INTA Response to the U.S. Government Paper on the Improvement of Technical Management of Internet Names and Addresses

INTRODUCTION, BACKGROUND, AND THE NEED FOR CHANGE

About INTA

The International Trademark Association (INTA) is pleased to provide a response to the request for comment (RFC) on the "Improvement of Technical Management of Internet Names and Addresses" [Docket No. 980212036-8036-01] as published in the February 20, 1998 issue of the Federal Register. INTA applauds the efforts of the Administration to seek comment from the public concerning the future of the Internet - the latest mode of global communication.

INTA is a 120-year-old not-for-profit organization devoted to the protection of trademarks and is comprised of over 3,500 members from 120 countries around the globe. INTA's membership crosses all industry lines and includes manufacturers, retailers, law firms, and professional and trade associations. What this diverse group has in common, is the understanding that trademarks are a company's most valuable asset -- a simple yet effective means of communicating with consumers in the global marketplace.

During the on-going international debate on the future of the domain name assignment system, INTA has served as the voice of trademark owners in the United States and around the globe, ensuring that their trademarks are protected. Members of INTA have served on the International Ad Hoc Committee (IAHC) and its successor organization, the Policy Oversight Committee (POC). We have been present at the consultative meetings held by the World Intellectual Property Organization (WIPO), testified on Capitol Hill, and met with members of Congress and the executive branch to discuss how the growth of the Internet has affected trademark protection. Finally, we have published INTA White Paper: Trademarks on the Internet, a document which encompasses the history of trademarks, the Internet, and the relationship between the two.

Value of Trademarks

Trademarks are a subtle, yet fundamental element of our daily lives in the identification of products in the marketplace. They are a basic mode of communication, a means for a company to convey a message of quality, consistency, safety, and predictability to the consumer in an easy-to-understand form. Equally important, trademarks generate an economic ripple effect that starts even before a consumer buys a branded product. First, trademarks benefit the suppliers of raw materials and equipment needed to make the product. Then trademarks stimulate advertising oriented to the brand - $174 billion for the U.S. in 1996 alone. Finally, when the consumer purchases the trademarked product, the manufacturer, distributor and retailer benefit - as do their employees and shareholders. The consumer benefits by easily being able to recognize and select products or services.

For the reasons just discussed, trademark owners are eager to protect their products' names and distinguishing features in the real world, as well as cyberspace. There is no denying that a trademark is a tremendously valuable asset to a company and the global economy.

The Connection Between Trademarks and Domain Names

Short, simple, distinctive, and indicative of origin -- these are the essential qualities which trademarks and domain names share. Just like trademarks, people use domain names as "shorthand" reference tools to locate specific information concerning a particular product and learn about the company which is offering the product for sale. The important thing to remember is that domain names can function as trademarks. Both serve to educate and reassure the consuming public that they are in the right place and that they are purchasing the right product for their particular needs. When a "Web surfer" logs-on to www.kodak.com, he/she should expect information about Eastman Kodak Company, not some unrelated or possibly slanderous subject. That is why it is essential for companies to have some mechanism to ensure that their trademarks and the use of those marks as domain names are safeguarded in the new world of online commerce.

Synopsis of INTA's Comments

INTA finds that the Administration's domain name proposal lacks the following:

The Need for Change

INTA fully supports the Administration's recognition of the need for change in the current domain name assignment system ("DNS"), and its recognition that Internet names have an increasingly commercial value, and thus cannot be treated merely as addresses. We believe that the Internet is the fastest and most efficient means for the producers of goods and services, such as companies, merchants, and manufacturers who are trademark owners, to inform the public about their merchandise and subsequently make sales. For example, if a consumer wishes to learn about The Coca-Cola Company's products or how much income the company has made in the last year, they can log-on to www.coca-cola.com. Another example is the movie industry which has used the Internet as a primary means for advertising their films and informing the public about plot and content (i.e. www.miramax.com). A third example is the use of the Internet to make purchases of products such as automobiles (i.e. www.rvbrokers.com). In the end of course, these electronic exchanges, regardless of the product or topic, generate the economy not only of the United States, but the entire world.

INTA believes strongly that the fundamental question for the government is not only the technical stability of the Internet, but how to protect consumers' interests in locating the brand or vendor of their choice on the Internet without being misled or confused, and how to protect companies from having their brand equity eroded or commandeered in an electronic environment. INTA believes that the Administration's proposal, in its current form, fails to take into consideration the interests of American trademark owners and the public which relies on those trademarks. In our opinion, the proposal incorrectly treats trademark issues and consumer protection as secondary.

INTA believes that the administration of Internet names and numbers involves far more than "a few primarily technical questions." As the worldwide deliberations concerning the future of the Internet have made clear, the administration of Internet names and numbers is a complex issue affecting internationally recognized property rights and individual personal rights and thus will affect the future of the exercise of individual freedom and international commerce as we as a global community become more deeply involved in the Internet as a community and marketplace.

THE FUTURE ROLE OF THE U.S. GOVERNMENT

INTA supports efforts by the U.S. Government to privatize the Internet and promote international participation in the domain name system.

PRINCIPLES FOR A NEW SYSTEM

INTA generally supports the identified shared principles and stated goals. Once again, however, we note the importance of incorporating and being mindful of the international and commercial nature of the Internet.

THE PROPOSAL

The Coordinated Functions

The Administration envisages a new, not-for-profit corporation assuming authority over:

1. policy for allocation of number blocks to regional number registries for the assignment of Internet addresses;

2. the operation of an authoritative root server system;

3. policy for determining the circumstances under which new top-level domains are added to the root system; and

4. the development of other technical protocol parameters as needed to maintain universal connectivity on the Internet.

The allocation of number blocks and the development of protocol parameters appear to be principally technical issues, susceptible of resolution at a technical level. Clearly it is appropriate for RIPE, ARIN and APNIC along with IAB to be concerned with the management of these functions. Provided this is done in a technically efficient and non-discriminatory manner which does not result in restrictions on access to or operation of the Internet, then it is unlikely to have a significant impact on the majority of businesses and consumers using the Internet.

In contrast, INTA believes that the most important issues relating to administration of the DNS, including the policy for addition of generic top level domain names (gTLDs) and the guaranteed operation of an authoritative root server system are not technical. Decisions on these functions will have a critical impact on businesses and consumers using the Internet. They will have significant consequences for the stability and interconnectivity of the Internet and particularly for its utility as an effective medium for electronic commerce.

In this respect, the Administration does not adequately recognize or acknowledge the damaging effects of loss of business and consumer confidence in the Internet as a result of changes which are likely to increase the potential for confusion and conflict over domain names.

Accordingly, mainstream business and consumer representatives (including trademark interests) should logically have significant representation on any governing body, and certainly no less than the technical community. As currently drafted, the proposal does not provide for such commercial interests to be adequately represented on the proposed Board of Directors, stating only that five seats on the Board "could be filled by commercial users, including trademark holders."

It is the mainstream businesses and ordinary consumers, most of whom are yet to establish an Internet presence, who stand to be most seriously affected by changes to the domain name system. It would be insufficient, therefore, for the government or any "new corporation"

merely to seek the endorsement of the present "Internet Community" for any changes.

As INTA has consistently advocated in previous commentary and in testimony before Congress on these matters, if the Internet is to serve the needs of international commerce, including business and consumer interests in maintaining brand equity and investment and consumers' interests in relying on such brand equity to identify the product, service or company of the consumers' choice, the mainstream business and trademark community must have an effective voice in Internet domain name policy. The Internet technical community has consistently underestimated the relevance of trademark concerns to business and consumers. Trademarks are the lifeblood of international commerce and will inevitably play an increasingly important role on the Internet.

INTA believes the composition of the Board of a new corporation insofar as it is responsible for matters of domain name administration (and not just IP number allocation or protocol issues) should comprise:

To that end, INTA would agree with the Administration that decisions on key issues of policy, which would certainly include any decision to add new gTLDs, should require a super-majority or even complete consensus of Board members before implementation.

The Competitive Functions

The Administration's proposal to effectively endorse the proprietary registry model, allowing NSI to maintain its de-facto monopoly over the existing gTLDs (.com, .net, .org) raises a number of concerns. NSI was originally given responsibility to manage these domains as a public resource. INTA supports the view, which is also a fundamental principle of the gTLD-MoU, that the name-space should continue to be managed as a public resource. As others have also observed, the Administration's proposition that the proprietary registry model will encourage competition at that level is unconvincing. It will certainly expose the new corporation to competing claims and pressures to add more registries. Such pressures, particularly threats of litigation if new registries are not recognized, will almost inevitably result in a lowering of the entry criteria and ultimately in an unconstrained free-for-all. Trademark owners will be faced with the practically insurmountable task of preventing abuse of their rights in countless gTLDs, subject to countless different registry dispute policies in countless different jurisdictions. The utility of the domain name system itself will be substantially degraded. Licensed anarchy will prevail.

INTA favors the alternative single, shared registry model, propounded under the gTLD-Memorandum of Understanding (MoU), with the registry operating on a cost-recovery basis and with competition between registrars. Under this model, the new corporation would be empowered to manage the gTLD name-space as a public resource, would be able to take its decisions in the wider public interest and would not be involved in the dubious practice of granting proprietary monopolies to commercial enterprises to control individual gTLDs. The single registry model is also much preferred for dealing with disputes. Instead of having to deal with different dispute policies in different jurisdictions, businesses and challenged domain name holders would have a single consistent policy and jurisdiction would be clearly determined.

The Administration asserts that attempts to impose central order "risk stifling a medium like the Internet that is decentralized by nature and thrives on freedom and innovation". What the Administration appears to be reluctant to accept is that the inevitable consequence of unconstrained "freedom" (as sought by the Internet technical community) is chaos, confusion and anarchy where only the street-wise (in this case hackers and others with sufficient technical skills) can survive. Already, the exploitation of this "freedom" by those without principles or any sense of community responsibility has given rise to the problems of proliferation of illegal content (e.g. child pornography), security breaches (e.g.hacking and spoofing incidents like Kashpureff's hijack of the root-server), spam and copyright infringements, all of which undermine established real-world standards.

The United States has well established laws to protect businesses and consumers from abuse. There are treaties establishing systems to facilitate civilized trade and to ensure international respect for rights and freedoms. INTA believes that the system for administration of domain names likewise must provide sufficient order and safeguards to make the Internet a civilized environment for international trade. The U.S. Patent and Trademark Office (USPTO) does not abridge freedom of speech or restrict freedom in general because it imposes certain rules on the registration of trademarks. It is illogical to suggest that imposing rules on the registration of domain names (which give a de facto exclusive right to each domain name) would do so.

Creation of New gTLDs

The pressure to add new gTLDs has to date come predominantly from members of the Internet technical community. While INTA has made considerable efforts to bring "real-world" and commercial user views into the debate through its participation in IAHC and POC, overall it is clear that the concerns of ordinary businesses and consumers have not been given weight commensurate with the potential impact the addition of new gTLDs might have on their interests.

The unconstrained proliferation of gTLDs will act to undermine the existing trademark system (we have already heard calls from members of the Internet technical community for

domain names to be above trademark law, but to be "brands" at the same time.) In a San Francisco Chronicle article of January 31, 1998 entitled "Domain Name Plan May Result in Net Chaos," Wayne Rush, senior technology editor at Internet Week magazine in Washington, D.C. cautioned that (although consumers would have more choices under either the Administration proposal or the IAHC/POC plan), "it adds to confusion online. For instance, where do I find information about Ford Motors? Is it www.ford.store or www.ford.firm? It adds to the complexity of the Net and makes virtual trademarks a dicey proposition."

No one benefits from consumer confusion, except, perhaps, those who seek to engender it. INTA therefore considers it undesirable and premature that the Administration should have already proposed to add up to five new gTLDs before the new corporation assumes responsibility. INTA regrets that the Administration has chosen to pre-empt the new corporation in this way and by stating explicitly that it (the Administration) stops short of not allowing any new top-level domains. In INTA's view, it would be preferable to leave such decisions to the new, representative corporation. INTA reiterates its previous recommendation that given the substantial likelihood that additional gTLDs will increase confusion and add to the risks for trade mark owners, that new gTLDs should preferably only be added, if at all, one-at-a-time and that appropriate safeguards, in the form of consistent, speedy and effective processes for dispute resolution must first be in place to protect existing trademark rights.

The Trademark Dilemma

Administration

"It is important to keep in mind that trademark/domain name disputes arise very rarely on the Internet today. NSI, for example, has registered millions of domain names, only a tiny fraction of which has been challenged by a trademark owner. But where a trademark is unlawfully used as a domain name, consumers may be mislead about the source of the product of service offered on the Internet, and trademark owners may not be able to protect their rights without very expensive litigation."

INTA Response

The Administration's proposal treats trademarks and consumer interest as secondary when it states that "trademark/domain name disputes arise very rarely on the Internet today." This is simply an inaccurate statement and appears to be based on a statical anomaly - that of comparing the approximately two million domain names which NSI has registered to the amount of trademark related litigation in which NSI has become personally involved. The proposal does not explain what is meant by "a tiny fraction" of names which have been challenged but even if that "tiny fraction" were to be as little as 3%, this would mean six thousand domain challenges.

In reality, there continues to be an increase in the number of trademark disputes caused by domain name challenges. The number of disputes that have not gone on to litigation, are unresolved or have settled at significant cost to one, or both parties, is huge. Any trademark owner who must continually surf the web looking for infringements, knows this is true. As the proposal lacks source material on the nature and numbers of domain name disputes, INTA respectfully refers the Administration to the following sources which discuss trademark problems caused by domain name use and misuse. All of these sources are readily available for viewing and downloading on the Web:

The assertion that domain name trademark problems rise very rarely on the Internet today is also belied by the growth and proliferation of "domain name brokers" who rush to register desired domain names, often names that are also owned by a proprietor or are the trademarks of the proprietor, for the purpose of selling them back to their rightful owner or to the highest bidder. Such domain name brokers, viewable on the worldwide web, include http://www.bestdomains.com, http//www.domains.com, http://www.domain-registration.com, and http://www.domainmark.com to name only a few.

INTA, of course, agrees with the statement in the Administration's proposal that "where a trademark is unlawfully used as a domain name, consumers may be misled about the source of the product or service offered on the Internet, and trademark owners may not be able to protect their rights without expensive litigation." However, as appropriate as this statement is we do not believe that it can be fully appreciated or addressed appropriately while pretending that the underlining problems do not exist on a massive scale and are presently out of control.

Administration

"For cyberspace to function as an effective commercial market, businesses must have confidence that their trademarks can be protected. On the other hand, management of the Internet must respond to the needs of the Internet community as a whole, and not trademark owners exclusively. The balance we strike is to provide trademark holders with the same rights they have in the physical world, to insure transparency, to guarantee dispute resolution mechanism with resort to a court system, and to add new top level domains carefully during the transition to private sector coordination of the domain name system."

INTA Response

INTA fails to see why the Administration believes there is any inherent conflict between the needs of Internet community as a whole and of trademark owners. Trademarks on the Internet, as in other contexts, serve to aid business and consumer interest in identifying and distinguishing goods and services in commerce and guaranteeing that the quality of those goods and services will be maintained. The rapid and increasing commercialization of the Internet, which is the entire impetus behind the need to create a new Internet governance, makes maintaining the consumer protection guarantee offered by trademarks even more essential.

The proposal states that it seeks the admirable goal of providing trademark owners with the same rights they have in the physical world. This goal may some day be reached through a harmonization of international trademark laws, but is anomalous in the Internet context, as domain names are instantaneously international. There is no equivalent in trademark law, as truly global international registrations do not exist. The trademark laws of the world are country specific while presence on the Internet gives one an instant global reach.

Catapulting the interests of domain holders over those of existing trademark owners can do little to increase business or consumer confidence in electronic commerce. Rather, it creates an inequitable and expensive structure in which tremendous goodwill and consumer confidence created in the "physical world" through substantial investment can be wrongfully exploited in the electronic world in the name of domain name holder "freedom" and "brand equity." A first step towards an ideal situation is to respect trademark rights and the guaranteed protections they give consumers.

INTA supports the goal of guaranteeing a dispute resolution mechanism with resort to court system(s) and of adding new top level domains slowly and carefully, if at all, during the transition. Our comments on how this would best be done are included in responses to other portions in which the "Trademark Dilemma" is discussed.

Administration

"There are certain steps that could be taken in the application process that would not be difficult for the applicant, but would make the trademark owners job easier. For instance, gTLD registrants could supply basic information including the applicant's name and sufficient contact information to be able to locate the applicant or its representative. To deter the pirating of domain names, the Registry could also require the applicant to certify that it knows of no other entity with superior rights for the domain name it seeks to register."

INTA Response

While the INTA believes that the Administration's proposal is a step in the right direction and an improvement over the information one must presently provide when obtaining a domain name through NSI, this proposal falls far short of the information that would be required to truly protect consumer interest in the Internet and protect trademark owners from the loss of their valuable investments. Below we will summarize what INTA believes are the necessary minimum standards for disclosure required by a domain name applicant and then compare them to the Administration's proposal. INTA's proposed standards are not onerous, but would greatly benefit the commercial community - businesses and consumers alike.

Standard

Comparison

The Administration's proposal includes a request for most of this information but not for the applicant's state or country of incorporation or partnership, if applicable. This is extremely useful in finding information of the applicant.

Standard

Comparison

The Administration makes no mention of an agent for service of process, only that applicant's mail address should be included for services of process. However, as in corporate practice, obtaining personal jurisdiction over a corporation is made by serving a designated agent for service of process so that one seeking a redress of rights is not handicapped by an inability to find and be able to personally serve a corporate officer. This need is especially more urgent when dealing with a global system such as the Internet.

Standard

Comparison

The Administration's proposal states only that the applicant must state that he intends to "use" the domain name. There is no time limit within which such use must commence and there is no definition of what is meant by "use." Both of these omissions will allow the statement of bone fide intent to use on the part of many applicants to be nothing but empty promises.

Standard

Comparison

The Administration's proposal contains no such requirement and does not allow a trademark owner to assess the reason that someone is adopting a domain name which may be identical or confusingly similar with one of its trademarks. Such an evaluation would allow the trademark owner to decide at an early stage if there would be likelihood of consumer confusion or deception on the Internet by the domain name holder. Allowing the trademark owner to make this assessment early is the greatest assurance of minimizing consumer confusion and related problems.

Standard

Comparison

The Administration's proposal only requires such information when there is a "change in ownership." At that time the domain name owner must submit "a description of how the owner is using the domain name or if the domain name is not in use, a statement to that effect." This is an acknowledgment that domain name/trademark infringement problems often result when there is an attempt to traffic in domain names and sell the name to another user, such as the highest bidder. However, recognizing that early action is the consumer's best assurance it makes sense that full disclosure should be required of all domain name applicants and at the time the domain name is applied for, whether this applicant be the original applicant or an assignee.

Standard

Comparison

The proposal suggests some of the above but does not give an aggrieved party a broad enough chance to obtain personal jurisdiction against the domain name applicant/registrant in all the places where it might normally be expected to be found. Most importantly, the Administration's plan omits the nationality of the registrar, which is the most natural location one might expect to obtain jurisdiction since the applicant deals most closely with the registrar throughout the registration process.

Standard

Comparison

The Administration's proposal contains no mention whatsoever of a renewal, any requirement thereof, or of the obligation of registrars to reject incomplete applications.

Standard

Comparison

The Administration does call for the establishment of a publically available website.

Administration

"The job of policing trademarks could be considerably easier if domain name databases were readily searchable through a common interface to determine what names are registered, who holds those domain names, and how to contact a domain name holder."

INTA Response

INTA believes that all applications, including all the information included therein, should be posted within a week of receipt by the registrar on a publicly-available, searchable website. This website should be easily searchable across all registries. It also should be updated as often as possible, preferably at least every 30 days, by each registrar.

Administration

"Mechanisms that allow for on-line dispute resolution could provide an inexpensive and efficient alternative to litigation for resolving disputes between trademark owners and domain name registrants. A swift dispute resolution process could provide for the temporary suspension of a domain name registration if an adversely affected trademark holder objects within a short time, e.g. 30 days, of the initial registration. We seek comment on whether registries should be required to resolve disputes within a specified period of time after an opposition is filed, and if so, how long that period should be."

INTA Response

Absent a waiting period (see INTA comments in this section), it is imperative that there be a procedure for automatic suspension within 30 days after the date of registration. The complainant should also be required to meet some type of threshold for demonstrating a right to the trademark.

Administration

"Trademark holders have expressed concern that domain name registrants in far away places may be able to infringe their rights with no convenient jurisdiction available in which the trademark owner could file suit to protect those rights. 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 is 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."

INTA Response

INTA strongly favors the concept of requiring submission to personal jurisdiction in the appropriate jurisdictions. We recommend however, that the proposal be amended slightly in this area so that as part of the application process, an applicant be required to agree to submit to personal jurisdiction concerning disputes related to the domain name, in the countries where the applicant/registrant resides, where the root server is located, where the registry is located, and where the registrar is located. The location of the registrar is the most natural location one might expect to obtain jurisdiction since the applicant deals most closely with the registrar throughout the registration process. A challenger also should be able to bring legal action in any other country where personal jurisdiction may be exercised against the challenged party.

Administration

"Trademark holders have also called for the creation of some mechanism for 'clearing' trademarks, especially famous marks, across a range of gTLDs. Such mechanisms could reduce trademark conflict associated with the addition of new gTLDs."

INTA Response

INTA supports the proposal that a clearing mechanism be applied for marks which would be deemed "famous." The current administration of trademark registration internationally is that marks are registered in specific product and services classes. The protection afforded registered marks under this regime, depending upon the jurisdiction, extends to the specific goods and services in connection with which the mark is used and all commercially related goods and services, and/or class-wide. Similar protection is afforded under common law, trademark law, and unfair competition principles. The scope of protection afforded famous marks under international trademark treaties transcends the scope afforded marks which are not famous: famous marks often are protected across all classes and products and services groups. For example, the famous mark KODAK would be protected against infringing uses for film as well as for bicycles.

Similarly, famous marks should be protected across the range of gTLDs. The recognition of KODAK as a mark from a single source will be the same whether the gTLD is .store, .com. or .firm, etc. Thus, in the case of famous marks, the gTLDs will not serve as a means of distinguishing a use which is foreign to that usually associated with a famous mark, because the fame transcends any attempt at distinguishing.

INTA therefore supports the adoption of a mechanism, such as a shared database and automatic registration process, which would result in the registration of a famous mark in all gTLDs once cleared for one of the gTLDs.

Administration

"We stop short of proposals that could significantly limit the flexibility of the Internet, such as waiting periods or not allowing any new top-level domains."

INTA Response

Although the Administration has indicated that the final plan is not likely to include a waiting period, INTA continues to believe that a waiting period following publication provides important benefits to both trademark owners and the domain name applicant by allowing the trademark owner sufficient time to investigate and, if necessary, take appropriate action before the applicant has invested in, and begun use of, the domain name. The "cure" for many trademark-related problems arising from SLD registration will, in INTA's view, be such a "preventative" action which avoids protracted litigation or other costly resolutions.

Absent such a waiting period, it is imperative that there be a procedure for automatic suspension within 30 days following publication of the application. In the case of a suspension, the complainant should also be required to meet some type of threshold for demonstrating a right to the trademark.

Administration

"We also do not propose to establish a monolithic trademark dispute resolution process at this time, because it is unclear what system would work best. Even trademark holders we have consulted are divided on this question. Therefore, we propose that each name registry must establish minimum dispute resolution and other procedures related to trademark considerations. Those minimum procedures are spelled out in Appendix 2. Beyond those minimums, registries would be permitted to establish additional trademark protection and trademark dispute resolution mechanisms."

INTA Response

INTA believes that a reasonable administrative dispute resolution policy is an essential element of any plan for the administration of domain names on the Internet. Discretion for domain name policy should neither reside with the domain name registrars, nor with the registries. Any dispute policy needs to be consistent across the gTLD space. A lack of uniformity and specificity will only lead to confusion on the part of trademark and domain name holders, fundamental unfairness in the unequal treatment of rights in domain names and therefore inconsistent policies and precedent, chaos in the Internet community, and in the end, increased, rather than decreased transaction costs. The burden of these costs will ultimately be paid by consumers. If the goal is to create a system which is fair and predictable, and a relief to the current chaos, there can only be a single uniform system. There is no division among trademark holders on this point. A global marketplace and community requires a single set of global rules.

After much study, INTA accordingly believes that any dispute policy must be uniform across the gTLD space and must avoid trying to resolve complex, fact-intensive trademark infringement disputes which are more appropriately suited to judicial analysis and decision.

Accordingly, INTA believes that any dispute resolution policy should be limited, at least during an appropriate study period, to instances of:

Such a procedure, however, would not preclude a party from utilizing the national court systems as appropriate.

INTA disagrees with the Administration's view that "trademark/domain name disputes arise very rarely on the Internet today." These disputes arise every day both at InterNic and in the court systems of countries throughout the world, especially the United States. These disputes are starting to take center place as the primary form of trademark dispute.

Accordingly, INTA believes that a dispute resolution system similar to one proposed in the gTLD-MoU should be implemented and given an opportunity to work. INTA does not believe it necessary to reinvent the process of developing a dispute resolution system for trademark/domain name disputes. The hard work of the IAHC and POC and the procedures outlined in the gTLD-MoU are a step in the right direction.

Administration

"We also propose that shortly after their introduction into the root, a study be undertaken on the effects of adding new gTLDs and related dispute resolution procedures on Trademark Intellectual Right Holders. This study should be conducted under the officers of a body internationally recognized in the area of dispute resolution procedures, with input from trademark and domain name holders and registries. The findings of this study should be submitted to the Board of the new corporation and considered when it makes decisions on the creation and introduction of new gTLDs. Information on the strength/weaknesses of different dispute resolution procedures should also give the corporation guidance for deciding whether the established minimum criteria for dispute resolution should be amended or maintained. Such a study could also provide input with result to trademark harmonization generally."

INTA Response

INTA applauds and supports the concept of the proposed study. The Internet is an evolving medium, one with a profound effect on commerce and the law. Any changes to the domain name system therefore shall require continuous study and input for many years to come from all organizations and persons who are part of or affected by the Internet revolution. These groups and organizations should of course include businesses who own trademarks and use the Internet as a primary vehicle for commercial activity, as well as intellectual property organizations which represent trademark owners.

As previously explained, INTA believes it is essential for the protection of consumers as well as trademark owners that dispute policies be uniform across all registries. If changes are to be made, these changes should likewise be made uniformly. Finally, it is INTA's position that new gTLDs should not be considered unless the study demonstrates that adverse consequences as a result of these additions can be avoided.

INTA requests that further clarification be given by the Administration with respect to what it calls "established minimum criteria for dispute resolution". We were unable to find a listing of such criteria in the Administration's proposal.

Administration

"U.S. trademark law imposes no general duty on the Registrar to investigate the propriety of any given registration. Under existing law a trademark holder can properly file a law suit against the domain name holder that is infringing or diluting the trademark holders mark. But the law provides no basis for holding that a Registrar's mere registration of a domain name, at the behest of an applicant with which it has arm's-length relationship, should expose it to liability. Infringers, rather than registrars, registries and technical management bodies, should be liable for trademark infringement. Until case law is fully settled, however, registries can expect to incur legal expenses in connection with trademark disputes as a cost for doing business. These cost should not be born by the new not for profit corporation, and therefore registry should be required to indemnify the new corporation for costs incurred in connection with trademark disputes. The evolution of litigation will be one of the factors to be studied by the group tasked to review Internet trademark issues as the new structure evolves."

INTA Response

INTA agrees that only trademark infringers should ultimately be held liable for trademark infringement, provided that registries, registrars, the new not for profit corporation and technical management bodies cooperate fully with the rulings of arbitration-mediation boards or courts of competent jurisdiction. However, before being able to rely on such insulation/immunity from liability, the aforesaid bodies should cooperate in making every effort to see that domain name applicants/registrants provide the most complete information possible to the registrar/registry, that such information be made immediately available and searchable, and that no domain name be issued or renewed without complete and full disclosure on the part of the applicants/registrants. Such an approach cannot be considered unduly burdensome, either on the management bodies or on legitimate domain name applicants. The hallmark of immunizing registrars/registries, etc. from trademark liability is that they have done everything required of them to implement appropriate minimum safeguards and to provide full disclosure of all information which trademark owners and the consuming public would need to know about the basis on which this domain name was issued and renewed.

The Intellectual Infrastructure Fund

INTA does not take a position on the Intellectual Infrastructure Fund, although we note

that the U.S. District Court for the District of Columbia recently on a motion for preliminary injunction that the "preservation tax" is an unconstitutional tax.

THE TRANSITION

The NSI Agreement

INTA remains concerned that the data maintained by NSI be available for legitimate business purposes, including enabling trademark owners to identify and locate the owners of domain names. Trademark owners have a need for such information, and the data needs to be maintained and updated in a way to make it available to the public, enabling them to contact domain name owners. The database also needs to be searchable by individuals and trademark search companies to enable interested persons to determine the availability of a particular domain name, in addition to gaining further information about the owner of a particular domain name. Finally, NSI should be required to adhere to the same rules and regulations as any future registry envisioned by the Administration's plan.

Competitive Registries, Registrars, and the Addition of New gTLDs

As discussed above, INTA favors the alternative single, shared registry model, as proposed under the gTLD-MoU plan. INTA believes that consumers will benefit from competition among market-oriented registrars and registries, provided that there is a uniform non-discretionary approach to dispute resolution.

INTA understands the Administration's interest in introducing competition in the marketplace. However, the introduction of up to five new registries, with each having administrative responsibility for one new gTLD, before there are procedures for dealing with issues of misappropriation of trademarks, is premature. For the reason discussed above, adequate safeguards must first be in place before additional gTLDs are introduced, and based on the Administration's proposal, new registries could not be added without adding new gTLDs. Accordingly, INTA urges the Administration to either permit additional registry(s) to assign domain names in ".com", or defer the introduction of competition until the trademark issues have been adequately addressed.

The .us Domain

INTA encourages further study of expanded use of the .us domain space. INTA shares the Administration's concern that the "locality-based" system may not be attractive to commercial users, and, would, at least initially, not have the cache of .com. However, there may be advantages to opening up greater use of the .us domain, and assuming adequate safeguards would be in place for dealing with the misuse of trademarks, INTA supports such exploration.

Appendix 1

Recommended Registry and Registrar Requirements

The Appendix on "Recommended Registry and Registrar Requirements" appears to deal almost exclusively with technical requirements. To that end, INTA is not prepared to offer substantive comments, since our area of concern is the commercial stability of the Internet. We are prepared to state however, that in light of the valuable role the Internet has played in the evolution of the global marketplace, its technical hardware and software should be afforded the highest levels of security.

We do find that there are some improvements which can be made to the Administration's recommended requirements which have a direct impact on the protection of trademark and consumer interests. We have listed these amendments below.

Appendix 2

Minimum Dispute Resolution and Other Procedures Related to Trademarks

Proposed

1. Minimum Application Requirements

"a. Sufficient owner and contact information (e.g., names, mail address for service of process, e-mail address, telephone and fax numbers, etc.) to enable an interested party to contact either the owner/applicant or its designated representative; and a

"b. 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; and

it intends to use the domain name."

INTA Response

It is necessary to establish minimum standards for obtaining and maintaining a domain name which is uniformly applicable throughout the gTLD space. While the Administration's proposal contains some of these necessary elements, others are absent or not adequately developed. INTA therefore strongly recommends that additional minimum application requirements be added to the plan.

INTA further recommends that the application process also require the applicant to state the intended use of the domain name, e.g. as e-mail, website, or other use, and the goods/services in connection with which the applicant intends to use the domain name. At present, the Administration is only requiring this information when there is a "change in ownership." Such a statement of intent (again, not without its parallel in trademark registrations) while not at all burdensome to the applicant, provides necessary context by which trademark owners can more accurately assess the necessity if any, for challenging the domain.

INTA strongly favors the concept of personal jurisdiction. We recommend however, that the proposal be amended slightly in this area so that as part of the application process, an applicant be required to agree to submit to personal jurisdiction concerning disputes related to the domain name, in the countries where the applicant/registrant resides, where the root server is located, where the registry is located, and where the registrar is located. A challenger also should be able to bring legal action in any other country where personal jurisdiction may be exercised against the challenged party.

INTA believes that such specificity is necessary in order to ensure the accountability of domain name registrants. Trademark owners need complete and accessible information if they are to contact potential infringers at an early stage before consumer confusion occurs and before domain holders make significant investments in domains that infringe established trademark rights. These minimum disclosure requirements while not burdensome, will go far towards avoiding the infringement of established trademark rights.

Proposed

"Utilizing a simple, easy-to-use, standardized search interface that features multiple field or string searching and the retrieval of similar names, the following information must be included in all registry databases, and available to anyone with access to the Internet:

"- up-to-date ownership and contact information;

- up-to-date and historical chain of title information for the domain name;

- a mail address for service of process;

- the date of the domain name registration; and

- the date an objection to registration of the domain name was filed."

INTA Response

Proposed

"a. At any time there is a change in ownership, the domain name owner must submit the following information:

- up-to-date contact and ownership information, and

- a description of how the owner is using the domain name, or, if the domain name is not in use, a statement to that effect."

INTA Response

INTA supports the Administration's call for updates regarding ownership, contact, and use information. We would however, recommend that renewal of a domain name be required annually.

4. Alternative Dispute Resolution of Domain Name Conflicts

Proposed

"1. There must be a readily available and convenient dispute resolution process that requires no involvement by registrars.

 
"2. Registries/Registrars will abide by the decisions resulting from an agreed upon dispute resolution process or by the decision of a court of competent jurisdiction.


"3. 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."

INTA Response

INTA agrees with the Administration that discretion for domain name policy should not reside with the domain name registrars, we do not agree however, that it should reside with the registries. Any dispute policy needs to be consistent across the gTLD space. The Administration leaves this to each of the five proposed private registries to establish its own dispute resolution policy to be effective at least during a transition period. This, from the point of view of trademark owners and consumers, is unacceptable.

A lack of uniformity and specificity will only lead to confusion on the part of trademark and domain name holders, chaos in the Internet community, and in the end increasing, rather than decreasing, transaction costs.

INTA believes that any dispute policy must be uniform across the gTLD space from the initiation of a modified DNS and must avoid resolving complex, fact-intensive trademark infringement disputes which are more appropriately suited to judicial analysis and decision. Accordingly, INTA believes that any dispute resolution policy should be limited, at least during an appropriate study period, to instances of:

INTA adds that nothing in the dispute policy should preclude a party from utilizing the national court systems as appropriate.

Absent a waiting period (see INTA comments in "Trademark Dilemma"), it is imperative that there be a procedure for automatic suspension within 30 days after the date of registration. In the case of a suspension, the complainant should also be required to meet some type of threshold for demonstrating a right to the trademark.