the Internet. In no other communication system is such a requirement made; certainly not the telephone system, which is the closest analogy to obtaining a domain name address.
Specifically, Section 1a requires contact information including name of registrant, mailing address, e-mail address, telephone and fax number. What is shocking and surprising is that this information is being collected not only to make it available to the registrar for billing purposes but to the public and specifically trademark attorneys seeking action on behalf of their clients. DNRC and NetAction envision a dynamic growth of the Internet which will lead to individuals, families, community organizations, home businesses and other small businesses coming online in record numbers. This disclosure requirement would have the dangerous effect of having every individual who has an online presence disclose his name, home address and telephone number in a manner that would allow millions of people to gain immediate access to thispotentially sensitive data.
We believe that such a position would be a violation of the European Union’s Privacy Directive, and also violate U.S. privacy laws. It is also inconsistent with the needs of the system. As with telephone registration, we agree that registrars and registries may collect the information required for billing, but this information must not be made available to the public without the consent of the registrant. Specifically, people must have the ability to state what their contact name will be – for example, women and men may choose their initials rather than full names for database listing purposes. Also, people must be able to choose whether they want their mailing addresses, telephone numbers, email addresses and even contact information listed or unlisted. Like the telephone system, this information must not be given out without a supeona or a court order. In a database that has the potential to list almost every individual or family, these protections are absolutely necessary for the protection of personal privacy.
The Minimum Dispute Resolution and Other Procedures Related to Trademarks, Appendix 2, requires all domain name registrants to provide a"Certification statement by the applicant that it is entitled to register the domain name for which it is applying and knows of no entity with superior rights in the domain name." This requirement asks domain name applicants to make assurances which courts – infinitely more skilled in the evaluation of domain name/trademark conflict than individuals, small businesses and entrepreneurs – have said are unnecessary to make.
The certification statement is borrowed from the language of trademark applications which, before the U.S. Trademark Office, require the trademark applicant to certify that "to the best of his knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the services of such other person, to cause confusion, or tocause mistake, or to deceive." The trademark application certification is generally signed after discussions with counsel and detailed searches of other commercial uses in the same or overlapping fields of commerce.
However, in the U.S., we do not require similar searches or certifications in other areas of commerce – such as the choice of a name for state incorporation in the U.S. – or for vanity phone numbers or for vanity license plates. All of these uses are allowed on a first-come, first-served basis. Further, in the U.S. we would find it absolutely unacceptable to require certifications of "no superior rights" before naming our children, hyphenating our last names, or choosing the name of an organization.
The certification proposed by the Green Paper as "minimum requirement" is unnecessary and dangerous. The courts have said that a domain name is not a trademark and until there is use involved, there can be no infringement. Accordingly, the answer to the certification statement will always be NO. However, by posing the question to domain name owners, including individuals, small businesses and entrepreneurs who may not be well-versed in the cutting-edge domain name decisions, the question may chill their participation in domain name registration because they may be misled to believe that basic dictionary words and common last names regardless of how they are used belong to the largest trademark holders. Therefore, since current case law indicates that the question is not a reasonable one, protection of smaller parties dictates that the certification requirement must be deleted so as not to mislead and chill domain name registration of smaller parties.
The Minimum Dispute Resolution and Other Procedures Related to Trademarks, Appendix 2, in Sections 1 and 3, asks two similar questions. The requirements of Section 1 state that the applicant must certify that "it intends to use the domain name." Section 3 states that a domain name owner updating information must describe "how the owner is using the domain name."
These requirements appear to be ways of forcing people to use their domain names, and locking in and limiting them in ways which DNRC and NetAction think are inconsistent with public policy and the long-term growth of the Internet.
The requirement that the applicant be required to state that he/she intends to use the domain name is based on the concept of "lame delegation." Withlimited domain name space, Internet leaders initially wanted to avoid assigning domain name addresses to parties which would not place the domain names into active use. This is no longer the case. Now corporations register multiple domains solely for the purpose of keeping others from accessing not only variations of their corporate and brand names (which may be common words such as ACME), but also generic and descriptive words which describe the categories into which their goods and services fall. Proctor & Gamble is guilty of lame delegation violations by registering dozens of domain names describing basic consumer goods. With the recent introduction of WorldNIC (NSI)’s reservation service, companies can now reserve as many names as they want, with no calendar for when or how they will use them. Clearly, the concept of lame delegation has fallen by the wayside and must not be enforced against individuals, small businesses and entrepreneurs when it is not enforced against the largest Internet players.
In addition, the requirement that domain name holders state how they will or are using a domain name is both unreasonable and unnecessary. Again, the domain name is a mere address within the Internet system. It is not in and of itself a trademark, and its use may vary as the speaker’s/domain name owner’s need for the domain name changes.
However, this type of statement locking a domain name owner into a certain type of use harkens back to trademark law and is likely to bring with it the baggage of trademark law. In the trademark application, at least in the U.S., applicants state a specific category of goods and services in which the trademark will be used. Once the trademark is submitted, the class of goods and services may not be changed (unless the Examining Attorney deems it to be incorrect) and the description of the goods and services may not be expanded.
These limitations work for trademark application, but are completely inappropriate for domain names. A domain name used by an organizationor individual can and should change as the interests and needs change: a family will grow and the baby page may evolve to a family newsletter or a children’s club online outlet; a community organization will respond to new challenges in the community from public safety, to schools to improved infrastructure; and a political group may revise and expand its charter and mission. The website, FTP site or email addresses for which the domain name may be used may well change considerably. A description for a domain name seems to be no more necessary than for a telephone number or for incorporation (in which a corporation can state merely that it intends to engage in a legal form of business).
Further, trademark attorneys seeking information about domain name use need only enter a few keys and hit enter to get the information they seek. DNRC and NetAction see no reason to require information that may be misused in the future to challenge or limit speech.
Also in Appendix 2, the Green Paper proposes that the mailing address of a domain name registrants will be used as the "mail address for service of process." DNRC and NetAction find this a dangerous requirement and poor Internet precedent. Service of process, at least in the U.S., is a valued protection for defendants in law suits. It is a part of the protections of due process and requires the defendant to be given reasonable notice of proceedings against him/her. Whenever possible, good and legal process is based on actual notice or receipt of material. According to the well-known treatise on Civil Procedure written by Friedenthal, Kane and Miller, "In general, the defendant has been provided notice when he has received the set of papers know as ‘process.’" [1985 edition, p. 165, emphasis added].
A mailing address may be completely inappropriate for giving a domain name defendant adequate notice of a lawsuit filed against him/her/it. Forexample, if the mailing address is a P.O. Box monitored once or twice a month for billing purposes, it would be entirely insufficient notice to send a notice about an online mediation taking place within a week of the notice being sent. The domain name defendant is unlikely to receive the notice in time. Similarly, we know that mail is often lost, improperly forwarded, or delayed.
It would be unjust and contrary to due process and legal notice to ask domain name owners worldwide to waive protections under their local laws and agree to use their billing address for service of process. It would be as shocking as asking all telephone subscribers to agree that their telephone billing addresses will be used for service of process.
Clearly, the question of notice in the Internet world needs to be evaluated, discussed, debated and resolved, by bar committees, judges and legislatures worldwide. Until these decisions are made, individuals, small businesses, and entrepreneurs should be protected as domain name registrants, not asked to relinquish rights of notice and due process.
The Green Paper asks for comment on the following matter:
"At the time of registration, registrants could agree that, in the event of a trademark dispute involving the name registered, jurisdiction would lie where the registry is domiciled, where the registry database in maintained, or where the ‘A’ root server is maintained. We seek comment on this proposal, as well as suggestions for how such jurisdictional provisions could be implemented."
DNRC and NetAction find the concept of asking a domain name owner to waive protections and agree to jurisdiction in the location of the registry, the registry database or the root server to be contrary to fair play and justice. Under the system proposed in the Green Paper, registries would (appropriately) be located worldwide. However, the locations would be irrelevant to the domain name registrants who would go through local or national registries to obtain domain names. Future domain name owners will have no better idea where the registry, databases or A root servers lie than where the telephone switches, satellite uplinks and downlinks and remote local loops lie for their international calls.
The Green Paper should not change any issues of jurisdiction. Domain name registrants must be called as defendants only in places in which it is fair for them to be summoned. Thus, if a U.S. corporation and a U.S. domain name holder are fighting over adomain name, it would violate reason and judicial process to ask the domain name owner to appear in London or default on the case merely because the plaintiff corporation has an office in London and the registry is located there as well. In fact, this proposal would encourage forum shopping by international corporate plaintiffs and aid them in finding the least accessible forum for the domain name owner defendant.
As with the question of notice, the question of jurisdiction is one which affects not only trademarks but all Internet issues. International bar committees are struggling with these issues and need time to carefully evaluate the rights and protections of due process. DNRC and NetAction believe it would be untimely and inappropriate to carve out domain name/trademark disputes as an area in which trademark plaintiffs have additional rights. There is no need for special action; the question of jurisdiction over Internet disputes is one in which the answers will come.
In Recommended Registry and Registrar Requirements, Appendix 1, the requirements for registrars include "3.b. A high level of security due to twenty-four-hour guards and appropriate physical safeguards against intruders." While this level of security may be appropriate for the registries, which will be the sole and exclusive guardians of individual TLDs, this particular requirement is not appropriate for the ISPs who will be registrars. Twenty-four guard isa concept which harkens back to the early days of computing in which the mainframe existed in one large room, cost millions of dollars, and needed to be not only physically protected, but also constantly monitored by staff for changes of temperature, fire or other problems. Even in the 1980s, when telecommunications equipment was centralized, 24 hour guards were seen as a necessity by many companies.
Today, however, computer and switching systems are decentralized. Few telephone switch centers have 24 hour guards – despite the millions of minutes of conversation passing over them – and few Internet Service Providers have 24 hour guards. Rather, the monitoring of network equipment for the ISP business can often be done offsite or performed electronically, by alarm systems which notify the police and the ISP officers of unauthorized physical entry, by electronic systems which notify ISP technical leads of service problems (either created by the ISP or elsewhere in the Internet system) and by electronicsystems which notify ISP security staff of unauthorized electronic entry. In fact, very rarely is the threat today physical. Rather, it is the electronic problems that require the most careful monitoring, and physical presence would provide no assistance.
In addition, the requirement of having constant physical security would likely rule out most Tier II ISPs from the lucrative and competitive opportunities as registrars. These are ISPs with an excellent track record of service to their subscribers andgood performance with their peering partners. They number in the thousands and have the necessary staff, systems, and customer base to support multi-homed connections to at least two ISPs, daily backup and archival systems, offsite backups and the otherrequirements set out in the Green Paper. These Tier II ISPs will bring as much energy and ingenuity, we believe, to registrar services as they have to ISP services, and should be encouraged, not cut out of participation as registrars.
The Domain Name Rights Coalition and NetAction were among the first organizations to actively push for reorganization of the .US domain name as both an excellent way to remove congestion in TLDs and a logical place to provide outlets for U.S. citizens and residents seeking to use the Internet for political, personal and commercial speech and needing domain names. Our first discussion of reorganization of the .US domain was in our comments to the Department of Commerce on August 18, 1997. DNRC followedup with a discussion of the .US domain name during its December 23, 1998, meeting with Ira Magaziner and Becky Burr. We continued with a follow-up letter on January 12 laying out significant additional detail for the .US reorganization. Excerpts from this letter are included in Appendix One in answer to the Green Paper request for comments on this subject.
While we are pleased that the .US reorganization is moving forward and that a first meeting on reorganizing the .US domain name took place in mid-March, we are concerned that this meeting opened with the leader stating that his goal was the creation of a"trademark-friendly environment" in the .US domain. We had hoped for a much broader vision of what this domain name might offer to all Americans.
6. Conclusion:
Ultimately, the best way to resolve the trademark issue may be to set it aside entirely. The title of the Green Paper is A Proposal to Improve Technical Management of Internet Names and Addresses, and technical management need not include thepublic policy issues surrounding domain name and trademark disputes. As a contrasting example, DNRC and NetAction propose that the proceeding to reorganize the Canadian domain name may offer guidance. The proceeding, entitled Public Consultation on the Administration of the Canadian Internet Domain Name .CA will change administration of the .CA domain from the private individual/volunteer entrusted with the country domain by Jon Postel to a new "self-financing not-for-profit corporation responsible for exclusively managing the .CA name space." The text is available at <http://strategis.ic.gc.ca/SSG/it04446e.html>, and the goals include:
The .CA proposal does not undertake the following challenges:
DNRC and NetAction applaud the focus of the .CA proposal on technical issues and its concern for the universal use of the Internet by all interested Canadian parties.
We believe it is probably best for the Green Paper to focus solely on the technical issues and allow case law and legislative law to further define what is needed in the narrow area of domain names and trademark disputes.
Respectfully submitted:
By: /s/ Kathryn A. Kleiman
THE ASSOCIATION FOR THE CREATION AND PROPAGATION OF INTERNET POLICIES/ DOMAIN NAME RIGHTS COALITION
Mikki Barry, Esq., President
Kathryn A. Kleiman, Esq., General Counsel
Michael T. Doughney, Vice President
Harold Feld, Esq., Secretary and Assistant General Counsel
Robert Cannon, Esq. – Signing in his own capacity
<http://www.domain-name.org>
NETACTION
Audrie Krause, Executive Director
<http://www.netaction.org>
March 23, 1998
Appendix 1
The .US Domain – Flagship, Safe Haven, and Laboratory
The task force faces difficult, conflicting goals. On the one hand, the United States sincerely wishes to internationalize the Internet and turn over management of the Internet to the private sector. On the other hand, the United States recognizes its commitment to the continued well being of the Internet – built primarily by Americans at the taxpayer's expense – and the need to protect American citizens, interests, and values on the Internet. The .US domain and the creation of the Internet Council to administer it, as described below, provide a way to reconcile these goals.
All countries recognize the rights of nations to order their own domain space. Many countries, such as Canada and the United Kingdom, have used their domain space to pioneer new forms of Internet administration and provide attractive alternatives for their citizens to the gTLDs. Yet the United States, which has the largest and most vibrant Internet community in the world, allows .US to lie fallow.
Reorganizing the .US domain would permit the United States to develop a "flagship" domain. Because the domain space clearly lies within U.S. sovereign jurisdiction, no one should question its administration by an Internet Council, described below. Because of the tremendous prestige American technological leadership and innovation have in the world, other nations and private industry would look to the .US domain for appropriate models. Use of the .US domain also permits the Internet Council to establish guiding principles for use within the domain space that enshrine core American values such as open communication, free market competition, and respect for entreprenuerism. In this way, America can lead development of the Internet in the same fashion it has lead the development of democracy in the world in the 20th Century – by consistently providing a shining example.
Reorganizing .US to be administered by an Internet Council also creates a safe haven for American citizens and interests. The .US domain would provide individuals with a place for political speech free from fear of violating the content restrictions ofother countries – who could simply block the .US if they found exposure to such unbridled information too "dangerous" or "polluting" for their culture. It would also provide a laboratory for entrepreneurs to provide Internet services, such as registering second level domains, without risking the Integrity of the entire Internet. It would also allow the United States to experiment and discover the proper balance of free market enterprise and government oversight to produce a dynamic, viable Internet that protects both private and public interests.
Context of a Global Internet
A-TCPIP/DNRC has talked with commercial organizations and policy groups about the U.S. Internet Council and found broad support for the idea. Those with whom we spoke found the U.S. Internet Council to be a logical idea and completely in keeping with the long-term goals of turning over the Internet to a representative private governing body. The U.S. Internet Council strikes everyone we have talked with as a particularly powerful concept, because it allows the world’s most dynamic and diverse Internet community – the U.S. Internet community – to come together around a table and negotiate policy for the .US domain name under U.S. law.
It was clear to all that the U.S. Internet Council would serve as a testbed for implementing new ideas without significant delay. The U.S. Internet Council, as a single domestic governance organization, would have the advantage of operating under a single language, a single body of federal law and one national border (which will allow all attendees to travel to meetings at reasonable expense). Further, although the concept of domestic governance structure on an "international Internet" at first blush sounds anachronistic, everyone we talked with appreciated that the international telephone system and all international communications are governed at both domestic and international levels. The same model could easily apply to the Internet. In fact, many believe that the only way to include and protect the voices of small businesses, entrepreneurs and individuals (the largest constituency of the Internet) will be to build their participation into domestic governance structures, which will then advise the U.S. on international positions.
A-TCPIP/DNRC believes the U.S. Internet Council will set an example for the world on how to organize a representative structure for Internet governance. The United States holds a special position in the Internet community because we have the benefit of the most dynamic and diverse Internet community in the world. The U.S. Government built the Internet, our students and faculty benefited the most from its use in the 1980s, our companies are benefiting the most from its commercial growth in the 1990s, and our citizens enjoy the cheapest and most plentiful access to all of its political, social, personal and commercial content. The rest of the world will catch up, but has not yet done so.
Certainly the organization of a U.S. Internet Council will involve some difficult decisions, including what Internet stakeholders should be represented and how they should be selected. In its comments to the Department of Commerce, Section B 3, A-TCPIP/DNRC recommended that the U.S. Internet Council include representatives of schools and libraries, small and large ISPs, small and large businesses,Internet public interest groups and Internet consumer groups (consumer groups and public interest groups are not necessarily the same, since AOL could make a good argument for representing Internet consumers, but not for being an Internet public interestgroup).
A-TCPIP/DNRC believes that it would be appropriate to bootstrap the Council by having the Administration and Department of Commerce appoint an initial Council to commence the policy discussions. Applications for Council positions should be accepted and reviewed by the Administration and Department of Commerce to create the broad representation that A-TCPIP/DNRC has advocated. We point to the variety of situations recently in which we have chosen representatives of Internet and telecommunications communications, including the NII Advisory Council and the North American Numbering Council. As a representative democracy, we are good at choosing representatives and accept the fact that the system will work to correct itself if the best representatives are not chosen in the initial round (provided the overall process is set up in a fair and equitable manner).
As its primary ongoing task, the U.S. Internet Council should be given the policy oversight of the .US domain name. It is long overdue to separate out the technical management of the .US domain from policy considerations. Newly reorganized, or with addition of secondary domain names (discussed below), the .US domain name will ease many of the problems facing the U.S. Internet community and remove tremendous pressure from the NSI domains.
The .US domain name under its current governance and structure does not serve our nations needs. Unlike the country codes of the rest of the world, few U.S. users even know .US exists. The structure of .US is part of the problem. It is currently limited to city and state delimiters, which are useful to municipalities and a few libraries, but not to those in the dynamic U.S. Internet community. The type of personal, political and commercial speech in which we engage, not the specific location where that speech takes place, should organize our SLDs in the U.S. Proper reorganization will give individuals a place for their personal homepages, organizations a place for community pages and political presentations, and small and large businesses a place for listing goods and services .
But solving the structural problems of SLDs in the .US domain name is only one issue. The U.S. Internet Council must also solve the governance problems within the .US domain name.
Separation of the policy and technical/administrative functions of the .US domain name is long overdue. With tremendous thanks to John Postel for his technical brilliance, the policy functions for the .US TLD should be entrusted to a representative body, of which the technical community should be a part; but others must be granted a voice as well. As an alternative model, the North American Numbering Council listens closely to the engineers who describe the problems and long-term solutions necessary for scalability of the telephone network, but follows the directives of Congress, its charter and the needs of the larger community in determining which technical recommendations to implement.
Today, domain name allocation decisions are made within the core of a small technical community. RFCs are the traditional way in which the technical Internet community discusses technical standards. Although the Requests for Comment are available to all who know the location of the particular website, most Internet users have no reason to monitor this area for policy debates. In fact, the IETF and other Internet organizations which work with RFCs pride themselves on not taking into account the"policy implications" of technical matters. At the recent IETF meeting in Washington DC, a group of attendees urged the organizers to set up a Birds of a Feather session to discuss the policy implications of domain name and governance decisions. Their request was declined as inconsistent with the technical character of the conference.
Policy belongs with representative policy bodies. The U.S. Internet Council will be asingle body that both the user community and the technical community will watch closely. Its proceedings will be open to all and made known to all by Federal Register and website notice. Just as the Department of Commerce Notice of Inquiry attracted hundreds of new participants to the Internet governance debate by making the issues known to wider audience, so too will the U.S. Internet Council become a focus for discussion and debate. A-TCPIP/DRNC believes that a process of open but expedited notice and comment period with a public hearing period will provide a basis for reorganization of the .US domain name in a way that benefits the entire country and sets a precedent for a new and open type of domestic governance.
A-TCPIP/DNRC does not believe that the charter for a U.S. Internet Council needs to be extensive. We cannot even anticipate the full range of questions that will be posed in the future. In its charter, A-TCPIP/DNRC recommends focusing on the structure and composition of the U.S. Internet Council to make it representative and accountable.
While a diverse and balanced composition of the U.S. Internet Council can be derived from the private sector, A-TCPIP/DNRC does not believe that accountability and trust can be provided solely by the private sector. The IAHC/POC have soured the Internet community because their promise of fair and equitable decision making was not kept: the periods of open discussion were followed with closed and off-the-record ex parte meetings; the decisions were never clearly and explicitly linked to comments received; and radical new proposals emerged in final form without any open and public consideration by the Internet community. We need the U.S. Government to provide accountability and oversight, at least for the near future.
The U.S. Government has been the governing force of the Internet for years, and no one will fault it for remaining in an oversight mode awhile longer. On the contrary, to suddenly abandon that trust would seen as abdicating responsibility. To the majority of the Internet users, the U.S. Government is seen as the preserver of rights (having allowed all to join the Internet over the last few years) and democratic principles of openness and accountability (the traditional role of government in a democratic society). If theU.S. Government takes a nonvoting oversight role of the U.S. Internet Council, its role will remain consistent with moving the Internet toward responsible self-governance.
In its comments to the Department of Commerce, A-TCPIP/DNRC recommended one way in which the U.S. government might take on a limited role, i.e., by organizing the U.S. Internet Council under the Federal Advisory Committee Act. We recommended that the Department of Commerce be appointed the government agency to which the U.S. Internet Council would report. Clearly, NTIA has a mandate for serving both the commercial and noncommercial telecommunications needs of the U.S. citizens and the expertise to handle such a mission.
FACA would provide the limited oversight and accountability that will foster trust and confidence quickly in the U.S. Internet Council. In particular, meeting notices would be published in the Federal Register, on a U.S. Internet Council website, and onthe Department of Commerce website. FACA requires that meetings be public, with very limited exceptions, so the public would be invited to participate. FACA requires that minutes of the meetings be kept and published. The North American Numbering Council has done a superb job of making its meeting minutes available to the public on its website shortly after the meeting is completed. Finally, FACA allows observers and participants an appeal to the government if they believe that the Council is acting in an improper or illegal manner. Overall, the Department of Commerce will have a role that is not costly, either in terms of money or personnel. However, its sagacious oversight of the Council will generate enormous amounts of good will and trust.
F. Guiding principles for the U.S. Internet Council
A-TCPIP/DNRC would be happy to assist the Administration in drafting a charter for the U.S. Internet Council. As a starting point, we recommend adoption of a broad set of guidelines for the creation of new SLDs (second level domain names). Over the next 2-3 years, the U.S. Internet Council should only create SLDs where they will help to better organize Internet communication space.
Currently, the Internet has the organization of a frontier town in the Wild West, with industrial sites popping up next to residences and residential shopping areas. It is time to engage in some communications planning, analogous to urban planning, and create specific zoning for the many types of speech in which we engage. Proposals to the U.S. Internet Council should suggest SLDs that will better organize space and serve the noncommercial and commercial communities of the Internet broadly. Later, as technology improves, there may be room for the introduction of more individually tailored domain names.
G. The U.S. Internet Council Could Encourage Experimentation with Competitive Registries Within the .US Domain
While the .US management may be given to a single contractor (A-TCPIP/DNRC has no express view on this matter), the SLDs of the .US domain name can well be given to many different registrars and provide the U.S. and the world with an exciting opportunity to develop competitive registry technology and policy. A-TCPIP/DNRC submits that certain registries which will have instant recognition and cachet – such as .COM.US and .ORG.US – and they may well be excellent candidates for shared registry experimentation. ISPs will probably be very interested in making sure that they can register their customers quickly, easily, and preferably directly, into their SLDs. Other SLDs may be good candidates for exclusive franchises, such as a registry that promisesto register only elementary schools, or political organizations. The U.S. Internet Council is the appropriate body to consider these issues and make the assignments. We think that the process will be one that the entire world will watch, but one made farsimpler by being under the single umbrella of U.S. law.
One last bonus may also accrue. The .US domain may allow the United States to break the NSI monopoly on gTLDs without unfairly penalizing NSI. By prohibiting NSI from initially registering SLDs in.US, and in particular giving other contractors the rights to .com.us, .org.us, and .net.us, the monopoly value of the TLDs .com, .org, and .net will diminish. This prohibition on NSI from initially participating in .US is not unfair, and parallels steps taken in telephony to encourage competition (such as prohibiting the "baby bells" from offering long distance service until they face effectivecompetition in local service).