INTA Policy Statement

[mheltzer@inta.org]

International Trademark Association
1133 Avenue of the Americas
New York, NY 10036
____________________

The Internet Subcommittee of the International Trademark Association (INTA)
respectfully submits this policy statement for posting on the IFWP Web site
and/or any listserves.  It is intended to educate the public about the value of
trademarks in cyberspace and to clarify the position of trademark owners with
respect to the on-going debate over the future of the DNS.

________________________________________________________________________

HARMONIZING DOMAIN NAMES AND BRAND PROTECTION 
INTA'S PERSPECTIVE  

    To argue that domain names are no more than mere computer addresses is to
belittle the importance of the Internet.  Domain names are the street and house
signs on the superhighway and the awning on the shop front as well.  The
services provided at yahoo.com, excite.com and aol.com have made well-known
trademarks of YAHOO, EXCITE and AOL.  Simultaneously, goods and services offered
under the most famous trademarks in the world, such as MICROSOFT, SONY and
DISNEY, can be found at microsoft.com, sony.com and disney.com.

    On the Internet, location becomes brand and brand becomes location.

    The ranks of trademark owners are swelling due to the explosive growth of
small-businesses on the Internet (approximately 2.5 million domain names
registered in the .com domain and counting).  No business is too small that
trademark law will not protect its rights in its domain name.  Everyone taking
part in the monumental task of building the Internet into the backbone of the
world economy has a vested interest in a stable domain name system.  Part of
that stability derives from brand protection, but brand protection is endangered
by certain proposals for reorganizing the domain name system ("DNS").

    Judging from some of the more heated discussion occurring at various
meetings and in the Internet discussion groups on this topic, there appears to
be some misunderstanding regarding INTA's position on the DNS which
unnecessarily creates a perception of a trademark vs. domain name owner
conflict.  This perceived conflict detracts from the goal of creating a
non-governmental, stable DNS.

    At this critical juncture, we think it necessary to summarize our
recommendations regarding the future DNS.


The Formation of New IANA

    The U.S. Government has developed a plan (summarized in its "White Paper")
for transferring control of the domain name assignment system ("DNS") from the
federal government to the private sector.  INTA supports the privatization of
the Internet and the promotion of international participation in the DNS. 

    In response to this effort, various "stakeholders" of the Internet are
participating in a series of gatherings under the auspices of an ad hoc
coalition named IFWP - the International Forum for the White Paper.   INTA has
been a participant in all IFWP meetings.

    The purpose of the IFWP meetings is to form a New IANA - the New Internet
Assigned Numbers Authority - by September 30, the expiration date of Network
Solutions Inc.'s contract to administer the DNS in its present form.  While
"assigned numbers" sounds arcane, New IANA's responsibilities as they pertain to
the allocation of domain names have great impact on the future of Internet and
in particular, on e-commerce on the Internet.

    The four basic areas in which we make recommendations regarding New IANA
are:

    1.  Whether to Add Generic Top Level Domains;
    2.  Minimum Standards for Reserving a Domain Name;
    3.  Dispute Resolution; and
    4.  Broad-based Representative Participation in New IANA.

    These recommendations grow out of INTA's participation in the Internet Ad
Hoc Committee, an early attempt to lay the groundwork for a permanent DNS.  Our
position has been most recently set forth at length in the testimony of Ann
Chasser before the U.S. House Subcommittee on Telecommunications, Trade and
Consumer Protection (available at http://www.inta.org/telcm.htm).

    The safeguards we propose benefit all those building the Internet - brand
protection is not a big vs. small or trademark vs. domain name issue.  In fact,
trademark law is the primary means by which the domain name owner protects his
or her rights.  Trademark law is flexible enough to protect free speech, as in
the U.S. case Reddy Communications v. Environmental Action Foundation case in
the U.S., where an environmental group's use of a utility company's REDDY
KILOWATT logo was protected, while simultaneously protecting the public from
fraudulent speech where defendants misuse trademarks to masquerade as their
opponents in order to expose unwitting people to their views. 

    As illustrated by the "Panavision" case, where over 200 trademarks were
pirated from their owners for use on the Internet, the application of trademark
laws to domain names is not a radical proposition.  Trademark law protects
telephone listings -in the Canadian case Orkin v. Pestco, a rival exterminating
company was barred from listing itself in the white under the famous ORKIN mark
of its competitor and it protects telephone numbers - in the U.S. case
Dial-A-Mattress v. Mattress Madness a competitor was barred from using the local
area code equivalent of the famous 1-800-MATTRESS number.  As domain names
function more and more as brands, the question becomes how to efficiently
harmonize DNS procedure with brand protection.  


The Addition of Generic Top Level Domains

    Second level domain names can contain up to 22 alphanumeric characters.
Despite this seemingly infinite number of possibilities, there is a perception
that all the "good" .com names have been taken and that more gTLDs are needed.  

    It is not productive to discuss the addition of gTLDs in the abstract.  In
theory, gTLDs dedicated to and appropriately designated as non-commercial or
religious or political or personal in nature (i.e. johndoe.nom) may have no
significant impact on trademark owners' rights.  However, it seems that the
addition of commercial gTLDs such as a .firm or .store would only lead to
consumer confusion if different parties own coca-cola.com, coca-cola.firm and
coca-cola.store.
    Therefore, new gTLDs should only be added, if at all, after the completion
of a study by the World Intellectual Property Organization (which study was
requested in the White Paper). If additional gTLDs are to be added, it should be
one-at-a-time. 


Minimum Standards For Domain Name Registration

    If customers cannot trust the integrity of goods purchased over the
Internet, they will stop purchasing goods over the Internet.  Anonymity may be
of value in an Internet chat room but not in e-commerce.  Accountability starts
with identity.  Under the present DNS, a domain name can be obtained and
immediately utilized without verification of identifying information.  

    This is not a trademark-specific issue.  There is a public interest in
preventing the Internet from degrading into a global fly-by-night operation rife
with online gambling, obscene material and confidence schemes.  

    We therefore advocate the establishment of specific minimum standards for
domain name registration and renewal (some of which were included in the
Administration's policy statement). These standards must include at least the
following: 

* sufficient contact and intended use information; 

* appointment of an agent for service of process and contact information; 

* agreement to jurisdiction (at least in the jurisdiction of the registrar) in
the event of litigation; and 

* publication of all application/renewal information on an easily accessible
public web site. 

    
Speedy Inexpensive Dispute Resolution Policy

    While there is dispute as to the magnitude of the problem of domain name
piracy, if only one percent of the 2.5 million .com domain names are pirated,
that represents a tidal wave of potential litigation and a large fortune spent
on unproductive legal fees (which ultimately become "the cost of doing business"
and are passed on to the consumer).  Like any other field where disputes arise,
there is a need for quick inexpensive alternatives to litigation. The disputants
and the consumers benefit.

    INTA does not advocate a dispute resolution system where the registered
trademark owner always wins against the domain name owner, nor does it endorse
all the actions of owners of registered trademarks who have utilized Network
Solution Inc.'s dispute policy.  A system which ignores basic tenets of
trademark law such as a likelihood of confusion analysis penalizes all parties
involved - including the owners of registered trademarks.

    Accordingly, a reasonable administrative dispute resolution policy is a
necessary element for the future DNS.  Any dispute policy needs to be consistent
across the gTLD space (should the WIPO study determine that additional gTLDs are
in order). 
 

Trademark Owners, and All Internet Stakeholders, Need To Be Represented in New
IANA

    We have concerns that if enacted, certain proposals in circulation would
lead to a non-representative New IANA, turning an ambitious experiment in global
self-government into a mere non-governmental agency captured by the interests it
was empowered to regulate.

    The existing IANA has posted draft by-laws (available at www.iana.org)
calling for an interim group of at-large Board members for IANA.  This interim
Board could be enormously influential, especially because it will select the
remaining members of New IANA.  However, as we draw closer to September 30,
there is no public consensus as to who selects these Board members or who the
members will be.  Counter-proposals (backed by NSI and other registrars - the
entities which will process applications) advocate that New IANA have minimal
user representation on the Board, and that New IANA's constituent "Supporting
Organizations" (including a domain name support organization) should be composed
entirely of the registries and registrars.

    We question the long-term viability of a system which places its
decision-makers in a conflict of interest every time a potential action could
have an effect on revenues and profitability (i.e. whether registrars will
undertake the expense of identity verification).  If NSI's experience is an
example, a for-profit registrar is motivated to seek full-indemnification from
domain name registrants and take no actions which affect the status quo, thus
shifting all costs onto other parties.  As the Internet is in many ways a public
asset, the privilege of extracting profits from domain name registration should
be balanced with some responsibility in maintaining the integrity of domain name
and trademark systems.

    If the Internet is to serve the needs of international commerce, such as
maintaining brand equity and consumers' interests in relying on such brand
equity, the trademark community must have a significant voice in Internet domain
name policy. 

    Otherwise, a governing body weighted heavily toward the Internet technical
community or registries/registrars may well not fully understand or appreciate
the relevance of trademark concerns to business and consumers.  

Conclusion

    In the words of the chief executive of Australia's National Office of the
Information Economy, domain names are the thin edge of the Internet governance
wedge.  Let's work together to set the right precedent.  In view of the
importance of the DNS to e-commerce, INTA encourages stakeholders of the
Internet to throw their support behind a representative New IANA which will
consider the recommendations outlined above. Help us work towards a stable
commercial environment on the Internet.

About INTA

    The International Trademark Association (INTA) is a not-for-profit
membership organization with 3,500 members from 120 countries. All of INTA's
members, regardless of their size or international scope, share a common
interest in trademarks and a recognition of the importance of brand identity to
the businesses that own trademarks, to the general public, and to the global
marketplace