IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF PENNSYLVANIA

WORLDSPORT NETWORKS LIMITED,

Plaintiff,

CIVIL ACTION

NO. 99-CV-616

ARTINTERNET S.A. and

CEDRIC LOISON,

Defendants,

I. Introduction.

The Association for the Creation and Propagation of Internet Policies, better known by its working group the Domain Name Rights Coalition ("DNRC"), is a public interest group that represents the rights of individuals, small businesses and entrepreneurs. DNRC has been an integral part of the debates over domain names and trademark conflicts since 1996. DNRC representatives have been active participants in the meetings around the world to set the rules which will govern domain name and trademark conflicts, including at the White House, World Intellectual Property Organization in Geneva,  US Department of Commerce, US State Department and other forums. It is DNRC’s long-held position that domain names are the titles of website speech, and often used as an integral part of the speech itself.  

The Internet is a medium of communication that brings together the broadest array of speech: political, personal and commercial. When founders of the Domain Name Rights Coalition joined the Internet in the early 1980s, commercial speech was banned by its caretaker, the National Science Foundation. Research, educational, personal and political speech flourished in the worldwide communication between students and faculty at universities, defense contractors and a limited set of others.

The landscape of the Internet began to change in the early 1990s. The National Science Foundation began to allow commercial access providers to sell commercial Internet accounts to those without a military or university affiliation. Later with the advent of the World Wide Web, navigation was much easier. The rules barring commercial speech were relaxed and then eliminated.

The Internet is now the greatest medium of communication ever created. It carries political and personal speech, research and scientific information, and substantial commercial speech of many varieties. It is a medium of communication open to all — producers and consumers of information. The cost of creating and maintaining a website is so low that individuals have access to it, and Thomas Paine’s vision of personal printing presses has now been achieved through the diversity of personal, family and community websites being created. The cost of worldwide communication is so low that small businesses can now join their larger competitors in launching worldwide advertising campaigns, and outmaneuver their larger competitors by finding niche markets and catering to special groups.

Of course, this diversity of communication and convergence of speakers of all varieties creates many problems such as pornography and trademark infringement. To the world struggling to understand the Internet, it was this Circuit that captured its essence and protected its independence. The panel of judges here in the Eastern District of Pennsylvania in ACLU vs. Reno wrote: "The Internet is 'the most participatory marketplace of mass speech that this country and indeed the world has yet seen.'" 929 F. Supp. 824 (E.D. Pa 1996), aff’d, 521 U.S. 844 (1997).

Domain names have an unusual place on the Internet. At their core, they are technical, but in practice they are generally used as speech. The character strings of letters and numbers are mnemonic devices for the Internet Protocol addresses, the difficult to remember set of numbers which allow computers to identify each other and route communication over the Internet.

Domain names have evolved into a level of communication in their own right. They are the titles of the Internet, and a critical short-hand guide for finding speech and communication. Domain names often describe the content that can be found on a website, and help browsers to decide whether to take the time to stop, click and download a website. Thus, the domain name of the DNRC is DOMAIN-NAME.ORG, which Internet users would recognize generally as a domain name for an organization dealing with domain names, and specifically as the home of all the comments and speeches of DNRC’s officers.

The DNRC was founded in 1996 to fight against rules governing domain name and trademark disputes that favored large commercial players over all other users of domain names. The National Science Foundation prior to 1995 had a policy of registering domain names on a first-come, first-served basis. In 1995, however, its contractor Network Solution, Inc., adopted a Domain Name Dispute Policy ("Dispute Policy") which allowed it to suspend domain names on the filing of a complaint by the trademark owner that showed a) a registered trademark, b) a cease and desist letter to the domain name holder, and c) a broad statement that the domain name registration was causing harm to the trademark holder.

In this domain name complaint proceeding, there was no requirement that the trademark owner actually meet the substantive requirements of the Lanham Act and prove infringement or dilution. Specifically, there was no requirement that the trademark owner prove that the domain name was infringing, and that the domain name registrant’s use was "likely to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. Section 1114. Further, there was no requirement that the trademark owner prove that the domain name was diluting, and uses including non-commercial, comparative advertising and editorial (specifically excluded from the scope of the anti-dilution provisions of trademark law) are swept within the scope of the NSI Dispute Policy.

While the policy has helped catch some cybersquatters, it imposed a heavy burden on small businesses, entrepreneurs and individuals. Large companies, with trademarks over common dictionary words such as PONY and INTERCOM and names such as AVERY and TY, have claimed superior rights over the domain name registrants and worked to take domain names. Many succeeded because the NSI Dispute Policy suspends the domain name even without any proof of likelihood of confusion, deceit, mistake or commercial use.

We believe the Court's Order of April 27, 1999, not only supports NSI’s Domain Name Dispute Policy, but requires far more intervention from NSI and all future registrars, with far fewer protections for domain name registrants. The Order will engender much more aggressive action by trademark owners and result in a far more limited, less robust and less diverse use of domain names as Internet titles for Internet speech.

The Court’s April 27 Order bars NSI from registering to the Defendants "any words, names or terms" containing worldsport, worldsports, world-sport or world-sports. While DNRC is very concerned with cybersquatting and agrees that trademark infringement activity by domain name holders such as the Defendant must be addressed, we think the Court Order sets a dangerous precedent for the Internet.

The Court's Order expands the Lanham Act and other trademark protections from commercial into noncommercial speech. While the original offense of the Defendant was for commercial use of the Plaintiff’s mark, the Court’s response bars the Defendant from registering the four variations of worldsport for non-commercial, competitive and non-infringing speech. Thus, the Defendant would not be allowed to register political domain names, including:

or world-sport-is-sexist.org.

If the Defendant found that some content appearing on one of its website was copied by the Plaintiff, it would not be allowed to choose a descriptive editorial title for its website with a domain name such as

If the Defendant tried to create a competing sports association, it could not register:

DNRC knows of no precedent to bar such a broad array of non-commercial, political, editorial and comparative advertising speech based on a finding of trademark infringement. To the best of our knowledge, the Defendant retains its free speech rights under United States laws, even after being found guilty of infringement in a commercial use.

We ask this Court to take the less invasive approach — to allow the speech to flourish and to encourage companies like Worldsports to aggressively police their marks by using search facilities to patrol registrations in the WHOIS database (the database of domain name registrations in .Com, Org, and .Net). With one character string typed into the WHIOIS database run by Network Solutions, Inc., "Artinternet," Worldsport can monitor all domain name registrations of Artinternet. With a second character string, "Loison," Worldsport can monitor all domain name registrations that Loison, including Cedric, make into the .Com, .Org and .Net databases. The Universal Resource Locator of this powerful WHOIS search facility is See Exhibit 1.

With such powerful tools for companies to search for potential infringers, we do not understand why registrars should be asked to pre-screen registrations. Further, with such powerful incentives for trademark owners to seek broad protections for all use of their marks, including protections against legitimate criticism and competition, we do not understand why Courts -- who know how to evaluate true --> -- infringement and dilution -- should be replaced by registrars who --> -- do not.

DNRC is very concerned that other courts will follow the precedent set by this Court, should its order not be revised. Other trademark owners will ask that the software of a registrar be changed to provide them with notice whenever their string of characters is registered — be it XEROX or APPLE. Thus, registrars will be asked to stop the registration of strings which contain trademarks, even without proof of infringement or dilution in those exact domain names.

We envision a case where a pharmaceutical company such as Bayer gets an order requiring registrars to stop any registration of the "Bayer" string by a consumer group known for its opposition to Bayer policies and products. Faced with a real emergency such as manufacture of a bad batch of aspirin or the corruption of aspirin containers by an outsider party, this consumer group would not be allowed to register a clear and easily-remembered domain name such as BAYER-KILLS.ORG for its website with emergency public health information.

The domain name title is an important pointer, indicator and part of the website speech. The Court's Order will result in the loss of protected and valued speech by the Internet by limiting who may register a domain name and what they may register without an proof that the particular registration in question violates any Lanham Act provision. This type of prior restraint, we believe, will be misused by trademark owners anxious to silence opposing parties, limit adverse publicity, and diminish comparative advertising.

Over the last few years, commercial and technical groups have sought to impose greater obligations on registrars including NSI to create public notice and pre-screening procedures. These efforts have been rejected by the larger Internet community as resulting in much more harm than benefit. For example, a group called the International Adhoc Committee wanted to see domain names taken down as soon as they were challenged by a trademark holder; another group called the Council of Registrars wanted to create a public notice period prior to the registration of all domain names.

These proposals were rejected because they failed to provide adequate protection for the domain name registrant, particularly those using their domain names as titles for non-commercial websites, and they made the registrar into an Internet policeman rather than the performer of a technical function.

In its report issued on April 30, 1999, the World Intellectual Property Organization opposed the creation of a waiting period prior to the registration of domain names because it found that the costs outweigh the benefits:

[emphasis added]. The Management of Internet Names and Addresses: Intellectual Property Issues, Final Report of the WIPO Internet Domain Name Process, April 30, 1999, page 28.

It is the speed of registration of the domain names — a speed which NSI has reduced from weeks to hours — that allows earthquake survivors to post a website of their condition for family and friends worldwide to check and monitor, that allows parents to announce the newly-found dangers of a toy or medicine, or companies to launch a new product.

It is also the absence of bars, limits, pre-screens and public notice periods that allows domain names to work so well as titles for all the robust and diverse non-commercial and commercial speech of the Internet. In keeping with the political independent of this country, and the entrepreneurial spirit, when people have new ideas, they create their content on new websites, and title them with new domain names.

9. Conclusion.

The Court’s April 27 Order means the entry of more than a few mere lines of code. It means the denial of domain name registrations to the Defendant when those registrations may truly fall within the traditional limits, defenses and exceptions to trademark law. The denial gives veto power to a commercial entity over non-commercial speech, including personal and political speech.

DNRC respectfully submits that this action is a dramatic, unprecedented, and unwarranted change in how we use the Internet and register our domain name titles. In light of the ease of policing these marks, including the ability to enter a word or two to search the WHOIS database on an open and public website, this change in Internet practice and diminishment of speech rights seems overbroad and unwarranted.

In ACLU v. Reno, the Panel of judges here in the Eastern District of Pennsylvania Panel ("Panel") saw the problem of pornography on the Internet, but also understood the impact that the Communications Decency Act would have on the robust and diverse speech of the Internet. The Panel balanced the danger of pornography against the risk to free speech and chose speech (knowing some porn would remain accessible online until better filtering technology became available).

We ask this Court to make a similar determination. Domain names are titles for that robust and diverse speech of the Internet that the Panel so valued. We ask this Court to balance the danger to speech against the harm from registration of those domain names (given the policing tools available) and choose free speech for registrants and the domain names they register.

For the foregoing reasons, we ask the Court to modify its Order so that it does not require NSI to pre-screen domain name registrants and does not limit the domain names the Defendant or any other party may register absent proof before a Court of infringement or dilution.

Respectfully submitted,

Kathryn A. Kleiman

General Counsel,

TCPIP/Domain Name Rights Coalition

A-TCPIP/Domain Name Rights Coalition

601 Madison Street, Suite 200

Alexandria, Virginia 22313-5876

Dated: July 6, 1999