Response of the Intellectual Property Constituency
Of the ICANN/DNSO to ICANN’s
June 13, 2000
Posting Regarding the Introduction of New Top-Level Domains
July
3, 2000The following constitutes the response of the Intellectual Property Constituency
of the ICANN/DNSO to ICANN’s June 13, 2000 posting regarding the introduction of
new Top-Level Domains to the Internet Root-Zone files. The response was developed
through a day-long meeting open to all IPC members to consider and debate initial
draft responses prepared by an IPC Task Force, augmented by subsequent consideration
of email comments from IPC member organization on a revised draft response.
Acronyms and Definitions
For the sake of clarity and consistency, the following
acronyms and definitions shall apply in the remarks and responses that follow:
ICANN
– Internet Corporation for Assigned Names and Numbers
DNSO – Domain Name Supporting
Organization
DNS – Domain Name System
IPC – The Intellectual Property Constituency
of the DNSO
NSI – Network Solutions, Inc.
SLD – Second-Level Domain
TLD
– Top-Level Domain
ccTLD – Country-Code Top Level Domain
rTLD – Restricted,
Sponsored, or Chartered Top-Level Domain
uTLD – Unrestricted Top-Level Domain
UDRP
– Uniform Dispute Resolution Policy of ICANN
Basic Principles
While these responses
are intended to answer the specific questions of the ICANN Board, the IPC’s position
with respect to the introduction of new TLDs centers around five basic principles,
namely:
1. That Registrants of all SLDs should be required to provide accurate
and up-to-date contact information, regardless of the TLD in which their domain name(s)
are registered;
2. That all Registrars providing SLD registration services must
also provide and/or contribute to a robust, centralized (cross-registry) WhoIs type
searching capability over the Internet, freely available and without cost to the
user;
3. That all Registrars providing SLD registration services must also agree
to adhere to ICANN’s UDRP guidelines and procedures (as presently existing or as
modified in the future);
4. That adequate and effective means for the protection
of trademarks be incorporated into the roll-out of any new uTLDs. Such protection
should also be incorporated into the roll-out of any rTLDs until it is demonstrated
through experience that ICANN’s compliance system prevents or corrects the registration
of domain names in rTLDs which creates a likelihood of confusion with a previously
registered trademark; and
5. That there be a swift and verifiable means for determining,
on a continuous basis, Registrar and Registry compliance with the above principles,
and the policies of ICANN.
In its posting of June 13, 2000, the ICANN Board posited
74 different questions for comment, with respect to the proposed introduction of
new TLDs. The IPC has chosen not to answer all 74 questions. Rather,
the IPC herein responds only with respect to those questions of the ICANN Board in
which the IPC constituency has an interest with respect to the protection of
intellectual property.
Task Force Proposal
The IPC volunteers its services and
the efforts of its membership toward the formation of a task force comprised of members
from all of the DNSO constituencies and the ICANN staff for the purpose of: (i)
formulating principles for the effective protection of intellectual property rights
in the roll-out of new TLDs, and (ii) formulating policies with respect to guidelines
for domain name eligibility when applying for and maintaining an SLD name in a rTLD.
A
Well-Controlled, Small-Scale Introduction as a “Proof of Concept” for Possible Future
Introductions
Q8: To what extent is the experience gained from introducing gTLDs
in the 1980s applicable to present-day circumstances?
Ans.: The exponential growth
and penetration of the Internet in the past few years are significantly greater than
it was in the 1980’s. Since 1994, we have seen that the Internet is shaping
a new global communications medium and economy. The identity of companies,
individuals, and organizations engaging in communications and commerce over the Internet
has become not only necessary, but also a valuable asset. E-Commerce has emerged
as a key driver of economic growth in all developing economies, and offers significant
promise in emerging economies. This did not exist in the 1980s, when the Internet
was still viewed as a testbed for academic and research applications. There
are significant differences between the 1980’s and today. The Internet of today
is a critical communications and information access medium; supporting millions of
businesses, and millions of individual users. The change in the role of the
Internet, and in the marketplace, has created a market, which did not exist in the
1980s, for opportunists who have abused the DNS for the purpose of making quick and
easy profits off the intellectual property rights of legitimate businesses.
Today, these opportunists have become to be called “cybersquatters”. For the
IPC, cybersquatting is the area where we focus our concerns. Intellectual property
rights must be balanced with the right of free and open expression in order to protect
rights owners, the consuming public, and the robust growth of the Internet medium.
Q9:
To the extent it is applicable, what are the lessons to be learned from that experience?
Ans.:
When the DNS was managed by one company, NSI, three TLDs were open to the general
public: .com, .net., and .org. Other domains, such as .mil and .edu, were strictly
limited in their registration and use to those entities that qualified. As
originally devised, .com was intended for commercial interests, .net for networks
operators, and .org for non-profit institutions. NSI, and the other successive
competitive registrars, did not adhere to these distinctions. The result was
confusion in the DNS, confusion of consumers and Internet users, and opportunities
for abuse. The lesson to be learned from these experiences is that if ICANN
is going to establish the creation of rTLDs going forward, the distinctions among
these rTLDs, and the eligibility of SLD name registrants within these rTLDs, should
be strictly enforced.
The other lesson to be learned is that there should be a
mechanism to prevent cybersquatting and other abuses of the DNS, and to protect the
intellectual property rights of legitimate businesses on the Internet, balanced with
the interests of legitimate rights in the registration and holding of SLD names.
The
overwhelming majority* of the IPC believes that the UDRP is in fact working well
in the majority of cases for rights holders who choose to take advantage of this
procedure. (* The lone dissenting views to this otherwise uncontested position of
the IPC, as well as the other views of the member organization expressing such views,
appear at the end of this document.) It is providing a relatively quick and inexpensive
method of combating cybersquatting, and may be making SLD registrations in the presently
available uTLDs (at present, the TLDs of concern are in the .com, .org, and .net
domains) less prone to cybersquatting. It now has become more difficult for
a cybersquatter to extort large sums when it only takes comparatively fewer funds
to initiate the UDRP. Additional national laws, such as the U.S. Anticybersquatting
Consumer Protection Act, also have been effective in combating this illicit practice.
Therefore,
there is reasonable justification for making all new TLDs subject to the UDRP, which
the IPC strongly recommends.
Q10: What lessons, if any, can be learned regarding
new gTLD introductions from the experience of the ccTLD registries?
Ans.: The selection
of good and reliable ccTLD registrars has become important to maintain the primary
goal of the specific gTLD to be introduced. There have been cases where some ccTLDs
registrars have opened domains for the registration by the general public, which
do not necessarily comply with the original restrictions established for a specific
ccTLD.
For example, the .tv, .md, and .cl ccTLDs have been opened by their controlling
authorities of these domains to registrants and users who otherwise would not qualify
under traditional ccTLD geographical restrictions. Instead of being registered
to SLD registrants in their respective countries, these domains have been marketed
to television broadcasting companies (i.e., .tv), medical doctors (i.e., .md), and
social clubs (i.e., .cl). While the concept of an “open” ccTLD is not inherently
problematic, a clear and specific policy should be enacted to avoid abuses in this
regard, especially if new TLDs will be restricted or “chartered” in some form (i.e.,
rTLDs).
There also are many experiences from the registrars of ccTLDs that may
be used to improve the DNS system overseen by ICANN, including the resolution of
disputes arising from the registration of these domain names. For example,
ccTLD registries that lack clear dispute resolution and enforcement policies, and/or
that do not provide full and robust access to WhoIs type contact data, have become
havens for cybersquatting and have been attractive venues for piratical activity.
The same could happen in the new TLDs if they lack these essential features.
Q11:
Can lessons relevant to introduction of new TLDs be learned from the recent decisions
by a number of them to operate in a globally open manner? If so, what lessons?
Ans.: ICANN
should implement and enforce a clear and specific policy addressing the problems
noted in the answer to Question 10. ICANN should consult with the ccTLD registries,
as potential stakeholders, regarding the development of such a policy.
Q12:
Is the Names Council's recommendation that a "limited number of new top-level domains
be introduced initially" a sensible way to minimize risks to Internet stability?
Ans.:
Yes. The IPC recommends a very limited introduction with an appropriate evaluation
period. Creating chaos in an effort to expand the domain name space would do
more harm than a slow, measured, implementation process.
Q13: What steps should
be taken to evaluate carefully the initial introduction of TLDs before future introduction
of additional TLDs?
Ans.: The evaluation should include whether the roll-out of
each new TLD and its operation during the evaluation period have fulfilled the criteria
set out in the Names Council statement of April 18-19, 2000, including “minimizing
the use of TLDs to carry out infringement of intellectual property rights” (sometimes
referred to below as “the minimization criterion”). Specifically, ICANN
should seek to evaluate:
(1) the prevalence of false or outdated registrant contact
data in the new TLD, and the responsiveness of the TLD manager to complaints concerning
this;
(2) the availability, currency, and accuracy of WhoIs data from the new
TLD, and the ease with which it can be accessed (including the level of the new TLD’s
participation in cross-registry WhoIs services);
(3) the degree of the new TLD’s
cooperation with and responsiveness to the relevant dispute resolution authorities;
(4)
the success of the mechanism(s) the new TLD has adopted to resolve disputes between
its registrants and trademarks owners, as measured by the volume of litigation or
non-judicial disputes, and anecdotal information obtained from registrants and mark
owners;
(5) in the case of rTLDs, the responsiveness of the TLD manager to complaints
concerning allegations that a registrant is not qualified to register in that TLD,
and/or that activity carried out through use of the SLD registration violates charter
requirements (including an evaluation of the manager’s efficiency and fairness in
resolving such complaints);
(6) The experience during the evaluation period with
the compliance mechanism established by ICANN to ensure compliance with the accreditation
or similar agreement entered into by the new TLD manager.
(7) A Registry’s technical
and operational ability to run and maintain a TLD, including assessments regarding
security, service, down time, mis-assignments and/or duplicate assignments of SLDs,
and unauthorized transfers of SLD registrations.
(8) Financial security, and liability
insurance coverage.
In order to conduct an effective evaluation, ICANN (or the
evaluating entity) should solicit questionnaire responses and anecdotal information
from registrants in the new TLD, intellectual property owners, participants in disputes
arising from the operations of the TLD, and other interested members of the public.
Besides evaluating the performance of the new TLDs with regard to “the minimization
criterion” quoted above, the evaluation should include recommendations as appropriate
for improving (a) the policies and operating guidelines for the first set of new
TLDs; (b) the performance of the TLD manager(s) in carrying out those policies and
guidelines; and/or (c) the roll-out of any additional TLDs, through changes in policies,
guidelines or compliance mechanisms.
Q14: Should a fixed time be established
for all the evaluations, or should the time allowed vary depending on the nature
of the TLD and other circumstances?
Ans.: Because the evaluation will be a resource-intensive
process, it may be preferable to stagger the evaluation dates. However,
action with respect to adding additional uTLDs to the Root beyond those already authorized
should probably be delayed until all evaluations of the initial set of TLDs have
been completed and the ICANN community has had the chance to review and discuss them.
After concluding the evaluation, ICANN should provide for an adequate consultation
period before proceeding with the process of introducing any additional TLDs.
A significant risk to ICANN’s stability can come from a truncated review period that
fails to consider a broad outreach to affected constituencies.
Q15: Should choices
regarding the types of TLDs included in the initial introduction seek to promote
effective evaluation of:
• the feasibilty and utility of different types of new
TLDs?
• the efficacy of different procedures for launching new TLDs?
• different
policies under which the TLDs can be administered in the longer term?
• different
operational models for the registry and registrar functions?
• different institutional
structures for the formulation of registration and operation policies within the
TLD?
• other factors?
Ans.: All of these may be appropriate subjects for evaluation.
Whether diversity in all these areas should be reflected in the initial roll-out
will depend in great part on which entities step forward to operate new TLDs and
how they propose to do so. Furthermore, while “different policies” for operation
of TLDs may be beneficial or at least an appropriate subject for evaluation in the
initial roll-out, policies of all new TLDs need to meet minimum standards.
For instance, all new TLDs need to require (and to enforce the requirement for) accurate
contact information from all registrants; however, there may be some variations in
how this requirement is implemented (e.g., whether or not to require registrants
to update their contact data on a set periodic schedule, and if so at what intervals).
To
maintain the technical stability of the DNS, registrars and registries should provide
a basis for judging their abilities for launching new TLDs, their administration,
and for cooperating and implementing decisions that resolve SLD ownership disputes.
To prevent forum shopping, the rules governing the operations of domain name registries
and registrars should be consistent.
Q16: Should any particular goal for, or limit
on, the number of TLDs to be included in the initial introduction be established
in advance, or alternatively should the number included in the initial introduction
be guided by the extent to which proposals establish sound proofs of concept of varied
new TLD attributes?
Ans.: The number of new TLDs in the initial roll-out should
not be an arbitrary minimum number, but should be done in a slow and controlled manner,
and determined by a realistic appraisal of ICANN’s capacity to accredit, administer
and evaluate the effectiveness of the initial set of new TLDs, as well as by any
technical limitations that need to be respected in order to ensure the continued
stability of the DNS. ICANN should determine and announce in advance
a small number of new TLDs that it can effectively accommodate in the initial roll-out
based on these factors. After the initial introduction a study should be conducted
to determine whether the new TLDs are addressing presently-perceived problems with
the administration of the DNS. The study should include an examination as to
whether the prevalence of defensive domain name registration practices and/or acts
of cybersquatting have increased.
Enhancing Competition for Registration Services
Q19:
Would the introduction of additional undifferentiated TLDs result in increased inter-TLD
confusion among Internet users?
Ans.: An overwhelming majority of the IPC
believes that the introduction of additional uTLDs will result in increased inter-TLD
confusion among Internet users. For this reason, the IPC recommends that the
initial roll-out of additional TLDs be limited to rTLDs so that this concern can
be studied and addressed.
Q20: Taking all the relevant factors into account, should
one or more fully open TLDs be included in the initial introduction?
Ans.:
The IPC does not believe that the roll-out of additional TLDs should include uTLDs
at this time. The initial roll-out should be limited to rTLDs, which will permit
a review of the impact of these additional TLDs on the DNS.
Q21: How many?
Ans.:
The IPC believes the total number of additional rTLDs that are introduced should
not be an arbitrary minimum number, but that the number should be small and done
in a slow and controlled manner.
Q22: How effective would other fully open TLDs
be in providing effective competition to .com?
Ans.: The IPC is unconvinced of
the need for the introduction of new uTLDs at this time, absent proof after more
study is undertaken. It is a given fact that trademark owners will want to
protect their rights upon the introduction of new TLDs. If additional uTLDs
are added to the Root servers, there will be a land rush by intellectual property
owners to register their trademarks as SLD names in all uTLDs. The IPC also
anticipates a similar land-rush mentality and behavior with respect to bad-faith
actors who will act upon additional opportunities for cybersquatting. The DNS
will thus experience the same problems all over again as presently exist with the
.com uTLD and to a lesser extent the .org and .net uTLDs. And, as previously stated,
many ccTLD registries are operating as though they were uTLDs. Thus, the situation
would not be improved.
Q23: What can be done to maximize the prospect that new
fully open TLDs will be attractive to consumers as alternatives to .com?
Ans.:
The IPC does not recommend that any steps be taken to introduce new uTLDs at this
time. However, if ICANN determines to proceed notwithstanding the views of
the IPC, then, at a minimum, all of the Basic Principles outlined at the beginning
of these comments should be respected.
Q24: Would the likelihood of effective
competition with .com be enhanced by making one or more of the single-character .com
domains (which are currently registered to the IANA) available for use as the basis
of a third-level registry (i.e. a registry that took registration of names in the
form of example.e.com or example.1.com)? Should the single-character .com domains
be made available for possible registry usage in conjunction with the initial group
of additional TLDs?
Ans.: The IPC does not believe that this would increase
competition, but is not opposed to this approach.
Enhancing the Utility of the
DNS
Q25: Is increasing the utility of the DNS as a resource-location tool an appropriate
goal in the introduction of new TLDs?
Ans.: Yes, it is an appropriate goal.
But, strategies proposed to achieve that goal should be empirically evaluated by
ICANN. For example, while rTLDs would seem, in principle, capable of enhancing
resource location, whether they do so in practice should be assessed on the basis
of experience.
Q26: Would the introduction of unrestricted, undifferentiated TLDs
run counter to this goal?
Ans.: Yes. As stated above in answer to Question
No. 22, if new uTLDs were introduced, or alternatively if rTLDs are introduced but
the restrictions in their charters are not enforced, these TLDs, rather than help
the resource location capacity of the DNS, can become a source of consumer confusion,
intellectual property rights violations, and other types of abuses.
Q27: If so,
are there ways of accommodating the goal of enhancing registry-level competition
with the goal of enhancing the utility of the DNS?
Ans.: Yes. Rewarding registry
applicants for new TLDs that include in their proposal features that enhance the
utility of the DNS will accommodate both goals. For example, one option would be
to favor rTLD proposals that provide effective means of enforcing charter restrictions.
Q28: Is
the concept of TLD “charters” helpful in promoting the appropriate evolution of the
DNS?
Ans.: Yes, if the will and ability exist to enforce the restrictions in rTLDs.
Q29: Are
the first three principles outlined in the second additional consensus point of WG-C’s
17 April 2000 supplemental report (quoted above) appropriate criteria for selecting
TLDs to be introduced in the first group?
Ans.: Yes.
Q30: Do those principles
preclude the introduction of any new fully open TLDs?
Ans.: Until it is shown
otherwise, through careful study, the IPC does not see the usefulness of introducing
uTLDs at this time. The introduction of rTLDs is preferred, so that it can
be determined how well this model can work.
Q31: What types of TLDs should be included
in the first group of additional TLDs to best test the concept of chartered TLDs?
Ans.: The
IPC does not see the present need for the introduction of uTLDs at this time.
The selection of rTLDs should be a consultative process among the registry applicant,
ICANN, and the DNSO constituencies. Such consultations should include the establishment
of guidelines or a framework so that there is a logical expansion of the TLD and
SLD name space.
Q32: Should chartered TLDs be introduced according to a pre-defined
system, or should proposals be evaluated on an individual basis?
Ans.: At this
time, there should not be a pre-defined system for the introduction of rTLDs.
With the current lack of practical experience, such a pre-defined system would be
unwise. Types of pre-defined systems have been suggested according to “analogous”
models, such as the Nice International Trademark Classification System, or the U.S.
Customs’ index of goods and services. These models, as applied to the Internet,
have not been shown to be workable. The ultimate goal, with experience, should
be a defined system after various proposals are evaluated and implemented.
Q33: If
charter proposals are evaluated on an individualized basis, should any steps should
be taken to promote stable and orderly evolution of the DNS overall?
Ans.: Although
evaluated on an individualized basis, proposed rTLDs should meet the standards set
forth in the Names Council Statement of April 18-19, 2000, with the additional registries
meeting defined technical, operational, and financial requirements.
Enhancing the
Number of Available Domain Names
Q34: Has the inventory of useful and available
domain names reached an unacceptably low level?
Ans.: The explanation provided
in the analysis preceding this question clearly demonstrates that the answer is “no.”
Therefore, the majority of the IPC favors the addition of new rTLDs, so long as it
is done in a slow and controlled manner, and so long as the restrictions of the “charters”
are enforced. The majority of the IPC does not see the need for the introduction
of new uTLDs at this time, and does not agree with the assertion that all of the
more desirable names are taken in available TLDs or that space is at a premium. Statements
concerning the lack of useful names grossly overstates the space issue and stops
short of recognizing that: (i) the maximum number of characters in a URL is
now 64; and (ii) it is completely plausible, acceptable, and realistic for domain
name registrants to combine two or more common, "simple" words, which are still memorable
to Web surfers looking for a particular site. To support these two counter-arguments,
one need only take into consideration the following examples:
http://www.hearme.com;
http://www.mysap.com; http://www.statusfactory.com; http://www.webmd.com; http://www.razorfish.com;
http://www.globaltravel.com; http://www.urologychannel.com; http://www.verbaladvantage.com;
and http://www.goldportfolio.com. All of these domain names, and more, take
two "simple" words and combine them to create a URL that is still easy to remember.
Q35: Assuming
it is important to increase the inventory of available domain names, should that
be done by adding TLDs that are not differentiated from the present ones?
Ans.:
No. The vast majority of the IPC believes that any increase in the inventory of
domain names should be TLDs that are differentiated from the present ones, and that,
in the case of rTLDs, the “charter” is carefully crafted, the registrars are willing
and agree to aggressively enforce the charters/restrictions, and that there is an
effective take down or other means for addressing alleged charter violations (such
as amendments to the UDRP).
Delegation of Policy-Formation Requirements for Special-Purpose
TLDs
Q39: How should global policy requirements (adherence to a TLD's charter,
requirements of representativeness, interoperability requirements, etc.) be enforced?
Ans.: The
provisions of the charter, both as to who may register in a rTLD and what activities
may be conducted there, must be clearly spelled out. Activities that infringe
intellectual property rights should be specifically prohibited. The charter,
or at least these provisions, must be subject to review and approval by ICANN.
The charter should give the sponsoring organization or its designee the authority
to enforce these requirements. The charter should also provide an effective
mechanism whereby the sponsoring organization may receive and promptly act upon complaints,
whether from registrants or third parties, alleging violations of these requirements.
This mechanism should provide for the sponsoring organization to grant immediate
provisional relief (including suspension of the registration) in appropriate circumstances,
as well as a non-judicial means for obtaining a prompt independent determination
of the merits of the claim. The charter should require registrants to submit
to the jurisdiction of this non-judicial dispute resolution mechanism and also to
the jurisdiction of an appropriate court. The compliance mechanism established
by ICANN should monitor the effectiveness of these provisions in operation and also
provide a medium for complaints when they do not operate as contemplated.
New
TLDs to Meet New Types of Needs
Q40: Are there any types of new TLDs that should
not be included in the initial introduction? If any types should be excluded, why?
Ans.: The
vast majority of the IPC is not convinced of the need to add new uTLDs at this time,
and believes that they should not be included in the roll-out of new TLDs.
Moreover, the safeguards set forth earlier in these responses should be required
in order to minimize the use of a new TLD to carry out intellectual property infringements
and all new TLDs should observe them. Specifically, it must be recognized
that in any rTLD, regardless of the character of the charter, the threat of injury
to intellectual property rights, as well as other species of consumer fraud, is great
if the charter is not enforced. Appropriate safeguards must be put in place.
Start-Up
Challenges and the Protection of Intellectual Property
Q41: Does the start up of
a new TLD pose additional risks to intellectual property rights that warrant additional
protections?
Ans.: Yes. The ongoing problems associated with existing uTLDs
strongly suggest that a new uTLD will provide an additional opportunity for bad-faith
actors to capitalize on the goodwill associated with intellectual property.
Q42: Should
the protections afforded intellectual property in the start-up phase of new TLDs
differ depending on the type of TLD?
Ans.: The IPC proposes that there should be
specific, use limited, chartered top-level domains, or rTLDs, in which protections
afforded to intellectual property may be accommodated differently depending upon
the nature of the type of the TLD. We would add, however, that in cases where
there is a violation of the charter, especially when there is an alleged violation
of intellectual property rights, that there be a takedown provision administered
by the registry or that the matter be referred to an UDRP panel for adjudication.
We understand that this would require modifications to the UDRP and a task force
of the IPC would be happy to work with ICANN and the other DNSO constituencies on
such changes.
Q43: Is the availability of the UDRP and court proceedings
as remedies for violations of enforceable legal rights an appropriate element of
protection of intellectual property rights that should apply to all new TLDs?
Ans.: Yes.
The IPC believes the UDRP and court proceedings have served as successful forums
in which disputes concerning alleged violations of intellectual property rights may
be heard. We also believe that both forums should be available for alleged
violations of IP rights in any new TLDs, in particular, when there is a charter violation.
The appeal process with respect to both dispute resolution systems also is useful.
Q44: Does
the start up of a new TLD pose difficulties for those other than intellectual property
owners that should be addressed through special procedures?
Ans.: Perhaps the most
overlooked “constituency” in the debate over new TLDs is the consumer. Consumers
now use the Internet to make important decisions about, among other things, how or
where to live, what to buy, or where to shop to obtain goods and services that are
reliable and offered at the lowest price. The soaring figures for e-commerce
make this an undeniable fact. The IPC urges the ICANN Board to consider the
value of intellectual property to the consumer when he or she “surfs” that Internet.
Intellectual property signals to the consumer that he or she has reached their intended
destination in cyberspace and reassures them that the goods and services they are
about to purchase are genuine and reliable. The ready and unfettered availability
of WhoIs data also helps consumers determine whom they are dealing with online.
Intellectual
property owners, consumers, small business owners, and non-commercial interests all
have rights that must be protected in the creation of new TLDs. If it is proven
that a new SLD name is being registered or used as an infringement or a charter violation,
the purposes of the DNS break down, and remedies must exist to swiftly deal with
these problems.
Q45: What mechanisms for start up of a new TLD should
be followed to ensure that all persons receive a fair chance to obtain registrations?
Ans.: The
vast majority of the IPC supports a slow, manageable, structured, and equitable approach
to the start up of a new TLD. To that extent, we strongly support mechanisms
designed to deter bad-faith registration of domain names, but which would at the
same time allow the registration and use of domain names for legitimate, non-infringing
educational, political, and other fair uses.
Q46: Is the exclusion
of names appearing on a globally famous trademark list a workable method of protecting
such marks from infringement at the present time? Would an exclusion mechanism
be appropriate in the future?
Ans.: Although desirable, affording protection for
globally famous marks through an exclusion mechanism presents difficulties at the
present time. First, from a purely IP perspective, there is no internationally
recognized list of “globally” famous marks. Also, the definition of what qualifies
as a globally famous or well-known mark is in the early stages of development.
The IPC would encourage further discussion on this topic, perhaps through a conference
organized by WIPO. This could lead to a scenario by which an exclusion mechanism
could be developed in the future. Second, the Registrar Constituency has indicated
that an exclusion mechanism at this time would be too costly, difficult to implement
from a technical perspective (they would need to create a filtering system), and
would expose them to liability.
For these two reasons, a large majority
of the constituents within the IPC have asked that a “Daybreak” mechanism be considered
for all new uTLDs and rTLDs until and unless experience demonstrates that a chartered
or restricted TLD will not be subject to abuse. Under this new plan, during
the “Daybreak” period, owners of trademarks and service marks will be able to register
only the material textual element of their precise marks as domain names on a first-come-first-serve
basis in a new TLD before it is opened to the general public. However, the
marks would have to be registered in a national trademark office for at least one
year (although a minority believe that requiring registration of the mark (for at
least one year or at all) to qualify may be too stringent).
The IPC recognizes
that many in the Internet community were uncomfortable with the idea of the “Daybreak”
predecessor, known as the “Sunrise Plus 20”. The uneasiness with this proposal
was based on the belief that 20 registrations was too high a number. The IPC
understands the concerns of those who argue that 20 was too high a number.
For this reason, the majority of the IPC now propose that in commercial top-level
domains that only the exact or precise trademark be afforded protection, although
some in the IPC would extend this safeguard further. The IPC, however, rejects the
argument made by some that the concept of either a “Sunrise” or “Daybreak” has no
basis in law.
It must be kept in mind that the “Daybreak” proposal is limited in
nature. It would merely give trademark owners a temporary priority in registering
domain names. It would not give them trademark protection beyond the scope
of existing trademark registrations or otherwise give them new protection under trademark
or other laws. It is aimed at enabling protection of existing rights.
The protection of trademarks in connection with domain names is entirely consistent
with existing legal principles.
When the European Community Trademark system
introduced new unitary Community Trademark rights in parallel to existing national
rights, it also brought with it the concept of “Seniority.” Under this principle,
the owner of an earlier registered trademark in a Member State may claim for the
same Community trademark the seniority of the earlier national trademark. This
allows owners of existing national registrations to preserve the dates of their existing
national rights within a Community Registration when applying under the Community
system. In doing so, they can preserve their prior rights if they surrender
their national trademarks or do not use them.
In the United States, the courts
have repeatedly found that the use of domain names can constitute infringement or
dilution of trademarks and have enjoined cybersquatting under existing trademark
law. See, for example, the well-known case of Panavision v. Toeppen.
New legislation – the Anticybersquatting Consumer Protection Act – was enacted
precisely for this purpose. This law created a cause of action against those
who register or use domain names in bad faith. Furthermore, U.S. trademark
registration can extend protection beyond the actual use of the mark; it applies
throughout the United States even if the mark is not used in all of the states.
The current trademark statute incorporates a procedure for extending protection to
marks registered under previous trademark statutes [15 U.S.C. § 1062(c)]. In
a non-trademark context, as already mentioned in Working Group B discussions, the
Federal Communications Commission gave holders of 1-800 numbers a right of first
registration of 1-888 numbers when they were added to the U.S. telephone system.
The
Daybreak proposal is a modest and limited idea, although, as indicated, some IPC
members would go beyond the outline sketched above. A one-time priority that
will enable trademark owners to avoid some misuse of their marks in new TLDs is consistent
with existing legal principles in all jurisdictions of which we are aware.
Q47:
Should introduction of new TLDs await completion of an evaluation of the operation
of the UDRP and be subject to a finding that the UDRP has been successful in meeting
its objectives? How long would such an evaluation likely take to complete?
Ans.:
The IPC endorses an evaluation of the UDRP, but not so that it would delay the introduction
of new TLDs. The IPC would suggest, however, that prior to the introduction
of new TLDs, modifications be made in the UDRP for matters that include, among other
things, alleged charter violations. The IPC volunteers its constituent members
to work with a task force to accomplish this. If ICANN were to authorize such
a task force shortly after the July 2000, meeting in Yokohama, Japan, it is anticipated
that this group’s evaluation and recommendations could be completed within a period
of 4 to 5 months.
Q48: Should introduction of new TLDs await extension
of the UDRP to cover claims for transfer of domain names based on the relevance of
a well-known trademark to a chartered gTLD? How long would implementing such
a revision to the UDRP likely take?
Ans.: At this time, the majority of the IPC
opposes the use of the UDRP in the transfer of domain names based on the relevance
of a well-known trademark to a rTLD.
Suggested Schedule for the Introduction
of New TLDs
Q50: Does the schedule allow sufficient time for public comment?
Ans.: No.
One week is a woefully insufficient time for public comment. The comment period
should be at least four weeks in length.
Q51: Should all proposals be posted for
comment simultaneously to maintain equal time for public comment? Should all proposals
be posted for public comment as they are received to allow the greatest possible
time for public analysis and comment?
Ans.: All proposals should be posted for
public comment as they are received to allow the greatest possible time for public
analysis and comment.
Q52: Should the formal applications be posted in full for
public comment? If not, which parts of the applications should remain private?
Ans.: Formal
applications should be posted in full for public comment.
Information about the
Proposed TLD
Q57: What should be the criteria for selecting between potential TLD
labels? Should non-English language TLD labels be favored?
Ans.: The IPC
is not aware of such criteria to date. The IPC is willing to join a task force
with members of the other DNSO constituencies to devise such principles or labels,
and highly recommends that guidelines be developed, posted for comment, and then
established.
Q58: How many new TLDs of each type should be included in the initial
introduction?
Ans.: As a general principle, an effective test period hinges on
a manageable number of subjects. The addition of new TLDs to the DNS will necessitate
the scrutinizing of the operability of the DNS on both the registrar and registry
levels. This includes not only the technical operability of the DNS, but administrative
operability which includes registrar and registrant compliance with posed guidelines,
rules and other intellectual property protection mechanisms. Moreover, testing
the feasibility of multiple rTLDs will be necessary if their effectiveness is to
be measured. The only way such testing can be properly effectuated in a slow
and controlled manner is by introducing a small number of rTLDs. The important
issue is not how many of each rTLD type are initially introduced (for example, commercial,
personal, religious, etc.), but rather that the total in the aggregate should be
kept small.
Q59: Which types of TLDs will best serve the DNS?
Ans.: A majority
of the IPC believes that if cybersquatters had their choice they would invariably
choose to register within an open, uTLDs. This type of TLD permits more registrations,
would be used more frequently, would become more popular, and thereby would lead
to more opportunities for bad faith registrations within that TLD. That Internet
web sites are commonly referred to as “dot-coms” regardless of the actual SLD supports
that conclusion. It is assumed that bad-faith registrants will prefer to register
in a uTLD if given the choice. As we have seen, such openness leads to abuse,
particularly domain name hoarding and cybersquatting. Infusing new open, uTLDs into
the DNS will not relieve these abuses, and it is likely that uTLDs will lead to similar
acts of hoarding and cybersquatting within those TLDs. It is further unlikely
that new uTLDs that are differentiated by semantic meaning (such as .org vs. .net)
would make any difference.
A DNS with restricted “sponsored” or “chartered” domains,
or rTLDs, may alleviate some of the past abuses, particularly those abuses relating
to intellectual property rights. For instance, it would permit multiple owners
of the same trademark to use their mark within a domain name simultaneously.
As an example, DELTA could be used as a secondary level domain name by both the airline
and the faucet manufacturer. Additionally, it would prevent a registrant who
did not meet the criteria for the TLD to register a mark owned by the owner of the
mark who does meet the criteria. Thus using the above example, an owner of
the DELTA mark for sportswear may not be able to register DELTA as a secondary-level
domain name in an ‘.air’ TLD, which would be restricted to airline or aviation entities.
However, creating a DNS that includes restricted TLDs will require guidelines
as to how to choose, or limit, the number of sponsors or charters, as the number
of different entities and products that could form the basis of a chartered TLD is
practically endless.
Q61: Which types, if any, are essential to the successful
testing period?
Ans.: The important point is not how many TLD types are included
within the first testing period, but rather that each type that is eventually rolled
out should be rolled out in a slow and controlled manner so that there can be an
effective test of their impact. At this time, without evidence that the addition
of new uTLDs would not create more problems, a majority of the IPC advocates that
only rTLDs be added at this time.
Q62: Which other structural factors, if any,
should ICANN consider in determining the potential success of a specific TLD proposal?
Ans.: All
TLD applicants should be asked to spell out how they propose to fulfill the following
criteria:
(1) collection and maintenance of accurate registrant contact details;
(2) provision
of unfettered and robust centralized (cross-registry) WhoIs access to the public
via the Internet on a 24 hour/7 day-per-week basis, without cost to the user;
(3) provision
of an equitable and efficient dispute resolution procedure;
(4) mechanism for
protection of trademark interests;
(5) cooperation with ICANN compliance mechanism
concerning the preceding criteria.
Information about the Proposed Sponsor
and Operator of the TLD
Q63: Should ICANN accept proposals from companies formed/forming
for the purpose of operating or sponsoring a new TLD? If so, how should ICANN
determine the competence of the company?
Ans.: Regardless of how a company becomes
eligible for consideration to operate a TLD, ICANN must establish criteria by which
it will assess the ability of the company to operate the TLD. First and foremost,
any company which proposes to operate or sponsor a new TLD should file with ICANN
proposed operational and policy guidelines and conditions. Among these guidelines
and conditions are as follows: (1) Registrant Contact Data. The company must
establish a system by which it shall maintain and provide complete and accurate contact
data that is kept current. Failure to meet this requirement should result in
termination of the domain name registration. (2) WhoIs Accessibility. The company
must provide free, real-time access via the Internet, to a current database of contact
data on all registrants in the TLD. The data should be fully searchable across
all fields and be freely available to the public. (3) Dispute Resolution Policy.
The company must propose an effective dispute resolution policy that shall be in
place before accepting registrations. (4) Trademarks Compliance. The
company must comply with all requirements and guidelines in place concerning the
protection of trademarks. (5) Compliance Review. The company must propose
a system by which it will comply with ICANN verification and compliance mechanisms.
(6) Financial Stability. The company must be carefully scrutinized with respect
to its financial backing and stability.
Q64: If a company has significant operational
or policy positions not yet filed, how should ICANN evaluate the level of competence
of officers and employees?
Ans.: For ICANN to be able to assess the competence
of the company, it is crucial that the company file operational and policy guidelines
and conditions that include, at a minimum, the five guidelines set out above.
Q65: How
should ICANN evaluate the competence of officers and employees?
Ans.: As stated
above, ICANN should focus on assessing the company’s ability to properly run a TLD
system within accepted guidelines that will ensure operability and adequately protect,
among other things, the property rights of others. ICANN should evaluate the
company’s personnel to the extent that it bears on general compliance with the law
and a respect for the intellectual property rights of others. For example,
ICANN should not accept a proposal from a company with an officer who has a conflict
of interest (such as someone who already is a member of an already-existing registrar),
or who has been found in a judicial or an administrative forum to have been a cybersquatter,
bad faith registrant, or to have engaged in other criminal activity. The key
point is that review of personnel should be related to the ability of the company
to operate properly, with integrity, and within its proposed guidelines. The
company should include within its proposal the list of its officers and key personnel
and their experience as it related to the DNS.
Q69: What should be the minimum
technical requirements to ensure sufficient stability and interoperability?
Ans.: At
a minimum, there should be provision for a free, unfettered and robust WhoIs access
to the public over the Internet on a 24 hour/7 day-per-week basis. Other technical
requirements should address security, operational stability, and the ability to interface
effectively with multiple registrars.
Information about the Policies and Procedures
Applicable to the TLD
Q70: How should ICANN evaluate the sufficiency of proposed
intellectual property protections?
Ans.: Each company that proposes to operate
a new TLD should be required to submit a proposal that includes proposed operational
and policy guidelines. As described above, these guidelines should include
both technical requirements to ensure sufficient stability and interoperability as
well as administrative requirements that will help protect the rights of others.
At a minimum these guidelines requirements include:
(1) Centralized, Cross-Registry
WhoIs Accessibility (technical). All TLDs should provide free, real-time access,
via the World Wide Web, to a current updated database of contact data on all registrants
in the TLD. The data should be unrestricted and fully searchable across all
fields. All TLDs should be required to support and participate in cross-TLD
WhoIs information services.
(2) Registrant Contact Information (administrative).
All domain name registrants in each TLD should be required to provide current, complete
and accurate identification and contact information. A failure to provide and
maintain such current, complete and accurate information should result in termination
of the domain name.
(3) Effective Dispute Resolution Policy (administrative). An
effective dispute resolution policy for each TLD must be in place prior to taking
registrations. The dispute resolution policy should be the same, or similar,
to the one currently in place so as to not create multiple conflicting dispute resolution
processes which may defeat the benefits of the dispute resolution process to resolve
disputes in a swift, transparent, inexpensive and efficient manner.
(4) Compliance
Review (administrative). The company must submit to, and comply with, guideline
compliance reviews and complaints.
(5) Trademarks Compliance (enforcement).
The company must comply with all requirements and guidelines in place concerning
the protection of trademarks.
Q71: What role should ICANN have in the start-up
procedures for new unrestricted TLDs?
Ans.: The IPC is not convinced that there
should be a roll-out of any uTLDs at this time. However, any company that proposes
to administer a new rTLD must submit to ICANN proposed technical and administrative
operational and policy guidelines that include, at a minimum: (1) identification
of officers and key personnel and a description of their backgrounds as they relate
to the DNS; (2) technical requirements including, but not limited to, a fully searchable
WhoIs database; and (3) administrative requirements including, but not limited to,
a system to ensure current, complete and accurate registrant contact information,
a workable uniform dispute resolution policy and complaint and guideline review compliance.
ICANN
should review each proposal, and may approve a company only upon a satisfactory showing
by the company that it meets these guidelines. Once the company has become
operational, ICANN should maintain a compliance review system by which it will periodically
review each company’s compliance with the then current requirements. Additionally,
ICANN should administer a complaint system by which it will respond to complaints
brought against any TLD administrator and ensure compliance, particularly with charter
restrictions.
In this manner, ICANN will not directly be involved in the day-to-day
operations of a TLD administrator, but shall serve in a regulatory capacity to ensure
compliance with required guidelines.
Q72: In what ways should the application requirements
for sponsored/chartered/restricted TLDs differ from those for open TLDs?
Ans.: The
IPC does not believe that the introduction of new uTLDs are necessary at this time.
The outline appearing in the ICANN document identifies many of the additional data
elements that would be needed. Particular criteria that must be observed in
the charter of any new rTLDs are spelled out in response to question 39 above.
If ICANN nonetheless decides to add a new uTLD, the application should clearly call
for information on how the applicant will protect intellectual property rights.
Dissenting
Views: The preceding views and comments generally represent the views of the
majority of the IPC, however, one member organization that did not participate in
the all-day meeting of the IPC submitted comments by email on the initial draft comments
following the meeting. While this did not allow the other participants to enter into
a dialogue with the representative of this organization in order to fully explore
the reasons for the views expressed, an effort was made to incorporate the views
where possible. To the extent that the views differed significantly with those of
the other IPC member organizations, they are summarized here.
In general, this
organization believes that the UDRP needs to be “reformulated to balance fairness”;
the ccTLDs should not be under the control of ICANN; cybersquatting would decrease
if there were many more TLDs; evaluation of new gTLDs should be done solely with
regard to technical ability to run and maintain a gTLD; choices regarding the types
of new TLDs to be in an initial roll-out should not be under the purview of ICANN,
but left to the registries; consideration of what might be done to make “new fully
open TLDs” more attractive is “not an issue that should be addressed by ICANN” nor
should it become involved with choosing who would be entitled to a chartered TLD;
and, “no further protections should be required in ANY gTLD, or any chartered TLD”.
As is obvious from the preceding answers and comments to the questions raised in
the June 13, 2000 ICANN posting, an overwhelming majority of the IPC disagrees
with these views.
Conclusion: The IPC
sincerely appreciates the work of the ICANN Board, and its staff, and the opportunity
to express the views of its members prior to the ICANN meeting in Yokohama, Japan
in July, 2000. It is hoped that you will find the thrust of these comments useful
and constructive and we stand prepared to work with ICANN in the ways outlined above
as well as in any other ways in which we might be helpful.