March 20, 1998

U.S. Department of Commerce
14th and Constitution, N.W.
Washington, D.C. 20230

Ladies and Gentlemen:

We share your viewpoint that the rapid growth in the Internet requires an examination of the best possible methods of managing this important resource in a fair and efficient manner. We appreciate the thoughts and efforts that have led to the discussion draft paper dated 1/30/98 entitled "A Proposal to Improve Technical Management of Internet." While we are generally supportive of the proposals expressed therein, we have serious concerns about the effect of creating new gTDLS and multiple registries without providing for strong protection for trademark holders and a quick and efficient dispute resolution mechanism. Our more specific comments are set forth below.

  1. The Corporation. We strongly support the creation of a new not-for-profit corporation (the "Corporation") as soon as practicable. In order to rapidly move forward with this plan, already established international membership associations (ARIN, APNIC, W3C, CORE) should elect the governance board, subject to guidelines to ensure that the Board is truly reflective of the online community and includes representatives from end users, trademark holders, international entities and governments. We support the recommendation that the Corporation oversee the operation of the root server system, but until such time as the Corporation is established and operating, NSI should transfer control of the root server system to the IANA. We recommend that the Ccorporation provide the administrative duties of maintaining one fully integrated registry, combining all present gTDLs (.com, .org, .edu., and .gov) and any newly created gTDLS. As the centralized registry, the Ccorporation would establish procedures for the creation of new gTDLS, selection and accreditation of multiple registrars, and streamlined dispute resolution (via an arbitration panel funded by registration fees).
  2. Until the Ccorporation is up and running, we do not believe that any organization should establish new gTDLS. Trademark and domain name holders invest substantial time and effort in establishing new names and "experimentation" with the creation of new gTDLS, prior to a global policy and strategy is impractical. This will result in great confusion if new gTDLS need to be changed when the role of the Corporation is finally determined.. . In addition, except for research and testing purposes, the IANA should not establish new routing numbers for new gTDLS while transitioning to a new system.

  3. Registries and Registrars. We also believe that there is no reason to establish competitive registries. We support the CORE proposal that all gTDLS should be located in one database, which can be accessed through and by many different registrars. Competition comes at the registrar level where competing companies can offer customers varying services such as domain name searches, web site development and hosting. As we know from our experience with Trademark registries, consolidation is advantageous for the coherent administration of a system, while decentralized registries foster incompatibility. In fact, the European Union is trying to rectify the many problems caused by multiple trademark registries in European Countries. It is absolutely essential that there is a central interface in order to allow all online users to search all databases quickly and efficiently.
  4. Protection of Famous Marks. The scope of protection of famous marks under international treaties spans across all international classes, products and services. International treaty provisions such as Article 6bis of the Paris Convention; Articles 16.2 and 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs); Article 1708 (6) of the North American Free Trade Agreement (NAFTA); and Article 9 (5) and (6) of the Protocol of Harmonization of Rules Regarding Intellectual Property Within Mercosur in the Area of Trademarks, Indications of Source and Denominations (Mercosur Protocol) all provide prior established standards for broad scope of protection afforded famous marks.
  5. Famous marks should be similarly protected across the range of gTDLs. The recognition of a famous mark as a mark from a single source or origin will be the same no matter what the gTDLS is. We therefore strongly believe that Trademark holders with well established marks should have the right to deposit a list of those marks and famous names with the registry and that no new gTDL should be granted to any third party incorporating the famous name or a confusingly similar name. There with ".com" domain names should behave a forty five (45) day pre-registration period in which to provide a list to the applicant register their names or exclude applications for identical or confusingly similar names for each potential new gTDL. Trademark holders should be required to submit signed affidavits of the use of each name and should be informed when a third party attempts to register a gTDL with such name or a confusingly similar name.

  6. We support the requirement that each registrant supply additional contact information which will facilitate dispute resolution by direct conversations between the registrant and potential claimants.
  7. We strongly support the adoption of clear, consistent and mandatory dispute resolution procedures as they relate to domain name registrations. As the Internet is a global medium, it is essential that a consistent mechanism for resolving trademark disputes over domain names be established which insures consistent standards across all registrars and gTDLS. The Corporation should establish arbitration panels, based in both Geneva and the U.S. city where the Corporation has offices, funded by registration and renewal fees.

One possible pathway for dispute resolution is as follows:

    1. Mandatory attempts at resolution between the domain name registrant and claimant (similar to the requirement currently in place under the NSI scheme);
    2. Mandatory on-line arbitration based on agreed in rem jurisdiction of the Corporation over domain names (as distinct from the parties). Such arbitration to be based on stated standards which eliminate as much discretion as possible. The standards to govern such decision making to include such factors as (a) prior use of the identifier portion of the domain name as a trademark or servicemark in a different gTDL by the owner of the mark; (b) prior use of the domain name as a trademark or service mark; (c) evidence of actual consumer confusion caused by the registrantís use of the domain name; and
    3. Mandatory appeal within a (short) specified time frame to an panel constituted in either (Washington) or Geneva, at the election of the responding party.




Jake Winebaum

President, Disney Online