Domain Name Rights Coalition
Kathryn A. Kleiman, Esq., President
Michael T. Doughney, Vice President
Harold Feld, Esq., Secretary
Mikki Barry, Esq., Director
P.O. Box 25876
Alexandria, VA 22313-5876
http://www.domain-name.org
Introduction:
The Domain Name Rights Coalition (DNRC) submits its comments in response to
the Second Revised Substantive Guidelines Concerning Administrative Domain
Name Challenge Panels (Guidelines, ACPs) presented on October 2, 1997. DNRC
is a public interest group representing the interests of individuals, small
businesses and entrepreneurs, Internet Service Providers and nonprofit
organizations. DNRC has a long history of participation in domain name and
Internet governance proceedings, including attending the Consultative Meeting
at the World Intellectual Property Organization in Geneva, September 1-2,
1997, submitting extensive comments in response to the U.S. Department of
Commerce Notice of Inquiry on the Registration and Administration of Domain
Names, August 1997, submitting comments in response to the Draft Report of the
International Ad Hoc Committee, January 1997, and serving on the U.S. State
Department Working Group on Domain Names in 1996. Copies of the Comments to
the Department of Commerce and IAHC as well as additional material regarding
DNRC can be found on its website at www.domain-name.org.
In the comments below, DNRC will discuss the following concerns with the
Substantive Guidelines:
1) The rulemaking proceeding of the iPOC does not have the force of law and
does not include a decision-making body representative of the Internet
community.
2) Administrative Challenge Panels (ACPs) were an idea sprung full-blown on
the Internet community in the Final Report of the IAHC without comment or
consensus. The entire concept of the appropriateness of ACPs must be
discussed before considering implementation details.
3) The Substantive Guidelines equate domain names with trademarks despite the
fact that such an equation has been judged by courts and common sense to go
against principles of free speech, open communication and trademark law.
4) The World Intellectual Property Organization, as a party vested with an
interest in protecting and expanding intellectual property law, is not a
appropriate neutral party to administer even the procedural aspects of an ACP
concept, should the Internet community decide in open discussion that ACPs are
an appropriate structure to add to Internet governance.
5) Future Substantive Guideline versions must include a statement of
principles protecting free speech, open communication, and the rights of all
parties, individual and corporate, commercial and noncommercial, to use basic
dictionary words and to choose domain names from their imagination and
ingenuity subject only to the narrow confines of trademark law and likelihood
of confusion based on website content, not mere registration of a name.
Discussion:
I. The rulemaking proceeding of the iPOC does not have the force of law and
does not include a decision-making body representative of the Internet
community.
While the comment periods and website for the iPOC and CORE are becoming
increasingly official looking and sounding, the fact remains that these are
voluntary and self-selected organizations with no official power or public
interest mandate. The IAHC was a private committee assembled by the Internet
Society from a subset of participants from the 1996 U.S. State Department
Working Group on Domain Names. It include staff members from the World
Intellectual Property Organization (WIPO) and the International
Telecommunications Union (ITU) (who stated that their role on the IAHC was as
private individuals, not formal represenatives of WIPO and ITU).
As a preface to its comments to the IAHC in January 1997 (Draft Report), DNRC
stated that it would participate in the discussion of IAHC for the purpose of
the debate and diversity, but understood that the decisions reached had no
official authority behind them. The same holds true with these comments. The
iPOC and CORE remain organizations unknown to and unrepresentative of the
millions of individuals, organizations and companies that now comprise the
Internet. Further, it is a group that is moving forward too quickly to solve
problems that many in the Internet community feel do not merit hurried action.
As in past comments to this organization, DNRC again urges iPOC and CORE to
suspend all of its proceedings until issuance of the upcoming report from the
U.S. Department of Commerce. The Department of Commerce, in response to its
August Notice of Inquiry, attracted the attention and participation of
thousands of individuals, organizations and individuals. Its report will have
a public consensus far broader than that of iPOC/CORE/WIPO and will provide
valuable guidance from the larger Internet community.
II. Administrative Challenge Panels (ACPs) were an idea sprung full-blown on
the Internet community in the Final Report of the IAHC without comment or
consensus. The entire concept of the appropriateness of ACPs must be discussed
before considering implementation details.
The history of ACPs is important because it shows that ACPs are not an idea
with any claim to acceptance or consensus from the Internet community. In its
Draft Report, IAHC made no mention of ACPs. Instead, IAHC proposed a 60 day
public notice period prior to the registration of all new domain names was put
forth. This proposal by IAHC was lifted in full form from the International
Trademark Association, an organization which had a member sitting on the IAHC
[DNRC notes that no domain name organization was represented on the IAHC.]
The proposal was rejected clearly and unequivocally by the Internet community
for many reasons, including the feeling that Internet sites should be
available as quickly as technically feasible so that political, social, and
commercial speech was not slowed or diminished.
Following the Draft report, the Final Report of the IAHC was delivered. It
contained within it an entirely new proposal imposing an entirely new legal
structure on the Internet for governing domain name/trademark disputes called
administrative challenge panels. In any formal governmental setting, the ACP
proposal would have been circulated as a new proposal for public comment and
review (analogous to a Further Notice of Proposed Rulemaking at the U.S.
Federal Communication Commission). With appropriate and necessary public
comment, DNRC is of the firm opinion that a more reasonable and less radical
compromise position than the ACPs would have been developed by the Internet
community.
Before going forward with editing of the details of ACPs, DNRC submits that
iPOC/CORE/IAHC have an ethical obligation to hold a comment period to review
and revisit the ACP concept and seek consensus and approval. DNRC’s
representative at the September 1-2, 1997, meeting on the ACPs noted that,
although WIPO wanted the attendees to accept the ACPs as an established fact,
the attendees by group consensus changed the agenda and, on their own
initiative, reviewed the entire issue of ACPs. Attendees displayed a wide
variety of feelings regarding the need and value of ACPs, and there was no
consensus in the room regarding the need for ACPs at the conclusion of this
insightful discussion.
III. The Substantive Guidelines equate domain names with trademarks despite
the fact that such an equation has been judged by courts and common sense to
go against principles of free speech, open communication and trademark law.
Despite numerous improvements to the language of the Substantive Guidelines,
the fact remains that the premise of the ACPs equates registration of a domain
name with potential trademark infringement. The Substantive Guidelines allow
a pro-active exclusion of a trademarked word/words from all gTLDs without any
showing that the trademark owner is using the word/words in the categories of
speech, goods or services of the gTLD, and without any showing that the
trademark is a strong or arbitrary one, or that the word or words is not one
that could not be used by many parties in non-infringing manners. Basically,
McDonald’s Restaurant will be able to exclude all other legitimate users (now
and in the future) of the word McDonalds from registering the domain name in
categories of gTLDs having nothing to do with restaurants or hamburgers.
Further, there are no principles within the Substantive Guidelines that
unequivocally require a proof of likelihood of confusion based on the use of
the domain name with the trademark owners use of the trademark term. Such a
proof of likelihood of confusion and likelihood of success on the merits would
be required in a U.S. court prior to the issuance of an injunction and seizure
of a domain name in U.S. court prior to trial. The burden of proof is far
lower under the Substantive Guidelines, and it was stated by a WIPO staff
member during the September 1-2 meeting that any domain name owner choosing a
domain name using a word in common with any existing international mark
(including generic, descriptive or common dictionary words) was creating the
confusion by virtue of registration.
Fortunately, this broad view of trademark law and narrow view of free speech
and open communication has been rejected by courts and by trademark law. On
November 17, 1997, The U.S. District Court for the Central District of
California, in Lockheed Martin Corporation vs. Network Solutions, Inc., Case
No. CV 96-7438, stated that “When a domain name is used only to indicate an
address on the Internet, the domain name is not functioning as a trademark.
Section II, B. It continued in the same section stating that “... something
more than the registration of the name is required before the use of a domain
name is infringing.” Further, the court found that not even unfair
competition was involved under U.S. law for registration and registration
alone. Citing, Juno Online Servs. v Juno Lighting, ___ F. Supp. ___, 1997 WL
613021 (N.D. Ill. Sept. 29, 1997), the California Court agreed that
“registration of a trademark as a domain name does not constitute use of the
trademark on the Internet in connection with goods or services, and therefore
was not prohibited by action 43(a).” Section II, C. Further, the Court
urged us away from the expansion of trademark rights in cyberspace and reminds
the cyberspace community of basic trademark principles: “.. the property
right protected by trademark law is narrower than that protected by copyright
law.... Trademark law, on the other hand, tolerates a broad range of non-
infringing uses of words that are identical or similar to trademarks.”
Section II, E (1).
The Assistant General Counsel of DNRC, in an article in the Legal Times
foreshadowing the California decision, Harold Feld warned of the danger of
equating domain names with trademarks: “There is lots of domain space to go
around, and current intellectual property law already works quite well to
protect consumers and businesses online. The danger lies not in the shortage
of domain names, but in the forced equation of address with the content. We
must guard against warping the fabric of trademark law, lest it become an
anti-competitive blanket, suffocating the rich and robust growth of the
Internet.” Legal Times, November 10, 1997.
Any future ACP Guidelines must break the equation of domain name registration
with trademark infringement. This is an equation fundamental to the policy
underlying ACPs, as currently envisioned, and a good reason for finding better
and less burdensome alternatives for the Internet.
IV. The World Intellectual Property Organization, as a party vested with an
interest in protecting and expanding intellectual property law, is not a
appropriate neutral party to administer even the procedural aspects of an ACP
concept, should the Internet community decide in open discussion that ACPs are
an appropriate structure to add to Internet governance.
WIPO has certainly played a pivotal role in the development of discussion on
ACPs and deserve commendation for its efforts. However, as DNRC stated in its
Comments to the Department of Commerce, the charter of WIPO involves the
protection and expansion of intellectual property rights and accordingly, the
organization is an appropriate advocate, but an inappropriate decision maker.
But the question of domain name disputes involves not only trademark law, but
“the limits of trademark law and the continuing right of all Internet users to
use ordinary, dictionary words to form the names of new companies, to name
community organizations, and ultimately to create new Internet addresses for
all purposes.” DNRC Comments to Dept. of Commerce, page 6.
WIPO staff responds to the question of fairness that WIPO itself is not
responsible for decisions, but only offers names of leaders who can serve as
arbitrators and mediators. At the September 1-2 meeting, WIPO stated that a
large list of such names has been prepared. DNRC notes that, although it was
the only domain name organization to attend the WIPO meeting in Geneva, it has
not once been contacted for names of people to add to the list. Rather, it is
a logical conclusion that the list assembled is one of leading intellectual
property experts who know the law of intellectual property but are not judges
of free speech rights versus intellectual property rights. There is no reason
to believe that these individuals have any commitment to the goals of
preserving and expanding free speech rights on the Internet.
Furthermore, WIPO has been somewhat misleading in its representation of the
WIPO Arbitration and Mediation Center to the Internet community. Perhaps it
is well known in the international intellectual property community but it is
not stated on the WIPO website or in any Internet material of WIPO that its
Arbitration and Mediation Center has never once conducted an arbitration or
mediation. According to the Senior Legal Officer, the Center has “never
formally administered arbitration under our own rules.” Telephone
conversation with DNRC, August 1, 1997.
The Center was established three years ago to arbitrate disputes between
international commercial players and expects to focus on issues of
international software licensing, patent licensing, and some of the
complications of international commercial joint ventures. Those commercial
parties who want the arbitration and mediation services of WIPO will include
such a provision within their contracts. Nothing in the Center’s history
indicates that it was ever envisioned to play a role balancing the
communication needs of individuals and small businesses against the
intellectual property needs of corporations. WIPO has no special claim to
expertise.
Should the Internet community determine that arbitration and mediation of
domain name/trademark issues are appropriate, a neutral ground should be
chosen. Further, rather than the small print OPT-OUT option of the domain
name registration (an option few applicants will understand), those applicants
who agree to give up the protections of their local courts and laws should be
allowed to knowledgeably OPT-IN on the application.
V. Future Substantive Guideline versions must include a statement of
principles protecting free speech, open communication, and the rights of all
parties, individual and corporate, commercial and noncommercial, to use basic
dictionary words and to choose domain names from their imagination and
ingenuity subject only to the narrow confines of trademark law and likelihood
of confusion based on website content, not mere registration of a name.
As discussion in its comments to the Department of Commerce, any arbitration
system must affirmatively and expressly set out protections for free speech
and open communication as well as intellectual proeprty protections. DNRC
strongly recommends that such principles include:
- an explicit requirement of proof regarding likelihood of confusion based on
use must be shown before an injunction, suspicion, revocation or forcibly
assignment is ordered. Such confusion must be shown from an analysis of the
use of the domain name in the context of its personal, political,
organizational or business purposes;
- an explicit requirement that a much higher showing must be made when a
challenger seeks rights in a mark which is not a coined or fanciful term. If
the trademark owner is using a word which can be construed as a generic or
descriptive word in any context, then the burden of proof must rest on the
trademark owner to show that the domain name owner is using such a word(s) in
the narrow and limited category of goods or services which the trademark owner
can rightly claim that mark under the laws of its own country.
- an explicit requirement that the domain name owner be reached and given time
to respond prior to any action taken place. A 48 hour notice period could
start on a Friday night and commence on a Sunday night. Many domain name
owners likely to face these challenges will be small businesses, organizations
and political groups staffed by volunteers, individuals with families.
Personal, professional and religious obligations may well take these
individuals from their computers for a short period of time such as 3-4 days.
Unlike the large companies who will be challenging them, companies with
around-the-clock operations and lawyers paid to operate around the clock,
domain name owners will not have the resources for continuous monitoring of
their email systems and must not be penalized.
The domain name controversy is not analogous to the U.S. Temporary
Restraining Order which allows a right to be revoked in an emergency even if
the other party cannot be reached. Domain name owners are entitled to a
minimum of 7 business days to respond to any queries and prior to any action
against their domains.
- express guidance regarding “spontaneous offers” must be given. Such a
revision was proposed by attendees including the ITU and DNRC at the September
Consultative Meeting but not addressed in these Revised Guidelines. From the
Guidelines, arbitrators and mediators are left with the impression that offers
to sell domain names are a priori evidence of bad faith. Yet, it is a common
practice for innocent parties to offer to sell their rights to a trademark
when faced by a much larger company. As Microsoft seeks to stop people from
using “Windows” or Sun restricts coffee stands from using “Java,” many users
with defensible rights to their names seek instead a fast and quiet exit via
sale of their rights. This is a completely appropriate and legal trademark
strategy, and one that does not imply guilt of any kind.
Accordingly, Section 26’s reference to spontaneous offer to sell or rent
must be stricken. Should the trademark owner have some evidence of “piracy,”
it is welcome to bring the evidence forward in its own way. Similarly, should
the domain name owner have evidence of corporate abuse and overreaching of
trademarks, she/he may bring that evidence forward as well. No further
direction is needed in the Guidelines.
VI. Conclusion
The Second Revised Guidelines have introduced substantial positive changes to
the guidelines of the ACP. These changes for the first time acknowledge the
rights and interests of domain name owners. For the first time, the Revised
Guidelines do not create the presumption that all domain name owners are
pirates until and unless they can prove otherwise. These corrections are long
overdue and DNRC congratulates IPOC on making them.
Nevertheless, the ACP guidelines remain an vehicle designed to make
electronic commerce supreme over electronic communication on the Internet, and
to permanently place intellectual property rights over free speech rights.
Specifically, the Guidelines continue to ignore a fundamental principle of
natural law, British/US common law and statutory law: that basic words are
part of the public domain. We each have a right to use the words of our
language, and all languages, to communicate our personal, political and
professional speech. Trademark law creates a narrow exception when it allows
a company or individual, engaged in commerce, to exclude others from using a
word or term in a confusing manner in another commercial enterprise.
Trademarks are rejected every day in the U.S. and other countries because
businesses seek to register the basic words of their trade (called generic
terms in the U.S. system), such as milk, computer, apple or car. Trademarks
are also rejected as being too descriptive or for not being used in commerce.
The IAHC Final Report, the ACP rules, and the IPOC literature fail to
acknowledge the basic fact that intellectual property and particularly
trademark law was never intended to remove entire words or phrases from the
English dictionary or the dictionary of any language nor to bar the use of
basic words to individuals, organizations and businesses.
Further, the ACP guidelines allow the World Intellectual Property
Organization, a party with a clear interest in the outcome of these disputes,
to preside over the debate, allow individuals with vested interest in
intellectual property to preside over hearings, set up an unbalanced and
heavily weighted set of factors which will lead to revocation of domain names,
and force domain name owners to relinquish protections which they will not
understand or appreciate.
For more information on DNRC positions, please see our website at
http://www.domain-name.org.