Domain Name Rights Coalition
P.O. Box 25876
Alexandria, VA 22313-5876
http://www.domain-name.org
December 22, 1997

Kathryn A. Kleiman, Esq., General Counsel
Mikki Barry, Esq., President
Harold Feld, Esq., Assistant General Counsel
Michael T. Doughney, Vice President

Introduction:
On December 5, 1997, A-TCPIP/ Domain Name Rights Coalition ("DNRC")
submitted its comments and concerns regarding the Second Revised
Substantive Guidelines Concerning Administrative Domain Name Challenge
Panels ("ACPs") to the Policy Oversight Committee ("Revised Guidelines").
Because DNRC feels that ACPs should raise tremendous concern for the
Internet community as the first legal structure to be imposed on the
Internet, DNRC is now issuing these comments to the press, to other
public interest organizations, and to the public, for the purpose of
generating discussion and debate. Please feel free to contact the
officers and directors of DNRC with your concerns. Our website can be
found at http://www.domain-name.org. We invite you to join us in
opposing this new threat to open communication, free speech, and
entrepreneurial development on the Internet.

DNRC is a public interest group representing the interests of
individuals, small businesses and entrepreneurs, Internet Service
Providers and nonprofit organizations. DNRC founders include Internet
pioneers and attorneys with experience in First Amendment protections
and the scope and limits of intellectual property law. DNRC's long
involvement with Internet policy and domain name matters includes:
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
extensive comments in response to the Draft Report of the International
Ad Hoc Committee, January 1997; serving on the U.S. State Department
Working Group on Domain Names in 1996; and speaking on behalf of small
businesses, entrepreneurs and individuals at Internet policy conferences
and meetings. Copies of comments, press releases and other DNRC work can
be found on the DNRC website at www.domain-name.org.

Summary of Concerns Regarding the Second Revised Substantive Guidelines
Concerning Administrative Domain Name Challenge Panels

Since their introduction, DNRC has argued that Administrative Challenge
Panels ("ACPs") do not have the understanding or support of the Internet
Community, and that too little thought has been given to the long-term
implications of this first legal structure to be imposed on the Internet.
DNRC's concerns fall into five categories:

The rulemaking proceedings of the iPOC do not have the force of law and
do not include a decision-making body representative of the Internet
community. Administrative Challenge Panels 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 Substantive Guidelines equate domain names with trademarks despite
the fact that such an equation has been judged by courts and common sense
as defying principles of free speech, open communication and legal limits
of trademark law. The World Intellectual Property Organization (WIPO), as
a party with a vested interest in protecting and expanding intellectual
property law, is not an 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 new legal structure to
impose on the Internet). Any future ACP Guidelines must include a statement
of principles protecting and expanding free speech and open communication
on the Internet.

Detailed Discussion of DNRC Concerns with Administrative Challenge Panels:

I. The Rulemaking Proceedings of the iPOC Do Not Have the Force of Law
and Do 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 proceedings are held by a voluntary and self-selected
organization 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 includes 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 representatives of WIPO and ITU.

As a preface to its comments to the Draft Report of the IAHC in January
1997, DNRC stated that it would participate in the discussion of IAHC for
the purpose of the debate and diversity, but DNRC argued that the decisions
reached had no official authority behind them. The same holds true with
the organizations which solicit and receive their comments. The IPOC,
CORE, ITU and WIPO have no official jurisdiction over the Internet, are not
representative of the Internet community, and their comment periods have
no force of law or authority. Despite a year of work, these organizations
remain largely unknown to and unrepresentative of the millions of
individuals, organizations and companies that now operate and use the
Internet.

Furthermore, it is well known among the small group that follows
Internet policy affairs that IPOC, CORE, ITU and WIPO have argued that
the "Internet is broken" and that we must move forward very quickly, and
without public education and information, to make policy for the Internet.
DNRC joins other groups who have argued that moving too quickly to solve
Internet problems -- so quickly that the Internet community is largely
unaware of the processes taking place -- will result in solutions which
are undemocratic and favor only the world's largest companies who have
the money to pay attorneys to travel to Geneva with little notice.

As in past comments to this group, DNRC again urges IPOC, CORE, ITU and
WIPO 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/ITU/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 the WIPO Administrative Challenge Panels shows that ACPs
do not have any claim to the acceptance or consensus of 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. 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 repeats its widely-cited objection to the IAHC,
a private committee of the private Internet Society organization in
Herndon, Virginia, that no organization representing domain name owners
sat on the IAHC, and also no attorneys with expertise in free speech, First
amendment, and the limits of intellectual property, sat on the IAHC to
counterbalance the attorneys of the International Trademark Association,
the World Intellectual Property Organization, and David Maher, the trademark
attorney for McDonald's Restaurant.)

A. Administrative Challenge Panels are Not a Compromise Position

The 60-day public notice period was rejected clearly and unequivocally
by the Internet community for many reasons. The chief reason was a strong
concern among the Internet community that domain names are pointers to
Internet locations, and these pointers must be available as quickly as
technically feasible so that political, social, and commercial Internet
speech and information would not be slowed or diminished.

Following the Draft report, the Final Report of the IAHC was released.
It contained an entirely new proposal called "administrative challenge
panels" which imposed an entirely new legal structure on the Internet for
governing domain name/trademark disputes. The proposal was drafted by the
IAHC's intellectual property attorneys behind closed doors and released in
full form upon completion. In any open and democratic government forum,
the release of such a radically new proposal would require a further round
of public notice and comment (analogous to a Further Notice of Proposed
Rulemaking at the U.S. Federal Communications Commission). However, the
Internet community was not allowed to review and consider this radically
new and potentially dangerous concept. Instead, the Internet was told
(with condescension) that the ACPs -- and the entirely new legal structure
they impose -- were the only reasonable compromise and alternative for
the Internet to move forward with domain names. DNRC reads these speeches
as meaning that the ACPs were a protection a step down from the 60-day
public notice period, and one that the world's largest trademark owners
would accept if they could not tie up all domain names for 60 days.

DNRC submits now, as it has argued since the IAHC Final Report in
January 1997, that the ACP structure is inappropriate for the vast majority
of Internet domain names and Internet speech. For the reasons discussed
below, it is clear that the ACPs are a dangerous new precedent which impose
upon the Internet a new legal structure whose implications have barely
been considered. As a matter of procedure and democratic form, the ACP
concept must be given an appropriate and full public comment period. DNRC
is of the firm opinion that a more reasonable and less radical "compromise
position" can be developed by the Internet community.

B. The ACP Concept Must be Reviewed and Accepted by the Internet
Community Before Moving Forward with the Implementation Details which
are the Subject of this Comment Period.

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
then President, Kathryn Kleiman, attended the September 1-2, 1997, meeting
in Geneva at the World Intellectual Property Organization on ACPs. She
noted that, although WIPO wanted the attendees to accept ACPs as an
established fact and move forward with a discussion of procedural details,
the Attendees refused to follow the planned agenda. Instead, by group
consensus, the Attendees changed the agenda and on their own initiative
reviewed the basic concept of ACPs and set out their questions regarding
the need for and the impact of ACPs.

Attendees, including leading member countries and nongovernmental
organizations from around the world, displayed strong doubts regarding
the need for and value of ACPs. At the end of the insightful discussion
that took place, there was great concern about the ACP concept and no clear
consensus that ACPs were the right direction in which to move.

III. The Substantive Guidelines Equate Domain Names with Trademarks
Despite the Fact that Such an Equation has been Judged by Courts and Common
Sense as Defying Principles of Free Speech, Open Communication and the
Legal Limits of Trademark Law.

A. The ACP Revised Guidelines Violate Trademark Laws Worldwide by
Giving Almost Absolute Control Over Words to Large Trademark Owners and
Depriving the Rest of the Internet Community of the Right to Use Common,
Ordinary Dictionary Words.

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. For
example, the Revised Guidelines allow a large trademark owner to proactively
exclude a trademarked word or term from all Top Level Domain Names --
regardless of whether the trademark owner's use of the word falls within
the categories of goods, services or content of the particular top level
domain. Accordingly, a person named Jim McDonald will never be able to
have a home page and the many people worldwide of the McDonald clan will
never be able to promote their small businesses and enterprises of all
sizes -- even if these enterprises have no association and create no
confusion with the worldwide hamburger chain.

Further, the proactive exclusion applies regardless of whether the
trademark is a strong and arbitrary mark or a weak, descriptive, and
frequently-used term. U.S. trademark law and the trademark law of other
countries provides that "coined or fanciful terms" such as Exxon or
Haagen Dazs are entitled to strong protection. However, words that are
common to an industry and descriptive of basic goods or services, such as
Apple, Car or Computer, often cannot be registered as a trademark at all.
If they are registered, the registrant often must disclaim the descriptive
word so that all others may continue to use it to describe their goods and
services, and the word will often be part of dozens or hundreds of
registrations. Further, those using these words in noncommercial speech
have free and open access to them. Under trademark law, there is no
exclusive right to hoard or deny access to basic, ordinary dictionary
words -- language belongs to the public.

B. The Revised ACP Guidelines Defy Trademark Law by Giving Large
Trademark Owners the Right to a Preliminary Injunction and the Removal
of A Domain Name Used for Personal, Political and Commercial Speech Without
Any Showing of Likelihood of Confusion.

There are no principles within the Substantive Guidelines that require
the trademark owner to show that the domain name is likely to cause
confusion. Nevertheless, the domain name can be put on hold. In the US,
and courts of other countries, proof of likelihood of confusion and
likelihood of success on the merits are required prior to the issuance
of an injunction and seizure of a mark from another party.

Since the trademark owner must merely prove that the domain name uses
the same word as the trademark, loss of a domain name will result even when
the domain name is a generic, descriptive or common dictionary words.
Thus, under the ACP system, dictionary words are reserved for the largest
companies, not for all small businesses, entrepreneurs and individuals to
use. No legislature in the world ever intended such a result from its
trademark laws.

C. U.S. Courts Forcefully Reject Any Equating of Mere Domain Name
Registration with Trademark Confusion.

Al Tramposch, the WIPO Staff member who served on the IAHC and handled
much of the ACP development, and Lynn Beresford of the U.S. Patent and
Trademark Office, both stated at the WIPO meeting on September 1 and 2,
that any domain name owner who chooses a domain name that looks like a
trademark was guilty of creating confusion just by registering the domain
name (regardless of whether the name is a basic surname, or a common or
descriptive word).

Their broad view of trademark law and narrow concern for free speech and
open communication has been forcefully rejected by courts as an improper
interpretation of 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.

Finally, the California Court urged the Internet away from undue
expansion of trademark rights in cyberspace and reminded the Internet and
trademark communities of basic trademark law and limits: ".. 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).

Assistant General Counsel of DNRC, Harold Feld, in his recent article
in the Legal Times, foreshadowed the California decision and 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.

IV. The World Intellectual Property Organization, as a Party with a
Vested Interest in Protecting and Expanding Intellectual Property Law, is
Not an 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 New Legal Structure to Impose on the Internet).

A. ACP Arbitrators have No Commitment to Free Speech and Open
Communication

WIPO has certainly played a pivotal role in the development of discussion
on ACPs and deserves 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.
DNRC Comments to Dept. of Commerce, page 6. Accordingly, WIPO (like the
U.S. PTO) is an appropriate advocate, but an inappropriate decision maker,
on issues that balance the rights of trademark owners versus those of all
other speakers on the Internet.

At the September 1 and 2 Meeting, WIPO staff responded to the question
of basic fairness of WIPO being the ACP coordinator by stating that WIPO
would not be responsible for the actual decisions of the ACPs, but only
offer names of people to be arbitrators and mediators. At the September
Meeting, WIPO announced that a long list of such names had 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 appropriately trained or prepared
to balance the rights of open communication and free speech against
intellectual property rights. DNRC further notes that no international
law of trademark or open communication exists to guide them in this decision.
There is no reason to believe that these individuals have any commitment
to the goals of preserving and expanding free speech rights and open
communication on the Internet. There is ample reason to believe that these
individuals will serve the WIPO goal of expanding international
intellectual property rights.

B. WIPO has Misled the Internet Community and Does Not have Experience
As a Arbitrator

Furthermore, WIPO has been 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
neither stated on the WIPO website nor 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 only 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 which it can apply to the Internet conflicts.

In addition, the International Telecommunications Union has no claim
to expertise in arbitration or mediation and would not be an appropriate
forum to administer an ACP-type body, should the Internet community
determine one is necessary.

C. Neutral Ground Must Be Chosen for Any Conflict Resolution Forum and
the Choice of Alternative Dispute Resolution Must be a Knowing One.

Should the Internet community determine that arbitration and mediation
of domain name/trademark issues are appropriate, a neutral forum must 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. Any Future ACP Guidelines Must Include a Statement of Principles
Protecting and Expanding Free Speech and Open Communication on the Internet.

As DNRC discussed extensively in Comments to the Department of Commerce,
any arbitration or mediation system must affirmatively and expressly set
out protections for free speech and open communication as well as
intellectual property protections.

DNRC strongly recommends that such principles include:

- a principle that all parties (individual and corporate, commercial
and noncommercial) have the right to use basic dictionary words and to
choose domain names based only their imagination, ingenuity, and desire to
provide content, services and goods on the Internet.

- an explicit requirement of proof regarding likelihood of
confusion based on use before an injunction, suspicion, revocation or
forcible 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 in
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 end on a Sunday night.
Many domain name owners likely to face these challenges will be small
businesses, organizations and political groups staffed by volunteers, and
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 must not be
penalized for not having the resources to continuously monitor their email
systems.

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 a fast and quiet exit via sale of their rights, rather than
fight a foe with comparatively unlimited resources. This defense 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. This removal
of the spontaneous offer language was presented by parties, including the
ITU, at the September 1 and 2 Meeting.

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. Also 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, but the changes are not enough and come too late in the process to
repair the fundamental errors and imbalances of the ACP Guidelines.

The ACP guidelines remain a 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 dictionaries 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.

The entire concept of ACPs must be introduced to the Internet community
and debated anew. Prior to imposing this first new legal structure on the
Internet, there must be more knowledge, information, education and
consensus. The ACP rules as they stand, both procedural and substantive
rules, will compromise the integrity of the Internet and the free speech
and open communication rights of Internet speakers.

VII. For More Information on the Domain Name Rights Coalition

For more information on DNRC positions, please see our website at
http://www.domain-name.org.