Number: 391

August 14, 1997

Patrice Washington
Office of Public Affairs
National Telecommunications
and Information Administration
Room 4989, 14th Street and
Constitution Avenue, N.W.
Washington, D.C. 20230

Re: COMMENTS ON INTERNET DOMAIN NAME REGISTRATION ISSUE

INTRODUCTION

Thank you for the opportunity to comment on this important issue. As an intellectual property lawyer representing several major companies which have recently been successful in wrangling back its ".com", ".net" and ".org" names from pirates, the thought of new policies and procedures (and seven more second-level gTLDs) is daunting at best.

Please give these comments your attention, as it is clear to me an existing model already exists for handling domain names -- namely, the various Trademark Offices worldwide. As many of the inquiries overlap, particular responses herein may be blank. Further, as I have a trademark background rather than a technical background, these comments relate primarily to non-technical issues.

Sincerely,

Arlana S. Cohen

ASC:cm

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A. Appropriate Principles

The Government seeks comment on the principles by which it should evaulate proposals for the registration and administration of Internet domain names. Are the following principles appropriate? Are they complete? If not, how should they be revised? How might such principles be fostered?

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.

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.

c. These self-governance mechanisms should recognize the inherently global nature of the Internet and be able to evolve as necessary over time.

d. The overall framework for accomodating competition should be open, robust, efficient, and fair.

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.

f. A framework should be adopted as quickly as prudent consideration of these issues permits.

Competition should always be encouraged. However, where stability of the Internet is of prime importance, government involvement is essential.

B. General/Organizational Framework Issues

1. What are the advantages and disadvantages of current domain name registration systems?

Although certainly not infallible, the current domain name registration system is working. InterNIC is responsive and reacts in a timely and pleasant fashion to all inquiries.

2. How might current domain name systems be improved?

3. By what entity, entities, or types of entities should current domain name systems by administered? What should the makeup of such an entity be?

I would suggest that domain names be registered by a private entity licensed by the Department of Commerce for this purpose. This entity would pay fees to the government, and those fees could serve to fund an expansion of the Trademark Office. The entity should be selected by a public bidding process.

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 public/private 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/non-governmental organizations, if any, in national and international domain name registration systems?

It is the belief of the author that, since domain names can and do serve as "symbols" by which to identify the source of the domain, they can and must definitionally fit into existing trademark systems.

As you know, a trademark is defined in the Lanham Act and in similar acts worldwide as "any symbol..." Therefore, it cannot be argued that domain names are somehow dissimilar to trademarks. Any domain name, with a little advertising behind it, is an indicator of source.

In the 1980's the Lanham Act was amended to accommodate intent-to-use applications. These marks are technically "enforceable" upon final registration (upon the filing of a Statement of Use), but until that point only an inchoate, conditional right exists.

The above entity would electronically notify the PTO of a new domain name application and the PTO would issue an application number. I would suggest a new category be created, namely, "domain name in the field of " so that Examiners are able to search the register for similar domain names/trademarks in that category. After an examination period, the domain name would be published for opposition and, if none if filed within a particular time period, the domain name would become "registered". Use requirements already in place for trademarks could apply. The PTO would be responsible for its particular country code, and any person or company registering a ".com" would submit to jurisdiction in a U.S. court.

Obviously, an amendment to the Lanham Act would be required, but it is my belief that it is only the Lanham Act which can be made to accommodate these issues. Any separate system would conflict with the various trademark acts worldwide and lead to chaos, expense and uncertainty.

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?

Retiring the existing .com registration would have a disastrous effect on businesses already using these gTLDs.

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?

7. How can we ensure the scalability of the domain name system name and address spaces as well as ensure that root continue to interoperate and coordinate?

8. How should the transition to any new systems by accomplished?

9. Are there any other issues that should be addressed in this area?

C. 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?

11. Should additional gTLDs be created?

12. Are there technical, business, and/or policy issues about guaranteeing the scalability of the name space associated with increasing the number of gTLDs?

13. Are gTLD management issues separable from questions about ISO country code domains?

14. Are there any other issues that should be addressed in this area?

Additional gTLDs, if needed, should be granted according to the above system. Currently, there are no rules as to what type of entity may operate a ".net" or ".org", so by their nature these suffixes are already misleading and confusing. One can assume the public believes ".org" is truly some sort of "organization", a not-for profit or otherwise an "official" site. Therefore, additional categories should not be created which are similarly misleading.

Accordingly, in my opinion, new suffixes - if any - should either be limited to a type of entity which may procure a specific suffix (or such suffixes should be random, e.g., x,y,z). In keeping with the above, current .net and .org owners should be made to re-apply under the new system and qualify to validly hold a .org, .net, .web, .store, etc., suffix.

D. Policies for Registries

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 non-exclusive gTLDs coexist?

16. Should there be threshold requirements for domain name registrars, and what responsibilities should such registrars have? Who will determine these and how?

17. Are there technical limitations on the possible number of domain name registrars?

18. Are there technical, business and/or policy issues about the name space raised by increasing the number of domain name registrars?

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?

20. Are there any other issues that should be addressed in this area?

E. 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?

As stated above, domain names should be accorded full trademark rights, with the registration process and the dispute resolution process following existing PTO procedure, including the right to appeal to a court of law.

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?

Please see responses to Sections B(3) and B(4)

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/non-governmental organizations?

Persons seeking to immediately stop the use of a domain name during the registration process would apply to a court for trademark infringement, dilution, etc.

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?

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?

26. How would the number of different gTLDs and the number of registrars affect the number and cost of resolving trademark disputes?

In anticipation of increased gTLDs, some corporate clients of this firm anticipated the need to own all seven proposed domains for each of its 100 or more trademarks. Annually, said costs would be prohibitive. Interestingly, NetNames, a private domain name registration service in New York had already received "standing orders" for such from hundreds of U.S. companies. It also had standing orders from hundreds of "pirates" on the ready to pirate the new domain names. The result would be a litigation nightmare for corporations as well as for the already over-taxed federal court system.

27. Where there are valid, but conflicting trademark rights for a single domain name, are there any technological solutions?

28. Are there any other issues that should be addressed in this area?