Comments on IAHC proposals

[Hardwick Elly <Elly.Hardwick@CIID.dti.gov.uk> (Tel +44 171 215 1480)]

Members of the IAHC committee,


17 January 1997

I am writing on behalf of the UK Government Department of Trade and Industry 
(DTI), the 
London Internet Exchange (LINX), and the Internet Service Providers Association 
(ISPA), 
with comments on the IAHC's draft specifications for Administration and 
Management of 
gTLDs.

The DTI, LINX and ISPA are committed to fostering the development of the 
Internet, in 
particular its use as an electronic market-place, and would welcome the 
reorganisation of the 
various naming systems in operation to facilitate this. Such a reorganisation 
should not only 
simplify the use of the Internet, but must also help protect the rights of both 
traders and 
consumers. Any reorganisation of domain names is bound to be costly, and so a 
sustainable 
solution is necessary. We are concerned that the creation of a large number of 
new TLDs is at 
best a temporary solution, for the following reasons:

(a)     New gTLDs will do little to create more Internet-domain space, but will 
result in 
duplication and unnecessary ownership of multiple domain names.

The IAHC proposals do not mention the possibility of existing owners of .com or 
other 
existing TLD domains "relocating" to a more specific gTLD, and we doubt that 
those owners 
would be willing to do so, as .com has an inherent perceived value. The new, 
lesser known 
gTLDs would be perceived as second class: for example they would most likely not 
be the 
first port of call for any user trying to "guess" an Internet domain name. Even 
if a company 
were eligible to register under one of the new gTLDs, .com would continue to be 
their first 
choice, and continue to be fought over.

To protect themselves against possible abuse by others, companies already using 
a .com 
address would feel obliged to register all possible alternatives, even though 
they had no 
intention of using them separately. 

(b)     New gTLDs will not lessen the likelihood of trade-name disputes.

A fundamental difficulty exists in reconciling the essentially national nature 
of registered 
trademarks with the existence of TLD such as .com and .org. The creation of new 
gTLDs 
does nothing to address cases in which a trademark is legitimately used in 
different contexts 
or countries by different bodies. Indeed, it would seem to exacerbate the 
potential for 
problems and disputes which cannot be readily resolved.

(c)     New gTLDs will complicate the use of the Internet, and harm its public 
acceptance.

It is likely that the sudden appearance of a raft of unfamiliar TLDs will 
detract from the 
perceived legitimacy of Internet transactions (fundamental to consumer 
acceptance of the 
Internet as a "safe" environment in which to conduct business). It may also, for 
the same 
reasons, discourage businesses going on-line. If any new TLDs are to be created, 
this would 
have to be in order to alleviate a specific, identified deficiency in the 
current TLD system, 
and be accompanied by a clear charter for the intended use of each. We also 
wonder why it 
has not yet been possible to specify which 7 new gTLDs the IAHC proposes 
creating. Will 
interested parties have a further opportunity to comment, if the IAHC decides to 
proceed?

Detail

Our general approach to the on-line environment, consistent with encouraging 
businesses and 
users to have confidence in the virtual world, is to ensure that on-line 
arrangements follow 
those in the "real world". We would suggest that there should be clearly 
separate commercial 
and non-commercial domains, the commercial ones subject to more rigorous form of 
checking prior to registration - see below.

The IAHC draft proposes initially introducing seven new gTLDs, although these 
are not yet 
specified, and retains the option of adding more. We presume some of these would 
be along 
the lines of Simon Higgs' proposals for new gTLDs based on the International 
Trademark 
Schedule of goods and services, which we welcome as a basic concept, since it 
would bring 
Internet naming further into line with established trademark law.

However, the long-term development of the Internet relies on the further 
availability of name-
space. Better use of name-space would be made, and the scope for "no-fault" 
trademark 
disputes, where a trademark is legitimately used by different companies in 
different contexts 
or countries reduced, if such "trade-specific" domains were introduced as 
second-level 
domains, within geographical TLDs. The consultation document rightly states that 
" there is 
no single, universal international law of trademark, so it is not possible to 
reserve disputes 
involving trademark and domain names to an international body". This is why it 
is essential 
that domain names, except those for international companies whose trademarks 
would 
anyway be registered across the globe, exist within a national context where 
such disputes 
can be resolved. (Incidentally, a recent High Court judgement in London found 
that 
registration of a registered trade-mark as a domain name by a body other than 
that owning the 
trademark did constitute infringement.)

Ideally, all non-geographic TLDs would be reserved for bodies with a genuinely 
international 
presence, relieving the burden which currently seems to fall almost exclusively 
on .com. We 
therefore strongly support the IAHC's recommendation that functional SLDs for 
registration 
within the .us be defined and used. It should be possible, through natural 
wastage, for non-
international bodies to be gradually moved into national TLDs (we also endorse 
the proposal 
that domain name assignments should be renewed annually to minimise obsolete 
entries). 
Instead of having one smith.com, for the entire world to fight over, the use of 
geographical 
TLDs immediately expands this name-space, allowing legitimate users of "smith" 
all over the 
world to use the name independently of each other. It also allows each national 
registry to 
develop their national space in accordance with national trade-mark practices 
and traditions, 
further reducing the scope for disputes.

Registrars should indeed be involved as little as possible in trademark 
disputes,
 but this must 
be achieved by a more pro-active approach. The proposals for a 60-day period of 
grace before 
a SLD application is accepted, allowing representations from companies whose 
trademarks 
are infringed is an interesting idea, but I wonder how many companies would 
really be 
interested in taking a "random number" domain name for the duration of this 
period. Would 
all domain names be subject to this period of grace, or would this apply solely 
to commercial 
name-space? What would happen if a name were to be challenged after the 60 day 
period had 
expired? This system provides only for bodies who are already "net aware". If we 
truly want 
to promote sustainable development of the Internet, we must allow for those 
companies who 
might decide to go on line in ten years' time. If the 60 day limit applied, they 
might decide to 
go on-line, only to find that their legitimate and long-used trading name had 
already been 
registered by someone else, and that their chance to appeal had expired early in 
the previous 
decade. Nominet UK operates a system under which names are granted immediately 
they are 
accepted, but can if necessary be suspended at any time in case of legal 
challenge, or in other 
specific circumstances. This is how trademark law operates normally in the UK. 
This seems a 
more effective, pragmatic approach, especially given the situation that, out of 
40,000 or so 
Domain names in the Nominet UK Registry, only about 50 have been disputed, and 
the 
majority of these disputes quickly settled.

In the UK, allocation of the second-level domains .plc and .ltd is subject to 
proof by the 
applicant that they are a registered company. This provides protection to both 
companies and 
users, but unfortunately is as yet not popular due to the dominance of .co.uk 
and .com. A 
solution might be to draw upon both this, and the IAHC proposal that a .tm space 
should be 
created, and agree that registrars should allocate names within commercial 
name-space 
(which would be clearly separate from non-commercial space) only upon proof that 
the 
applicant owned the corresponding trademark (in which case there would be no 
requirement 
for searching or periods of grace).  As stated above, since national laws with 
regard to the 
classification of trademarks differ, it would be a matter for the national 
registry to develop 
their national space in accordance with national trade-mark practices and 
traditions.

However, to eliminate the possibility that this may discriminate unduly against 
small 
enterprises, who are less likely to have registered their names as trademarks, 
and to 
accommodate situations in which common law rights to names also exist (see Sally 
M Abel: 
"Trademark issues in cyberspace"), domain names not already registered as 
trademarks 
should be allocated on proof of commercial use. This scenario would require some 
searching 
on the part of the registrar. We understand from the UK Patent Office (the UK 
trade marks 
registry) that several search vehicles exist, allowing the identification of not 
only identical but 
also confusingly similar names. Either an additional fee would be charged for 
this service 
(which companies may like to weigh up against the fee for trade-mark 
registration - currently 
#225 in the UK), or it is possible that the revenue received from registering 
trade-marked 
domains, which would require very little expenditure on the part of the 
registrar, might be 
used to subsidise this. We would like to underline that, with names qualified in 
terms of both 
country and trade, the scope for duplication and dispute would be vastly 
reduced.
 However, 
in cases of legal dispute, existing procedures would still apply

Finally, we support the IAHC's proposals for requiring specified information in 
applications 
for SLDs, which will greatly reduce the scope for opportunistic "warehousing" of 
domains. 

[Ends]

Regards,

Elly Hardwick
Communications and Information Industries Directorate
Department of Trade and Industry
London
Tel: (+44) 171 215 1480
Fax: (+44) 171 215 1721











 












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