Number: 389

Robert Platt Bell & Associates, P.C.
Patent, Trademark, & Copyright Matters
917 Duke Street
Alexandria, Virginia 22314
(703) 683-8822
Facsimile 1: (703) 683-8823
Facsimile 2: (703) 683-5793
RobertBell@BELLPAT.COM

July 22, 1997

Ms. Patrice Washington
Office of Public Affairs
National Telecommunications and Information Administration
Room 4898
14th Street and Constitution Ave., N.W.
Washington, DC 20230

Re: Comments Regarding Domain Name Registration

Dear Ms. Washington:

I am submitting the following comments in response to the request published in the Federal Register July 2 regarding administration policy for domain name registration.

I am very disturbed that Commerce Secretary William Daly believes that the success of the Internet is due to "its decentralized structure and bottom-up self-regulatory governance." I believe that in order to save the Internet, the government can, must, and should regulate the Internet thoroughly.

Mr. Daly's comments reflect a certain amount of naivety on his part. The Internet has been around for many years and was in fact created by the U.S. Government. Thus, the U.S. Government has the moral mandate to control and regulate the growth, expansion, and operation of the Internet. In the early days of the Internet, "self-regulation" was generated only when users of the Internet would shun or otherwise ostracize those users who broke various unwritten rules. Most users obeyed these rules for fear of the approbation of other users.

However, since those early days, a new generation of Internet users has emerged. This new generation of users is driven by profit and greed and is not affected one whit by the concerns of on-line computer nerds and/or their flame messages.

Rather than an information super highway, the Internet has degenerated into an information sewer, clogged with pornography and various pitches and come-on by con-men and low-lifes of all sorts.

In order to insure the continued success of the Internet, the administration must take concrete and decisive steps to regulate this new medium. If this administration fails to do so, it will find itself very vulnerable at the next election to attacks from the extreme right. If the administration refuses to regulate the Internet, then by default they must take responsibility for all materials on it.

With regard to Internet domain name registration, this is a very simple and straightforward issue which has only been complicated by the government's lack of willpower and determination to resolve this issue. Please do not be distracted by arguments involving cyber-this or virtual-that. This is a straightforward trademark and policy issue.

The policy which is in the process of evolving is one that the government should adopt and enforce. NSI has largely been an innocent victim in this mini-controversy.

The problem surrounding domain name registration is two-fold. Unscrupulous users have registered hundreds, if not thousands, of domain names and held them ransom to their rightful trademark owners. In other instances, common law users of a trademark have found themselves usurped from their domain names by NSI policy.

I propose a simple and straightforward solution as follows:

1. To prevent abusers from registering thousands of domain names, NSI should immediately require that all domain names be accompanied by a deposit prior to holding that domain name for a user. In a recent article on the subject in the San Jose Mercury News, it was noted that

NSI is missing millions of dollars in domain name fees. NSI has apparently allowed users to "hold" domain names without paying the requisite fifty dollar domain name fee. Domain name abusers only pay the fees on those names which they intend to hold for ransom against their rightful trademark owner.

It would be very difficult, if not impossible, for a domain name abuser to register hundreds or thousands of domain names if required to front the fifty dollar deposit. Such a policy will, however, allow legitimate domain name users to reserve their domain names.

2. Adopt the NSI policy as law. NSI has adopted a policy of granting domain names to rightfully trademark owners on a first-come first-served basis. Thus, if a domain name abuser obtains a particular domain name involving a registered mark, the holder of that registered mark can take that domain name from the abuser. This policy has only one minor drawback which I believe can be easily overcome

In situations such as the Roadrunner.com case, a common law trademark user was threatened by a user holding a registered trademark for that domain name. In the Roadrunner case, the parties had no way of knowing how to act in advance, as policy has not been enacted. However, I believe if the NSI policy is given the force of law, users would be advised to pick a domain name which is not a registered trademark or, the alternative, obtain trademark registration for their domain name prior to registering it.

This idea has been met with come criticism as some cynics would note that it takes a year or two to obtain registration from the Patent and Trademark Office. However, the right to a domain name is not absolute, much as the right to a trademark is not absolute and is dependent and hinges upon the prior rights of others.

3. Discourage use of alternative suffixes (e.g., .com, .org, .net, and the like). Some have proposed eliminating NSI as a sole source for domain names and adding new domain names with different suffixes. They apparently believe that this in and of itself would solve the domain name controversy. I believe that the use of the additional suffixes would only serve to add more confusion to the market place.

I say market place with careful consideration, as the Internet is evolving into a vibrant international economic force. The Internet is no longer a matter of a few computer nerds exchanging notes on Star Trek episodes. The Internet is a means for transacting business.

As such, trademarks, and the use of trademarks, will be paramount in the Internet. If various users are allowed to obtain the same domain name with different suffixes, confusion will result. A recent case in the Eastern District of Virginia involving the "card service" mark illustrates the point. A disgruntle would-be franchisee of Card Service International obtained the cardservice.com mark in an attempt to use it to steer customers to his competing business.

My concern is that alternate suffixes for domain names would allow users to obtain similar or identical domain names with different suffixes in order to confuse customers.

In short, I believe the existing policies developed by NSI would be more than effective if backed by the strength and commitment of the U.S. Government. The only problem in the domain name arena has been the lack of willpower by this administration to get involved with Internet issues and resolve these disputes before they linger and fester. The myth of "self-governance" of the Internet is exposed in cases such as this, where self governance has broken down into petty squabbling and a multitude of law suits.

This administration should take the lead in rational and thoughtful governance of this new communications medium. Further, the administration should expand this control and governance to reduce, regulate, or control the spread of child pornography on the Internet as well as reduce, eliminate, or otherwise regulate the transmission of junk-mail ("spam") messages on the Internet. Both of these forces threaten to destroy the Internet as a useful economic tool.

Thank you for taking your time to read these comments. I hope the administration will take an about-face with regards to its hands-off policy regarding the Internet. If the Clinton Administration does not do so shortly, the Republicans will use the child pornography issue to attack the Democrats in the next election.

If you have any questions or comments concerning this or any other matter, please do not hesitate to contact me.

Very truly yours,

RPB/pmh Robert P. Bell