Number: 399

Before the

DEPARTMENT OF COMMERCE

Washington, DC 20230 

In the Matter of                     )      
the Current and Future Systems       ) 
for the Registration of              )
Internet Domain Names                )


MCI COMMENTS

MCI Communications Corporation (MCI) hereby submits comments in response to a Request for Comments on the Registration and Administration of Internet Domain Names issued by the Department of Commerce on July 1, 1997. As a leader in the development of the Internet as a commercially viable communications medium, MCI is concerned about matters relating to the governance of the Internet. MCI believes that failure of companies such as MCI to submit comments could create a leadership vacuum and encourage those who advocate continued government involvement in the governance of the Internet. Thus, MCI is responding in an effort to further encourage a market-driven approach to solving Internet issues.

MCI supports an Internet governance paradigm in which the industry truly controls the function of the Internet. Free from regulation or other external interference, the commercial Internet has experienced phenomenal growth over the last few years. Although issues that may concern the Congress or the Administration have surfaced, the industry has thus far taken steps to address these issues on its own. Technical and administrative solutions to Internet problems will continue to be generated by industry participants in response to the needs and expectations of the users of the Internet. Although this model of self-governance has proven to be feasible, it should be recognized that governments may well have a role in the continued viability of the Internet. This role, however, must be limited to fashioning consistent laws which will help to facilitate the growth of electronic commerce and transactions on the Internet, protect various kinds of interests in the electronic environment, and support industry efforts to achieve its self-governance objectives on a global scale.

APPROPRIATE PRINCIPLES

A. COMPETITION IN AND EXPANSION OF THE DOMAIN NAME REGISTRATION SYSTEM SHOULD BE ENCOURAGED.

MCI is a strong advocate of competition in the domain name registration system. A workable system cannot allow conflicting domains, systems, or registries. Proper functioning of the Internet relies on unique domain names and unique underlying Internet Protocol (IP) addresses.

CONFLICTING DOMAINS, SYSTEMS, AND REGISTRIES SHOULD NOT BE PERMITTED TO JEOPARDIZE THE INTEROPERATION OF THE INTERNET, HOWEVER.

Root servers locate the top-level domain name databases and are essential in identifying and directing messages to the correct location on the Internet. The Internet cannot operate on multiple theories about who is running root servers. Root servers need to be consistent, and any effort by an unauthorized third party to introduce a different set of root servers or a different nomenclature may jeopardize the connectivity among all nodes on the Internet.

THE ADDRESSING SCHEME SHOULD NOT PREVENT ANY USER FROM CONNECTING TO ANY OTHER SITE.

Whether a third party wishes to establish a separate network and attempt to link it to the Internet is a matter beyond the scope of these comments.

B. THE PRIVATE SECTOR, WITH INPUT FROM GOVERNMENTS, SHOULD DEVELOP STABLE, CONSENSUS-BASED, SELF-GOVERNING MECHANISMS FOR DOMAIN NAME REGISTRATION AND MANAGEMENT THAT ADEQUATELY DEFINES RESPONSIBILITIES AND MAINTAINS ACCOUNTABILITY.

MCI agrees with the general principle that the private sector should develop stable, consensus-based, self-governing mechanisms. It is not clear, however, what "input from governments" means. It is not likely that governments would be satisfied merely with providing input; governments tend to assert control. Because of the international nature of the Internet, the United States must be careful not to establish a role for the U.S. Government that we are not willing to have another government assume. If we do not want foreign governments to parley their "mere input" into unwelcome control, we must be careful not to encourage any government to create or assume such a role.

C. THESE SELF-GOVERNANCE MECHANISMS SHOULD RECOGNIZE THE INHERENTLY GLOBAL NATURE OF THE INTERNET AND BE ABLE TO EVOLVE AS NECESSARY OVER TIME.

Any governance mechanism that fails to recognize the international and evolving nature of the Internet is unworkable and should be summarily rejected.

D. THE OVERALL FRAMEWORK FOR ACCOMMODATING COMPETITION SHOULD BE OPEN, ROBUST, EFFICIENT, AND FAIR.

Although this principle sounds reasonable on its face, it cannot be fully evaluated until the terms "open," "robust," "efficient," and "fair" are defined within the appropriate context. Different parties often have entirely different concepts of whether a resolution to an issue is "fair." While Network Solutions, Inc. (NSI), the firm that currently registers domain names, might conclude that its continuing control of domain name allocation would be "efficient," and unauthorized entities might contend that their participation in the root server system would demonstrate an "open" solution, neither alternative is satisfactory. The goal of achieving a competitive framework based simply on terms such as these is laudable, but it is likely impossible, given the varying objectives and viewpoints of the parties involved.



E. THE OVERALL POLICY FRAMEWORK AS WELL AS NAME ALLOCATION AND MANAGEMENT MECHANISMS SHOULD PROMOTE PROMPT, FAIR, AND EFFICIENT RESOLUTION OF CONFLICTS, INCLUDING CONFLICTS OVER PROPRIETARY RIGHTS.

It is not clear how broadly the term "conflicts" may be construed. Given the trademark litigation that is resulting from the current method of registering domain names, it is not apparent that an extra-judicial framework should attempt resolution of all "conflicts." Moreover, there are new and evolving claims of "proprietary rights," e.g., ownership of root server databases, the resolution of which also may not fit within a simple Internet governance framework. Although MCI encourages an international alternative dispute resolution process for domain name-based conflicts, it recognizes that some parties may nonetheless pursue relief through national court systems.

F. A FRAMEWORK SHOULD BE ADOPTED AS QUICKLY AS PRUDENT CONSIDERATION OF THESE ISSUES PERMITS.

While MCI believes that a framework for Internet governance should be adopted as quickly as consideration of these issues permits, the term "prudent" should not be construed in a way that would delay or discourage broad industry consensus, or otherwise encourage "interim" government involvement. On the other hand, "prudent" might mean that competition in registration should not be required until software effecting it is satisfactorily demonstrated to work well, scale up, and be widely available without additional cost to parties interested in becoming registrars.



GENERAL/ORGANIZATIONAL FRAMEWORK ISSUES



1. WHAT ARE THE ADVANTAGES AND DISADVANTAGES OF CURRENT DOMAIN NAME REGISTRATION SYSTEMS?

It is not clear from the question what is meant by the "current domain name registration systems." On one level, the question could be addressing the problems resulting from allowing NSI to manage the U.S. registration system for "so-called" generic domains (the narrow view). Alternatively, the question could be seeking comment on today's global hierarchical naming convention (the broad view). MCI's response addresses both interpretations.

The primary advantage of the current domain name registration systems ­ however defined -- is that they are the current operating systems and the only systems that commercial users have known. The common perception of less risk being associated with the current, familiar systems, however, does not and should not be allowed to obscure the fact that the systems do not work very well. The unprecedented explosion of Internet growth and use requires a more flexible and reliable structure, as there is no end in sight to continued Internet growth. While the systems may have worked well initially, they must be replaced with systems designed for the size and complexity of today's and tomorrow's networks.

Looking at a narrow definition of the current system, the primary disadvantage is its monopolistic nature. The National Science Foundation (NSF) granted to NSI the temporary but sole authority to register three generic top level domain names, e.g., .edu, .com, and .net, to commercial enterprises and other private Internet users. Such a system is vulnerable to the whims of a private entity. Currently, there is no back-up for the NSI system. If NSI were to have problems, the system could collapse. This risk became a reality recently when an NSI operator disregarded system alarms, and the Internet essentially "crashed" for a four-hour period during the middle of the night after incorrect data were distributed to the root servers. Potentially, there is less risk associated with having an entity(ies) other than NSI handling registries.

This monopolistic system provides inadequate incentives to NSI to strive for better reliability and performance. It is subject to limited accountability, yet it has been guaranteed and hopes to retain, a significant and protected revenue stream. The recent network failure and domain cancellation incidents raise questions of what NSI is doing with the fees it collects, whether it implements adequate security systems, and whether it maintains the systems satisfactorily. Also, with access to the personal information of Netizens who register domain names, the issue of how NSI treats any proprietary information also must be considered.

Further, NSI appears not to abide by or enforce rules that the Internet Assigned Numbers Authority (IANA) established in its RFC 1591, Domain Name System Structure and Delegation.(1) Some of these rules relate to a variety of requirements that are not consistently applied such as reassignment of names and naming disputes, and the appropriateness of registration in .edu, .net, .org, and, historically, .gov.

Finally, NSI exercises little discretion when assigning domain names, and it is being implicated in trademark disputes with increasing frequency. This system thereby violates "Principle C" above, requiring a self-governance mechanism to recognize the global nature of the network. Today's monopolistic environment encourages resolution of domain name trademark issues in extremely narrow jurisdictions, e.g., national courts, an inappropriate resolution in a global environment.

A broader response to the question focuses on the differences among policies that individual countries adopt to govern their country code-based top level domains, e.g., ".uk" or ".us." An advantage of country-specific registration of domains is that it offers variety and flexibility in domain name management, often incorporating nomenclatures and rules that reflect diverse social issues. Also, the existence of both generic domains and country domains with country-specific policies acts as a useful check on abuses as well as a mechanism for multinationals to establish a worldwide domain name identity. Beyond insisting that formal administrative control of a country code-based domain vest with some entity within the country (as RFC 1591, cited above, does today) and encouraging all governments to adopt a laissez-faire approach to regulation of the Internet, efforts to have all countries use the same policies toward country code-based top level domains should be resisted. (See also MCI's response to Question 5.)

2. HOW MIGHT CURRENT DOMAIN NAME SYSTEMS BE IMPROVED?

This question appears to be focusing on the "domain name systems" as opposed to the "domain name registration systems" discussed in Question 1.(2)

There are numerous steps that can be taken to improve the current domain name systems. First, competition should be introduced in the registration of top level generic domain names. There should be multiple registrars that share a common database. Security should be improved to minimize infiltrations of the systems and attacks on root servers and other vulnerable network points. Also, world-wide deployment of stronger encryption software would improve the security of the Internet. Finally, an alternative dispute resolution process should be established to mediate conflicts of all sorts. In this global environment, such a solution is more appropriate than resolution by individual courts of the relevant jurisdictions, although MCI recognizes that some parties may resort to the court systems when mediation fails.



Steps for achieving these results are explicated in the International Ad Hoc Committee's (IAHC's) Recommendations for Administration and Management of gTLDs.(3) MCI is one of over 125 signatories to the IAHC's Memorandum of Understanding (MoU), and it supports the principles and recommendations contained therein.

3. BY WHAT ENTITY, ENTITIES, OR TYPES OF ENTITIES SHOULD CURRENT DOMAIN NAME SYSTEMS BE ADMINISTERED? WHAT SHOULD THE MAKEUP OF SUCH AN ENTITY BE?

Since the signing of the MoU, the IAHC has disbanded, and formed in its place, an interim Policy Oversight Committee. The new Policy Oversight Committee will officially convene once the registrars are selected and the Council of Registrars is established.

4. ARE THERE DECISION-MAKING PROCESSES THAT CAN SERVE AS MODELS FOR DECIDING ON DOMAIN NAME REGISTRATION SYSTEMS (E.G., NETWORK NUMBERING PLAN, STANDARD-SETTING PROCESSES, SPECTRUM ALLOCATION)? ARE THERE PRIVATE/PUBLIC SECTOR ADMINISTERED MODELS OR REGIMES THAT CAN BE USED FOR DOMAIN NAME REGISTRATION (E.G., NETWORK NUMBERING PLAN, STANDARD SETTING PROCESSES, OR SPECTRUM ALLOCATION PROCESSES)?

The Internet defies a conventional regulatory approach. There are no existing models that are appropriate as a basis for a new domain name registration system since the Internet is a unique medium with an unlimited number of distributors and users. It is notable that most of the proposed examples listed above assume allocation of scarce resources. While conflicts about particular choices of names are possible, there is unlikely ever to be a shortage of available names.



WHAT IS THE PROPER ROLE OF NATIONAL OR INTERNATIONAL GOVERNMENTAL/NON-GOVERNMENTAL ORGANIZATIONS, IF ANY, IN NATIONAL AND INTERNATIONAL DOMAIN NAME REGISTRATION SYSTEMS?

To the extent that any organization other than a user-based organization is involved in domain name registration systems, it is more appropriate to have an international, rather than national, organization involved in top level governance. Since many international organizations already exist, it is more expedient to select an existing recognized international body such as the International Telecommunications Union (ITU) of the United Nations rather than designate a new organization.

It is important to note, however, that there is a significant difference between the industry selecting a government agency to assume a role and a government assuming a role on its own initiative. Because the ITU already serves an accepted role with respect to telecommunications issues, it is reasonable for industry to seek its assistance on Internet matters as well. This structure also would allow governments to stay educated about the issue and assist the industry in its self-regulatory process to the extent necessary.

5. SHOULD GENERIC TOP LEVEL DOMAINS (GTLDS), (E.G., ".COM"), BE RETIRED FROM CIRCULATION? SHOULD GEOGRAPHIC OR COUNTRY CODES (E.G., .US) BE REQUIRED? IF SO, WHAT SHOULD HAPPEN TO THE .COM REGISTRY? ARE GTLD MANAGEMENT ISSUES SEPARABLE FROM QUESTIONS ABOUT INTERNATIONAL STANDARDS ORGANIZATION (ISO) COUNTRY CODE DOMAINS?

The domain name problem does not stem from the fact that there are gTLDs or that country codes exist. The problem is in the systems' administration, and other factors that are influenced by administration, e.g., trademark matters.

It is acceptable to use both geographic or country codes and generic domains; gTLDs need not be retired from circulation. But, use of country codes alone (as top level domains) does not solve any problem. In fact, requiring identification with a specific country causes problems of its own. First, an entity might not want to be associated with a particular country. More significant, however, is that root server operators would be expected to arbitrate what was a country. This is why IANA, not wishing to be in the business of determining what entities constitute internationally recognized countries, relies upon ISO IS 3166 Registration Authority and, through it, UN Statistical Office recognition of a country, as the baseline requirement for assignment of a country code.

6. ARE THERE ANY TECHNOLOGICAL SOLUTIONS TO CURRENT DOMAIN NAME REGISTRATION ISSUES?

Technical solutions are essentially the same as the administrative solutions. They go hand-in-hand and are not really separable. What is critical is that there are no technological obstacles to solving the administrative problems identified in response to Question 1. Software is needed, however, to effect the competitive registration of names by multiple registrars in common top level domains.

ARE THERE ANY ISSUES CONCERNING THE RELATIONSHIP OF REGISTRARS AND GTLDS WITH ROOT SERVERS?

Internet management problems will arise if the appropriate relationship between registrars and root servers is not established. As experience has shown, if a single registrar is allowed to have monopolistic control of a root server, administrative problems will proliferate. If different administrators have control of a different family of root servers, incompatibility will result. The solution is to identify multiple registrars that have simultaneous access to multiple gTLDs. It is not necessary, however, that they have access to multiple root servers, but there must be some mechanism for deciding what top level domains are incorporated in the root servers. An independent third party could have responsibility for uploading and mirroring all of the root server databases. The registrar function, the root server administration function, and the uploading function are easily severable.

7. HOW CAN WE ENSURE THAT SCALABILITY OF THE DOMAIN NAME SYSTEM NAME AND ADDRESS SPACES AS WELL AS ENSURE THAT ROOT SERVERS CONTINUE TO INTEROPERATE AND COORDINATE?

It is not clear from this question what is meant by "scalability." If it refers to the matter of running out of space, this is not an issue. Clearly, the present system allows for enough unique names to satisfy the physical need associated with Internet growth. The problem is that the unlimited availability of unique monikers does not satisfy the "vanity" requirements that are at the heart of the growing trademark issue. While registration of firms, rather than products, at the second level would slow the growth in second level names, there is no appropriate mechanism by which governments could influence that strategy for gTLDs. Nor should this trademark/preferences problem be confused with the availability of IP addresses. The American Registry for Internet Numbers (ARIN) already is addressing the issue of address space, a separate issue not to be confused with domain name registration.

8. HOW SHOULD THE TRANSITION TO ANY NEW SYSTEMS BE ACCOMPLISHED?

The new systems should be designed and implemented. They should be based on forward-looking policies and incorporate new frameworks and new gTLDs. Once the systems are up and running, existing domains should be transitioned to the new systems as appropriate.

9. ARE THERE ANY OTHER ISSUES THAT SHOULD BE ADDRESSED IN THIS AREA?

Yes. The matter of the ownership of the registration database must be clarified. When Cooperative Agreement No. NCR-921842 between the NSF and NSI was adopted, there was no grant of any proprietary rights in the registration database to NSI. As the Internet governance undergoes transformation, NSI's proprietary claims on the ownership of the data must be challenged.

In the Form S-1 Registration Statement NSI filed with the Securities and Exchange Commission on July 3, 1997, NSI claimed that it has ownership rights to a portion of the registration database that it compiled as part of its registration business. Although NSI acknowledges that a portion of this database is available to the public, it fails to acknowledge that NSF originally provided the database to NSI in accordance with the NSF Cooperative Agreement. Nor does NSI mention that the Cooperative Agreement states that NSI was to provide registration services in accordance with the provisions of RFC 1174, which identifies relationships and responsibilities in a way that must not be construed to grant NSI proprietary interest in the database resulting from its contractual provision of the registration services for the NSF. Specifically, it states that (1) the IANA is responsible for the allocation and assignment of various numeric identifiers and autonomous system identifiers needed for the operation of the Internet (the "registration database"); (2) IANA has the discretionary authority to delegate portions of that responsibility to a registry; and (3) IANA may create duplicate registries to carry out registration services for specified domains (for which it would require full use of the registration database).

Despite NSI's apparent contrary claims, NSF appears to have full authority over the existing .com, .org, and .net registration database. This authority allows NSF to direct NSI to make copies of the database available to any and all parties that NSF deems appropriate. Historically, NSF caused NSI's predecessor, SRI International, to supply the database and software for managing it, to NSI as part of a transition plan. NSF seems to be well within its authority to require such a transfer again as the existing Cooperative Agreement comes to a close.

CREATION OF NEW GTLDS



10. ARE THERE TECHNICAL, PRACTICAL, AND/OR POLICY CONSIDERATIONS THAT CONSTRAIN THE TOTAL NUMBER OF DIFFERENT GTLDS THAT CAN BE CREATED?

There are no practical or policy considerations that constrain the total number of gTLDs that can be created, although root server management is made easier by keeping the total number of TLDs (gTLDs, country-specific TLDs, and the U.S. Government's two TLDs, .mil and .gov) reasonably small -- on the order of hundreds, rather than thousands. The more TLDs there are, the higher the potential for trademark disputes since companies may feel compelled to register in every top level domain. To the extent that technical problems exist (i.e., the limit to the amount of cache available to individual users), the government has no role in solving them.

11. SHOULD ADDITIONAL GTLDS BE CREATED?

Yes. MCI believes that one or more additional gTLDs are needed immediately to shift away from the present NSI monopoly without causing disruption during the transition period. An increase in the number of current gTLDs may offer advantages in the longer term as well. The specifics of the domains to be created should be determined by industry and internationally, however, and not by national governments.

12. ARE THERE TECHNICAL, BUSINESS, AND/OR POLICY ISSUES ABOUT GUARANTEEING THE SCALABILITY OF THE NAME SPACE ASSOCIATED WITH INCREASING THE NUMBER OF GTLDS?

See MCI's response to Question 7.

13. ARE GTLD MANAGEMENT ISSUES SEPARABLE FROM QUESTIONS ABOUT ISO COUNTRY CODE DOMAINS?

Yes.

14. ARE THERE ANY OTHER ISSUES THAT SHOULD BE ADDRESSED IN THIS AREA?

Not at this time.





POLICIES FOR REGISTRIES



15. SHOULD A GTLD REGISTRAR HAVE EXCLUSIVE CONTROL OVER A PARTICULAR GTLD?

In general, no. It is possible, however, that industry might reach consensus on an exclusively-controlled gTLD. While MCI considers this unlikely, it does not believe that any government action to prevent such an outcome would be appropriate.

ARE THERE ANY TECHNICAL LIMITATIONS ON USING SHARED REGISTRIES FOR SOME OR ALL GTLDS?

No.

CAN EXCLUSIVE AND NON-EXCLUSIVE GTLDS COEXIST?

Yes.

16. SHOULD THERE BE THRESHOLD REQUIREMENTS FOR DOMAIN NAME REGISTRARS, AND WHAT RESPONSIBILITIES SHOULD SUCH REGISTRARS HAVE?

MCI supports a system in which the industry, not the government, decides the standards for new registrars. Specifically, MCI supports the IAHC's proposal that requires an applicant for a registrar position to comply with certain guidelines, based on the number of employees and the level of disability and liability insurance the applicant holds.

17. ARE THERE TECHNICAL LIMITATIONS ON THE POSSIBLE NUMBER OF DOMAIN NAME REGISTRARS?

There are no technical limitations; but, there may be practical limitations.



18. ARE THERE TECHNICAL, BUSINESS AND/OR POLICY ISSUES ABOUT THE NAME SPACE RAISED BY INCREASING THE NUMBER OF DOMAIN NAME REGISTRARS?

As noted above, the difficult issues do not concern actual physical space limitations. Instead, the issue is the limited availability of "vanity" or descriptive monikers that have marketing or other intrinsic value. These types of trademark and proprietary interest issues will exist regardless of the type of system adopted or promoted by any entity.

19. SHOULD THERE BE A LIMIT ON THE NUMBER OF DIFFERENT GTLDS A GIVEN REGISTRAR CAN ADMINISTER? DOES THIS DEPEND ON WHETHER THE REGISTRAR HAS EXCLUSIVE OR NON-EXCLUSIVE RIGHTS TO THE GTLD?

There may be practical limitations to the number of gTLDs a registrar can administer. But, there are no policy-driven implications that require such a limitation.

20. ARE THERE ANY OTHER ISSUES THAT SHOULD BE ADDRESSED IN THIS AREA?

Not at this time.

TRADEMARK ISSUES



21. WHAT TRADEMARK RIGHTS (E.G., REGISTERED TRADEMARKS, COMMON LAW TRADEMARKS, GEOGRAPHIC INDICATIONS, ETC.), IF ANY, SHOULD BE PROTECTED ON THE INTERNET VIS-A-VIS DOMAIN NAMES?

Trademark rights are limited rights, and as such, can and should be protected on the Internet in an appropriately limited manner. Since domain names currently are alphanumeric, the only trademark rights in question focus on words. Also, since trademarks serve to identify only the source of specific goods or services, they should not be protected beyond that scope under the domain name system. For example, the mere fact that Time Warner has a trademark on "Road Runner" for certain classes of goods, does not mean that Time Warner has a right to "Road Runner" for all classes of goods, or that it should necessarily have the exclusive right to all domain names including the words "Road Runner." Thus, if a computer retail company named Road Runner established a web site under the domain name "roadrunner.com," through which it marketed and sold computer systems (and nothing remotely associated with any classes of goods or services promoted by Time Warner for the Road Runner cartoon character and name), and Time Warner had no corresponding registered trademark in the same class of goods, then Time Warner should have no right to exclude Road Runner from using the roadrunner.com domain name. (It may, however, have a financial or marketing interest in acquiring the "roadrunner.com" moniker, an issue outside the scope of trademark law.)

Although it is not appropriate to protect only registered trademarks against abuse on the Internet, it is appropriate to protect trademarks in accordance with their respective strength. Since registered trademarks generally are afforded a stronger level of protection than common law trademarks, they should likewise have greater protection on the Internet. Further, while registered trademarks can be strong, this is not always the case, and the mere existence of a registered trademark should not, on its own, automatically afford strong protection on the Internet.

It is also very important to recognize that domain names, on their own, do not and could not infringe a trademark because trademarks protect only the association of particular goods or services with a particular source, and a domain name is nothing more than an address. For example, the physical address "123 McDonald's Street" does not infringe on any trademarks of the McDonald's Corporation. What matters is how a domain name or how a street name is used. If the owner of the building at 123 McDonald's Street in the United States opened a restaurant called McDonald's Street Restaurant, McDonald's Corporation would have a legitimate trademark infringement claim. Likewise, trademarks have applicability to domain names only when domain names are associated with goods or services in a trademark conflicting fashion. What constitutes a conflict, however, is a matter of subjective determination that varies from country to country, and sometimes from state to state. It is impossible to apply a country-specific solution (e.g., trademark law) to an international system (e.g., the Internet).

In this context, even straightforward conflicts in one country may not be conflicts at all elsewhere. For example, if Company X ran a web site from within the U.S. through which it sold shoes over the Internet, using the U.S. registered trademark of Famous Shoemaker Y as its domain name for the web site, Famous Shoemaker Y should be able to get a U.S. court to enjoin the continued use of that domain name by Company X in that context within the U.S. However, if Company X then moved this web site to Argentina, where Famous Shoemaker Y did not have a trademark, Company X would probably not be enjoined, even though the web site would be accessible to Internet users in the U.S. Given the differences in trademark laws from jurisdiction to jurisdiction, differentiating protection on the basis of registration versus common law rights would not be fair. The only effective way to control the use of trademarks in domain names is through the domain name registration process, provided it is done in a manner that does not depend on the laws or jurisdiction of any particular country.

22. SHOULD SOME PROCESS OF PRELIMINARY REVIEW OF AN APPLICATION FOR REGISTRATION OF A DOMAIN NAME BE REQUIRED, BEFORE ALLOCATION, TO DETERMINE IF IT CONFLICTS WITH A TRADEMARK, A TRADE NAME, A GEOGRAPHIC INDICATION, ETC.? IF SO, WHAT STANDARDS SHOULD BE USED? WHO SHOULD CONDUCT THE PRELIMINARY REVIEW? IF A CONFLICT IS FOUND, WHAT SHOULD BE DONE, E.G., DOMAIN NAME APPLICANT AND/OR TRADEMARK OWNER NOTIFIED OF THE CONFLICT? AUTOMATIC REFERRAL TO DISPUTE SETTLEMENT?

Since a domain name can infringe a trademark right based only on its use, and the registration process to date has not allocated domain names in accordance with their intended use, a preliminary review of applications for registration could not fairly identify conflicts with trademark rights. The only exception would be cases where a trademark is so extensively protected and widely recognized that it would be difficult to imagine a case where a conflict would probably not exist. Coca-Cola, for example, has been used on many goods and services, from beverages to racing cars, and entertainment services to communication services. Thus, a case could be made for preliminarily protecting famous marks, but it would be very difficult, if not impossible, to establish a standard for fairly determining what constitutes a famous mark. The controversy associated with protecting famous marks may not be worth the effort.

Accordingly, domain name registrars should not be responsible for previewing a domain name application for trademark conflicts. This does not mean that registrars should be allowed to register any domain name with complete impunity. Trademark owners who are dedicated to actively policing their marks should be given an adequate opportunity to protest the assignment of a domain name because of a conflict with their trademark before the domain name assignment becomes official. Hence, MCI proposes that domain name assignments be initially made on a provisional basis for a fixed period of time, so that the use of the domain name can be adequately observed. If no protest were filed, the assignment would become official at the close of the provisional period. If a protest were filed during the provisional period, the assignment would be suspended pending resolution of the protest. Once an assignment became official, protests may still be filed, but automatic suspension would no longer apply, unless it could be shown that there was a dramatic change in the use of the domain name before and after the provisional period. Any resulting dispute resolution should be by mandatory arbitration.

23. ASIDE FROM A PRELIMINARY REVIEW PROCESS, HOW SHOULD TRADEMARK RIGHTS BE PROTECTED ON THE INTERNET VIS-A-VIS DOMAIN NAMES? WHAT ENTITY(IES), IF ANY, SHOULD RESOLVE DISPUTES? ARE NATIONAL COURTS THE ONLY APPROPRIATE FORUM FOR SUCH DISPUTES? SPECIFICALLY, IS THERE A ROLE FOR NATIONAL/INTERNATIONAL GOVERNMENTAL/NONGOVERNMENTAL ORGANIZATIONS?

National courts are an inappropriate and ineffective forum for resolution of disputes involving domain names. As stated in response to Question 22, MCI supports a privately run protest mechanism for resolving disputes. If all domain name applicants are required to agree to be bound by the decision of an alternative dispute resolution (ADR) organization employed by the registrars, trademark owners may feel more comfortable taking their disputes to the ADR group than to national courts. Absent an international treaty to the contrary, it is not possible to bar a national court from exerting authority within its boundaries, or to ascribe affect to one of its decisions regarding domain names outside of its jurisdiction. However, as stated in response to Question 21, the Internet can be used readily to thwart the jurisdiction of a national court. If a dispute mechanism is established which provides adequate incentives to trademark owners who are not bound to arbitrate, the owners may be more inclined to use the private resolution mechanism. The best role for governmental and nongovernmental organizations is to support the private resolution process.



24. HOW CAN CONFLICTS OVER TRADEMARKS BEST BE PREVENTED? WHAT INFORMATION RESOURCES (E.G., DATABASES OF REGISTERED DOMAIN NAMES, REGISTERED TRADEMARKS, TRADE NAMES) COULD HELP REDUCE POTENTIAL CONFLICTS? IF THERE SHOULD BE A DATABASE(S), WHO SHOULD CREATE THE DATABASE(S)? HOW SHOULD SUCH A DATABASE(S) BE USED?

Ready access to domain names, trademarks, trade names, etc., could help to prevent conflicts between responsible parties. Like any other preventive conflict tool, these databases are only helpful if used and fairly applied by the parties to a potential conflict.

Without question, the domain name registration database should be open to inspection world-wide. The mere existence of open trademark databases would not necessarily provide much useful information about the potential for conflict with the assignment of a domain name however, unless they also included accurate information about how the trademark is used in association with goods and services. A trademark owner should be ascribed greater enforcement rights by the ADR organization if the following conditions are met: (1) the trademark databases contained information about the use of the trademark, the goods or services to which it was applied, etc.; (2) a domain name applicant was required to check the databases prior to filing an application for registration of a domain name; and (3) the applicant subsequently used the domain name in conflict with the trademark.

The creation of trademark databases should not be treated any differently than the creation of the domain name registration database. It should be competitive and cooperatively managed. While it would be desirable to have all of the governmental trademark offices around the world be obligated to contribute data to the database, it may be best to make contributions to the database voluntary. Those wishing to take advantage of the greater enforcement rights would readily contribute.

25. SHOULD DOMAIN NAME APPLICANTS BE REQUIRED TO DEMONSTRATE THAT THEY HAVE A BASIS FOR REQUESTING A PARTICULAR DOMAIN NAME? IF SO, WHAT INFORMATION SHOULD BE SUPPLIED? WHO SHOULD EVALUATE THE INFORMATION? ON THE BASIS OF WHAT CRITERIA?

In general, no. It is possible, however, to imagine the eventual creation of one or more specific gTLDs which would have specific naming policies and membership criteria associated with them. Again, it is unlikely that governments have a significant and useful role to play in creating and regulating such domains.



26. HOW WOULD THE NUMBER OF DIFFERENT GTLDS AND THE NUMBER OF REGISTRARS AFFECT THE NUMBER AND COST OF RESOLVING TRADEMARK DISPUTES?

While a large number of gTLDs means there could be more chances for domain name conflicts with trademarks, it does not necessarily follow that the cost of resolving disputes would be unreasonably increased. If proper dispute resolution mechanisms and safeguards are established, the resolution of conflicts may

be quick, cost-effective, and determinate.

27. WHERE THERE ARE VALID, BUT CONFLICTING TRADEMARK RIGHTS FOR A SINGLE DOMAIN NAME, ARE THERE ANY TECHNOLOGICAL SOLUTIONS?

No.

28. ARE THERE ANY OTHER ISSUES THAT SHOULD BE ADDRESSED IN THIS AREA?

Not in this forum.

1. 1http://ds.internic.net/rfc/rfc1591.html.

2. 2If the question instead is focusing on the registration system, MCI would respond by recommending that efforts to correct the disadvantages listed in response to Question 1.

3. 3 http://www.gtld-mou.org/draft-iahc-recommend-00.html.