Kerkam, Stowell, Kondracki & Clarke comments

Number: 396

LAW OFFICES
KERKAM, STOWELL, KONDRACKI & CLARKE, P C .
TWO SKYLINE PLACE
5203 LEESBURG PIKE
SUITE 600
FALLS CHURCH, VIRGINIA 22041

EDWARD J. KONDRACKI
DENNIS P. CLARKE
WILLIAM L. FEENEY
JOHN C. KERINS
JOSEPH S. PRESTA
OF COUNSEL
JAMES L.BEAN
STEVEN C.SCHNEDLER

TELEPHONE (703) 998-3302
FACSIMILE: (703) 998-5634

July 14, 1997

Re: DOMAIN NAMES

PATENT, TRADEMARK; COPYRIGHT AND UNFAIR COMPETITION CAUSES

In response to the request for comments published in the Federal Register of July 2, 1997, concerning trademarks and domain names, the following is submitted

Hands off the Internet

If a domain name is being used other than as an address, it can qualify either as a trademark or service mark, depending on the manner in which it is used. If it qualifies as a trademark or service mark, it is protectable under the Trademark Act. Thus, there is no need to change the trademark laws or rules of examination with respect to providing protection for domain names.

Notwithstanding, there is a need for establishing some sort of procedure for regulating domain names regardless of whether or not they are used other than as a trademark or service mark, i.e., merely as an address. This could be accomplished by assigning names based on a number rather than a word and establishing a world wide directory of numbers to which a user could look for further biographical data. Renewal of domain names every twelve (12) months is much too soon and would be a burdensome system, given the number of domain names that are in use. Five years would be a reasonable alternative

Domain name conflicts can best be avoided by resorting to the numbering system. As the President's and Vice President's recent release report entitled "A Framework For Global Electronic Commerce" states, the Private Sector should take the lead and governments should avoid undue restrictions and involvement.

The INTA proposal for admitting subject matter jurisdiction and personal jurisdiction is much too broad. The Courts, to date, have had no problem dealing with the question of jurisdiction and, the fact that one is using a domain name on a world wide computer network, should not require prior admission of jurisdiction or any changes in the Federal Rules regarding jurisdiction. Further, why should a user admit to jurisdiction in a remote foreign country merely because of access to the global network? Jurisdiction is too important of a right to waive.

There is a serious question as to how much government intervention and regulation is necessary for a public international system. I recommend to you the article, "Hands Off The Internet", which appeared in the July 5th issue of The Economist. A copy thereof is enclosed.

Recently, a Georgia statute that criminalizes the use of trademarks that imply authorization and the use of false identities on the Internet was held invalid for violating the First Amendment (See BNA's PTC), Vol. 54, P. 193).

Very truly yours,

Edward J. Kondracki

EJK:sm Encls.

cc: Mr. Mike Heltzer (w/encls.)
(INTA Intergovernment Relations Program Coordinator)
Intergovernment Relations Program Coordinator
International Trademark Association

1133 Avenue of thee Americas, New York, NY 10036-6710 USA

Telephone: 212-768-9887 Fax:212-768-7796

MEMORANDUM

TO: U.S. Based Members of INTA
FROM: David C. Stimson, President
DATE: July 2, 1997
RE: Request for Comment by U.S. Government on Internet Related Issues

The Internet is fast becoming an almost daily part of our practice as trademark attorneys. The conflict between trademarks and domain names has become so visible that officials in the U.S. government have decided that the time has come for them to solicit comments from the public as to the role of government in managing this issue.

The JULY 2 Federal Register contains a request for comments on the topic of trademarks and domain names. Comments are due to PATRICE WASHINGTON, OFFICE OF PUBLIC AFFAIRS, NATIONAL TELECOMMUNICATIONS AND INFORMATION ADMINISTRATION, ROOM 4898,14TH ST. AND CONSTITUTION AVENUE, NW, WASHINGTON, D.C. 20230 by AUGUST 18. INTA's Internet Subcommittee will be preparing comments on behalf of the Association. These comments will, in part, be based on the proposal the Subcommittee submitted to the IAHC during its deliberations earlier this year. The INTA proposal includes the following:

(l)

Publication of domain name applications on a public web site for 90 days before the registration becomes effective, with full particulars of the domain name applicant, enabling trademark owners to monitor infringements of their trademarks;

(2) A renewal process, similar to the application process, with a sworn statement by the applicant individual or the officer/general partner of the applicant business entity setting forth the actual use which has been made of the domain name since the application or last renewal period, should be required. Renewal should be required every 12 months. This renewal process would help remove "deadwood" from the register.

(3) The applicant admits subject matter jurisdiction in an action brought under trademark law or unfair competition law, or analogous laws, arising out of the actual or intended use of the domain name, and also admits personal jurisdiction in any competent tribunal in the country in which the registrar through which the domain name registered would be located, and waives the right to challenge either jurisdictional predicate.

(4) In the event of a dispute, the registrar would not engage in the resolution of the dispute, but will abide by any order of a tribunal or arbitration panel having jurisdiction.

The complete version ofthe INTA proposal can be found in INTA "White Paper:" The Intersection of Trademarks and Domain Names. (The "White Paper can be found on INTA's website: http://www.inta.org)

Although the INTA Internet Subcommittee is submitting comments, this should not discourage you from submitting your own. Should you in fact decide to offer suggestions to the U.S. government, please send INTA a copy as well. You can address the copy to Mike Heltzer, INTA's Government Relations Program Coordinator.

Thank you for your participation. I look forward to reading Your comments.