Department of Commerce
National Telecommunications and Information Administration
Improvement of Technical Management of )
Internet Names and Addresses; ) Docket No. 980212036-8036-01
Proposed Rule )
Comments of the
Information Industry Association
The Information Industry Association (IIA) hereby submits comments in response to the Department of Commerceís (DOC, the Department) proposed rule and request for public comment in this proceeding. Recognizing the need for restructuring the current Internet domain name system (DNS), IIA heartily endorses the Departmentís general recommendations to transfer management of the DNS to a private, not-for-profit corporation and to rely on market competition for the administration of top level domains and the registration of domain names.
Further, IIA respectfully recommends additional requirements and guidelines for domain name registration and a greater role for intellectual property owners in the administrative process, in order to reduce consumer confusion in electronic commerce and protect the interests of proprietors. IIA also recommends that the Department should assess the administrative burdens that will be shouldered by trademark holders through the creation of additional top level domain names (gTLDs) and would encourage uniform application of dispute resolution procedures.
IIA is a trade association of more than 550 companies engaged in the generation, distribution, transmission and use of information products and services. IIAís members provide access to many of the digital networks that comprise the National Information Infrastructure ("NII") and the Global Information Infrastructure ("GII"), as well as the content that is provided on those networks. IIAís membership does not include Network Solutions, Inc. (NSI).
I. In order to properly oversee the coordinated functions of the Internet and reflect the diversity of its users, the board of directors of the not-for-profit corporation proposed by the Department should include trademark and other intellectual property owners.
In its proposed rule, the Department calls for the creation of a private, not-for-profit corporation to manage overall policy guidance and control of the gTLDs, number allocation system, Internet root server system, and the development of other technical protocol parameters. The new corporationís board of directors would be composed of: 1) three directors from a membership association of regional number registries, 2) two members designated by the Internet Architecture Board to represent the technical community, 3) two members designated by a membership association representing domain name registries, 4) seven members designated by a membership association representing Internet users, including one entity engaged in not-for-profit use of the Internet. Although the Department states that "the remaining seats could be filled by commercial users, including trademark holders," IIA believes that the Department should adopt a commitment to including intellectual property holders on the board, in order for the corporation to operate for the "benefit of the Internet as a whole."
The exponential growth of the Internet and its economic promise to vendors and consumers present information proprietors with a double-edged sword. While companies are eager to take advantage of the worldwide distribution capabilities of their products over the Internet, they are also faced with tremendous administrative burdens in protecting their property from unscrupulous practices, including piracy, copyright infringement and "cybersquatting" of their trademarks. If the Internet is to realize its commercial potential, information providers and intellectual property holders must feel secure in the delivery of their goods and use of their trademarks and domain names. A logical first step in ameliorating the concerns associated with cybersquatting and other types of piracy is to reserve a reasonable number seats on the board of directors for information providers and intellectual property owners, so that their essential role in providing quality information for the Internet can be enhanced by their contributions to the development of domain name allocation policy . This will provide the board with the perspective of a large segment of the Internet community, and commercial parties with a voice in the decision making process.
II. In order to reduce customer confusion and permit trademark holders to protect against trademark infringement, the new corporation should limit the creation of new top level domains, adopt a uniform registry dispute resolution system, and permit famous marks to be registered in all top level domains.
IIA agrees with the Department that the U.S. government should end its role in the Internet number and name address systems and facilitate a smooth transition to private sector management. Furthermore, IIA agrees with the Departmentís proposal for limited experimentation with competing registries during this transition. However, IIA recommends that the Department take the following steps in order to preserve stability in electronic commerce, reduce consumer confusion, and insure that trademark holders are able to protect their proprietary rights.
A. Only one additional top level domain name should be created during the transition period.
IIA believes that only one new top level domain name should be created during the transition period, as the addition of up to five new gTLDs will increase costs to trademark holders and add to customer confusion on the Internet. One of the primary concerns of information providers is the availability of a secure network in which they can deliver their goods and services and protect their intellectual property rights. Unfortunately, as recent cases have indicated, unscrupulous parties have registered famous "marks" in order to subsequently resell use of the mark as a domain name to the trademark holder. Recognizing this threat of "cybersquatting," information providers and trademark holders have started to closely scrutinize the Internet to protect against unfair use of their marks. Each creation of a new gTLD would require information service providers and trademark holders to expend ever more resources to police the registry in order to protect against unauthorized use or potential dilution of their trademark. This increased administrative cost would ultimately be passed on to the customer, resulting in higher prices for Internet users.
The creation of new gTLDs would be particularly burdensome for smaller information providers and trademark holders who operate on the economic margins and would subsequently find themselves at a competitive disadvantage. Many such information providers do not have the resources to police such a vast network such as the Internet. Without this ability, their trademarks are easy prey for competitors or other entities to use as a similar domain name. This would have an especially egregious affect on smaller companies, who seek to establish good will and consumer familiarity with their trademark or domain name among Internet users.
Furthermore, additional gTLDs create the potential for customer confusion. For example, the web site address for NASDAQ is www.nasdaq.com. However, a party could register at www.nasdaq1.com, thereby creating the impression that the site either contains information generated by NASDAQ or is authorized by NASDAQ. The possibility of other derivative uses of "NASDAQ" or other famous marks such as AT&T or Coca-Cola adds to this potential confusion.
However, IIA also recognizes the need to evaluate private sector management of the domain name system. Therefore, in order to balance the concerns of information providers with the necessities of the evaluation process, IIA would recommend the creation of only one new gTLD during the transition period.
B. If the Department abides by its decision to add up to five new registries during the transition to private management, uniform registration requirements, dispute resolution procedures and registrar duties should be implemented to protect trademark holders against piracy or dilution of their marks.
1. Famous marks should be permitted to register in each new registry.
If the Department adds five new registries and corresponding gTLDs, IIA would recommend at the very least that holders of "famous" marks should be permitted to automatically register these marks as domain names under each gTLD. This will reduce the burden to trademark holders of policing each new gTLD, as well as limiting the potential of "cybersquatting" and its associated litigation costs. Furthermore, this would increase the efficient use of the Internet and reduce online costs for consumers by eliminating the need to search various domain names for the proper site. For example, consumers who are seeking the web site for AT&T, Dun & Bradstreet, or smaller information providers such as Silver Platter, would not have to search, www.att.com, www.att.store or www.att.firm, but rather would be guided to AT&Tís primary site regardless of the gTLD.
2. New registries should be required to adopt uniform registration requirements and uniform dispute resolution systems.
IIA agrees with the Departmentís recommendation to guarantee trademark holders a dispute resolution system with resort to a court system and to require gTLD registrants to supply basic information. We would add the following suggestions to each of these proposals.
First, the Department should insure that dispute resolution mechanisms are uniform among competing registries. At a minimum, the Department should enforce uniform temporary suspension periods, such as 30 days from initial registration, uniform procedural and filing requirements, and a rule which specifies that in the event of a dispute which requires judicial resolution, jurisdiction lies where the registry is domiciled. By creating jurisdictional certainty, litigation costs and the duration of the resolution process will be substantially reduced.
Secondly, IIA agrees with the Department that applicants should also be required to provide certain minimum information upon their application for a domain name. We would advise that in addition to the information cited in Appendix 2 of the proposed rule, applicants also be required to specify their intended use of the domain name, appointment of an agent for service of process and agreement to jurisdiction in the state where the registry is located.
In order to maintain consistency between the registration requirements in the Lanham Act and registration requirements in the domain name context and to provide trademark holders with protection from confusion due to similar domain names, applicants should be required to certify that they are, to the best of their belief and knowledge, "the owner of the mark sought to be registered as a domain name, and that no other person, firm, corporation, or association, has the right to use such mark in commerce either in identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such person, to cause confusion, or to cause mistake or to deceive."
Under the Departmentís current recommendations, the applicant would only be required to certify that he is entitled to register the domain name for which he is applying and knows of no entity with superior rights in the domain name. While this standard would protect against the verbatim use of an existing trademark or domain name, it does not address cases of confusing or similar use of a trademark or domain name. For example, the Departmentís standard would not protect a trademark or domain name holder against an applicant who registers www.NASDAQ1.com. By mirroring the existing language under the Lanham Act, applicants would face a more realistic standard of certification, namely that their domain name will not cause customer confusion.
Finally, registries can take reasonable measures to protect intellectual property and reduce consumer confusion. As the Department points out, "current law provides no basis for holding that a registrarís mere registration of a domain name, at the behest of an applicant with which it has an armís length relationship, should expose it to liability." However, the Department could significantly contribute to a reduction of domain name and trademark piracy by requiring registries to post a list of pending domain name applications and a corresponding waiting period before the domain name is formally registered. This would provide notice to trademark holders of potentially unlawful acts at little or no cost to the registries and domain name applicants.
IIA supports the general principles of the Departmentís green paper on the improvement of technical management of Internet names and addresses. The Association shares the Departmentís belief that the private sector is best equipped to maintain and oversee the future operations of the Internet, and that the Internet should be free of government regulation. However, as management of the domain name and address system moves from the public to the private sector, the government should be sensitive to the concerns of those entities who provide proprietary content to Internet users by establishing safeguards for the protection of intellectual property.
IIA appreciates the opportunity to submit comments in this proceeding and looks forward to working with the Department on this issue.
William Ashworth, Assistant Counsel
Information Industry Association
1625 Massachusetts Avenue, N.W., Suite 700
Washington, D.C. 20036