Number: 390
Before the
U.S. DEPARTMENT OF COMMERCE
Washington, D.C. 20230
In the matter of )
)
REQUEST FOR COMMENTS ) Docket No. 970613137-7137-01
ON THE REGISTRATION AND )
ADMINISTRATION OF INTERNET )
DOMAIN NAMES )
COMMENTS OF BELLSOUTH CORPORATION
BellSouth Corporation ("BellSouth") hereby submits comments in the above-captioned proceeding. BellSouth is an international telecommunications company that
provides telecommunications, publishing and Internet access services. BellSouth also is
the concurrent owner of the famous BELL and Bell Symbol marks and a family of "BELL
marks" including BELLSOUTH. BellSouth is also currently in litigation with the
registrant of an infringing domain name in the United States. Additionally, BellSouth has
experienced problems in enforcing its trademark rights against several registrants of
infringing domain names. BellSouth is therefore interested in devising a system that would
better facilitate the enforcement of our trademark rights. BellSouth recognizes the need to
balance its interest in protecting its marks with the need to ensure that any solution to the
trademark infringement problem does not adversely affect the cost or efficiency of doing
business on the Internet.
A. Appropriate Principles
BellSouth has answered questions a, b, c, d, e and f.
a. Competition in and expansion of the domain name registration system
should be encouraged. Conflicting domains, systems, and registries should not be
permitted to jeopardize the interoperation of the Internet, however, the addressing
scheme should not prevent any user from connecting to any other site.
Competition among registries should not be encouraged until the private sector, with input from governments, develops stable, consensus-based self-governing mechanisms for domain name registration and management that adequately defines registrar responsibilities and maintains registrar accountability. (See subsection b below.)
BellSouth agrees that conflicting domain names, systems, and registries should not
be permitted to jeopardize the interoperation of the Internet. A fragmented domain
system will result in a fragmented Internet. The Internet registration system, if it needs to
be expanded, needs to do so in a coherent fashion with the ultimate goal of ensuring that
domain names are universal and portable among competing registrars. Therefore, it is
important that a concerted effort be made to establish rules and procedures that are
followed by all registrars. It will be extremely difficult to establish uniform rules for use
by competing registrars that will ensure that domain names are universal and portable
among competing registrars. To allow a registrar to maintain exclusive ownership of its
database, for example, may be consistent with encouraging competition but would impede
portability. Government input with respect to antitrust, database ownership and other
legal principles should be given a full airing on an international basis to ensure that the
proposed registration mechanism is not inconsistent with other national and international
legal principles.
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.
BellSouth is in basic agreement with this principle. It is very important that some consensus be developed among governments with respect to the appropriate interfaces between national trademark law and domain name registration. An important forum for this discussion will be the consultative meeting on trademarks and Internet domain names to be held in Geneva at the headquarters of WIPO on September 1 and 2, 1997.
International trademark law is not yet harmonized. Most jurisdictions provide
some level of protection against confusion generated by the use of identical or confusingly
similar names and marks by competitors within the jurisdiction. There is no consistency in
the protection afforded to unregistered marks, the allocation of concurrent rights in marks
or in interpretation of the confusing similarity standard. Until these and similar matters are
resolved, there can be no uniform understanding with respect to ownership of domain
names in the international community. It will be very difficult to set up an adequate
registry system without first achieving at least some level of agreement on how these non-uniform national law issues will be dealt within the registration and any associated dispute
resolution process.
c. These self-governance mechanisms should recognize the inherently global
nature of the Internet and be able to evolve as necessary over time.
Subject to the concerns expressed in sections (a) and (b) above, BellSouth is in
basic agreement with this principle.
d. The overall framework for accommodating competition should be open,
robust, efficient, and fair.
Subject to the concerns expressed in (a) and (b) above, BellSouth is in basic
agreement with this principle.
e. The overall policy framework as well as name allocation and management
mechanisms should promote prompt, fair, and efficient resolution of conflicts over
proprietary rights.
Subject to the concerns expressed in sections (a) and (b) above, BellSouth is in
basic agreement with this principle. As suggested later in these Comments, the ultimate
arbiter of conflicts over proprietary rights must be the courts of the nation that has
jurisdiction over the particular conflict. BellSouth also believes that a dispute resolution
mechanism must be developed for use in the registration process that is consistent with at
least some agreed-upon subset of basic national law principles and that also is prompt, fair
and efficient (both administratively and economically). BellSouth is concerned that if
there is no dispute mechanism at all, other than the courts, or if a dispute mechanism is
developed that is not prompt, fair and efficient, the ability of businesses to conduct
business on the Internet through the prompt assignment and use of proprietary domain
names will be adversely affected. This, in turn, would have a negative impact on the
viability and growth of electronic commerce conducted over the Internet.
f. A framework should be adopted as quickly as prudent consideration of these
issues permits.
Although BellSouth agrees with the enunciated principle, it must be recognized
that the issues engendered by this inquiry are extremely complex. BellSouth is not
convinced that there is an immediate need to make dramatic changes to the administration
and management of the domain name system which would justify a resolution primarily
driven by artificial time constraints. For that reason, governments and parties should take
whatever time is necessary in all appropriate forums to ensure that the end result is a
workable one for trademark owners, registrars, entities doing business on the Internet and
Internet users.
B. General/Organizational Framework Issues
BellSouth has answered questions 1, 2, 3, 4, 5, 6 and 7.
1. What are the advantages and disadvantages of current domain name
registration systems?
The primary advantage of the current domain name registration system as administered by InterNIC is that it is relatively simple and inexpensive. The registration process is made straight forward in part because there is essentially only one top level domain name in use (".com") for businesses. This makes the .com gTDL easy for site owners to select and easy for consumers to remember.
There are, however, several disadvantages to the current system:
a. Without competition, the registrar has a monopoly on the business. Because the customer has no choice of registrars, this can lead to inconsistent levels of service, such as the response time for assigning a domain name, higher prices, etc.
b. The current system utilizes ineffective prescreening and dispute resolution mechanisms. This has led to widespread abuse of the system by domain name speculators (a.k.a. cybersquatters, pirates) and trademark infringers who have easy, inexpensive access to the system and can register virtually any domain name which, upon prescreening by the registrar, is not identical to a previously-registered domain name or, upon complaint of a trademark owner, is not identical to a trademark that has been registered by the complainant with a national trademark registry. The prescreening/dispute resolution formula does not work, and thereby protects domain name speculators and trademark infringers, because it is not rationally related to the rights and remedies normally associated with trademark ownership. A trademark registration protects a registrant against the use of both identical and confusingly similar marks on identical or similar goods and services. Under the current system, however, a trademark registrant can assert and obtain priority over trademark owners who would have totally successful defenses at law such as a non-competitor, a senior common law owner or a legitimate concurrent user of an identical mark. Conversely, the trademark owner cannot assert trademark rights over competitors using marks that are not identical but are confusingly similar to the senior mark. Even though the ultimate decision should be rendered by a court of law in the country having jurisdiction over the particular dispute, mechanisms for prescreening and dispute resolution must be established to ensure that registration decisions are not arbitrary with respect to the legal rights of the parties under applicable national trademark law.
c. Because we are working with a single gTLD, it has become increasingly
difficult to select a domain name for use in new business endeavors that is not already in
use by another business with the .com gTDL. Although this problem would not arise
quite as frequently if additional meaningful gTDLs were available, it is BellSouth's opinion
that the risks associated with the establishment of additional gTDLs may outweigh this
particular disadvantage of the current system. (See sections 10 and 26 below.)
2. How might current domain name systems be improved?
BellSouth's specific suggestions on improving the current system are set forth in
more detail in other sections. The major changes that are required are summarized below:
a. The selection process for registrars must be changed so that no NIC has a monopoly over a particular gTDL. Therefore, competition among registrars should be established. Competition among registrars could have the desirable effect of improving customer service as long as domain names are made universal and portable among registries.
b. An adequate application/prescreening/dispute process must be established.
This should be the primary goal of the domestic and international dialogue on domain
names.
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?
The root domain database and the root domain servers constitute the core of the
domain name system. Because they are essential to all Internet users worldwide, these
elements of the system must be kept free of governmental and commercial pressures. For
this reason, BellSouth believes that the system should be governed by a large cross-section
of the industry itself, with input from government. The proposal that has been made by
the Interim Policy Oversight Committee ("iPOC"), an arm of the International Ad Hoc
Committee ("IAHC") suggesting that basic administration of the Internet be handled by a
Policy Oversight Committee ("POC") with members appointed by a group of trade
associations and quasi-government organizations, represents a good working model. The
size and makeup of the POC and any associated organizations must be designed and
procedures established to ensure that policies promulgated by the POC represent a true
Internet community consensus and that decisions of the POC and the promulgation of
policies, practices and procedures occur within a reasonable time frame. The core
database for use in assigning and prescreening all gTLDs should be constructed and
maintained by this central entity. This approach would allow it to be accessed and
updated by any registrar on a real time basis. Registrars must meet minimum requirements
to ensure competency and solvency. Selection by lottery, as suggested by the IAHC,
would constitute the best insurance against preferential selection of registrars. Once
selected, registrars would be funded with domain name fees; however, some mechanism
should be put in place to ensure that fees charged by registrars do not become
exclusionary in any respect. In addition, anti-competitive fee structures should not be
permitted.
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)?
What is the proper role of national or international governmental/nongovernmental
organizations, if any, in national and international domain name registration
systems?
Standards setting processes that are used currently for setting technical standards would be a potential model for the decision-making process. Standards setting bodies are made up of, or consider the input of, all parties with interest in setting a particular standard. The process takes place within the context of certain rules established by law. The standards setting process ensures that there is sufficient dialogue among interested parties and is aimed at achieving consensus and fairness. Although this deserves more study, it is possibly a useful model.
International governments should work together to attempt to harmonize the legal
context within which the domain name registration process can operate. Even if
harmonization of substantive law fails, participation by governmental and
nongovernmental parties in WIPO and other international forums may move the world
closer to establishing a workable, consensus based international domain name system.
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 current gTLDs should not be retired. Changing them at this juncture would
cause domain name owners to incur costs associated with changing their domain names
and suffer the loss of valuable goodwill. Moreover, geographic domains are not
appropriate in many contexts. The Internet is an international infrastructure. The gTLD
domains are reflective of that infrastructure. Moreover, an international emphasis on
country code domains would potentially cause trademark protection problems of far
greater magnitude than those created by the new gTLDs (see Section 10) by forcing
trademark owners to monitor and protect their marks under each country code as well as
under each gTLD. The international community should be working toward harmonization
of trademark laws and the creation of a useful and meaningful centralized prescreening
and dispute resolution system. For this reason, country codes should not be required by
the international community and should be kept separate from gTLD management issues.
It would, however, be important to harmonize the practices and procedures of the two
types of domain operations.
6. Are there any technological solutions to current domain name registration
issues? Are there any issues concerning the relationship of registrars and gTLDs
with root servers?
Database technology exists that would enable the sharing of access to a given gTLD. This would allow multiple registrars to share assignment responsibilities and information regarding domain names issued under a given gTLD.
There does not need to be substantial interaction between the registrars and the
root servers. The root server operators must work closely with the central organization
that defines gTLDs and should be part of that process to ensure consistency among root
servers. (See section B(3) above.) On the other hand, registrars must interact with the
gTLD domain servers and will be required to rely on the gTLD servers to pick up changes
quickly and consistently. The technology currently used for handling the core gTLD
databases has this capability.
7. How can we ensure the scalability of the domain name system name and
address spaces as well as ensure that root servers continue to interoperate and
coordinate?
Geographic domains scale much better than the gTLDs, however, there is an impression within the U.S. Internet business community that the .US domains are "second class citizens." Scalability of the domain name system name and address spaces could be ensured by somehow encouraging localized U.S. businesses to use the .US domain. The scaling problems in the gTLDs come from their flatness, which is driven by the perceived need for every business to have a second level domain name. This would not be nearly as important if domain names were viewed and treated more as access numbers (like a telephone number) rather than source indicators in the nature of trademarks and trade names. This could be accomplished by the development of a robust directory, similar to a telephone directory, where searching is done by the trademark or trade name of the company rather than its domain name address. Once the trademark/trade name is accessed, information regarding the various companies using that name (e.g., location, type of goods and services) would lead the searcher to the correct company and then, finally, to the correct domain name with which to access the company. The de-emphasis of the domain name as being in the nature of a trademark would substantially alleviate the problems of trademark protection which have been created by the international character of the Internet and the domain name system itself.
With respect to ensuring that root servers continue to interoperate and coordinate,
it must be understood that there are three essential components to a coherent root server
system: (a) a trusted single source for root domain data, (b) a set of root server operators
trusted by the data source, and (c) effective, secure distribution to system administrators.
The trusted data source can ensure the coherence of the root server system by distributing
the list of root servers itself. All of the data distribution should be protected with security
mechanisms. Although such mechanisms are not yet in place, they are technically feasible
and should be developed and deployed.
C. Creation of New gTLDs
BellSouth has answered questions 10, 11, 12 and 13.
10. Are there technical, practical, and/or policy considerations that constrain the
total number of different gTLDs that can be created?
BellSouth has suggested that registrars share access to and administration of all gTLDs. Under this scenario there would be no special need for a large number of gTLDs. gTLDs should only be created to fill demonstrated needs after a consensus has been reached among appropriate industry and governmental entities. Rather than issuing a substantial number of new gTDLs, a directory service should be built above the domain name system to remove the need for a human discernible correlation between domain names and the entities they represent. The use and assignment of too many gTLDs could generate great confusion to individuals trying to access information on the Internet. If more gTLDs are added, then they must be accompanied by a good searchable directory database and be populated to all root name servers.
In addition to the practical concerns associated with increasing the number of
gTLDs, the negative impact that such an increase would have on the ability of trademark
owners to protect their marks would be substantial. A proliferation of gTLDs would bring
with it a proliferation of new trademark infringement problems because the opportunity to
select infringing domain names would be increased. Trademark owners would have to
preemptively file for domain name registration in each new gTLD, thereby creating an
unnecessary proliferation of filings. More importantly, however, the ability of trademark
owners to police infringing domain names would be significantly diminished.
11. Should additional gTLDs be created?
BellSouth is not convinced that there is a current need to create additional gTLDs.
If a discernible need can be substantiated, the number of new gTLDs should be kept to a
bare minimum.
12. Are there technical, business, and/or policy issues about guaranteeing the
scalability of the name space associated with increasing the number of gTDLs?
In BellSouth's opinion, there are no substantial technical, business or policy issues
in this regard. The only real scaling issue is in associating an entity with a domain name.
Although increasing the number gTLDs would make this more difficult, the issue is not
one of scaling but one of creating a viable directory service.
13. Are gTLD management issues separable from questions about ISO country
code domains?
Yes, see our response to section 5.
D. Policies for Registries
BellSouth has answered questions 15, 16, 17 and 19.
15. Should a gTLD registrar have exclusive control over a particular gTLD? Are
there any technical limitations on using shared registries for some or all gTLDs?
Can exclusive and nonexclusive gTLDs coexist?
BellSouth is of the opinion that no registrar should have exclusive control over a
gTLD. This would make the cost of changing too high, effectively locking domain name
owners into their initial domain registrar. A grant of exclusive control over a gTLD could
also have the effect of enabling a registrar to claim proprietary rights in its database or
charge too much for its services. This would substantially impede or eliminate basic
portability. Registrars should register domain names on a first to file basis under any
gTLD. It is recognized that real time access would have to be made to a shared database
in order to prevent such problems as the issuing of duplicate domain names. There are no
technological impediments to using shared registries or for combining shared and
exclusive registries.
16. Should there be threshold requirements for domain name registrars, and
what responsibilities should such registrars have? Who will determine these and
how?
Obviously, threshold requirements for domain name registrars are necessary in
order to protect domain holders from incompetence, registrar insolvency, malfeasance and
fraud. Such requirements should be set by the POC. (See section 3.)
17. Are there technical limitations on the possible number of domain name
registrars?
Since shared database technology is currently available in which registrars could
have real time access to an existing database, there are no purely technical limitations on
the number of domain name registrars. There are, however, practical market-based
limitations which would impact size and profitability of the registrar business.
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
nonexclusive rights to the gTLD?
No registrar should have exclusive rights over a gTLD. There is no limit over the
number of gTLDs that can be administered by a registrar except as may be imposed by
purely business constraints such as the number of applicants, size of the registrar and its
ability to respond effectively.
E. Trademark Issues
BellSouth has answered questions 21, 22, 23, 24, 25, 26, 27 and 28.
21. What trademark rights (e.g., registered trademarks, common law
trademarks, geographic indications, etc.), if any, should be protected on the Internet
vis-à-vis domain names?
All trademark owners, whether they own a mark by virtue of establishing common
law rights or by registering their marks in various jurisdictions should have an opportunity
to protect their marks from being diluted or infringed by the registration and use of a
domain name by a third party. In the U.S., a trademark registration establishes prima facie
exclusive ownership rights in a mark for use in conjunction with the listed goods or
services. The presumption of ownership that is thereby established is subject to being
rebutted by numerous defenses which, if successfully raised, can defeat the trademark
owner's case. Common law rights in a mark are subject to similar defenses. Moreover, a
common law owner of a mark must establish through proof that it has senior ownership
rights in the mark. Because of the complexities involved in establishing trademark
ownership and rights vis-à-vis a third party user, and because trademark rights are national
in nature, the ultimate arbiter of disputes regarding trademark rights should be the courts
of each country. This does not suggest, however, that there should not be prescreening
and dispute resolution mechanisms built into the domain name assignment system that
would attempt to recognize and protect the rights of trademark owners. (See sections 22-25 below.)
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?
A preliminary trademark search should be conducted by the registrar to determine
whether there are potential conflicts with the applied for domain name. The registrar must
base its review on standards which take into account similarity of goods or services and
confusing similarity between the marks. The application for registration should be
designed to provide the registrar and other interested parties with information regarding
the goods and services with which the domain name will be used and any existing
trademark registrations or rights claimed by the party filing the application. The registrar
should not be burdened with making technically fine distinctions regarding trademark
rights and should make its acceptance/rejection decision based on broad rules that are
consistent with trademark concepts and designed to make what would amount to an
appropriate "first cut." If a conflict is found by the registrar after a search of the database,
the application should be rejected and the applicant advised as to the reason for the
rejection. If the domain name is accepted by the registrar, it should be published for
review by all interested parties. Disputes flowing from the registrar's decision should be
subject to challenge in a dispute resolution forum. (See section 23 below). Moreover, as
a general matter, the registry should not be a party to such disputes.
23. Aside from a preliminary review process, how should trademark rights be
protected on the Internet vis-à-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/non-governmental organizations?
After the preliminary rejection or acceptance of the domain name by a registrar, any disputes involving that decision should be referred to a non-governmental panel of experts for resolution. The panel of experts would take into account the intricacies of establishing and protecting trademark rights and would attempt to resolve the dispute accordingly. In inter-jurisdictional disputes, an expert on the law of each jurisdiction should be on the panel. It is important that this mechanism exist in order to expedite the dispute resolution process and reduce the need for entering into expensive and time consuming litigation. At no point, however, should the opportunity for injunctive relief upon the order of a national court be foreclosed.
National courts are not the only appropriate forum for disputes over trademark
rights but they are the appropriate final forum for such disputes. BellSouth endorses the
development of a dispute resolution mechanism at the international level that would be
developed and overseen by the POC and conducted by experts in trademark law.
Currently, there is no appropriate international governmental forum for resolution of this
type of dispute.
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?
Conflicts over trademarks can best be prevented by having a database that is
sufficiently robust to enable domain name applicants to search for potential problems prior
to filing an application. The database should incorporate data from the registrars as well
as national trademark registries and European Community filings. Certain penalties could
be built into the registration process that would create an incentive for applicants to
conduct this search. For example, an applicant who did not conduct a prescreening or
who proceeds in bad faith notwithstanding the rights of another, could be subject to costs
and attorney's fees associated with any challenge to the application necessitated by these
acts. As suggested in section 3, the POC could establish and maintain this database or it
could be established and maintained by a private entity under contract with the registrars
and with the oversight of the POC or some other appropriate international standards
setting group.
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?
Basically, BellSouth endorses the application process listed in the INTA White
Paper. BellSouth believes that domain name applicants should be required to: (a)
demonstrate that they have searched the database and know of no conflicts, (b) state that
the name will be used for a described purpose and with certain definable goods and
services and, in order to prevent warehousing of marks, (c) make a statement under oath
that the applicant has a bona fide intent to publicly use the domain name and continue to
use it in the foreseeable future. The information should be evaluated in a preliminary
review by the registrar against the existing database based on criteria developed by the
POC or some other international standards setting body. It is suggested that INTA, which
represents a large number of the world's trademark owners and is populated by trademark
industry experts, play a major role in the establishment of these criteria.
26. How would the number of different gTLDs and the number of registrars
affect the number and cost of resolving trademark disputes?
As discussed previously, the number of disputes and the cost of resolving them
would increase significantly. The best solution to enabling the co-existence of valid but
conflicting rights in a domain name would be to develop a directory that is robust enough
to ensure that users of the Internet can readily distinguish between Delta faucets, Delta Air
Lines and Delta computers using a simple look up that would link trademark/trade names
and basic information about the business with the domain names of the companies. (See
Section 7.)
27. Where there are valid, but conflicting trademark rights for a single domain
name, are there any technological solutions?
As suggested in sections 7, 10 and 26, it is essential that a robust directory be
developed so Internet users will be able to find and distinguish between trade names or
trademark owners who have legitimately adopted the same name or mark. This
anticipates that owners of the same name or mark would have different domain names but
would be responsive to the legitimate need of each trademark owner to be found by
Internet users under the owner's name or mark. This also would help reduce confusion by
users trying to reach a specific location on the Internet
28. Are there any other issues that should be addressed in this area?
BellSouth supports INTA's suggestions with respect to removing "dead wood"
domain names from the system by requiring domain name owners to renew their domain
names at some appropriate interval.
Respectfully submitted,
BELLSOUTH CORPORATION
By: _________________________________
Sandra J. Evans
Suite 1700
1155 Peachtree Street, N.E.
Atlanta, Georgia 30309
(404) 249-2714
Its Attorney
August 18, 1997