On January 30, 1998, the Commerce Department released a discussion draft (the "Green Paper"), entitled A Proposal to Improve Technical Management of Internet Names and Addresses, proposing privatization of the management of the Domain Name System ("DNS") through the creation of a new, not-for-profit corporation. This entity would set policy for the allocation of number blocks to regional number registries, oversee operation of the root server system, determine when new generic top-level-domain names ("gTLDs") should be added to the root system, and coordinate development of protocol parameters for the Internet.

Viacom Inc. ("Viacom") appreciates the tremendous difficulties the Commerce Department encounters in crafting any proposal which seeks to balance the various conflicting concerns of the Internet community from Internet users, who may resist application of traditional laws to the Internet; to international countries, which may desire a minimized U.S. role with respect to the Internet; to owners of intellectual property, such as Viacom, who fear that they will lose control over, and even use of, their own property on the Internet; to consumers, who rely on the Internet in locating the brand or vendor of their choice without deception or confusion. In light of these competing interests, it is understandable that the Green Paper establishes only a basic framework for transferring technical management of the DNS to the private sector.

As the owner of thousands of trademarks, Viacom restricts its comments to those portions of the Green Paper which would have the greatest effect on trademark holders. First, Viacom comments on those Green Paper proposals which Viacom believes aid trademark owners in protecting their property from infringement and dilution. Second, Viacom respectfully recommends ways that other Green Paper proposals should be modified so as to protect intellectual property, as well as consumers who rely on the Internet for commerce, information and entertainment.

I. Green Paper Proposals That Aid Trademark Owners In Protecting

Their Property.

A. Continued U.S. government involvement, at least for a transition period.

The Green Paper makes the following valid observation:

The Internet functions well today, but its current technical management is probably not viable over the long term. We should not wait for it to break down before acting. Yet, we should not move so quickly, or depart so radically from the existing structures, that we disrupt the functioning of the Internet.

Viacom agrees that the transfer of the U.S. government's current functions to a private not-for-profit corporation should be gradual. Such an approach is significantly preferable to the immediate abdication advocated by some constituents of the Internet community, and offers a rational structure in which to operate and protect intellectual property.

B. Establishment of a central entity to oversee policy and procedure.

Under the Green Paper, a new, not-for-profit corporation will be created under the laws of the United States and domiciled in the United States, with a governing board made up of a wide cross-section of the Internet community. Viacom endorses the creation of such a neutral, not-for-profit entity and submits that in the absence of the participation of the U.S. government, this entity is crucial to the protection of trademark rights. Only such a centralized authority can provide the uniformity in practice and procedure necessary to protect trademark rights in the global environment of the Internet.

However, Viacom urges the Commerce Department to assure that the trademark community is adequately represented within the governing body of that corporation. To that end, Viacom suggests that at least one representative of the trademark community sit on the corporation's board and that any board actions require a supermajority vote. In addition, as discussed below, the mandate offered in the Green Paper for this governing body is not sufficiently articulated to adequately protect the rights of the trademark community.


II. Green Paper Proposals That Should Be Modified In Order To Protect

Intellectual Property and Consumers.

A. The Immediate Addition of Five New gTLDs and the Subsequent Study of

the Impact of This Action.

The Green Paper recommends that up to five new gTLDs be added during the transition to private managment of the DNS. It further provides 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 and intellectual property rights holders. Although adding new gTLDs will allow more competition within the DNS and facilitate the assignment of addresses to businesses and individuals, the Commerce Department must balance this interest with that of the trademark holders, who remain concerned about protecting their property. In order to achieve a balance, Viacom respectfully submits that the chronology recommended in the Green Paper be reversed so that the study precedes the introduction of new gTLDs and the introduction of new gTLDs be left to the discretion of the new corporation once the study is completed.

That the creation of five new gTLDs will pose a significant threat to trademark owners is clear. Indeed, contrary to the conclusion in the Green Paper that trademark/domain disputes arise "very rarely" on the Internet today, the infringement problem for owners of famous marks has been significant. Viacom and its subsidiaries alone have uncovered third-party registrations for motion pictures, television shows, merchandise and innumerable other of its properties. The introduction of each new gTLD will bring a new network of domain names the trademark owner must monitor. Protection of trademarks through fully articulated and fair procedure must be assured before any new gTLDs are created.

In short, Viacom supports the goals of a competitive DNS and a robustly competitive Internet commerce, but submits that such goals be balanced with the need for the new corporation to first establish domain name procedures that inure to the benefit of all Internet constituents.


B. Dispute Resolution Related to Trademarks.

The Green Paper declines to propose what it terms a "monolithic" trademark dispute process at this time, "because it is unclear what system would work best." Rather, the Green Paper proposes that each name registry establish its own dispute resolution mechanism related to trademark considerations. In doing so, however, each registry mechanism must include three minimum procedures, as outlined in Appendix 2 of the Green Paper. Those minimum procedures are: (1) that there be a "readily available and convenient" dispute resolution process that requires no involvement by registrars; (2) that registries/registrars abide by decisions resulting from the dispute resolution process; and (3) that if an objection is raised within 30 days of registration of a domain name, a "brief period" of suspension during the pendency of the dispute will be provided.

Viacom respectfully disagrees with the Commerce Department's unwillingness to require a uniform dispute resolution system. Viacom believes that a single dispute resolution system with one set of procedures and one evolving precedent is essential. To expose trademark owners to numerous underdeveloped procedures is not only unworkable but inequitable. Under the procedure envisioned by the Green Paper, an infringer could forum shop within each registry, obtaining domain name registrations throughout the world. The trademark owner would then be forced to oppose each registration within the varying procedures of each registry, and face the very real possibility of conflicting results. Even if only one such registry permits the registration to continue, the registrant will have succeeded in obtaining worldwide access to the Internet under the infringing domain name.

Instead, Viacom urges the Commerce Department to require that there be a single administrative dispute policy. Neither the registries nor the registrars should be responsible for developing dispute resolution policies.

Finally, Viacom agrees with the Green Paper's minimum dispute policy requirement, that a domain name be suspended if challenged. Viacom contemplates that such challenge would be brought under the uniform dispute policy, within 30 days after publication of the registration on a central website (see discussion, below), pending resolution of the dispute. However, failure to challenge within the 30 days should establish neither a presumption against nor a waiver of any rights to object to the registration. Failure to utilize the uniform dispute resolution policy also should not preclude a trademark owner from pursuing other means of seeking redress.

C. Registration and Other Procedures Related to Trademarks.

The Green Paper proposes that minimum application requirements include sufficient owner and contact information and that all registries maintain databases available to Internet users which include up-to-date ownership, contact and service of process information, and historical chain of title information for the domain name.

Viacom maintains that the Green Paper's proposed registration requirements are so minimal as to provide little, if any, protection to trademark owners from infringing domain name applicants. Though requiring domain name applicants to provide contact information will provide some assistance in locating the infringer, the absence of any affirmative clearance mechanism by the registries and/or the central agency created to oversee the registries places the overwhelming burden of protecting against trademark infringement on the owner of those marks.

The Green Paper's minimal registration requirements are based upon a flawed premise, that those requirements will provide trademark holders "with the same rights they have in the physical world. . . Contrary to this suggestion, virtually every countrys procedure for registration of trademarks includes pre-registration clearance for potentially conflicting marks, and provides an opportunity for third parties to object to the application before registration is issued. Yet, notwithstanding these fundamental practices in the physical world, the Green Paper provides no such parallel pre-registration clearance in the electronic world.

In contrast, while weakening the pre-registration procedures, the Green Paper emphasizes the need to protect the registries from trademark disputes: "Infringers, rather than registrars, registries, and technical management bodies," according to the Green Paper, "should be liable from trademark infringement." While such a principle is indisputably valid, at the same time the rights of trademark owners should not be sacrificed in upholding that principle. Instituting a clearance procedure before registering a domain name would have a neutral effect upon registries and registrars while greatly aiding trademark owners.

Viacom recommends that the following guidelines are integral to any minimum clearance procedure and could be inexpensively and efficiently implemented:

Registries and registrars should be located in countries which are signatories to the Paris Convention.

Applications must include detailed identifying information, including applicant's name, state of incorporation or partnership (if applicable), address, telephone/facsimile numbers and e-mail address.

Applicants must agree to submit to jurisdiction concerning disputes related to the domain name in the countries where the applicant resides and where the root server is located.

Applications must include a statement of bona fide reason for using the domain name, e.g., the domain name is the applicant's name or trademark or a variation thereof.

Applications, including all the detailed identifying information included therein, must be posted within a week of receipt by the registrar on a publicly available, searchable website.

All registrars must use the same application and should post the application on one website shared by all registrars.

The central website for posting applications should be searchable across all registries. This website also should be updated as often as possible, preferably at least every 30 days, by each registrar.

A domain name should be suspended if a challenger seeks to serve notice of objection to the address provided in the application for the domain name and determines that the applicant is not at that location.

An application for a domain name that is identical to an active pre-existing registration on that registry will be rejected.

An application for a domain name which is identical to a prior registration except for the addition of punctuation (e.g., "-," or "_") or an "s" will be rejected.

An application for a domain name identical to a trademark registration with the trademark agency of either the domicile of the domain name applicant or the location of the registry will not be registered.

These elements are designed to provide bright line rules for certain minimum clearances. However, they should be viewed only as minimum necessary safeguards. They by no means solve all problems of the trademark owners. In many circumstances,

trademark owners will have to rely on judicial or administrative proceedings and the dispute resolution procedures created to protect their rights. However, these few additional safeguards will diminish the time, risks and expense trademark owners face in protecting their property on the Internet.


III. A "Famous Marks" Doctrine That Should Be Adopted For The Internet

In the physical world, the "famous marks" doctrine provides that there are certain marks that are so universally known that they should be protected in a jurisdiction even absent use or registration in that particular jurisdiction. The global nature of the Internet renders this doctrine particularly suitable for domain name registration. The new, not-for-profit corporation should maintain a centralized list of trademarks which cannot be registered by any third party on any of the gTLDs. Clear criteria for placement on that list should be created. Viacom suggests that a trademark be deemed "famous" upon proof of a certain number of trademark registrations worldwide for that trademark, for example, 30 registrations in a minimum of 10 countries.

This famous marks doctrine would protect universally recognized house brand names. It is difficult to conceive of a domain name applicant who would innocently seek registration of such a mark. Moreover, it is just such famous marks which are the primary targets of domain name infringers. Websites throughout the Internet offer domain names of renowned marks for sale, clearly recognizing the commercial value of such registrations. To include an easily implemented tool to protect against such registrations would be of significant assistance to trademark owners.

IV. Conclusion

For the reasons stated above, Viacom commends the Commerce Department for its efforts in attempting to balance the competing interests of the several communities of Internet users. As the owner of thousands of trademarks, however, Viacom is acutely concerned about any balance of competing interests which may unduly harm such owners. Accordingly, Viacom respectfully submits that the Commerce Department adopt the recommendations set forth herein in any plan emanating from the Green Paper proposal.


Respectfully submitted,


Michelena Hallie

Vice President, Senior Counsel/Intellectual Property


1515 Broadway

New York, NY 10036


Anne Lucey

Vice President, Regulatory Affairs


1501 M Street, N.W.

Suite 1100

Washington, D.C. 20005


March 23, 1998