Transcript: Washington, DC regional consultation
U. S. Department of Commerce
March 10, 1999
|19 January||22 January||2 February||10 February||17 February||10 March|
|Toronto, Canada||Singapore||Rio de Janeiro, Brazil||Dakar, Senegal||Brussels, Belgium||Washington, DC, USA|
(Mr. Francis Gurry, Chairperson, Legal Counsel, Electronic Commerce section, Office of Legal and Organization Affairs): Thank you very much Becky. Ladies and gentlemen good morning. I would sit here if I may rather than go up to the podium, since I think we have quite an extensive agenda today. First of all let me thank the United States Government, not only for the mandate that it conferred on WIPO in respect of this Process, but also for its support throughout the Process for the conduct of the Process and the endeavour on the part of WIPO to involve as wide as possible range of participants both within the United States and internationally. And let me thank the Department of Commerce in particular also for making available this facility for today's hearing. I am sorry we are a few less than the number that we expected and no doubt as a result of the weather, but we do have a significant number of persons who have indicated that they would like to speak this morning and this afternoon. In fact there are 20 persons who would like to make presentations. So, what I would like to suggest as the way in which we proceed is that in one moment I will ask my colleague Chris Gibson to read out the list. We will see if there are any additions or modifications to it and if we have this number I suggest that we devote or we work on the basis of devoting 20 minutes to each person. That 10 of those minutes would consist of the formal remarks that the person may wish to make. And the other 10 minutes could be devoted to discussion or questions that anyone might like to put to the presenter or comments that they may wish to make. For those who are not familiar with the Panel, let me indicate if I may who we all are. My name is Francis Gurry from WIPO and my colleague on my left is Christopher Gibson also from WIPO. If I move to the far left hand side of the table, on my left we have Phil Sbarbaro and I think he is known to most of you who is the Chief Litigation Counsel for NSI. Next to Phil of course is Don Heath who is the President of ISOC, the Internet Society and I am sure is well-known to all of you. Both Phil and Don are nationals of the US. Next to Don Heath is Santiago Bustamenti, who is a national of Ecuador and who is the President of the (ACIPI) which is the Inter American Association for the Protection of Industrial Property. On my right, at the far end of the table is Ken Fockler. Ken is a Canadian national and has extensive experience in respect of the establishment of backbones and networks in Canada and in the organization of associations of ISPs. In fact he was the founder and the first President of the Canadian Association of ISPs. Next to Ken is Mark Partridge who is a lawyer from (at this point the sound cuts off)................... So, let us establish the list of presenters. We will work on the basis of 20 minutes per presentation or per person. I hope that at the end of the meeting we may be able to devote some one hour or two hours to general discussion. But, we will have to see how the agenda goes in the course of the day. I will ask Chris Gibson to just read up out the list of those who have indicated that they do want to speak.
(Mr. Christopher Gibson, Head, Electronic Commerce Section, WIPO): Thank you. I have here the list of those that registered through our website. In addition, I have taken down a number of names from those that this morning spoke with me. I will read out this list, its those that indicate they want to make a presentation. If you do not hear your name and you would like to do so, I will stand over on the side in a few moments and I can list down your name and that will be helpful. Let me also indicate that given the structure that Francis just described, please state your name and the organization, your title and so forth when you first come up. And we do have two microphones which I hope work in the aisles there. So during the ten minute discussion period after a speaker has made a presentation, if you do wish to make an intervention please be sure to state your name as you begin. That is helpful to us because we create a transcript for each of our meetings and we also have a audio file which we post subsequently through our internet website which most of you know is wipo2.wipo.int. So, this right now is being taped. The list includes now in alphabetical order, I am just reading off names Susan Anthony on behalf of the INTA. Next we have Mikki Barry of Internet Policy Consultants. James Branson of AOL. Tod Cohen, Motion Picture Association of America. Sara Deutsch, Bell Atlantic. Michael Doughney, an individual. Michele Farber, AT&T. Ed Gerck, Meta- Certificate Group. Michelena Hallie of Viacom Inc. Kathryn Kleiman of the Domain Name Rights Coalition. Eric Menge, of the Office of Advocacy, U.S. Small Business Administration. Steven Matalitz, I believe that there is an alternate for Steven of the International Intellectual Property Alliance. Dr. Milton Mueller of University of Syracuse School of Information Studies. Gregory Phillips, outside Trademark Counsel for Porsche Cars. Griffith Price of the American Intellectual Property Law Association. Deepak Rajani of the Dear! Net Online Services. Ellen Rony of the Domain Name Handbook. Richard Shell of AmazingDomain.com. Shari Steele of the Electronic Frontier Foundation, Open Root Server Confederation Inc. Elinar Stefferud. I shall also add Michael Sondow who briefly mentioned this morning, of the International Congress of Independent Internet Users. And Tim Casey of MCI and Mike Heltzer of INTA. So, if you have not heard your name and you want to make a presentation, I shall stand over at the side briefly here and I can list down. And I then think what we will do is we will go through this list also if there is anyone that needs to make a presentation in the morning or is unavailable later in the day, I think you need to indicate that to me also right now. So, that we can make sure that you have your opportunity to speak.
(Mr. Francis Gurry): Thanks Chris. I am sorry this is a rather formidable setting in which we find ourselves and the microphones also. Add to that formidable nature, the idea of the meeting is that it ought to be an informal meeting and a discussion in so far as possible. We are a little constrained by the architecture. I suggest that we start strictly in alphabetical order, I see no other way of doing it. If that is acceptable to you, subject of course to the fact that I know a number of you have to leave at various points during the day for meetings. If anyone does need to do that, then they can indicate it to Chris Gibson. So, first on our list is in fact Susan Anthony. Susan can I ask you to start or would you prefer later? Fine, then is Mikki Barry present? No. Then, Jim Branson from AOL. Jim can you start or do you have any constraints?
(Mr. James Branson, Counsel, America Online, Inc): (Party inaudible). Good morning. I am Jim Branson, I am a Counsel for America Online. I appreciate the opportunity to speak this morning. I want to say first of all that America Online very much appreciates the work that WIPO and the Panel of Experts have done. The Interim Report shows a great deal of effort and ..................................... bearing ...................... in the course of the Process and we appreciate the opportunity to contribute to that Process right now. America Online has submitted an electronic format specific to the application and comments on the Interim Report. And I don't want to go through this account now. What I would like to do is to make some general comments about some of our thoughts accumulating to the Interim Report and issues that were identified in that ....................... As a general starting point, America Online's view is that it is useful to have some minimum covered standards of any registration Process but that we would urge that the Process not become confused, cumbersome or other ................... registration body ................. that are and as well that the Process should be easy for the end user to be able to obtain registrations and domain names in a quick, easy and cheap manner. We also believe that it would be useful for the Process to ................ of self-help user use for third parties to be able to monitor these domain names and enforce any rights that they think they may have in those domain names. And of course to that end we agree that the Process of having an inexpensive and easy to use self help manuals like the ADR Process ............................. In keeping with some of these general principles, it our view in America Online that the registration Process should not require any type of pre-clearance, trademark searching through a verification Process by the registration authorities. But that the registration Process should require that certain specific representations be made by registration applicants and that correct contact information be provided by them. Again, if the contact information turns out to be bogus, or if it is not maintained in a correct manner where the representations which are made in the course of the application turn out not to be correct, we believe the proper mechanism is to have a third party contract registration authority and grant the registration authority ........................... And for very low-level mistake and misrepresentation in the application such as a bogus contract information, the registration authority should thereby cancel the application after having given the applicant the opportunity to either update the information or correct it. We do not think there should be an extended takedown procedure as in this case it would be difficult, but in Copyright Act it should be a very simple and straightforward Process to verify that information at that point is correct and accurate. And if it is not, you should remove the registration from the register.
We would point out that one of the ............................ takedown procedure ................., requires that the third party notifying the registration authority that there is a trademark infringement that that is an issue and that is the reason for the request for cancellation. And I would point out that in fact when these procedures are implemented, it could be done through ICANN ....................... the registration authority would be dealing with many different types of complaints about the way in which domain names are used. Only one of which is intellectual property related, others might be ......................................................... distribution of contraband or pirated copyright material and so it should not be ..................... system. The person who brings to the attention of the registration authorities that incorrect contact information that needs to be ......................... intellectual property concerns or trademark concerns.
We move on to the topic of self-help. And the ................. the Whois type information about contact information for a registrant should be easily and readily acceptable to the public. So that, the public can monitor the domain names and so that, that can be done in an efficient and comprehensive manner ...................for instance be able to .................................... domain name registrant activities ................... going on throughout the domain name system. We are very sensitive in America Online to privacy types of considerations so we think that some efforts to try and take those into account. In particular, we are concerned about privacy involving children and one way to deal with that perhaps would be to disallow children from registering themselves with domain names. Such registrations for instance could be done through an adult. In addition, if there are others ......................... who wish to make an anonymity claim in the proper way to do that could be through a third party ...................................
In addition, to the privacy (issue, there are concerns) on how this contact information may be used. For instance, disallowing use of the information for preparing e-mail or marketing lists or something of that sort which again could get individuals who are abusing this system. And, a notice should be clear in all registration applications in what manner the information would be made public and how it will be permitted for use, so that people who are registering will understand that.
Moving on to the ADR Process. It is argued that this is a very .............. Process and we agree in principle with the procedures which have been proposed in the Interim Report. But, it is our view that we should try to have this ADR Process be limited in the first instance, so that it can be viewed publicly and confidence is built around the Process and that it will be used and people will not turn and go to the courts as they would be entitled to under this procedure. And two ways in which to instill that confidence we think would be to limit the range of types of complaints that can be brought as mandatory matter under the ADR Process to abusive registrations and not just simply about all intellectual property related complaints to be handled as a mandatory matter. If the parties wish to handle the additional matters on a voluntary basis obviously that would be fine.
We also are not inclined just to agree that it is a good idea to have a new body of law developed around this ADR Process. Particularly because laws among the many Member States are ................... We think that the ADR Process should be conducted in a manner that the decisions, while public, should not mean that the rationale should necessarily be public and create in essence a precedential value. Maybe not for the courts, but for other of the ADR procedures that would come afterwards. And we think it is important that whoever the neutrals are in the arbitral proceedings should look to the laws of the countries and not to other arbitral decisions as the precedent that they should follow.
We also think that in keeping with limited initial use of the ADR Process, that the types of remedies that should be available should be limited in scope to things like suspension, cancellation, transfer of a domain name and allocation of costs, and should not move to other more creative solutions, such as enforced gateway pages for assignment, or reassignment of domain names or multiplication of domain names.
I would also state as a final comment that we are in support of the exclusion Process. We think that it has been well thought out, and we think that, that would be a mechanism that might help to reduce a significant amount of abuse of practice that does go on with domain names. And one way we believe that, new domain names could be rolled out in a short term without putting on new burden on intellectual property rights owners would be to have a new domain established specifically for personal and non-commercial use like a .nom domain. In that manner, I would think that individuals who have an opportunity to obtain additional domain name space for personal use, non-commercial use with a minimal amount of possible of conflict with intellectual property rights owners. And that also, I believe would establish a test-bed for rolling out of additional domain name space. And that is all the comments I have at this point. I appreciate once again the opportunity to share them with you. Thank you. (Mr. Francis Gurry): Thank you very much Jim. I would like to open the floor to any observations or any questions that people might like to put. May I start by asking one question myself. You support the idea of differentiation in terms of the possibility of a non-commercial, personal domain and you support exclusions. Would in your view or the way you see it matter, would an exclusion apply in a non-commercial domain as well as a commercial domain?
(Mr. James Branson): I think our view is that it wouldn't necessarily apply in the personal domain name space. But, the ............... say that there are lots of personal names and I would say that the names that would be able to be registered in the .tr or .nom space, one of the requirements would be that it would have to be somebody's name or nickname and they would have to represent that fact. Somebody could have the name Apple as their surname and clearly they should be entitled to use that surname, we think, for non-commercial purposes, for personal websites of this sort without having Apple Computers be able to exclude that name. On the other hand, there could be instances where somebody would attempt to register for instance Xerox. Xerox was an invented name by a corporation and therefore the proper mechanism we think for handling that would be abusive registration Process of the ADR Process and not the exclusionary Process.
(Mr. Francis Gurry): And may I just ask you another question. You just mentioned specifically a personal or an individual domain for persons or individuals. It might be broader in terms of a non-commercial domain or there might be several within your ........... ICANN eventually structures that domain name space for generic top-level domains. And are you happy with the notion of commercial, non-commercial as the basis of the distinction? Do you have any comments on that? If that is having more rigorous requirements in certain respects? For example, in the commercial area or a non-commercial area. Is that a sufficient make-good distinction to use as the basis that is commercial on one hand and non-commercial, or is there any other way in which one could formulate this to get more accurately at where everyone is trying to get to?
(Mr. James Branson): I think if I understand the question correctly, it is whether or not differentiation among domain names should be and whether it would be reasonable to differentiate based on commercial non-commercial usage. And what I am proposing here is not a commercial non-commercial distinction alone, its a personal non-commercial distinction, which I think is different. I am not speaking about non-profit corporations for instance, or other possible non-commercial uses, which I think should not be differentiated from general commercial use necessarily.
(Mr. Francis Gurry): Fine. And I apologize for the way in which I asked the question. I think it is the influence of jet-lag. What I was meaning is that, the basis of making a distinction between, on the one hand, commercial domains and, on the other hand, non-commercial domains, is that one could see that this is the way of accommodating interests that up to a certain extent in intention. On the one hand, the interests of protecting intellectual property, and on the other hand the interests of allowing freedom of speech of protecting privacy. If the basis of the distinction is commercial/non-commercial or even, as you suggest, the creation of a personal domain, would this serve the interest of protecting intellectual property? Is it sufficient? For example, one can imagine that there is non-commercial infringement of intellectual property rights. So, that the distinction of commercial non-commercial may not be the one that we ultimately have to identify as the operative basis.
(Mr. James Branson): I would agree with that. And I would agree that therefore even in any domain that which is rolled out, whether it be a personal non-commercial space, or any other top-level domain which is rolled out, should be subject to the same requirements of complying with the laws of the various countries in which those domains operate and should be subject in addition to the ADR type Process that WIPO has proposed in the Interim Report.
(Mr. Francis Gurry): Thank you Jim. Are there any questions from any members of the Panel for a start? So, we start with Ken Fockler please?
(Mr. Ken Fockler): I believe you said that you agreed in principle with the ADR, but would like in the first instance for it to be limited, and I think you suggested, to abusive. Could you expand on what would be abusive and who decides?
(Mr. James Branson): The Interim Report provides in one of the sections a list of criteria on which abusive conduct should be judged, which looks to us to be a pretty good starting point if we are trying to be able to ascertain what is abusive practice. The types of considerations would be whether or not the person who has registered the name is attempting to resell that name to either a trademark rights holder or a competitor of that owner. Whether the person who is registering the domain name is attempting to register lots of trademarks particularly those which are well-known trademarks of third parties. Whether the individual who is registering the domain name is using well-known trademarks in a dilutive manner that is simply and clearly for the purpose of trying to garner the attention of people who would be looking for the well-known trademark. An example of that, we feel, with problems like websites at America Online sex.whatever the attempt to turn America Online in that context is almost always simply to be able to garner the attention of people who are looking for America Online through search engines. And the sites have nothing to do with America Online and there is no justifiable reason for using America Online in those names. They are simply pornography sites.
(Mr. Francis Gurry): Thanks Ken. Any other questions?
(Mr. Ken Fockler): Who judges that?
(Mr. James Branson): Well, in terms of whether or not as a subject matter jurisdictional question towards the arbitral proceedings that would be held, the arbitrator would have to make an initial judgement as to whether or not there is jurisdiction to be able to hear that matter as a mandatory subject matter of the arbitration proceedings. If the arbitrator determines that it is not, the worst case scenario is that the complainant would have to resort to the courts, which would in any case be an option for the complainant.
(Mr. Mark Partridge, Member, Board of Directors, American Intellectual Property Law Association): The area that I would like to hear your further thoughts on is, your suggestion that in the ADR Process that the decision-maker apply existing national law, as opposed to some other standards. And I am wondering what mechanism might work for that? If you have any ideas on how you would decide the rules for the ADR procedure to establish what law should be followed by the decision-maker.
(Mr. James Branson): In the current Interim Report, there is a statement to the effect that the neutral should apply the law based upon the totality of circumstances of the parties and the use that is involved. I think we think that's a prudent basis for trying to determine what national laws would apply. We think that the goal should be to try to look for shared rules of decision among the various Member States, and that is one of the reasons for limiting the scope of the mandatory subject matter jurisdiction. In the event that the arbitrator needs to deal with more difficult issues of multiple parties claiming competing trademark rights both of which may be legitimate, or to evaluate things like their use and First Amendment type of concerns, we think it would be much more difficult for the arbitrators to select a commonly shared and well-understood principle to have a dispute resolved.
(Mr. Mark Partridge): Let me ask a follow-up. Let me see if I can get your reaction and maybe other speakers reaction to a mechanism that might work for establishing other national laws that would apply in a dispute. What do you think of the possibility of requiring the party who is going to complain to identify the location where the respondent of a domain name holder would in fact be subject to sue? And that is an initial matter where the decision-maker considers whether in fact that is correct and if so, that it applies the law that jurisdiction as a result. Neither party, neither the complainant nor the respondent, would be subject to rules that they would not otherwise be subject to in a national court. I would like to get your reaction to that idea, and the reaction of the others as they speak during the day.
(Mr. James Branson): I think our understanding is that the totality of the circumstances looked at by a neutral would include the locations in which the different parties reside and where the harm occurs. For instance, under U.S. law, the law of the location where the rights holder resides would be a place that would be a proper jurisdiction, for it would be subject to the application of law. In addition, in the Internet department becomes .................. in many places and so perhaps trying to ascertain where the focus of harm is would be a proper consideration of the neutral determining what law to apply. So, I don't think in this context its subject to an easy rule as to which law and which neutral would apply in a situation. I think it is a totality of the circumstances ...............................
(Professor Michael Froomkin, Professor, University of Miami School of Law): I don't know if you had a chance to see the document I published on the Internet (a critique)........................ of some parts of the Interim Report. But in that, I suggested that there would be some circumstances in which the losing party in an arbitration would not actually ......................... American court ........................ And I also suggested that the arbitration (inaudible) ..................... Unless you have seen the Rport, if you haven't,it is too complicated to try to summarize here. But, just for example, if you are the domain name holder and you use the ADR, under the rules arbitration passes to the complainant. Now, if they are all subject to the U.S. (inaudible). So, although the ................................, (inaudible) ...................................... it seems to me at that point in time ................................ the original registrant no longer has a ............................................. And I was just wondering (inaudible).
(Mr. James Branson): I have not dealt with the problem that you are describing, but it seems that the cause of action that would, there seems to be a cause of action that the initial registrant would have against the registrant, sure. Against the arbitrator ......................... Against the third party no, because you would find that the third party unofficially contracted ............. this Process.
(Mr........................): Except for the fact that the Process entails either you can go and enforce your rights in court, they are not bound by a binding decision of the arbitrator.
(Mr. Francis Gurry): Can I suggest that we have a question and answer.
(Mr. James Branson): I have not seen a case a like that, so I don't know.
(Mr. Francis Gurry): Any comments or questions from anyone else present?
(Ms. Kathryn Kleiman, General Counsel and Co-Founder of the Domain Name Rights Coalition): I want to ask about America Online's policy towards small businesses and entrepreneurs. America Online has a very well-known project called the Greenhouse Project and that is a project to foster new ideas online and new businesses and it has been very successful. And from its launch,businesses have come like not before. You also work with subsidiaries around the country including a multimedia company in California,known as asylum.com. When these small businesses start, they often choose normal, ordinary, basic dictionary words to describe their businesses. Like "asylum" is a word that is no doubt trademarked in many different areas and forms, and when a new business picks it they are just looking to make sure that their goods and services are identifiable, not that no one else in the world is using that word. How do you propose that the rules protect AOL, small businesses and subsidiaries that they are working with, and all the rights of all new small businesses to choose basic words to label their goods and services?
(Mr. James Branson): To talk more generally about the problem of registering domain names its AOL's view that there should be broad ability to register domain names by the many parties so long as they don't infringe on third party rights. We think that the ADR Process that has been suggested by WIPO helps to be able to resolve at least a narrow category of the types of problems which do exist right now, specifically abusive practices. The types of conflicts that you are referring to are what I would characterize as the more bread and butter, typical disputes that arise in a domain. Multiple parties who may have multiple conflicting rights, or believe that they have multiple conflicting rights to a particular word. That is why I don't think it is appropriate for the ADR Process to be mandatory with regard to those types of disputes, because I think they involve complicated issues that would be difficult for our proceedings to be able to formulate that ...................
(Mr. Francis Gurry): Fine. Thank you very much Jim Branson. Jim can you take one other observation and then we will move on.
(Ms. Susan Anthony, Attorney, International Trademark Association): Susan Anthony speaking today on behalf of the International Trademark Association. Jim this is a question on which your guidance would be useful, I believe. Going back to Francis Gurry's question about the non-commercial and commercial distinction and whether an exclusion would apply in the non-commercial gTLD. How would you deal with registration by a third party for example of AOL-sucks, or on the other side, AOL-is-great?
(Mr. James Branson): Our view of the exclusion is that the exclusions are very narrow, and my reading of the Interim Report was that the exclusion only applies to words which are identical to the famous marks. As a result, very extreme situations of exclusions wouldn't apply to the type of domain names that you are describing. We probably are subject to more fan sites, if you will, positive and negative, than just about anybody else on the Internet. We certainly welcome the dialogue and debate about what we do and what this industry is becoming. And it is difficult for actions about when it is correct and appropriate for somebody to express themselves using the phrase AOL-sucks.com, and when it is not correct but creditworthy to do that is a complicated and difficult question. And again it is one of the reasons why we think the ADR Process mandatory procedure shouldn't try to address that difficult question.
(Mr. Francis Gurry): The next person is Todd Cohen. Is Todd Cohen present? He is not here. Then lets move on then to Sarah Deutsch ......................... (inaudible). The next person is Michael Doughney. I am sorry if I am mispronouncing your name.
(Mr. Michael Doughney, ISP, domain Name Owner, Representing Self): Good morning. My name is actually Mike Doughney, and today I am going to be representing myself, even though I have been working around domain name issues for a while now. In a number of ways I could comment on the WIPO recommendations, and you know so far this morning I have heard a lot of, I guess, rather ratified legalistic discussion. And I basically have a lot of experience, I guess, in the real world on how this thing plays out. And I guess that is really where I want to begin my comments from. I personally registered two domain names that have been challenged on the basis and allegation of trademark infringement. And one of those domains I have had is composed of my own personal initials MTD.com. And I think the WIPO proposals completely fails to address the core issues that resulted in the challenges in my domain registrations. And the proposals are completely silent about and grant no protection for free speech and social and political commentary. It also fails to address an individual's right to use his or her own name or initials as part of a domain name, even for their own personal non-commercial website. In both these instances the WIPO proposal which has the existing NSI Domain Name Dispute Policy, I think the attempt to extend the notion of trademark infringement to create a right of trademark holders that where none really currently exists. While I think these are important matters, I am instead going to focus most of my comments on the potential and current impact of domain name policy on small businesses, which is a focus of which I have considerable personal experience.
I was the co-founder of an Internet service provider here in the Washington D.C. area, in the basement of a Maryland townhouse in the fall of 1991. Six years later that company, after going public, was sold for 150 million dollars. In those days there was little to nothing said about domain name policy, except that .com was commercial, .org was non-commercial, and you better be an Internet service provider before you can even think about registering in .net. And the notion of taking away someone's domain name had not even surfaced yet. While we could not have realized its value at the time, the domain name that we chose for our business in that environment was stable. And it was a solid foundation which we could rely on to do our business. In those times we did not even fear that our domain name registration might be challenged by someone in California who sold plush toys, or produced cartoons, or even a huge communications conglomerate that did both of those things and wanted to be an Internet provider too. Today, with a swift growth of the Net collisions among registrants and trademark holders in completely unrelated businesses are inevitable. Between registrants that have been using the Net for a decade, and huge businesses that eventually came to realize that the Internet is a medium in which they must have a presence. What is of particular value to me when developing a policy that attempts to arbitrate these collisions, is the status of the small business. Of the entrepreneur who often in the history of the Internet, as in many other fields, has taken on the daunting task of developing new businesses of bringing whole new technologies, ways of communicating and even thinking to market. And whether you are willing to admit it or not, the Internet was cobbled together by a bunch of renegade entrepreneurs who made this technology work. We took a medium that many at this time would not believe could be sold and made it into a business right under the nose of huge telecommunications firms. Today, the business of building and selling the Internet infrastructure has grown up and been absorbed by many of those same firms. Many of the pioneers joined by a new generation have moved from the business of raw Internet service to the development of contact and new applications. And those people are as deserving of a stable domain name system as we were. A system in which those who came first, who staked their claim, taking their chances, and start a business can be assured that their registration will not be pulled out from under them, or that they must be defended at the cost of thousands or tens or hundreds of thousands of dollars.
One dispute was recently brought to my attention. A small Internet provider has received a domain name challenge from another company that is located on the other side of the United States and it is in a completely different business. They have already spent $40,000 preparing to defend themselves and the case hasn't even gone to trial yet. I am talking about a company with six employees. Now, if my company, when I had six employees and had about a 1,000 customers struggling to keep up the growth, having to decide daily between paying our employees and buying new equipment, had then to face such a challenge we would have probably just gone under. The climate which should be fostered by a domain name policy should be welcoming and inviting to small businesses, start up companies and entrepreneurs. Policies that only facilitate such challenges would only serve to drive people out of business. Is this the result that WIPO is expecting? In these challenges no one wins. The challenger, rather than choosing another name or making a reasonable offer to pay off the registrant, stands and looks like a bully to the general public. The registrant must pay to defend themselves and many can hardly afford to pay. Perhaps only the lawyers are the people who win. Again, is this the result that WIPO is working towards? I would instead propose that the value and domain names that not may be descriptive, but that they be unchanging. That when a business or individual registers a name, that the registration be permanent and, further, that trademark and intellectual property considerations are irrelevant and unconnected to domain name registrations. Now, you are probably asking well, why would anyone seriously stage such a thing in front of a body like this? And there is a good reason. And that is a change is inevitable. And the notion that domain names must carry some relevant information in them relative to the product of the company or the service, is already obsolete. And the growth of the Internet and the Web as fast as it has been growing, the domain name that often becomes useless as a means of finding a business. I can name plenty of examples and I think it is a good test to try, for instance, to look for a U.S. newspaper by guessing at the domain name. It basically does not work. Now, me I can think of a couple of examples, for instance Sun Papers does not have Sun Papers in their domain name, they had sunspot.net, which isn't even a .com. The .com is already taken by a software firm. A solution may be found in the next generation of search engines that measure the relevance of websites. I found one such search engine to be incredibly accurate when searching for corporations by the well-known trademarks. There is a search engine that is new, its in test right now, its a development standard for university, its called Gubal. I have had about better than 90 percent success rate or probably even better than that. Where there is a text box and you put in your search term and it has two buttons for regular search and in the other button it says "I am feeling lucky". If you take a trademark and you press "I am feeling lucky", take Ford or Chevrolet or BMW or even Porsche, which has been a subject of some controversy, you put it in there and you go directly to the right website by pressing that button. And it seems to work most of the time. Any search engine, of course, is useless once the sites are disabled or removed from the web. Reindexing the search engine can take weeks or months. During that time, a relocated business completely loses its visibility on the web. In a meeting I attended yesterday, I witnessed a particular attorney who said he defends a large corporation's intellectual property, precede his comments about domain name policy with the phrase "first do you know where". I can think of no greater harm that can be done to small businesses on the web than a scorched earth policy invented by such attorneys to defend some newly created pseudo-legal concept in the trademark infringement. What I have been watching is the prosecution of people who have done nothing more than select strings of letters, identifiers that they register with the assumption that they would not be taken away from them, that they could be relied upon as a foundation to do their business. Why are these largely irrelevant matches between strings of letters being prosecuted as a high crime? Perhaps we are watching the growth of a make-work project for a class of bullies that targets those who are least likely to be able to defend themselves. I really can't find a very good explanation for why this is happening. It seems to be a futile and ................... quest to control a company's public image. I don't think it really amounts to much. Frankly I think if such a policy is embodied in the WIPO proposals we need to bring it to the legal profession. It clearly sends the message its up and .................. on small business. Questions?
(Mr. Don Heath, Internet Society): (Inaudible) How do you handle the following question? Lets say you have got Porsche. You have a new Porsche you have spent millions of dollars on the trademark or billions maybe, I don't know. And either the name Porsche or a combination of which ................. upon your products. And I go to that site, I am fishing for Porsche, I got a pornographic site. How do you, is that justifiable? (Interruptions). In the sense that once you register a domain name you should be criminal. Isn't there some problem there?
(Mr. Michael Doughney): I think people who do such things are very easy to buy out. And that the cheapest way to deal with it is just to make an offer. And I know that sounds absurd, but I am just speaking from the way I see it as a small businessman. I think we are dealing with a temporary problem here. I think that over the long-term, search engines and other technologies will allow this problem to basically just disappear, but ten years from now. In the meantime, I think that we need the balance of what you are suggesting in that kind of situation against the situation of where another business who is legitimately using that name Porsche has been there first. And, it is awfully hard to go and to set up a maze or some sort of set of tests that decides that, okay, Porsche as a small business or Porsche as the porn star or Porsche as the international car company has any, that there should be any other term other than who came there first. If Porsche the Soda register their trademark, I think they lose. They should register Porsche Sports Cars, there are 26, 23 or whatever the number of characters is to be put in the domain name. And then, over the long-term their indexes, there are other sites that register car companies. There are all sorts of other ways to look up individuals and corporations on the web, other than that domain name. And I think that so much of what I see on the Net these days, and so much of even my own work when I spend a lot of time on the web, is not spent throwing domain names into the box at the top of my Netscape, its spent by either using a search engine or using indexes of other sites. Or even using advertising matters of things that I find of interest. A gentleman yesterday in the U.S. meeting mentioned something that this is a matter of advertising that the entire domain name system is a matter of advertising, and maybe we need to think of it in those terms with other forms of advertising of making it well-known that Porsche is at Porsche.cars rather than Porsche, as in a possible hypothetical example. A better way to deal with this, rather than running around and prosecuting and pulling people's domain names away from them when they have been in business and they have put all their time, their effort, their life-savings in setting up the business. And thinking in terms of the legalistic way of looking at this is not a lot of difference between, and I am speaking as a former ISP policy person who had to go and figure out some sort of equitable policy of how to deal with users who were abusing systems of various kinds. And the point was that you could not set up a policy that says okay, well if it is a porn site, or if it is something I don't agree with, or if it is some individual who I perceive as having bought this domain name for speculative purposes, how do you set up a test to quickly verify that, that is true? I don't think you can.
(Mr. Don Heath): No, what I would just say is one, I wasn't really trying to suggest anything. My ..................... a question. At the same time I will try and suggest something. It seems to me that if someone capitalizes on the good name that someone has spent millions of dollars to create for purposes of their own ends which I ................ to that name. In other words, lets use Porsche. They spent a lot of money building that name and if somebody uses that name specifically, and only because they know they could get attention and get traffic to their site, and then they use it for their own ends which has nothing to do with Porsche. I think that is wrong.
(Mr. Michael Doughney ?): How do you reliably distinguish again between that?
(Mr. Don Heath): I dont, but some court or some procedure would.
(Mr. Michael Doughney): I am not sure that there is an equitable, fast, cheap procedure to do what you are suggesting. I think that is out in fantasy land somewhere. As a matter of speaking, as a small business person, a legitimate small business is going to come under fire because of a policy that maybe proposed just to address what you are suggesting. The hypothetical situation that you are addressing. So, that, yes, there will be a net cast and there will be people who are legitimately abusing someone's trademark caught up into this net. I am concerned about all the rest of the people are going to get caught in that net. And speaking of someone who started an Internet at multi-million dollar ISP with about a thousand dollars in a little space in their friend's basement, okay, and basically put all of my time and effort and savings and everything into this thing. I am speaking as an ex-small businessman who started with that, you are going to be taking that away with some other people who have been in this same situation that I have.
(Mr. Don Heath ): My last comment. That I am very sympathetic to you and I agree with you and of course the Internet Society stands for that. However, the reason that this is so complicated is because there is the fact, the practical reality of significant expenditures on intellectual property, that this is the situation that I talked about does exist. How do you resolve it? You can't just let it be solved directly. But there has to be either the courts or something that is fast and cheap. That is the essence of the problem.
(Mr. Michael Doughney): I understand that, that is the essence of this problem. But the point I am trying to make is that there may well be other solutions other than legalistic ones. And that maybe we need to think in terms of technology search engines and other ways of getting around the Net to make this problem much less a big deal and occupy up so much of time, effort and money than it is right now.
(Mr. Francis Gurry): (Inaudible) ........................... So what would be your response, for example, in a situation in which take your own case, where you have established a domain name and a business under the domain name and a search engine comes along attributes that to someone else. So, we are now dealing with the search engine and whether the search engine, the operating search engine, does this because the authors of that name paid the highest price. (Inaudible). Either way, your domain name if you go to the search engine and register (Inaudible).
(Mr. Michael Doughney): Again, I think there is this confusion between an address space that should be stable in terms of if you register something and you have already developed a reputation in a certain location and that should not change. Relative to I guess there is the importers saying it is an integrity issue, that if a name or search engine is advertising something under this it should always be that and not directly somewhere else. Is that kind of where you are going?
(Mr. Francis Gurry): What I am saying is, I don't think there is much difference between the arguments that the intellectual property owners are making in respect of domain names. (Inaudible).
(Mr. Michael Doughney): I am making the assumption based on what I see in the search engines today where they do with integrity go through an index what is actually on the page with some accuracy, as I have seen so far. Now, I think that maybe you are talking about if this were to be done by a competitor there is certainly anti-competitive business practice statutes that would apply in those cases. How you would enforce them across the entire planet, I do not know. But that is a different issue than getting a firm address space and a firm address for a particular entity, never mind what its name is, and making that work over time, rather than getting it changed every six months depending on whos complained lately.
(Mr. Francis Gurry): I think there is a longer ..................... and it works quite well often (Inaudible).
(Mr. James Branson): Just very quickly. Michael you have mentioned a kind of dichotomy of interests, the registrant on the one hand and a purported trademark on the other hand. And my question for you is, what about the consumer in this? What is your view about how to be able to have consumers find and have their expectations met when they are looking for particular goods or services. And if they don't find, for instance, something that they are not looking for, some type of, and I do not want to disparage any industry in particular, but pornography, for instance, then the child may not be looking for it but finds it because they are looking for Porsche cars.
(Mr. Michael Doughney.): Are you asking how that relates to a domain name?
(Mr. James Branson): I am asking what is your kind of proposal for how to be able to resolve the kind of real problem about helping consumers find what they are looking for, without having them to sift through a needle in a haystack?
(Mr. Michael Doughney): Well, I think that the crust of my comments is that the domain name is of limited utility when trying to find something that you want. And that, I keep getting back to search engines but there are no doubt other ways. I know there are companies that are on the Web right now spending a lot of money trying to figure out how to advertise their websites. And when I drive down the street these days I can't avoid seeing a vehicle that has a URL on it that may not necessarily, I guess a perfect example is Rider Trucks, where it is www.yellowtruck.com, it does not have Rider in it. Putting out memorable hooks in their URLs, so that when people see them they could come back to their computers and go to the right place. But, again I think that these are methods that are outside the domain name system itself that they are using. And I don't know how that addresses what you are getting to.
(end of tape).
(Professor Michael Froomkin): (Inaudible).
(Mr. Michael Doughney): I think we are already there. I mean, I am involved in another thing now where I do a lot of research on the web and I don't use a domain name for very much. I know that if I am looking, for instance, for a newspaper, I know that there is a website that links to all the newspapers, or I will use a search engine. Or I use any one of a number of other search engines, rather than relying on domain names and may occasionally try using a domain name, but it is not complicated by the fact that you have three often used top-level domains. When you are talking about, say, organizations with three or four letter acronyms, there isn't any relationship that is reliable. I think a lot of it really depends on whether or not that organization was early into understanding that the Net was a resource they needed to be on. And whether or not they got their three letter acronym when it was still available, because today most three letter acronyms of any value I think have pretty much been gone for a long time. And of course you have to check around the multiple top-levels which are probably even more complicated in the future. So, it really, for me, it has already reached the level of using DOS.
(Mr. Francis Gurry): I was at the cinema recently and there was an advertisement. There were three frames essentially. The first was a man going up the escalator seen from the waist down, essentially. The second frame was the same man walking down the shopping mall seen from behind without the trousers on. And the third frame was a blue screen with www.levi.com and nothing else. There was no product, there was absence of the product, and there was no trademark. But we are not quite at loss commercially. Someone thinks there is value in a domain name there. Thank you very much Michael. We were due to have coffee, I am not sure whether it is around right now. That is it, we will proceed on with one more before coffee. The next person I think is Michele Farber, but I know she is not here at the moment. Is Ed Gerck present? No. Okay, then Michelena Hallie is present I think.
(Ms. Michele Farber, Senior Attorney, AT&T Corp.): Good morning. A third party registered call-att.com. This website stated, it was remarkable it had the AT&T brand up there, and it said "welcome to AT&T's virtual calling card page" and solicited authors for the virtual calling card. I had to look twice, I was confused whether this was a new product. I thought, wow, what a great product. But fortunately, it was not my company's product. This particular website accepted credit card numbers, okay. So, this is a real problem that we are facing. Third, the misuse of trademarks by non-trademark owners is also leading to further problems for consumers. Frequently, the misused trademark is used for pornography site or links to a pornography site. And I have another example for you. Someone, a third party had registered attt.com which links to a third party site advertising, not only a sex gallery, but also 260 plus bit free video feeds. Fourth, as we all know and we have discussed today, trademark owners are encountering cybersquatters. Those who register domain names with the express intent to sell them back to the trademark owners. I have yet another example for you. A third party located in Brazil registered pocketnet.com and offered it for sale to AT&T for more than $60,000. These are just a few of the examples that I have highlighted. I have on my docket now over a hundred cases which are a mixture of these four different categories which I just discussed with you. AT&T firmly agrees, and wants to work with you, that there are legitimate free speech and First Amendment rights associated with the use of trademarks. However, the foregoing examples are not illustrative of such legitimate use. I also want to make the point that I think of central concern to us is that consumer confusion issue and those who are voicing legitimate, we believe legitimate First Amendment concerns, are also consumers. And we have the problem of fraud and also consumer confusion, which is flagrant on the Internet right now. These scenarios we believe are creating new vulnerabilities for trademark owners and consumers alike. Since no one is able to rely on the Internet as a secure, reliable medium to do business and to communicate. When these scenarios arise, the ability and necessity to rely on government agencies responsible for consumer protection is obvious. Hence, AT&T believe certain measures need to be adopted including the following.
I am just going to at this time, because of time constraints highlight a few of the measures that we believe need to be adopted. I have found personally, that there is false information contained in the Whois database. I think it is necessary that WIPO should mandate their domain name agreements. Require a full and complete street address for the applicant, rather than accepting a post office box. I will give you other examples. I have tried to locate owners who have listed two countries for their address. I have come across situations where the telephone number was the number listing for New Jersey, but yet their street address was for a foreign country. Again, I think it was Sara or someone else who mentioned previous to me, we don't take action in all cases but we need to first investigate to find out who here has the legitimate rights. And we need ready access to contact information. Anonymity will seriously, we believe, injure trademark enforcement efforts and the growth of electronic commerce. AT&T also endorses the recommendation that the inclusion of inaccurate information in the registration agreement should result in a material breach of the domain name contract, which would in turn lead to a loss of domain name rights.
We believe that owners would not have adequate and effective protection for trademarks without access to the widest possible jurisdictional options. And I think for the reasons that Sara Deutsch so eloquently set forth. We are fearful of form shopping. Arbitration online we believe is, and we look forward to it, we believe it is a cost effective and very desirable method of resolving disputes. And we believe that it should be adopted as the standard. We believe that some testing should take place, that the system operates efficiently, that security and encryption measures are in place. We have to think about hackers and that the information that the companies and trademark owners and domain name registrants send over the Internet is secure. AT&T also supports that the principle that the ADR determination should be subject to appeal to national courts. We strongly support the availability of exclusions for famous and well-known marks. And we also, as I mentioned before, support the principle that new gTLDs must be opened in an extremely slow and controlled manner. AT&T looks forward to continuing to work with WIPO in addressing these issues, because we honestly believe that these are critical, not only to the advancement of the Internet ensuring fair competition, but most significantly in avoiding consumer confusion. Thank you.
(Mr. Francis Gurry): Thank you very much Michele.
(Dr. Milton L. Mueller, Associate Professor, Syracuse University School of Information Studies): Just by way of preamble. I own substantial number of AT&T stock. I received the AT&T fellowship and telephone history to write my dissertation and I have other relationships with AT&T that are fairly substantial. What I see is you giving us three examples of fraudulent cases of domain name usage, and in each one of those cases the problem is gone and it is gone so quickly that many of us never actually saw those sites. For example, you have been using the ATTT example for I think 18 months now. You have been waving at Interface, its gone. How did it get taken care of?
(Ms. Michele Farber): We actually had to file suit in that particular case. Let me just mention that I believe that we had many, many cases and approximately 20 to 25 new cases of individuals registering ATTT not only alone misspellings, but we also had many, many cases where individuals are registering att with descriptive terms and generic terms. And someone had mentioned before it is not only, I really would like to highlight the fact, that it is not only when we do get to court because we have a couple of cases now pending in actions that we have recently filed. It is not only getting to court, and just filing a complaint that can cost you 10 to 15 thousand dollars for just filing a complaint using outside counsel. But, it is all the work, all that background work that you need to do, the investigative work to find out really legitimately who has the prior rights, what are they using it for? This takes time, money and resources that honestly I don't think many trademark owners have presently. And I believe that (interruption).
(Dr. Milton L. Mueller): All I am looking for here is just, there is fraud and deception and infringement in every communications medium. What I am looking for is some kind of a relationship between the measures specifically asked for and a demonstration that those measures are necessary, and that the problem is you need an extraordinary to this medium and I don't think that you have met that burden of proof.
(Ms. Michele Farber): Well, I believe I have, because I have to say that the majority of my time is devoted to working on domain name disputes and investigating and sending out letters and the only (interruption) ................ third parties.
(Dr. Milton L. Mueller): You undermine your own credibility.
(Mr. Francis Gurry): Can I suggest, we only have a limited period of time. Make one more comment.
(Dr. Milton L. Mueller): One more comment is that this list that the Bell Atlantic person handed out looks like what they did was to search for the string "Bell", and they found lots and lots of hits of the word "Bell". Now, that does not constitute prima facie evidence of infringement.
(Ms. Michele Farber): Let me just say to you I have not seen that. But I agree with you that if you do a search step of any company name, there are some legitimate uses out there. And what I am saying to you, is that there are many cases of infringement, links to pornography sites and the other examples that I mentioned in terms of dilution. This is a real problem and in terms of the number of hits of the Bell, I mean it takes time to actually look at each specific site and figure out what is going on here. Is this a legitimate use or is it an infringing use? So, I agree with you, it is very hard to tell if you just do a search and import a company name you would have to look individually and I think Sara Deutsch could best give us some insight on this.
(Ms. Sara Deutsch): (Inaudible)
(Mr. Francis Gurry): Okay. Just for the record can I just repeat that, because I don't think you would have come through on the recording and we try to make the audio tapes and the text also available on our website. That the column that is represented by some 953 hits for 13 months period represents the number of just possibilities of infringements. The next column where the 953 comes down to 784, represents the number that Bell Atlantic has, after assessment of the site formed a view, constitutes in their view an infringement.
(Mr. Eric Menge, Assistant Chief Advocate, Office of Advocacy, U.S. Small Business Administration): My name is Eric Menge and I am Assistant Chief Counsel at the Office of Advocacy of U.S. Small Business Administration. My curiosity was pricked by one of the statements that you said that you thought it was absolutely necessary that as part of the registration Process the applicant give a street address as opposed to a P.O. Box. A lot of small businesses have as their official mailing address a P.O. Box and that goes especially for small businesses that are home-based. People working out of a den or the basement or a spare bedroom. I was kind of curious what exactly is so necessary about a street address as opposed to a P.O. Box, that is necessary for a trademark holder to enforce their rights? Wouldn't a P.O. BOX be sufficient, since it gives us a point of contact?
(Ms. Michele Farber): We have just had the experience that in many cases where P.O. Boxes are listed, they are fraudulent and there would be, we believe, more certainty having as an addition or in lieu of the street address. Contacting the owner and again trying to work it out, not necessarily litigating, or not necessarily even having to go to mediation or arbitration. We would like to have the opportunity to further discuss in certain instances with the domain name registrant their purpose. For example, I had an instance where someone claimed they did register, there was a variation and I don't remember excuse me the exact domain name, but a variation because it was their initials. And we had some discussion and I said, fine, if this is for your own personal site and you maintain that site for personal use and it is not relating to telecom. You know, you are not offering telecom products or services, I have no problem with that. So, I have to say that in a majority of cases we have been able to resolve things, but we need that contact information. We don't want to you know speaking as from a big company, we don't want to go out there and have to litigate every case, we don't want that. We just have to protect our brand, the brand that we have invested a lot of money in and, especially on the Internet, when the consumer in terms of trusting the product that they are purchasing with the service out there, the only thing they have to rely on is the brand. And we have to, as a trademark owner, enforce our rights and police out there.
(Mr. Eric Menge): Okay. Just to follow-up very quickly on that. You are right into the problem of the P.O. Box being fraudulent. Doesn't that fall into the other proposal that was in the Interim Report, that if there is fraudulent or actually inaccurate information that is ground for canceling the registration?
(Ms. Michele Farber): We agree with that.
(Mr. Eric Menge): Okay. So, essentially if you go there and the P.O. Box is not there it is fraudulent, therefore inaccurate information and you can then ask the registration authority to cancel the domain name without requiring, and however, if it is legitimate, you will find someone at that P.O. Box.
(Ms. Michele Farber): That was in a different paragraph and we also agree with that recommendation.
(Mr. Francis Gurry): I think we heard your point Eric. Its that you consider it exceptionally important that P.O. Boxes come out as alternative for street names.
(Mr. Eric Menge): Yes, I was just wrapping up, thank you.
(Ms. Michele Farber): I just want to mention very quickly, we also have the situation where I personally have had where there has been, we had a lot returns that said no known address and then we have corresponded with Network Solutions who have come back and said, well the domain name applicant believes that just the e-mail address is accurate and the e-mail address had no relation. You know we couldn't determine who it was from the e-mail address. So, I hope you can understand why we need to know who the owner is to try to get these issues resolved.
(Mr. Francis Gurry): Yes, we have got that point. Just one final comment, Phil Sbarbaro you want to, NSI has been mentioned (interruption).
(Mr. Phil Sbarbaro, Chief Litigation Counsel for NSI): Yes, that is right and this does not have to do with NSI. It is obvious we have tried to come with a balanced Report and we haven't hit the appropriate balance yet. All this has nothing to do with Professor Mueller's comments. I think it is a disservice to impugn AT&T's or Bell Atlantic's motives in any way, shape or form. Those two trademarks are synonymous with stable world communications. I mean, if there is anything that stands for that, those two trademarks do. But, and we are not going to diminish the problem by saying it will go away because the trademark owners of the world are not going to go away. This has got to be solved. So, we have not come up with the right balance yet. The conflict is not going to be prevented. It is going to be reduced and that's I think our function. Nothing is going to eliminate the intentional or unintentional registrations of domain names by somebody who seeks to either confuse the public or does not even mean to, but does it anyway. But, to start the question with the premise that millions upon millions of domain name holders are out to do that is absolutely incorrect. We have, as Professor Mueller points out, a little under 6,000 and that is the exact number 5,940, that have utilized the policy. Again, that does not solve the problem. The problem is in paragraph 109. It is the multiple problem. It is the problem that Greg Phillips is going to get up and explain. It is their problem if they have 100 and they have a 1,000 trademarks that is 100 times a 1,000. You have to solve that problem. We obviously haven't hit it yet.
(Mr. Francis Gurry): Thank you Phil. Thank you Michele Farber for your participation and for your comments. Greg Phillips please, and then while Greg is coming to the podium, may I suggest that those of you who would like coffee or a drink of some description, that you walk out individually and serve yourselves outside. Because I don't think that we have time to break off and reassemble again. Greg Phillips and then one final thing before you start, after that I have Mikki Barry. Is Mikki Barry in the room? No. Fine. Is Ed Gerck in the room? Neither. Okay, then Eric Menge you are. So, if I can call on you next.
(Mr. Gregory Phillips, Lawyer, Outside Trademark Counsel for Porsche Cars): Thank you my name is Greg Phillips, I am lawyer with the law firm of Howard Phillips and Anderson in Salt Lake City, Utah. I am appearing here on behalf of Porsche cars. And Porsche expresses gratitude for the opportunity to plead its plight on what is happening with the Internet and domain names that use the trademark Porsche. Porsche is one of the most famous trademarks in the world. And one of the reasons it is, is because it spent hundreds of millions of dollars in developing that trademark. It even has gone so far as to buy advertising during the Super Bowl. And when we have looked at valuations of the brand Porsche, some estimates have that brand valued at 15 to 20 billion dollars. And in a very real sense the trademark Porsche is the crown jewel of the company. And it is frustrated that over 300 registrants have registered a variation of Porsche in their domain name, with the intent to capitalize on or profit from Porsche's significant investment over the years in developing goodwill in its marks. Now, the statement was made earlier that big corporations ought to tolerate this. It is just simply an irritant. And Professor McCarthy in his treatise has a good description of delusion. He says it is like being stung by bees. You can be stung once or twice, but when you start getting stung 20, 30, 300 times it starts to hurt and it can actually destroy the victim. The comment was made earlier also that domain names are like telephone numbers and it really does not matter what domain name you have. If it does not matter, why are 300 people trying to put Porsche in their domain name? There is a reason for that. The other thing I wanted to point out is, when I was coming out on the plane yesterday I noticed in the Wall Street Journal this advertisement that says in four years they are expecting 3.2 trillion dollars worth of commerce to take place over the Internet. Whether we like it or not, the Internet is no longer the domain of the ivory tower academics or computer techies. The Internet is being catapulted into the commercial world and as e-commerce becomes perhaps the largest player in the commercial world, the Internet must be subject to the rules of the commercial world. It is that simple.
As many of you know, Porsche recently filed a lawsuit against 128 Internet domain names that use Porsche or Boxter, or a variation of those domain names. I have the misfortune or good fortune to speak with several of the registrants of those domain names and not one yet has come forward with any plausible good faith explanation as to why they put Porsche or a variation of Porsche in their domain name. We have the pornographers who want to direct traffic to their site. If you go to the Best Domains.com, an Australian company, the first listing they have there is 911porsche.com, sixty thousand nine hundred and eleven dollars Porsche. Do I need to say anything more. A couple of people who have contacted me said, we wondered when you were going to call. We are happy to sell you the domain name for $25,000, that is the highest price so far. Most of the others I have asked, well why did you register a variation of Porsche in your domain name. We wanted instant credibility on the Internet. We wanted to attract traffic to our site. Porsche is well known, it helps us in doing our business. Some of these domain names are offering counterfeit Porsche products. Many of them have false and fraudulent contact information. And I will deal with that in just a minute. But, we have yet to find a legitimate use for any of these domain names.
I just have a couple of comments on the Interim Report. I think it is a good start. I think it needs a lot of improvement. I know it is going to be a tough balancing act. With regard to the contact information, I think it is exactly right going back to the question of why we need more than a P.O. Box. If we have to litigate the issue you need to know where to serve these people with Process. You can't do that through a P.O. Box. With respect to the jurisdictional issue. We believe strongly that all registrars should be appointed as agents for service of Process and that if there is a dispute you can serve the registrar and all the registrar will be required to do is to forward the summons and the complaint on to the registrant at the address listed. We also strongly believe that jurisdiction must be in the jurisdiction where the registry is located, where the registrant is located, where the registrar is located, where the A root server is located, where ICANN is located or wherever else jurisdiction is possible. Otherwise we are going to have this situation where registrars are going to start setting up in the most inhospitable places of the world where piracy and other problems are going to run rampant. We are very in favour of your pro-active exclusion for famous domain names and we strongly urge you to have it not only for exact replicas of a famous trademark, but also for confusingly similar variations.
Just a brief story. The reason this came to Porsche's attention, or was brought to the forefront of Porsche's attention, is the head of the Marketing Director was over from Germany to visit the Headquarters over here. And the marketing person over here in Atlanta was so excited to show the German counterpart the company's website, that she was a little bit nervous and she forgot to put the e in when she punched in Porsche.com. And she was taken to a place that was called Longdon.com, which happened to be a pornographic site. And I immediately got on the phone to Phil Sbarbaro and said, Phil let's take this domain name down, Porsch.com.. He said, Greg we can't do it, our policy is pretty clear, you have got to have the exact trademark. But Phil, you will agree with me that this website is trying to take advantage of Porsche. Absolutely, but that is nothing we can do. It has got to be for variations as well. I think one of the points that needs to be addressed in the WIPO Report is that there has got to be a mechanism where companies like Porsche, and I think famous trademark holders, there aren't that many of them, or they have procedures where they can deal with the 300 domain names that have been registered in one proceeding. Where we don't have to clog up either the WIPO Process or the judicial systems throughout the world dealing with these issues. Not only is it a very taxing problem for the trademark holders, but I think society is being ill-served by having our judicial systems clogged up with these problems. We need to streamline the Process and deal with that.
Finally, Porsche believes that it is very important that no new top-level domains be permitted until we have worked out the rules for what is going to happen. It does not make any sense to compound this problem, which will happen if we don't work the rules out before we expand. Again, thank you very much for the efforts you have done and for your time in listening to Porsche's plight.
(Mr. Francis Gurry): Thank you very much Greg for explaining today your comments. (the rest is inaudible).
(Mr. Michael Sondow, International Congress of Independent Internet Users): My name is Michael Sondow, I am the organizer of the ICIIU. Let me ask you this sir. You say that you found no legitimate use of the string Porsche. Would you consider a third party vendor of Porsche cars or Porsche service or Porsche parts in some country anywhere in the world, a legitimate use of that string? Or would you want to take it away from them because they were competing with your business?
(Mr. Gregory Phillips): It would depend on whether they were licensed or authorized by Porsche to do that. In our view, a domain name is like a business name, like somebody putting a sign in front of their business. And the case law in the United States is absolutely clear that companies cannot use the trademark Porsche in their business name, because it implies sponsorship or affiliation with Porsche. Now, they could certainly put on their web page, if they service Porsche automobiles, or that they are an independent repair shop specializing in Porsche automobiles. But to put it in their domain name we believe violates and infringes our trademark.
(Mr. Michael Sondow): Do you know Isabelle La Rue? She is an advocate for Porsche, an attorney for Porsche in France. She published a list of 150 domain names, the DNSO Organization Mailing List on the Internet. This is about a month ago, she published a list of 150 name strings that had been registered as domain names with the word "Porsche" in them. And when we asked her to give us her findings for those 150, she could only come up with six that were identifiable as cybersquatters. Do you know about that situation?
(Mr. Gregory Phillips): No, I don't. I would be interested in finding out about that.
(Mr. Michael Doughney): Just a quick comment and a question. In case it was not obvious already, I am not an attorney and I came here thinking that in a room full of attorneys I will hear a lot more legalistic precision, and that is not what I have heard in the last few minutes. Because what I think I have heard from you, if I understood you correctly, is that you were talking about registrations of domain names quite a bit also, and then you were talking about infringing websites that through their content were obviously selling, for instance, counterfeit products, or otherwise using your registered logo or trademark in an infringing manner. Now, can you give me some idea as to when you give those large numbers of what you call infringing domain name registrations, what percentage of them are just people who are either just trying to pull your chain or people who are trying to attract traffic to unrelated, whether they be pornographic or otherwise websites? And which of those are legitimate infringing uses or used to direct people to websites that have infringing uses of your logo or trademark. I mean, what are the proportions of these things? Because you seemed to have lumped these all together into one category and when you said we should all play by the rules, there are already rules about infringement when you are using something like a logo on a web page independent of the domain name?
(Mr. Gregory Phillips): That's right. There are rules relating to that and counterfeit products. To answer your question, I don't think anybody is pulling our chain. I am not aware of anybody who is doing that. The vast majority, I would guess over 60 percent, are using it to attract attention to their business and it may not be Porsche related, but we believe that just the fact that they are using it to attract attention violates the Dilution Statute and then constitutes infringement. And then I would say the rest are out there where they are being trafficked and sold, or attempting to be soldn to different people.
(Mr. Michael Doughney): Let me give you one other quick question that comes to mind. You just went through a piece about the Porsche with the dropped e as a registration for a domain and you had a problem with that. As I talked about earlier today, I ran a company called Digex. Well, it turns out that there is another provider here in town that has the name Didax, which when I first saw it I kind of did a real double take, because I thought they had basically borrowed some part of our name. But, it turns out it has a completely different root of that. How do I differentiate between a dropped e and a couple of switched letters inside of a name, and at what point does this creep across all similar sounding names stop? Because if you can drop a letter, it is obviously something different. It can be a little more different than that and a little more different than that so that anything that starts with Pors, it sounds to me, it could eventually be considered by you to be an infringement.
(Mr. Gregory Phillips): Well, I think Porsche is such an arbitrary and unique name. We have not had that situation where somebody innocently has come in and said it stands for something else and that is the reason the dropped e is often there. In fact we have had the Misspellers Rescue Company register three domain names misspelling Porsche in three different ways, with the attempt to market those names. We have also had somebody register Porsche, and instead of the o they have used the zero, knowing that they could attract people who are looking for Porsche, but maybe touching a zero instead of an o.
(Mr. Michael Doughney): Do you have any statistics from, say the Mispellers Rescue Company, as to how many hits they get on those misspellings?
(Mr. Gregory Phillips): No, we don't.
(Mr. Francis Gurry): Okay, thank you very much Greg Phillips. So, now I would like to call on Eric Menge. Thereafter onwards, Griffith Price. Then may I ask just so as we can check on what we have to get through in the next hour. Is Mr. Deepak Rajani present? No. Is Mr. Richard Shell present? You don't want to take the floor? Okay, thank you. Ms. Shari Steele? Yes, and you would like to take the floor at the moment? Okay. Elinar Stefferud? Is present? No. Michael Sondow is present and the Centre for Democracy and Technology? Okay. So, if I could ask you to limit it to ten minutes please.
(Mr. Eric Menge): Good afternoon. My name is Eric Menge, I am Assistant Chief Counsel for Telecommunications at the Office of Advocacy at the U.S. Small Business Administration. I thank you for this opportunity to speak to you regarding the Interim Report of WIPO Internet Domain Name Process. Congress established the Office of Advocacy in 1976 to represent the views and interests of small business within the U.S. Federal Government. Its statutory duties include serving as a focal point for concern regarding the Government's policies as they affect small business, developing proposals for changes in agencies policies and communicating these proposals to the agencies. Advocacy is greatly concerned that the proposals made in the Interim Report are over-broad and would have an undue detrimental effect on small businesses who are not infringing on trademark rights. In particular, Advocacy believes that the alternative dispute resolution Process proposed would provide large corporations with deep pockets the ability to unjustly expand their trademark protections beyond the rights supported by law, by leveraging the expensive and extensive arbitration Process proposed in the Interim Report. Furthermore, Advocacy is concerned that the notice of WIPO's proceedings was insufficient to provide small business an opportunity to comment in this far reaching and important subject.
The Office of Advocacy does not support cybersquatters who register domain names solely to extort payment from trademark holders. However, Advocacy believes that any effort made to counter cybersquatting should be narrowly tailored in such a fashion to curb abusive use, without infringing on the rights of legitimate domain name registrants. After reading the Interim Report, Advocacy believes that the alternate domain dispute resolution Process is not severely tailored. Instead it is over-broad and raises the possibility of First Amendment violations as it acts as a prior restraint. Any business must think twice about using a domain name based off of a non-trademark corporate identity, even when its use is perfectly valid under trademark law. Advocacy also believes that the ADR procedure would have a significant economic impact on small businesses who are not infringing on trademark rights. In 1998 there were 23 million small businesses in the United States, who represent 99 percent of all the employers. Small businesses employ 52 percent of private workers and employ 38 percent of private workers in high-tech occupations. Virtually all ................ jobs in the United States were provided by small businesses. Small business is the engine that drives the U.S. economy. And small businesses use the Internet. As of November 1998, 41 percent of all small and mid-size businesses have a website. Twenty-two percent of small and mid-sized business are using the Internet to sell goods and services. Eighteen percent are using the Internet to purchase goods and services for their firms, or to share data with their customers and suppliers. Therefore, a policy that would detrimentally affect small businesses would undermine the goal of increasing Internet usage and encouraging e-commerce.
Five of the provisions in the Interim Report would have a significant economic and legal impact on small businesses. One, the alternative dispute resolution forces the registrant to agree to jurisdiction in many places, including foreign nations. As written, the registrant cannot only be sued in his home country, but also in any country that has a registration authority. And here today, I am hearing additional jurisdictions being proposed. Two, the lack of a predictable legal scheme and arbitration could drive up costs. Arbiters are to make reference to the law that the national court would use. Therefore, the registrant must not only be familiar with intellectual property laws in its own nation, but those of other nations. And again, I was hearing earlier today that which laws would apply would have to be done on a case by case basis as part of the alternative dispute resolution. Three, if the domain name challenger loses a dispute Process, its ability to sue in court is preserved. This would effectively add a layer of litigation, extending the proceedings and making them more costly and intimidating for small businesses. Four, the arbiter has the ability to allocate costs of the proceedings. If the arbiter decides that the registrant has violated the trademarks holders' rights, the registrant is responsible for paying all the arbitration fees. Even if unlikely, the nere possibility would cause grave concern to small businesses who do not have the deep pockets. Five, if the registrant loses an arbitration, the transfer or cancellation of the domain name is effective immediately. The losing registrant must get a stay from a national court which has jurisdiction over the winning party, and the losing registrant now has the burden of proof. Advocacy believes that most domain name disputes will involve large companies who hold the trademark challenging small businesses and individuals who do not, for the right for a domain name. Advocacy believes this is the case for several reasons. First, most likely only the large companies have the financial and legal resources to initiate litigation for an arbitration Process. Second, while small businesses do hold trademarks, most do not. They are the small businesses with limited scope and range do not need trademark protection relying on common law protection. Third, even when they are trademark holders, small businesses will rarely challenge a prior registrant because the cost and delay of doing so. Instead, these small businesses will use an alternative domain name. Fourth, large corporations do register trademarks and have extensive resources, so attempts to challenge their domain names will be difficult. For these reasons, Advocacy believes the vast majority of the time, a challenger to a domain name registration will be a large company with deep pockets and the defending registrant will be a small business, organization or defendant or an individual. The recommendations in the Interim Report favour the large corporation to such a drastic extent that it would be a de facto expansion of trademark rights far beyond current law. Advocacy believes that large companies or trademark holders can threaten small business registrants who are not violating trademarks, with a Process recommended in the Interim Report to force them to surrender their domain name.
I mention a small business whose domain name is challenged by a large company who is a trademark holder. Assume that this small business is not infringing on the trademark holders rights, because it operates in a different industry and there is no likelihood of confusion. Unfortunately, the small business must defend its domain name before an arbiter to show that there is no infringement. This arbiter is expensive and can make decisions based on references to national laws, especially problematic if the large company is multi-national corporation. Also, the arbiter can decide the small business must pay the fees for the proceeding. Furthermore, the rights of the large company to sue in the court are preserved to no avail. With its deep pockets, the large company will certainly sue the small business as soon as the ink is dry on the arbitration Process which is against them. As part of the registration Process, the small business agrees to jurisdiction not only in its own locality, but also in the venue of the registration authority. Potentially, the small business would have to travel to a foreign country or to another state, if the authority is located domestically. This entire Process favours the deep pockets, who can afford multiple layers of litigation, the travel and the international legal research. When faced with the daunting task of defending its domain names, small businesses will not defend it under this Process. They cannot afford it in time or money. Rather they will simply give up. They will surrender the domain name even when they are not infringing on a trademark and are legitimate registrants. The alternative dispute resolution Process in the Interim Report will act as a sword of Damoclese over the heads of small businesses that want to establish Internet presence and engage in e-commerce. Because they cannot afford to defend themselves against challenges to their domain names, they will always be vulnerable to sudden and unpredictable forced changes in their Internet addresses. This uncertainty will act as a barrier keeping small businesses from establishing a presence on the Internet. It will inhibit their ability to use the medium and it will deny useful products and services to customers. Advocacy asks the panel to consider the effect upon small businesses when making its final recommendation.
Lastly, Advocacy believes that small businesses cannot receive adequate notice for these proceedings in making meaningful comments. Notice in comments are a central feature of the United States Administrative Procedure Act. When properly followed, it allows all parties a chance to participate in the Agency's role-making processes. It allows the U.S. Federal Agency the opportunity to receive comments which may identify problems or issues the Agency did not consider. Although, WIPO is not subject to ABA, Advocacy believes that ICANN's relationship with the U.S. Department of Commerce makes it appropriate to follow its procedures and to allow opportunity for notice and comment. The lack of adequate and equitable notice for small businesses would limit their ability to participate in these proceedings. With a deadline coming two days away, the panel are still holding regional hearings and this is the first to be held in the United States since the release of the RFC-3. Advocacy recommends the panel extend the comment deadline and make a more adequate solicitation of comments, including publication in the U.S. Federal Register and similar widely distributed publications. On behalf of the Office of Advocacy, I thank you for this opportunity to speak. On behalf of small businesses, I encourage the panel to consider the over-broad nature of the Interim Report's proposals and the significant economic impact they would have on small businesses, as well as giving them a more equitable opportunity to contribute to this Process. Thank you.
(Mr. Francis Gurry): Thank you very much for your observations. Are there any other persons who wish to make an observation or ask a question of Mr. Menge? Then may I just make one comment. I appreciate what you say about the notice. This is an international procedure. Publication in one national government, you know we have 171 Member States and we use, for example, we have sent within three weeks of the publication of the United States Government's White Paper last year notice of how we intended to proceed and what the procedures were to every single government of 171 Member States, asking them in turn to adopt the necessary procedures to give as much publicity to the Process as possible. We set up a website within that same time period and it has been available since that, its now a period of some nine months. And we could have stretched it out to a two-year Process easily, but we were requested specifically to do it within a six-month time limit, in order to try to make it coincide with the ICANN Process, which was taking place at the same time. So, I appreciate your concerns, I just want to give you some explanation as to what we have done on our side in order to try to publicize the Process.
(Mr. Eric Menge): I understand WIPO's nature and its international scope and how the publication in a single nations, I guess official publication in that in itself is not sufficient obviously, since you have 171 Member nations you have to work with each and every one of them. Did you give this to the Department of Commerce for distribution or for notice?
(Mr. Francis Gurry): It is an interesting point that you raise more generally, because you see, if we confine ourselves to a purely governmental Process, then obviously there are defects in the Process in terms of the openness of participation, and that is the normal way in which we do things. On the other hand, once you open it, then you do inevitably come across some sector of the community somewhere in the world that is going to feel that it somehow has not been received adequate publicity and notice. The only other comment I want to make is, I was interested in your observations in relation to jurisdiction and if you permit me just to think aloud. Small businesses are obviously very interested in doing electronic commerce, and I wonder how you are addressing the question of jurisdiction in relation to online contracting in general? I know it is not pertinent to our particular Process, but given that many of these issues have a horizontal nature, we see in legislative instruments or proposals for legislative instruments, proposals being made about jurisdiction. For example, the European Commission is proposing to attribute jurisdiction on the basis of the physical domicile, if you like, of the operator rather than the transaction that is taking place in cyberspace. So, do you have the same reservations? How are you dealing with small businesses' concerns about being required to submit to jurisdiction in respect of a contract consummated electronically in some other part of the world?
(Mr. Eric Menge): Well, this is a very delicate issue because of the long-range implications between the European Union and also the United States. But, a lot of other nations will be entering into the electronic commerce scene in the near future. If I can back track very quickly to the comment about notice of comment. Because of the state of Process we are in right now, I understand that you gave the notice and you have a very fine web page, I might add. I was wondering, one thing that would really help small business is that if the comment deadline is postponed from Friday. I have heard a lot of great comments here today and I would like to have a chance to respond.
(Mr. Francis Gurry): How much more time do you want?
(Mr. Eric Menge): Two weeks. A week at least.
(Mr. Francis Gurry): Can we settle on one week? You see the only other problem about extending the deadline, you see we have a scheduled meeting of our experts. We have pressure to complete the Process, to do a final report and we can't easily unilaterally extend the deadline. We have to make it known to the other parts of the world that they have additional few days as well in terms of a deadline. That is the difficulty were under in terms of fairness of the Process.
(Mr. Eric Menge): Because of other pressures, the best you can do is to postpone it for one week, I will take what I can get and try to work with the small business groups and try to get something together by next Friday. It is just that the distance between this particular hearing and the coming deadline was two days, and it is going to be very difficult to get it in by Friday. Especially because I would have to find proposed members for the ICANN Board, which is due on Sunday at the same time. Now to get back to your question about electronic commerce and jurisdiction. Typically, the Office of Advocacy's position for small business is, as the defendant you have certain rights and privileges, more than is that person has to come to you. Its one of the balancing effects. Now, with electronic commerce, because of the ease of going across state boundaries and national boundaries, we are a little concerned about the possibility of fraud. Perhaps a small business in the United States does something that shouldn't and someone in the European Union is very upset. Should we force that person to go all the way to the United States to sue? Especially, whenever you are dealing with an Internet that has a seamless network that you can extend across lines without even realizing it. These are some of the issues that we are addressing. We do not have any firm answers for you I am afraid. But we do realize that it is a problem and we are looking at it.
(Mr. Francis Gurry): Fine. Thank you very much then Mr. Eric Menge. Mr. Griffith Price please, and then I have three others, Shari Steele, Michael Sondow and the Centre for Democracy and Technology. So, once again Griffith Price if I may ask you to confine it to ten minutes.
(Mr. Griffith Price, Chair, Trademark law Committee, American intellectual Property Law Association): Thank you Mr. Chairman. I would try to be brief. My name is Griffith Price, I am Chair of the Trademark Practice Group of the American Intellectual Property Law Association and I am here this afternoon to speak on behalf of AIPLA. AIPLA is a private non-profit association of some 10,000 U.S. based and some in other countries, attorneys who practice in the fields of trademark law and copyright law, patent law and other fields of intellectual property. We have been privileged to participate in the Process of which the Panel of Experts has conducted over the past year and also in other aspects of the fast moving, emerging world of the Internet and domain name disputes. I would like to say before making some specific comments this afternoon, that AIPLA adheres to the principles which it has stated in its prior submissions with respect to the domain name ........ The response which was filed relating to the Commerce Department's White Paper and to RFC-2 last fall. Specifically, I think we should reiterate this afternoon in view of the many eloquent comments that have been made, that AIPLA recognizes the need to strike a balance between the recognition and protection of established trademarks and other intellectual property rights on the one hand, and the rights of free speech, access to the Internet, prior rights of established domain name users and other rights of individuals and commercial users who have made the Internet such a powerful force in the world today, and obviously increasingly so in the future. In large part, the AIPLA believes that RFC-3 is consistent with those principles and in its effort to strike balance between those competing interests and demands. However, our response to RFC-3 which will be filed on (the sound cuts off here) ................. address a few areas of specific concern which we feel remain, both with respect to trademark owners and users, the intellectual property community and the rights of other competing interests on the Internet.
I would like to briefly address some of the paragraphs of RFC-3 as they relate to three areas of those concerns, which I would characterize as domain name database issues, conflict resolution issues and issues relating briefly to well-known marks. First, with respect to issues having to do with the domain name database. AIPLA agrees with the 78 and 88 of RFC-3, with respect to the lack of a requirement that a trademark search be performed prior to registration of a domain name. In some respects, at least, this we find is consistent with existing law in the United States relating to registration of trademarks and other aspects of intellectual property. We also agree with the concept that the searchable database should provide access to domain name contact information. With respect to paragraph 89 however, we question whether the database should be filtered or, on the other hand, should be opened to public access without limitation or restriction. Our submission in response to RFC-3 will address this issue in some detail. I should say this afternoon that generally, AIPLA favours open access to the database through the Whois protocol, so long as such open access respects and protects legitimate privacy concerns of domain name registrants.
With respect to conflict resolution issues, one of the themes which AIPLA has attempted to promote in several of its submissions with respect to the White Paper and WIPO's request for comments, has been the utility of dispute avoidance mechanisms or dispute settlement mechanisms such as gateway pages, or searchable directories, as opposed to the domain name database. Searchable directories of information to resolve potential conflicts or confusion among trademarks, trade names and domain names used on the Internet.
In response to paragraph 106 of the RFC, AIPLA favours the non-mandatory use of gateway pages to resolve such conflicts and potential conflicts, we believe with the use of such mechanisms should be encouraged. (end of tape)
(Ms. Michelena Hallie, Vice President, Senior Counsel, Intellectual Property, Viacom Inc.): (Starts in the middle of a sentence) ..................... Liane's letter. This loophole permits massive registrations at no cost until it is to the pirate's benefit to pay the fees. We believe that this requirement alone will have significant impact positively on our enforcement efforts.
Paragraph 116, dispute resolution system alternative to litigation, should not deny access to court litigation is also very important to the trademark holder and business person's interest. The judicial alternative is important for numerous reasons. For example, we at Viacom may wish to seek damages or redress for additional claims. Very often there are copyright infringement claims hand in hand with domain name registration claims. And these additional interests, for reasons that have already been discussed both today and in written comments, are probably not appropriate for the ADR procedure and should be left to the courts as at least an option.
Paragraph 142, a uniform administrative online dispute resolution procedure. We clearly endorse and I think I have discussed before with numerous other people our support of that.
Paragraph 221, providing for an exclusion for famous marks with factors to be considered in making that analysis, is also crucial to our businesses.
Paragraph 239, creating an evidentiary presumption in favour of the owner of the famous mark and the protection of similar marks as well as identicals. I handle the enforcement work for all of the Viacom Companies, and we have found on an increasing basis a much more sophisticated approach by the infringers misspelling startrek1.com, startrek2.com, and the fact that we have not registered Star Trek ad infinitem, means that we can't go through with the NSI automatic procedure. I think that as the infringers get more sophisticated, we have to be more flexible and fluid and be able to combat these actions.
However, today I would like to focus my comments on responding to a request in paragraph 89, which addresses the accessibility of information regarding the domain name registrant through the Whois query. To begin with, Viacom recognizes the privacy and trust of individuals, and that this is not an easy inquiry. We are open for a dialogue on how to balance those interests, but we believe that part of that dialogue must consider the legitimate business and consumer concerns which really mandate full access to the Whois query. Viacom endorses the comments and statements of various other groups, including the notion that limiting access would increase consumer confusion by cloaking the real source of the goods. Similarly, that such limitations would increase the ability of registrants to defraud the public as to the true sponsor of the site. That limitations would cripple the consumers' ability to investigate a site before, for example, entering a commercial transaction. And the notion which businesses are increasingly becoming aware of, as technology becomes more sophisticated, is that immediate access to this information is crucial. The record industry right now is suffering significant infringements that are here one minute and gone the next, but we at Viacom fully anticipate that the motion picture industry growth is already suffering and will soon be suffering the speedy access and removal and switches all around the Internet, that would require immediate access. We can't have any additional impediment or step before we get that information. Some impediments we know have already been erected and are already causing problems. We no longer have access to the registration date of domain names. This information is crucial in our enforcement efforts to determine who has priority of a mark. We are not going to go after somebody if we determined that they had priority. Without that information, we don't even know what the basic facts are to make that determination.
Elimination of domain name status means that we cannot make a determination as to whether it is worth going after a domain name registrant, because we don't even know if a domain name is active or inactive. However, I would like to post one factual scenario and one particular issue in Viacom's recent enforcement efforts. A crucial element in pursuing an infringer, either through dilution or infringement claims, is evidence of the intent of the infringer. A trademark owner is, and should be, a great deal more likely to successfully enforce its rights against a third party if it can prove a wilful intention to either trade on or benefit from the trademark owners goodwill in a mark by use of that mark. One crucial bit of evidence in proving intent is the number of famous or recognizable marks a domain name registrant has registered. However, recognizing the growing case law prohibiting such warehousing, infringes have gotten a lot more sophisticated. Now, these warehouses are taking increasingly more complicated steps to cloak their identity and to remove this intent element from our arsenal in our enforcement efforts. They register under different businesses, different names, different addresses to avoid detection, but to further their goals. Without the Whois query, there is no hope to combat this weapon of the pirate. And just one recent example, we uncovered one registration for an upcoming motion picture of Paramount Pictures. It was registered by one business. We put through a Whois query and determined that, that business had registered three other of our motion picture titles. When we did further query, we found that there were four other domains registered to the same address but different businesses. If we hadn't be able to go that next step, we wouldn't have known that there were seven in total titles. The additional information greatly enhanced our claim against this pirate, because it showed a real warehousing effort here. The fact that he waited to even pay for the registration until we came to him with particular claims, was additional evidence of infringement intent. Then, during the course of litigation, we found that there were 65, at least, titles of Paramount properties. Even at this point, we could not uncover all of those titles in our regular enforcement efforts. But if you impede our queries even more significantly than they are now, we have no hope of fully addressing or even adequately addressing this growing warehousing problem.
(Mr. Francis Gurry): Thank you very much. So, some questions first of all Michael Froomkin.
(Professor Michael Froomkin): (Inaudible)
(Ms. Michelena Hallie): It would be subject to abusive .................. (interruption)
(Professor Michael Froomkin): (Inaudible)
(Ms. Michelena Hallie): Well, I think that, that is one of the levels. The problem and the necessity of the Whois query is that we have to have multiple levels. That my infringer was able to play with the businesses initially, and we identified that he had created business names, he had not even incorporated and, just parenthetically, he was not a major commercial enterprise. He spent 70 dollars to register the one name that I went after him on. So, that is all he put up and I can tell you, I paid significantly more than that to stop it. But if you limit access to only one of those levels, then they circumvent it very easily. They can use their friends' phone numbers to register another group and it can go add-in for item.
(Mr. Francis Gurry): Thank you. Mark Partridge please.
(Mr. Mark Partridge): My question is this (the beginning of his question is inaudible) ..................... the other side of it is well articulated as the need for IP owners to be able to review the contact information. I think that, that is also true that potential domain name registrants, who may not be trademark owners, also have that interest. But, in balancing these interests, does it seem workable to you to have a balance that would involve unfiltered access that would give ready access to the contact information, but allow individuals to register through agents to protect privacy or other interests? Does that seem to be a workable solution?
(Ms. Michelena Hallie): Borrowing on what I think AOL has discussed in their earlier comments, I certainly think that, that is an attractive possibility. I would want to have some increased scrutiny of the relationship with the ISP, or whatever group they use to protect their anonymity. To make sure that these individuals do not abuse the Process. But certainly some Amnesty International type organization seems to be a viable option.
(Mr. Francis Gurry): Thank you. Any other questions or comments?
(Mr. Michael Doughney): I have two quick questions. You mentioned at the beginning of your talk that you made an example, startrek1.com, startrek2.com etc., like that. How did you come to know that those domain names were registered? Are you looking at the list of (interruption).
(Ms. Michelena Hallie): We have watch services.
(Mr. Michael Doughney): You have watch services who are looking to see as they go by, okay, as they are being registered. In the course of your investigation were you able to determine whether or not the registrant was actually seeing any significant hits on the website that used that domain name? In other words, had there been any public notice of the fact that startrek1.com even existed?
(Ms. Michelena Hallie): I don't have that information.
(Professor Milton Mueller): Hello Michelena! You had mentioned that the music industry was concerned about piracy of music products. You are talking about the content, the music not about the domain name is that correct?
(Ms. Michelena Hallie): Correct.
(Professor Milton Mueller): So, we are sort of spilling over here into a new area of intellectual property enforcement are we not? You want to use the domain name registration information to track down forms of copyright protection or violation also is that correct?
(Ms. Michelena Hallie): Well, to the extent that the domain name is the entitys address on the Internet, it becomes important not just for the domain name in and of itself, which as I note is the focus here today, but also to help on the broader enforcement efforts. And for entities like Viacom's, businesses where the copyrights and trademarks are so often interconnected, I think those have to go hand in hand. But to the same extent, I mean that .......... my concern about limiting the ADR function to just domain name problems per se.
(Professor Milton Mueller): But, with respect to the Whois information, would it be fair to say that what you want is for the entire registration function to become, in effect, a surveillance function designed to police and enforce, at this stage, all forms of intellectual property.
(Ms. Michelena Hallie): No. (end of tape) ................. we were going to operate as an entity which is doing business, however you may want to define it. But if that business includes infringing on other peoples' rights, then the people who own those rights should have the opportunity and ability to identify you, just as they do every time somebody puts themselves out as a business in the real world.
(Professor Milton Mueller): Okay, then that includes all kinds of rights?
(Ms. Michelena Hallie): Yes.
(Mr. Francis Gurry): Let me just add one comment to that if I may. Milton Mueller you are absolutely right that we are concerned only about the inter-effects between domain names, intellectual property, rather than content of the site in this Process. I think it would be unwise of us to close our eyes to the fact that like most issues in electronic commerce, contact details is a horizontal issue. Let me give you the example of a proposal for a Directive on Certain Legal Aspects of Electronic Commerce, that was published by the European Commission in December, where they would require contact details of basically, and I summarize, any commercial operator on the Internet. And this for a whole variety of reasons relates to consumer protection, fraud and so forth. So, we are concerned only with one aspect of it, but if we don't keep our eye open at least to the horizontal dimensions of the issue, we might go down one track on this issue which is incompatible with what is happening in relation to exactly the same issue in other areas.
(Marilyn Cade, Director, AT&T): I am Marilyn Cade with AT&T. Michelena, I have a question for you that follows up on the examination of the distinction between individuals and commercial uses. And I would make first of all a statement that everyone today of course, I think we all realize that as much as we think we know about the Internet, or what it ought to be, it is changing rapidly and being redefined and increasingly becoming a communications and information access medium that certainly many of the people moving to the Internet today are, a few years ago they would have been called 'newbies', today we tend to think of them as customers. They are not necessarily sophisticated. They are looking for easy tools and sign posts along the way, of things that they recognize. And I made this statement because I am going to use an analogy. In today's world, when an individual in the phone world seeks anonymity they can get an unlisted telephone number, but they must provide complete identifying information to the entity they reserved that telephone number for, so that they can be billed and so that they can receive service in the event of a trouble on their telephone line. Yet, they are able to be unlisted in a White Pages or other directory. So, certainly in voice communications and no matter how important the Internet is becoming, few people are actually giving up their telephones. Most are still actually now also buying cell phones so that they can have multiple means of communication. In your experience in dealing with warehouses and infringes, are you finding that it is commercial businesses or individuals who are actually engaging in the infringing of trademarks, the warehousing of trademarks, the efforts to sell it back to you?
(Ms. Michelena Hallie): I can't recall. Well, first of all, it is very difficult to define commercial business especially in the Internet. Because 95 percent of the infringers that I deal with, even if they are massive warehouses are doing it from their laptop or their home. And I would consider that a business. Because they are essentially in a business of infringing our rights, or of other entities similarly situated. So, if you define business broadly then yes, all of my problem is business or virtually all. Certainly all that I would aggressively pursue is business. If you define it traditionally, I cannot recall pursuing a traditional business for their use of a domain name.
(Ms. Marilyn Cads): I want to make a follow-up, I am going to ask a follow-up question. You know I will preface that again by a statement. All of us I think are extremely sympathetic to the interest of individuals in personal communication to want to remain anonymous. And just as they might use cash in a purchase to be able to have a transaction that is not public. But, is there a possibility that if you created an individual space that the individuals who are engaging in the, in many cases illegal behaviour - child pornography, in some countries, pornography is illegal, other forms of infringement, of either dilution of trademarks or infringement of trademarks or copyright piracy - is there a possibility that those individuals would just migrate to that space and be able to actually be anonymous not just to legitimate trademark holders, but also perhaps anonymous to legitimate law enforcement, in the case of child pornography?
(Ms. Michelena Hallie): That is the concern I was alluding to. In putting up these cloaking devices, I think we have to be very careful and sensitive to those potentially conflicting concerns.
(Mr. Francis Gurry): Let's have a last question from Milton Mueller and we will break for coffee.
(Professor Milton Mueller): I just want to do a comparison here of another medium and how you approach that in a non-Internet context. If I am in my garage printing out tee shirts with the Star Trek logo on them, you presumably have ways of finding out that I am doing that and tracking me down. Or, if even on a larger scale if somebody in Hong Kong is doing it in the Golden Alien, selling thousands of tee shirts in the Temple Street markets you have ways of finding that out, do you not?
(Ms. Michelena Hallie): I can't say that they are foolproof, but we certainly have ways of finding out about infringers.
(Professor Milton Mueller): Do you think that if it were technically possible, and in fact it is probably technically possible, do you think we should set up a system whereby anybody who obtains access to a, say, printing device, that could print up infringing tee shirts should be allowed to enter their name into a globally centralized database that allows you to look into it and find out what they are going to print at any moment and draw them into an arbitration Process? Do you think that would be a reasonable way to approach infringement in that scale?
(Ms. Michelena Hallie): Certainly not basically to the printing press. But, if they are going out as a business and they should be an identifiable business. If they then turn around and sell those tee shirts and it turns out that a consumer develops a rash from the type of material they were using on that tee shirt, then the consumer should have the right and the ability to identify where that tee shirt was manufactured, just as I should if I found out that there was a Star Trek trademark plastered on the tee shirt.
(Professor Milton Mueller): There is no question we ought to be able to track down criminals. The question is, to what lengths are we willing to go in terms of setting up a surveillance apparatus to impose some kind of prior restraint or prior review upon these criminals? This is what I am asking you.
(Ms. Michelena Hallie): I know what you are asking me and I think we disagree on what level is similar to what I am requesting here. I think that just because you buy a computer, does not mean that you have to put your name into some database that everybody can come and find you. But, when you put yourself out to the public through a domain name, then I think there is ................ for requirements. Similarly, when you put yourself out to the public as somebody who is offering tee shirts, then those additional requirements should be erected.
(Ms. ...........................): Michelena, I had two questions for you. In the earlier discussion, where you had indicated that it was an attractive possibility to possibly allow registration through agents in appropriate cases, I wanted to know your thoughts on who could or should be able to register through agents. Or, should anyone who desires to register through an agent be permitted to do so? My second question relates to your ability to identify a warehouser, or patterns of cyberpiracy, and how the ability to register through an agent might impact your ability to conduct that investigation?
(Ms. Michelena Hallie): Well, I think that is an offshoot of what Marilyn was suggesting in her earlier questions, and my concern here is in the drafting and the monitoring. Certainly, if we permit anyone to register under these cloaking devices, for lack of a better term, it just swallows the rule. And that is something that we are very concerned about. I think that you have to show a legitimate personal as opposed to non-commercial concern. And beyond that, quite frankly, I don't have more sophisticated answers to these what I see as very difficult questions and problems, but I would certainly want to be involved and an open to be involved in the discussions to try to come to those answers. And on your second question, I think if what involved permitted infringements even quasi-personal quasi-business infringers who have no recognizable business entity out there but are nonetheless massively and significantly infringing my company's rights to cloak those activities, then I am back to square one on my concerns.
(Mr. Francis Gurry): Fine. Let us break there. Thank you very much Michelena and let's break for fifteen minutes for coffee which is just out this side of the auditorium thank you.
(Mr. Christopher Gibson): Let me also mention briefly that if your .................. (tape cuts off).
(Ms. Ellen Rony, Co-author, "The Domain Name Handbook"): .................... that covers all those in cyberspace who are non-commercial, who use the Internet for other reasons for ...................., for education, its our Internet too. That is what you have to know. It is our Internet as well as the trademark owners Internet. It is the Internet of my niece who used to send her pictures from her wedding to family members living in four different states. It is the Internet of an Asian professor who uses it to post his lectures on (hypoponics ?). It is the Internet of the medical organization that wants to promote a cure for diabetes. It is the Internet of my twelve year old son who goes online and looks for information for his school projects. It is our Internet as well. Now, I admit we have a problem with cyberpiracy. There are many people who are using the domain name system in inappropriate ways with bad faith acts. But, please, please don't let this problem be the tail that is wagging the dog. Don't use this problem to create an instrument against the millions of domain name registrants who are good faith registrants. Soon there is going to be millions, millions more. Okay, so what's the problem with cyberpiracy? Do you know in the 93 pages of RFC-3, there is no precise definition for cyberpiracy. Now, I can say that you could probably define it as a predatory act and an abusive practice, but the truth is that RFC-3 takes this problem and its like smashing the Net with a sledge hammer, because you are applying solutions to the rest of us. First, I think you have to be clear on what is a cyberpirate, and I would just like to give a few kind of examples out there that are disputes that we have witnessed. There is one about a twelve year old boy named Chris Pokey Van Allen. His father registered a site pokey.org so that he could just play and learn how to use the Internet. Unfortunately, Chris has a nickname that is identical to a trademark. There is a cartoon character, half of a cartoon pair Dumby and Pokey and the trademark owner went after this boy for his pokey.org. And before Pokey there was Ty, ty.com. Ty was registered by a man in Salinas, California to honour his infant son. He was also using the Internet to just let people know he did web services in that locality under the name Tech Yard. So, Ty became an abbreviation for Tech Yard although it never appeared anywhere in the domain name. Well, anyone in the room who collects Beany Babies will know that Ty is the manufacturer of plush toys, one of the largest manufacturers in the world and they wanted to be known at ty.com. So, there was a lawsuit that started for them and even though there was no confusion as to what Ty the plush toy manufacturer was doing, and Tech Yard the web service provider was doing. And after Ty and after Pokey comes Veronica. Veronica happens to be veronica.org was registered by David Sams to honour his infant daughter who happens to share the name of the trademark by Archie Comic Publications for one of their cartoon characters, Veronica. Any of you in the audience who are old enough to have read that probably remember Veronica. So, here we have some examples. Are these people cyberpirates? According to RFC-3 they would be put in the same classification. Why? Because they had a domain name that frustrated a trademark owner's desire to use their name in that sense.
There are some onerous parts of RFC that plays prudence on the rest of us and I just like to highlight a few, I have more in my comments. Number 57 (end of tape) ................
an incorrect area code. I feel that this particular paragraph leaves open the opportunity for abuse by trademark owners and they will do this. Because the information could be inaccurate. Furthermore, it requires a burden on all of us who happen to have our area codes changed. The first thing we have to think about is oh! my God, I have got to go change my domain name registration immediately or I am subject to cancellation. This is wrong. This number 57 does not allow for human error and it does not distinguish between human error or mistake and wilful, intentional misrepresentation.
Moving on to paragraph No. 168. In RFC-3 there is no time-bar for claims brought under ADR. Now, let me give you some examples of what this means. There is a couple that registered the name bewitched.com to market, to promote their (Java off aplets ?). Two and a half years later they heard from Tristar Interactive, who told them to cease and desist because in the 60's they had a programme by the same name. And here is another dispute. The name is earth.com. Earth.com is run as a .. site, there is no commercial use on earth.com. Four years after earth.com was activated they were sued by a Massachusetts clothing company alleging infringement of its trademark to market shoes. No commercial use and yet here, four and half years later, was this problem. Frankly, gentlemen I don't think its right to keep domain name registrants under unlimited jeopardy of having their name snatched by others. We have a family name Rony.com. We are developing it because we have family members, all technology people involved with technology. We live in four different states. I don't want to find out as we invest time and energy and money developing the site, that four, five, seven, ten years later some poster manufacturer decides to come after the name Rony. Or the maker of Rice of Rony Treats decides to come after Rony. Or a bakery in north Milan by the same name tells us that they have prevailing rights to the name that we use for our family website.
Another example, and perhaps I feel the most egregious example, of this one sided approach is paragraph 158, the remedies available in ADR. These remedies are listed as suspension of the domain name, cancellation or transfer of a domain name to the complainant, and there is also allocation of costs of the proceeding. These remedies don't say anything about the serious claims to domain registrants who are put not only to a considerable expense to defend their rights to a name, but the other business expenses involved where their business has to go in hiatus where their customers are threatened. And let me give you an example of that. There was a public e-mail provider that was operating at juno.com. Along came Juno Writing with the trademark for lighting fixtures. Is there a confusion between lighting fixtures and e-mail? Not in my mind, but Juno Writing was able to raise a challenge based solely on their trademark rights to the name and that challenge, coupled with NSI's domain dispute policy, put 500 thousand e-mail accounts into jeopardy. This is unfair, this is patently unfair. And this is an example of something the flip side of cyberpiracy. I mentioned in the beginning what cyberpiracy is, it is an abusive predatory act of bad faith. RFC-3 looks at cyberpiracy from people taking domain names away from those with trademark rights in the name. The other side, the flip side of cyberpiracy is trademark owners asserting serious claims of trademark infringement and dilution to cease a name from a legitimate registrant and this is called reverse domain name hijacking. And if you are going to mention cyberpiracy you must have a chapter in RFC-3 that deals with reverse domain name hijacking. Because it is the most common complaint of legitimate domain registrants, that they have to defend their rights to a name. And you know the problem here is that usually what triggers these debates is that a trademark owner realizes that they want to be involved in the Internet and so they come along and say, wait a minute, somebody else has got the name that we feel entitled to. In fact, it is a bad business decision on their part that they did not get the name first. This is supposed to be first-come first-served in general. Now, I am not talking about true infringement where you go to the site and you see somebody trying to trade on the goodwill of another one with the same name. I might give two examples. Amazom, with an m, .com is a book seller, just like Amazon.com the name that we have all known to love and adore as the largest book seller in the world online, is a book seller. Here, you have a company trading on a misspelling to get the customers in the same market channel. Another example is Internic.com, where a number of people go to register domain names thinking that, that is truly the Internet.net that is the registry for .com, .net and .org. I am not talking about those kinds of cases. I am talking of Pokey, Ty, Veronica. I am talking of reversed domain name hijacking.
On May 3rd 1996, John Postell posted a proposal to create 50 new registries. And he did an analysis of the complex trademark issues and here is what he said. He said, the domain name system was created to simplify and name computers attached to the Internet. To simply name computers attached to the Internet. There was no intention that the domain names identified products or services in any way, or that the domain names have any relationship to trademarks.
I would like to just touch on famous marks for a moment, because they are in a special category. Based on RFC-3, there is a mention that maybe there are under a thousand, several hundred, nobody knows how many they are. Nobody knows what they are because there is no database and there is no uniform criteria to identify them. But, let's just use a number, under a thousand, that would mean that .0.02 per cent of the current registrations, or two names per ten thousand could possibly be in this famous marks category. So, my recommendation is you make a new gTLD, call it .tmk, stick all of those famous marks if you can find them and if you can identify them and if they are willing to come forward and if you don't have to deal with alpha string creep, meaning not just their name but every permutation of the name, stick them all into .tmk and let them have mandatory dispute resolution of whatever they want. And then educate the people, if you want to find Coca-Cola and IBM and Porsche go to .tmk because that is where they will be. And then let's leave the rest of the domain name space to the others who might have ancillary products or who might have permutations of the name that they have been using in business in traditional commerce just fine with no problem. The problem, the big overarching problem that I see with RFC-3 is that it is not a balanced report. And you were tasked with making it a balanced report. Balanced means that you have to consider legitimate domain registrant concerns as well as trademark owners concerns. You say, you meaning RFC-3 says, that it recognizes that the special care and needs to be exercised to ensure that any policy developed for one interested function does not unduly impact on or interfere with other interests or functions. You have not done that. You haven't begun to do that. And I resent that. I do not want to remain vulnerable. I do not want to be smashed with a sledge hammer to deal with these specific problems. We have a court system to do that. I think what you can do to reduce the friction is to acknowledge that the domain name system is not a trademark owners paradise. The Internet is not a brand dominated mall. It is used for education, it is used for non-commercial speech, it is used for information, for social and political commentary, it is used for humor and parody. When you go back and revise these provisions of RFC-3, I hope you will remember that. I hope you will have as one of your guiding principles that whatever you decide should not lead to abuse of the good faith domain registrants, which is what you have in that document today. There are millions of us, millions online who operate there in good faith. When you go back and revise this document please think of Ty, Pokey and Veronica. Thank you very much.
(Mr. Francis Gurry): Mr. Bustamenti who wants to make a comment or ask a question.
(Mr. Santiago Bustamente, President, ACITI): Really I think it is a very good presentation and that is the reason why we are here. We have to gather all the information that is possible and we have to listen to all these comments that are said to improve the legislation and improve the relationship between trademark holders and domain name users. But, to some extent it is not the fault of the group that all the domain name users are commercial. There are some that are definitely commercial and some that are not. As this happens you have a talk to us. Please think for a minute that if there were a commercial use for a small corporation, I am not talking about privately. In my home, at home I have my domain name and so on and everybody has asked. But, a small corporation that is trying to win a market through a, I will not say a well-known trademark, by infringing and interfering with the rights of a trademark holder. In that sense I am taking into consideration Jonathan's point, I want to ask you two things. How would you change in this case or replace the words in paragraph 57 "inaccurate or unreliable"? And if this were the case, would you think that its appropriate to maintain the recommendation that the domain name registration agreement contain a representation that to the best of the applicant's knowledge and belief the registration of the domain name does not interfere with or infringe intellectual property rights of another party. I think intellectual property rights, whether a trademark, whether a copyright and I said a copyright because a domain name can also interfere with a copyright for educational purposes and so on. So, I have to question that.
(Ms. Ellen Rony): Yes, you have two questions okay. The first question is how could you paraphrase No. 57? Well, my point is that I think you have to differentiate between inaccurate details in the contact information and wilful misrepresentation and furthermore, what you are trying to do here, you have been tasked to deal with disputes relating to cyberpiracy. Cyberpirates don't just give you an inaccurate zip code, the whole contact information, every bit of it is bogus. That is what you have to differentiate. But, I feel the way you have it written it is an open season for somebody covetous of a particular name to look over that contact registration for any little detail. Because you don't differentiate. You say inaccurate or unreliable information. Inaccurate could be the wrong area code. Area codes change. So, that is how I would handle that.
Now, your second question was, remind me again? Okay. The good faith declaration. The problem is two-fold. Again, if you are focusing on cyberpirates, no self-respecting cyberpirate is going to admit that they are intentionally trying to, the rights that they know that they are infringing, they are not going to tell you that. They don't give you good contact information, why should they tell you honestly that they know that they are interfering with any third party rights to the name? And furthermore, this whole definition of what are these rights, it is too vague. The average domain registrant does not even know what that means. And furthermore, there is no brand covering a database if they could find that information out. It does, probably applies to very well-known names like Coca-Cola and such, but you asking them about something that is a concept that I don't think they are familiar with. So, I think it is a meaningless thing.
(Professor Michael Froomkin): I want to ask you about the time-bar. Because if we start with the premise, as chapter 1 of the Report does, that the attempt is to root this firmly in existing law. The existing trademark law recognizes that uses change over time. So, if one takes the view that I generally take that if a domain name registration is not by itself ordinarily an infringement and my first question is do you agree with that? Then, it seems to me the flow from that we can't have a time-bar, but you can have a thing that is not infringing for a very long time, the use changes and all of a sudden it is infringing. I mean, Amazom might be used for a long time, like you know the story of my wonderful cat Amazom and one day I start on it and I am an infringer. So, I guess I do agree with my first premise that registrations aren't usually infringing and if that is true, how do you escape my second premise?
(Ms. Ellen Rony): Trademarks are not domain names, domain names are not trademarks. I think that this whole move to just look at a list of names that are alpha strings and do nothing more is absolutely an abuse of the provisions and intentions of the Lanham Act . Because the Lanham Act puts trademarks in the context of geography and contextual use. And the name has no context until you look at what is on the site. If what is on the site is something that is trading on another name, then you have infringement. But, just to say you have this name is not infringement.
As to the time-bar, yes it is possible. I know the RFC acknowledges that use may change and that is why they wanted a time-bar. When the use changes, you deal with the changed use. But the way it is worded it leaves everybody vulnerable in perpertuity. And that is disturbing. Law has Statutes of Limitations, and if the change or the ownership of the domain name transfers, and once you have a non-commercial non-infringing use and now you have an infringing use, it seems to me you deal with the change as a new event. Just like when you have a sale in commerce, that's a taxable event. The change of registration, the change of use is a new event. That is how you should deal with it. But, oh, please don't put all of us, don't make us all vulnerable in perpertuity that somewhere in this universe somebody is going to show up in four, ten, twenty years with an intellectual property right to a name and come and say we have prevailing rights over you, even though you have spent two, five, ten years developing content on the site and having it propagated throughout the Internet. It is just patently unfair.
(Mr. Francis Gurry): Thank you. Are there any other comments or observations?
(Ms. Michelena Hallie): I am just wondering how in your equation you recognize or deal with the ADR and judicial dispute resolutions. I think that it has been suggested in earlier comments today and at other times that ADR be limited to wilful infringer types similar to what you have alluded to, but not gone into greater examples. And that judicial disputes handle the veronica.coms of the world and all of the defenses that would be available to you and were to that defendant be brought up. For example, latches, when you are talking about somebody who sits on their rights for years and countering that when the defendant becomes a real infringer, the plaintiff says no, it is not latches because now they really are injuring me. That those are the kind of legal complexities that maybe a court should, with evolving precedent, be the one to address. And I am wondering where that fits into your concerns?
(Ms. Ellen Rony): I don't favour a mandatory ADR. I think it could lead to a situation where it would be very easy for those who have deeper pockets and better funding to haul good faith registrants into this extended Process. And furthermore, based on that paragraph 158 about the remedies, a trademark owner has nothing to lose, virtually nothing to lose by drawing somebody into court. Because the worst of it is that the allocation of the actual cots will be distributed and that's it. I think the issues are so complicated, I think that arbitration should be available if both parties want to do it and I think courts certainly are set up to handle these very complex issues, I just don't think it should be mandatory ADR. Especially, when if after you do it then you can still go to court. So, it just lengthens the time, lengthens the cost and encumbers the good faith domain registrants. And many of them frankly just aren't as well positioned to deal with all those issues.
There is a case Clue Computing. My gosh, Clue Computing is a two-person virtual company. They do computer services and they were challenged by Hasborough because they are the board maker and the trademark owner of the child's board game named Clue. It is a generic name, there is no confusion and here this man who runs Clue Computing has been dragged out for two or three years now. I don't think this is where we want to go.
(Ms. Michelena Hallie): Well, just one follow-up question and I know you want to move along, but where would you suggest trademark owners who do feel that they have a legitimate problem with a domain name registration could dispute that problem?
(Ms. Ellen Rony): Well, I think the guidelines need to be clear that a trademark is not a domain name and a domain name is not a trademark. In fact Pokey in the case of ............. that is what the court said, that the two aren't equivalent. And there is a considerable problem with trying to take a system that works in physical space and impose it in cyberspace where every name has to be unique. They are incompatible systems. So, my answer to your question is that if a trademark registration feels that there is infringement in the context of the site, in other words a confusion as to source of goods or services offered on the site, then courts are the remedy. But, I really think that there is a lot of spurious domain name reverse hijacking going on and the domain registrants just get no sympathy from RFC-3, they get no acknowledgment for this concern there.
(Mr. James Branson): My question for you has to do with the provision dealing with cancellation for false or unreliable information that is provided to a registration authority. And I gather that the Interim Report is trying to provide some type of objective standard so that the registration authorities don't have to look too deeply to determine whether or not the information is wilfully provided that is false or not. And my question for you is whether you would have more comfort in a system where upon inquiry by a third party to the registration authority pointing out that the information looks to be incorrect, that the registration authority would have some low-level verification obligation, for instance to try to notify the registrant by virtue of the information that had been provided, the e-mail address, the phone number, the fax number, the real world address, for instance, and give the registrant an opportunity to provide accurate information, and if not and then to cancel the registration.
(Ms. Ellen Rony): That is an easy question. I don't think that is an obligation that should be imposed on the registry. I mean, I am sympathetic to the fact that NSI is receiving 10,000 new applications a day. I just think that, that is just not their problem. However, I do think that there are ways to relieve the situation. I concur with RFC-3 that says that a domain name should not be activated until payment has been received. I think that, that will decrease the number of spurious registrations. Also, I don't know if this can be enforced, but it used to be a requirement that there were two active name-servers before this could be activated. But that is no longer done. And there have been many reasons for that. People want their name at midnight, they want it now, they don't really have their web present but they know its coming. But, I do think that the payment requirement before the name gets activated will alleviate this and I do not think that the registry should be burdened every time a trademark owner calls and says this is incorrect information. I think the trademark owner has to find that information. And I do think we should try to get accurate information. I just don't know how they can do that. It is a mobile world, even if you give accurate information today it may be wrong tomorrow because you have moved.
(Mr. Francis Gurry): Last question and then we have got to move on.
(Ms. Susan Anthony): That is what you always say to me Francis, this is the last question and we will have to move on. I have two questions for you Ellen. Susan Anthony, today I am speaking on behalf of INTA. I understand what you are saying that domain names are not always trademarks, but I just wanted a clarification of something that you had said earlier in your remarks. I believe you would agree, would you not, that when a domain name is used as a source indicator in connection with the promotion of goods and services that it could be a trademark or it would serve a trademark function.
(Ms. Ellen Rony): Are you talking like at home, or give me an example of that.
(Ms. Susan Anthony): Amazon.com is certainly a primary example of a domain name that is used in connection with the promotion of goods and services. Well, let me give you my second question, because I think that will illuminate why I am asking the first question. I don't recall, perhaps you already did address this, but I would like to hear your reaction to the commercial versus non-commercial differentiation proposal in the Interim Report, and ask you whether that would give you any comfort in addressing, for example, the Veronica and Pokey cases.
(Ms. Ellen Rony): Well, originally we had some differentiation between .com, .org, .net, .edu. It was a first tier qualifier, but that has not been enforced and people are registering in all three and in fact sometimes they do it to use that simply as a defensive measure so that a trademark owner can't come after something .org. They can say, we are in .org we are not in .com, leave us alone. I think that the problem with having commercial versus non-commercial is that the use changes. It has already been stated. You might start out with a family website like we have, but guess what, we have a book. And so if we mention anywhere on that family website oh! by the way we link to domainhandbook.com where we have the table of contents, all of a sudden our family website is no longer non-commercial, it is commercial. And so then, you have got all this shuffling around. I don't think that is going to work and that is why I ................ (interruption) thank you.
(Mr. Mark Partridge): A point of clarification. On the procedures that are in the Report in dealing with the reversed domain name hijacking system, I would like to get your thoughts on one aspect. Under current NSI procedures the trademark owner can put a domain name on hold without going to court. And you gave the example of the Ty case, there the domain name holder then must be helped to go to court to protect his rights. Under the WIPO ADR proposal that wouldn't happen. The domain name holder would not lose the use of a domain name until an independent party reviewed the matter in the ADR proceeding. Now, that seems to improve the position that domain name holders are currently ................... How do you feel about an ADR procedure if it is made clear that it does protect against reverse domain name hijacking?
(Ms. Ellen Rony): I am not sure that ADR per se protects against domain name hijacking, if the reasons you can go in it to ADR is simply that somebody has frustrated a trademark owner's desire for a particular name, and I think that is in this Report somewhere. Under the famous marks section, there is a description of what are abusive uses of a name and I frankly couldn't tell whether you were referring to cyberpiracy in general, or to famous name trademarks in specific. I know I have it in my comments, but there were several categories of abusive registrations. One category was if you sold it to anybody else, not just to the trademark owner, but if you attempted to sell it to the general public. So, what you are saying is that if you want to sell your name to anybody, to your sister, to your cousin, to another company that happens to like what you have done and wants to pay you for developing the contents so they don't have to do it, that's considered abusive. So, that's too general as well. But, I think you would have to look at what is an abusive mark and according to that section its frustrating the trademark owners desire for a particular name.
(Mr. Ken Fockler): You may have clarified in my mind I think what is your central concern and I admire your spirit and enthusiasm. A little bit of a follow-up to Mark's question. I think it must be the mandatory nature that is recommended at this point in time that you feel would put pressure on the individual or not have them with the same resources and that, that might be the crux of it. Because, as Mark said we have talked about some of these things and specifically we talked about the Pokey situation in Geneva in the early part of December, and as I recall everybody in the room at WIPO, including the staff, agreed that there was no claim to be made and that in any dispute resolution the individual would remain with that name. So, we have miscommunicated or not done things right if that intent isn't coming through and the only thing I can focus on and I do focus on at myself personally to see if there is some way around it or to have a good ADR that proves itself through use but isn't necessarily mandatory. Because, they will come after you no matter what. Whether anything exists or not. Somebody is likely to try and pursue a claim. So, I am not really looking for a response except to try and maybe say that the mandatory nature seems to be the kernel upon which rests your problem.
(Ms. Ellen Rony): No, the kernel of my problem is that RFC is one-sided, trademark owner biased and completely self-serving. It does not present a balanced view incorporating the concerns of domain name registrants. And I found by the way that description. According to RFC, an abusive registration would include the following, I won't read them all, but No. 2 is, the domain name prevents the complainant from registering a domain name corresponding to its rights. What does that mean? What are its rights? That is where the Pokey, Veronica comes in. That's where my concern with a pasta company saying they have rights to Rony comes in. Its just too general, its overly broad and its going to affect, as I said before, my concern is for the millions of good faith domain name registrants who are not represented in that document. That is my main concern, that's my overarching concern.
(Mr. Francis Gurry): Thank you Ellen Rony for your presentation. I know your comments are there and I have not yet myself personally actually gone through them all, but we will be doing so in the next week or so. I hope that you will say something in them that will assist us in being able to more precisely identify the obnoxious practices that I think that we are all directing ourselves towards, but that perhaps we just have not found as yet the exact right words for. Okay, well now I suggest that we do break for lunch, but before so doing I have on the list the following persons still to speak. Susan Anthony, Mikki Barry, Tod Cohen, Sarah Deutsch, Michele Farber, Ed Gerck, Kathryn Kleiman, Eric Menge, Steven Metalitz, Milton Mueller, Griffith Price, Deepak Rajani, Richard Shell, Shari Steele, Elinar Stefferud, Michael Sondow, Tim Casey, Michael Heltzer and Lusan Chua. So, I think that in the afternoon I am afraid I am going to have to cut people off and confine people to time limits. I suggest that if those whom I have mentioned could direct their comments and confine their comments for ten minutes, and then we will simply have to have ten minutes comments at a maximum in order to get through the full list. Let's resume then at 2.15 p.m. I think is the plan.
(Mr........................): (Starts in the middle of a sentence) ....................... and I am here in his place and I am very honoured to be here. Honoured to come before you from the perspective of the U.S. copyright industries, including books, music, sound recordings, computer programmes, both business and entertainment software, and motion pictures. The copyright industries own a substantial number of trademarks and operate thousands of websites which increasingly will supply copyrighted materials for delivery online. The copyright industries are vulnerable if the DNS is now administered at least in two ways. As trademark owners, the copyright industries face similar problems to those of other trademark owners, namely cybersquatting, warehousing and other types of trademark infringement, dilution and tarnishment. As copyright owners, the copyright industries face domain name thieves or others on the Internet who increasingly make available pirated copies of copyrighted materials online. And this problem of cyberpiracy is costing the industry literally millions a year. The problem is growing and anecdotes abound. The domain name registration system must be transparent to avoid protecting Internet pirates. Internet pirates are becoming increasingly sophisticated, as we have heard earlier this morning, in their ability to hide. Therefore, the domain name registration system has to be transparent. Copyright owners rely on the ability to, and therefore have to be allowed to rapidly and efficiently identify, pursue and shut down pirate Internet sites. WIPO in its RFC-3 makes some very commendable recommendations in this regard, such as prepayment of registration fees, representations of accuracy and non-infringement by applicants and cancellation of registrations based on inaccurate information. However, there are a couple of aspects of the RFC-3 that are detrimental. One of them is the filtered access option which is outlined in WIPO's Interim Report. This option is in fact an option for access delayed or denied to copyright owners. In addition, the copyright industries strongly oppose the possibility of anonymous registration. Anonymous registration is simply an invitation to pirates. Even if there was a system that was set up in such a way that the registrar would have to agree to bear total responsibility for an anonymous registrant's acts, or if the identity of the domain name registrant could eventually be exposed. The extra time with which the legitimate right holder would have to jump through hoops to get to that Internet pirate would be enough for the pirate to destroy in the few extra hours the legitimate right holder's works. And I don't think this is an issue only about trademark owners or copyright right owners who have been hurt by a lack of transparency. There is another group, called consumers, who are also being hurt by lack of transparency. If the information about domain name registrations is not made available, there could be acts of fraud that would go unhindered until a consumer would be able to jump through any hoops to receive that information that they need to address their rights.
A somewhat related point, in this RFC-3 there has been a discussion of differentiating between commercial and non-commercial domain spaces. And there has been a lot of discussion of that this morning. With less transparency in the so-called non-commercial spaces this will certainly be a boon to pirates and will lead to pirate havens, or a pirates paradise, on the Internet. The U.S. Congress in delinking commercial gain from criminal liability for copyright infringement, recognizes that it is not only the organized commercial enterprise on the Internet that can cause harm to right holders, but it is also people who would claim to have non-commercial purposes that can do just as much damage to legitimate copyright owners as unabashedly commercial pirates can.
Finally, copyright industries believe that the domain name system, as envisioned in the WIPO Interim Report, would be far strengthened if immediate suspension procedures are made available to allow suspensions of domain names upon showing proof of illegal or illegitimate use and the possibility of posting a bond by the complainant. We are talking about blatant cyberpiracy here, we are not talking about uses in which there may be a question or an argument about the legitimacy of a use of a trademark. So, there should be little controversy that measures for temporary immediate relief be available to legitimate right holders. As it is painted right now in the Interim Report those measures for immediate temporary relief are not available. In additon, registrants should be required to update information, not merely as a formality of the re-registration information. In other words, that after the one year after registration that they would be required to update their information in renewing the registration. This would allow a registrant to change its contact information on January 2 of the year that it gets the registration, with no obligation to update until January 1 of the following year or later.
And finally the copyright industries reiterate that domain name registrars should bear some responsibility to screen out registration applications containing obviously false information. The technologies for this kind of prescreening are available. That is it. Instead of going through point by point in the Report, we have tried to just highlight the points that we wanted to make to WIPO. Thank you.
(Mr. Francis Gurry): (His comments are inaudible).
(Mr. Phil Sbarbaro): Michael, I have a question, tell me if I am correct. If you have abc.com and you are on that site. You are using Don Heath's ISOC materials and ............ Everything is wrong. If you take, lets say your system were to work, and you were to take abc.com away from the person. You just register xyz.com. How did you get from the domain name to the content of the website? Just because you have a domain name doesn't mean you need e-mail, doesn't mean you have to have a website, just a domain name. So, if you take that domain name away from them, could you stop it?
(Mr........................): We are talking about really whether we are going to make it more difficult for the pirates who are out there, or those that are out there that are engaging in illegal activities such as copyright piracy or other activities. Whether we are going to make it easier for them to operate, or whether we are going to make it easier for legitimate right holders who have been in an operation for years to uphold their rights. I would just point, for example, to the transparency. Under the Whois system it was possible, when a right holder was able to find an infringement, to apply to receive that information and the information was received on a fairly transparent basis. If there was some sort of filtered Process that was put into place, that is simply going to make it more costly for the right holder to uphold their rights. It doesn't mean that the right holder isn't going to uphold their rights. They are going to do whatever they need to, to do that. The question here is really who the burden is placed on. And one point that I would make in this regard is with respect to anonymity. It is our understanding with at least the filtered process, that one of the proposals in the Interim Report would be actually to provide an alleged pirate website, or a website that is engaging in clearly blatant illegal activities, with not only the information of the right holder but also with the reasoning of the right holder for requesting the information. Again, this could only be seen as helping those that are engaged in illegitimate activity.
(Mr. Phil Sbarbaro): Michael, again, I must have missed it. How did you connect the domain name with the content of a website? And let me use as an example a domain name that has absolutely nothing to do with the content. So, abc having to do with trailers from a Star Trek movie. Now, if Michelena wants to close down that website she knows how to do it. It has absolutely nothing to do with abc.com. So, why do you want to use this system to enforce copyright on the website?
(Mr. .........................): Well, I think the question really is, can copyright be enforced? I mean we don't know where this website is located. There may be other questions that will make it more difficult for the right holder to use the copyright law per se. An easy mechanism here is where someone has put themselves out as a business entity, has taken a name which granted, in your example does not relate to a trademark or protectable information per se, but is clearly engaging in illegal activity. There is no question that right holders across the board, whether they be copyright owners, trademark owners, someone who has a right not to be defamed for example, would not have a right to somehow seek redress through the domain name Process. The domain name is after all the avenue in which these people are making use of a public forum for their illegal activities.
(Mr........................): Well, I don't think I need to say anything more, I think you just said it all. I think we are talking slippery slope here. You want to use a domain name Process for enforcement of any form of violation, it may not even be intellectual property, it could be maybe there are terrorists.
(Mr........................): I think the consumers would have a right, consumers that are being defrauded, would have a right to seek out some very basic contact information to try and redress their rights.
(Mr. Francis Gurry): (his comments are inaudible)
(Professor Milton Mueller): Greetings everyone. I am Milton Mueller, I am a Professor at Syracuse University. I do research on Internet Telecommunications Policy. Currently we are embarking on a long-term research project on user behaviour with domain names. Something that has an indirect bearing on what we are talking about today. I think I speak for many ordinary Internet users by reacting with a bit of shock at the recommendations of RFC-3. The proposals are very radical in my opinion. Radical in the sense that they create an entirely new system of administrative law that is global in scope and that is focused solely of, by, and for intellectual property holders. They would bring about, as such, a massive expansion in the scope and strength of intellectual property protection. And they exhibit an appalling indifference to basic concerns about fairness to individual users. I have observed a domestic and international telecommunication policy Process for twenty years and have never before seen such intrusive actions proposed to address such a mundane problem. It appears to me that someone has reported a small-time street crime and you are proposing to respond with nuclear warheads. And you seem oblivious to the fact that the remedies you propose may be more of a threat to the neighbourhood than the crimes that you are trying to attack.
Let me describe from my perspective what RFC-3 does, and if you disagree with this assessment we can discuss it. What it says to me is that before any individual or organization can get a domain name, they must tell a global central authority what they want to use it for and make a legally binding promise that registration or use will not infringe or interfere with any intellectual property right whatsoever. They must also sign a promise to submit to a compulsory arbitration Process that allows any third party in the world to challenge a registration. Now, these promises are not simply promises. They are made to a global monopoly that holds authoritative contact information that is capable of instant surveillance of every registration in the world and can cut off access to the Internet with a key stroke. When I think about the model here, there is only a few things that come close. One of them is what happened in the early days of printing, when printing was considered such a dangerous weapon that their presses had to be licensed and given out as a privilege by kings to whoever they wanted to have them. Perhaps a more contemporary and relevant model is the Peoples Republic of China, which requires every Internet user to register with the Ministry of Public Security, and if you know anything about China, you know that these are not the kind of people you want to leave your name and address with, these are the sort of a mixture of the Chinese FBI and NSA, that is NSA and not NSI. And the assumption is that the Internet is a dangerous thing and that the people who use it, use it by privilege and that, that privilege can be taken away and that these people are constantly under surveillance and the minute they do something illegal that they will have access to the Internet yanked out from under them. This is what I see this proposal as being, in essence. And I think particularly with the last speaker, but also with some of the other key intellectual property holders, you see a tendency to reach for the fundamental resources of the Internet as leverage for policing and enforcement. But, this has very little to do anymore with simple domain name piracy. This has to do with creating a surveillance and enforcement apparatus that extends to every user of the Internet. This scares me, it really does scare me.
Now, I think Professor Froomkin has done an excellent job of explaining why the dispute resolution procedure that goes along with these commitments is problematic as well. They seem to make it as easy and inexpensive as possible for a multi-national trademark holder to take a domain name away from an individual who happens to get in their way. Registrants will have to risk many times the value of the domain name to defend it against trademark motivated challenges. Corporations who challenge registrations risk little by making a challenge and will be able to continue their challenge in national courts if they lose. Individual registrants who have their names taken away by the ADR Process, and I agree with Professor Froomkin here, will have no legal standing to challenge the outcome at least in the United States as far as I can understand it. .. the fact that they sign a binding contract with the registrar to submit to this Process.
Now, let's try to put this in perspective. Can you think of another medium to which these kinds of protections and Processes apply? Do we have to announce a purpose or make any promises to a global authority before leasing a telephone line for example? A telephone line creates global visibility, a telephone line can be used to violate intellectual property, a telephone line can be used to violate trademarks. But, if somebody proposed that before you could get access to these things you had to submit all of this information and make all of these promises, and that you knew that standing over this global database were hundreds of trademark and intellectual property lawyers ready to watch you lest you make a wrong step. I think we would feel this was a disproportionate response to the problem of trademark violation. So, I see in the RFC-3 procedures not an extension of appropriate trademark protection into the realm of cyberspace, I see an incredible attempt to expand the scope and strength not only now of trademark protection, which is what I came in here to criticize, but of all intellectual property protection by creating this global surveillance apparatus. Why is this happening? Why is this happening? Is it because the problem is so large and so dangerous to the interests of the public that drastic measures are required? Here we come to the other disturbing aspect of RFC-3. Finding the fact ought to be a critical part of that Report. You propose sweeping institutional changes and a dramatic realignment of rights. These changes can only be justified by correctly diagnosing the problem and carefully documenting its scope and scale and carefully relating the measures proposed to the particular scope, scale and diagnosis. As a set of findings I don't see that RFC-3 does this. My written comments, which are available here today, I have made about 20 copies, provide a more detailed analysis and documentation of the factual record. I feel fairly confident in saying that RFC-3's analysis of the problem is inflated and unbalanced. I understand and sympathize with the legitimate rights holders who are irritated by cybersquatters. But my choice of words is quite deliberate, I believe that many, if not most, of the cybersquatting problem is at best an irritant. Most of the trademark domain name disputes I think we can place at somewhere in one in every one thousand registrations and that is a fairly liberal estimate. The only objective longtitudal source of data we have, which is the NSI dispute resolution policy, shows that the ratio of trademark domain related complaints to the domain name registrations is shrinking very rapidly. We know that trademark holders had won pretty sweeping victories in court. We know that there are technological developments afoot, such as keyword systems and common name resolvers, that significantly undermine the economic value of domain names. Of course those things raise their own intellectual property problems, but again those will have to be worked out through more traditional decision-making procedures in my opinion. The general public has many complaints about the Internet - slowdown a lot of times, faulty computers, pornography, fears about security, difficulty of finding information, but there simply isn't any evidence that the general public sees trademark infringement using domain names as such a big problem that they want these drastic measures.
The problems that do exist can be addressed in fairly simple ways. Prepayment for registrations, something I have no objection to. Elimination of fraudulent registration information, something I am willing to be flexible about just as long as it is sensitive to privacy concerns. Establishment of a voluntary ADR Process. Now, this is something I really want to impress upon you. If WIPO institutes in a gradual basis a voluntary dispute resolution Process and people like the veronica.orgs and the pokey.orgs and those kinds of people go to this Process and win, this is a major step towards building the confidence in the creation of a dispute resolution procedure that will in fact become commonly used and may become a benchmark for who is honest and who is not, may even be taken into account by the court system. But, if this is a mandatory Process which is tilted the way this one is towards the trademark owners, I think you are going to have a revolt on your hands.
Let me conclude with a broader warning and this is difficult argument to make because you are all so focused on trademark issues and many of you have a great deal of expertise on that. I am going to ask you to look at the problem, as I do, from a broader institutional perspective. The Internet has thrived because it facilitates decentralized coordination of computer networking. The Internet succeeded where other standards and architectures failed, precisely because it stripped the coordination Process down to the minimum elements required for innerconnection and stable operation. Now, intellectual property holders with some provocation, but mainly out of paranoia, are now attempting to latch on to those centralized coordination functions and bend them to purposes that have nothing to do with coordinating and enabling Internet working. They want to use resources assignment as a leverage for the regulation of intellectual property in cyberspace. I think this is a misuse of the DNS. I think it is inimical to everything the Internet is and could become. If this Process succeeds in doing that, there is a slippery slope. There is nothing to stop other special interests from clamouring for the ability to use the leverage of Internet resources to regulate whatever they want to regulate. There are many forms of crime and abuse out there that are far more important than trademark infringement, that could perhaps be nipped in the bud if we were willing to exploit the leverage afforded by the Internet's root servers to engage in global centralized surveillance of its users. In fact, just even as far as trademark and intellectual property are concerned, if we were to establish a global system of registration of the devices used to stamp out compact discs, we would start more in terms of money value, we would start more intellectual property infringement than anything having to do with the domain name system at this point. That there are factories that just crank out pirate CDs and yet we don't have a system of regulating the apparatus that makes those CDs. And I don't think that we should, or we certainly shouldn't with respect to the Internet resources that are necessary for connectivity. I believe that those attempts would backfire and only succeed in destroying the cooperation and coordination and free communication that made the Internet a success. Thank you.
(end of tape)
(Mr. Francis Gurry): (Inaudible)
(Mr..........................): Milton I am glad that we have freedom of expression in America and many countries around the world. I just want to focus in on two things which I feel are fallacies and just to get your comment on them. The first is, you assert the view that intellectual property owners want to regulate. Do you recognize the need for those with legitimate intellectual property rights to protect something that they have invested enormous amount of money in? It is not something speculative, it is the very heart of the way the consumer associates quality, the value of that product with themselves. The second thing is in your methodologies, do you recognize the distinction that the vast majority of the work done by intellectual property owners relates to the policing exercise, i.e. it never gets to a adjudication or a disposition in a court room? But that it does not in any way negate the huge amount of investment in watching services, and other forms and methodologies to try and deal and address these issues. And do you recognize that significant effort that has to occur almost invisibly, but is part of the huge burden that is placed on trademark holders?
(Professor Milton Mueller): Well, the answer to this question in short is yes and yes. First of all, I am an intellectual, almost all of my property is intellectual property. I make my living by writing and producing works of scholarship, books, magazine articles and those kinds of things. I think I understand what it means to be ripped off and I understand the value that intellectual property has in an information age. This is something we teach our students. So, I don't really understand the force of the question. The point is that it is a disproportionate response to require global centralized surveillance because of a few cybersquatters. And that the documentation of the problem that is provided to us by RFC-3 does not make a case that this level of response is justified by the level of the problem. And that if it is, and if you believe it is, then you should go all the way and talk about applying the same measures to a telephone line, about applying the same measures to the purchase of a computer or a printer and all the other devices and apparatus of communication in modern society that can't be used to violate intellectual property rights. No case has been made that the situation is demonstrably worse and out of control on the Internet relative to other media.
(Ms. ......................): Hello Milton, you and I have met before and enjoyed lunch together. I am very interested in hearing about your long-term project on user behaviour with domain names. You did not indicate whether you had begun that project, but I wondered whether you could make any preliminary observations. Specifically, my concern is that consumers use trademarks in searching for desired websites and they appear to have found search engines to be largely inefficient. Consequently, the consumer expects the use of a trademark in the Internet to mean the same thing to him or her as it does in the physical world.
(Professor Milton Mueller): Well I think, I am not going to talk about results of a study that is not completed yet and that would be inappropriate. What I can say is that, based on preliminary pilot studies of the use of search engines, you would be surprised at the degree to which the use of search engines is a first option for many people and typing in the domain name is a last option for many people. But, these are not anything like rigorous findings, this is based on our pilot study of college students. So, we don't really know. I think the more important issue that has to do with user behaviour here is that, and this should be reassuring, the trademark owners never seem to find it reassuring but it should be, is that the real power of the brand name on the Internet has nothing to do with the domain name. It has to do with the association between your brand as a concept and various channels or mechanisms for connecting to your sites and your materials. So, that, for example, if you are one of those lucky people who has a canned bookmark in a Netscape browser or in an Internet Explorer browser under the Favourites thing, many people are just going to go there because its programmed into the browser. And if you are one of those people who purchases a keyword from Netscape that is going to be a very powerful form of marketing. And we are going to be looking very closely at how the existence of these new name resolvers is going to be affecting user behaviour. But, I think you have to look at this as a totality of a marketing Process and not as if the domain name itself has some magical power to create global visibility and a brand power, when in fact the domain name is just one little piece of a very big picture.
(Mr. Francis Gurry): Thank you very much Milton Mueller. Susan Anthony if I could ask you to .................... (the rest is inaudible).
(Ms. Susan Anthony, Attorney, International Trademark Association): Good afternoon. My name is Susan Anthony, I am speaking today on behalf of INTA. I am a member of the INTA's Internet Sub-Committee. On behalf of INTA, I would like to thank you for the opportunity to participate in the consultation today and in this Process generally, and we will be filing our written comments on Friday the 12th. But in the interest of time and to limit myself to ten minutes, I have tried to scale down my remarks that I could go to the critical issues for INTA. We very much appreciate the Interim's Report provision for a detailed registration agreement and we certainly support the use of technological means to ensure that the applications are complete and to confirm the existence of the domain name applicant. We also would support a take-down procedure and cancellation of a registration where the information is inaccurate and unreliable, but I am quick to assure people who have spoken today, only after giving the applicant an opportunity to explain why the information may have been inaccurate and unreliable. I am sure that no one here would want to cancel a domain name simply because someone had the wrong area code or zip code or had moved and had a change of address, provided the information is changed promptly.
Second, we also appreciate the recommendation for an agreement to jurisdiction in the country of the domicile where the domain name applicant is located and also where the registration authority is located. If, by registration authority, the reference is to a registry, we would also suggest that jurisdiction would be appropriate where the registrar is located provided that the registry and registrar are located in countries that are party to the Paris Convention or the TRIPS Agreement.
Thirdly, as many people have said before me, and it appears there is not much controversy about this, prepayment before activation and before re-registration of a domain name certainly should be required. But the area where I will spend the majority of my remarks is on the searchable database, because that seems to be the major issue for us today. INTA is certainly in support of the inclusion of the contact information of the data that is set forth in the Interim Report, we also recommend that a historical chain of title information be included, along with the data of a domain name registration and the date that an objection to of the domain name is filed, if any. We note with some dismay recent changes to the Whois database to delete the creation date and the status line. The deletion of the creation date has confounded trademark owners in their ability to invoke the dispute policy of Network Solutions and also to conduct meaningful trademark searches. INTA favours unrestricted access, as opposed to filtered access, and also at least at this time on the basis of this record would not agree to anonymous registration. Certainly, we all agree that privacy is important, but anonymous registration puts everyone at a disadvantage. It is a disadvantage as the trademark owner who must police the Internet or risk loss of valuable rights and therefore, the trademark owner must have the ability to quickly and easily identify and categorize problems on the Internet and where necessary to take rapid action in contacting the domain name holder. It also disadvantages the domain name holder, who is disadvantaged by the delay in the trademark owner being able to identify him, her or it.
Also, we need to keep in mind that businesses large and small, including trademark owners and domain name holders, use the Whois database on a daily basis to conduct searches to determine the availability of proposed trademarks and domain names. Also, restricted access would appear to impose an historically unwanted burden on the registration authority. It would appear that restricted access would require the registration authority to exercise discretion in determining whether a request for further information is justified and consequently could impose liability on the registration authority. The sheer volume of work that would be required in handling such requests dictates against the use of restricted access. The volume could be expected to be substantial, because there are several legitimate uses of the database, not only challenges, but also routine trademark searches. Regarding the accessibility of contact details, INTA takes the view that this information is public record information relating to a public resource. At the least, there must be some level of access to such contact details as is available in public business records generally, including, for example, the U.S. Patent and Trademark Office at the website www.uspto.gov. Trademark owners need to be able to defend, police and enforce their trademarks in the Internet, just as they do in the real world. The Internet is merely another medium. INTA is also in support of the recommendation for a uniform and online ADR policy with the option of going to court. But, we recognize that this system is developing and maturing and, as such, we believe that for the time being the system should be limited both in types of disputes and in nature of remedies. The types of disputes to which ADR should be limited at least at this time would be, for example, cybersquatting, bad faith and false statements. The nature of remedies we believe should be limited to the remedies recommended in the Interim Report. Although, with recognition that in the future as confidence in the system is developed, it may be entirely appropriate to expand the system to include other types of disputes and other types of remedies. INTA believes that the seven guiding principles included in the Interim Report for decision-makers offer a good starting point, although we agree with WIPO's observation that the nature of generic top-level domain is probably not relevant at this time. We believe that there also probably should be a more detailed set of guidelines and that the consequence of it should be an elaboration of the guiding principles. INTA is also very much in favour of the clearance mechanism recommendation for famous and well-known marks. But, we believe that any such system must be fair, open and transparent and consistent in decision-making. In the interest of time I will simply state that INTA supports the recommendations contained in recommendation No. 223, noting that interested third parties have yet to be defined. In the absence of specific international norms of what is a famous or well-known mark, reference to the factors identified by the WIPO's Standing Committee on Trademarks are set forth in the Interim Report is appropriate. INTA also agrees with the recommendation to add a further factor to address issues of cyberpiracy. Further, INTA is in support of the recommendation that abusive registration of a domain name should be a grounds for cancellation.
And lastly, I will direct remarks to another somewhat controversial area and that is the commercial versus non-commercial differentiation. INTA applauds the WIPO recommendation for the introduction of new generic top-level domains in a controlled manner. And we view with interest the suggestion that there could be a differentiation of top-level domains into commercial versus non-commercial domains, to address some of the great problems and frustrations that have characterized the domain name holder and trademark owner relationship to date. But, we need to point out that in any such differentiation the trademark owner still would be required to police the non-commercial domain or domains and consequently would need contact details. Claimed non-commercial uses have the potential for being as abusive as commercial uses. Also, a registrants claimed non-commercial use may in fact not be non-commercial. This is well illustrated at least within the United States and the body of parity law in which one person's parity is another person's trademark infringement and vice versa. The Planned Parenthood case and the Archdiocese of St. Louis case, which was recently decided I believe in February, have noted the following principle, that use of a plaintiff's marks is entitled to First Amendment protection when the use of the mark is part of a communicative message, but not when the marks are being used to identify the source of a product or, at least in the case of the Archdiocese of St. Louis case, where the mark is being used to identify the websites as belonging to or being sponsored by or somehow related to the plaintiffs.
Also, in setting up any commercial versus non-commercial distinction, we must be mindful that consumers may not understand the differentiation. In fact, many consumers expect action to be taken in cases that some may argue are protected free speech. I am reminded by my own father who was computer savvy many years ago and he purchased a Packard Bell Computer and he was having some problems with it. So, having an AOL account he thought he would sign in and locate Packard Bell to ask them for support or to see if there was some support offered online. So, he put in what he thought would be an intuitive search, packardbell.com, and he was very surprised by the site but he read through it. He never did find the answers to his request for support, but he did find quite a bit of information on how to write what he felt about Packard Bell, which was not positive. So, he gave up in frustration and decided to solve his own problem. There also may be other misuses and abuses in non-commercial or so-called non-commercial websites that would require monitoring by trademark owners, such as defamation or consumer protection issues. Some, not all, non-commercial speech is protected and the establishment of a non-commercial gTLD does not in any way relieve the trademark owners burden. Although, we do believe that this is an area worthy of serious consideration and study, because it may address some of the legitimate concerns that a number of domain name holders have had to be able to exercise their free speech rights unfettered by trademark owners concerns and challenges. I met my ten minutes so.
(Mr. Francis Gurry): Thank you very much Susan. Kathryn Kleiman please.
(Ms. Kathryn Kleiman): Susan, I would like to ask you a question about jurisdiction. I find very troubling the idea that a domain name owner might have to waive jurisdiction to wherever the registry or registrar is located. Certainly, they will know who their registrar is. I am pretty convinced they will never have any idea where their registry is unless they read the tiny print, it is not something a domain name owner would encounter on a regular basis. So, do you see the potential, could you work with me on this, that there is a potential for abuse in this? Where you are dealing with a very large company coming after a domain name owner. The large company has points of presence all over the world, the domain name owner exists in one place. So, let's say the domain name owner is a U.S. individual or small business. The company has a point of presence in London and the registry or registrar is located in London. Couldn't just as a mere way of forum shopping in getting rid of the domain name owner, the company could bring a suit in London and the domain name owner would not have the resources to respond. Do you see that kind of abusive scenario possibly being played out?
(Ms. Susan Anthony): I think that there is probably no way to design a system that is going to be free of abuses. I do believe that WIPO Report is sensitive to the prospect of abuse. From a trademark owner's point of view there is a need to have jurisdiction in at least one place certain. For legitimate disputes and legitimate businesses including the self-proprietor, the small business there generally is no issue. The agreement to jurisdiction though becomes a singularly important requirement when you are dealing with cyberpirates. So, in short, I think that the concept behind the requirement is to ensure that there can be jurisdiction in at least one place certain, and I believe that the parties throughout all of these Processes as you and I both have been, have struggled with just where that place or those places might be.
But certainly an agreement to jurisdiction is without prejudice to the ability of the trademark owner to frame the action in whatever other place the law may provide jurisdiction.
(Mr. Francis Gurry): Fine, thank you. Any other observations or questions? One last one from Ken Fockler.
(Mr. Ken Fockler): I think you mentioned wanting to focus on this ............. area cybersquatting and some others.
(Ms. Susan Anthony): Cybersquatting, false statements, bad faith.
(Mr. Ken Fockler): What will be the step before that? Who and how would that become a ........... (voice breaks off).
(Ms. Susan Anthony): The determination would be made, I believe, in several steps. First, if the system is clearly limited to those circumstances, a trademark owner would be remiss in his or her legal duty to bring a case that he, she, it did not believe in good conscience constituted an instance of cybersquatting, bad faith or fraudulent statement. Secondly, there would be a control in the guiding principles of the ADR procedure that is proposed in the WIPO paper and presumably the decision-maker or the decision-makers, if there is a three person panel, will be quick to say at least preliminarily the evidence shows that this is not such an instance.
(Mr. Francis Gurry): Thank you. Thank you very much Susan Anthony and thank you for ........................... Kathryn Kleiman please. And then after that I would intend to call Tod Cohen, Sarah Deutsch, Michele Farber, Greg Phillips.
(Ms. Kathryn Kleiman): With apologies to everybody out there, I would like to talk to the Panel. Good afternoon. I very much appreciate the opportunity to be here and I thank you for your tremendous commitment of time and energy to this issue. My name is Kathryn Kleiman and I am the Co-Founder and General Counsel of the Domain Name Rights Coalition. I am also a trademark and telecommunications attorney with a practice I call Internet Matters. I am also a fairly new mother, which took me away from this proceeding for some amount of time. I tell you all of this because it will become important later in the speech. In my opening I wanted to thank Mr. Gurry and Mr. Gibson and particularly to welcome you, the Panel of Experts members. I have to tell you how happy I was to see your appointments. I see you the Panel of Experts as the conscience for what is going on here. I see you as the guarantors that the policies that WIPO proposes are fair to everyone who uses the Internet, be they large or small businesses, organizations or individuals. I have great faith in your ability to bring your technical understanding and legal understanding to these issues. WIPO has been around in this Process for a long time and they have certain issues they have been working on again and again. You bring a different perspective and a different understanding. I see all of you as representing the Internet community in these proposals.
My purpose here is very straightforward. I have got three things I want to do. To review the problems we are trying to solve, to see if your Interim Report solves them and if not, to see how we can solve the problem together. First, what are the problems we are trying to solve. I have some sense of what these are. I have been working on domain name issues since 1995, I attended the September 1997 Consultative Meeting of WIPO in Geneva, I served on the 1996 U.S. State Department Working Group on Domain Names and testified before the U.S. Congress in 1998. I know what the problems are, we all do. A few people are registering a lot of domain names, lets call them cybersquatters. And a few large companies are seeking to protect a lot of brand names and need a fast and inexpensive way to challenge those, challenge domain names as a number of registries and registrars grows and expands. Let's call this group large trademark owners. These are your problems. But there is also one more. And that's the mandate and concern that you not hurt the amazing thing that we know as the Internet. The Internet is an online world in which everyone's communication converges, large and small, individual, not for profit, commercial or non commercial. Domain names are the way individuals, small businesses, large businesses and organizations, and I will throw in ISPs since I work with them all the time, of all sizes label their space in the Internet and label their speech. You must assure that everyone in this group continues to have access to domain names and a stable and secure way of ensuring access to their sites, which are book-marked and linked and known worldwide. Sometimes even without multi-million dollar marketing budgets. So, does your Interim Report solve these typical but critical problems? Cybersquatters. I have looked in vain for a definition of cybersquatters. I thought this would be your first priority, a clear, narrow definition of those people who make their business in buying and selling domain names with no added value. And we need you to make this your top priority, so that we can separate the shark from the weak. So, that we can separate the prince.com, the software and high-tech consulting company in Britain, from Prince Tennis Rackets, the trademark holder in the United States. They are both legitimate businesses with legitimate rights to the Prince name, using Prince for legitimate reason. The British courts told this as much when they allowed the non-trademark owning Prince to keep the domain name. Where are your lines, where are your definitions, where have you clearly separated the token from the Prince? And, let's look at large trademark owners, have you made large trademark owners happy? Not really from what I hear. And I have been listening. They are unhappy for many reasons. But among them is included that this is not a global system, that it can't be imposed on all registries and registrars regardless of what country, that it is not comprehensive enough, that it does not reach enough intellectual property rights. They don't seem to be totally happy. And now have you done harm? Are there small businesses, individuals, organizations that flourish today on the Internet that will be hurt by what you propose? I think you have heard that very eloquently from the people that came here today. We believe there are, we believe you have thrown the baby out with the bath water. Professor Froomkin has so eloquently laid out many, many of the concerns and I would like to urge you Mr. Gurry to put a link on your website to Mr. Froomkin's critique .................. because I think people should be able to find it.
And you will read in my written comments on Friday you know most of my critics and concerns. But I will just point to a few of them kind of in passing. One, is that you ask me as a small business and domain name owner, and I have mentioned this in talking with Ms. Anthony, just to mention the jurisdiction wherever the registrar or registry is located, which could potentially be in an entirely different country and different language. And you ask me to pay the full cost of arbitration, potentially pay the full cost of arbitration if I lose, even if in good faith I believe the words I was using in my domain name were being used in a generic way, as one example. Also, you ask me as an Internet attorney to sign an affidavit stating that I know that I don't believe in good faith of the registration of my domain name does not interfere or infringe the intellectual property rights of another party. Oh! my, you know this is a grey area of law. You don't even know, courts don't even know whether legal rights are
infringed or diluted, particularly involving Internet issues, until they sit down and carefully weigh and evaluate the case of the rights that are being infringed with those specific issues before them. Some day someone is going to hold me to that. And they are going to say, didn't you know there were other Kleiman's out there? Didn't you know there were other people using Internet Matters? I mean, you have asked me to sign an affidavit that is essentially unanswerable, particularly by anyone who knows that legal rights on the Internet is a grey area and an area in formation.
You also ask me as a public interest attorney to accept guiding principles. In paragraph 99 in kind of in the spirit of the document throughout that essentially freeze court decisions and domain name trademark conflicts in early 1997. These principles claim to be based on a review of the cases that have been cited in national courts. But, you fail to include, and this is by no means comprehensive, the fact that Canadian and U.S. courts have found that a domain name registration in and of itself is not a trademark infringement. You also fail to include cases that say that registration of CDs.com, that a registration can be generic, even if there is a trademark out there for the same word. It can be a generic and perfectly appropriate use.
As I said, you will find most of this in my written comments and we have heard a lot of it today. So, let's talk about the real issue, which is how do we solve the problem together. We need to stop cybersquatters and we need to give large trademark owners access to an avenue of appeal while preserving the rights of everybody else. And also, if possible, we need to preserve the procedural and substantive rights of certain laws. You know, I don't think this is an impossible problem. It is a hard task, I don't think it is an impossible problem. And I think the solution lies almost entirely in Process. I don't believe we need any new laws or any new guiding principles. Intellectual property laws, free speech laws and the United Nations Declaration of Human Rights treaties work well and they operate and courts today are making good decisions. That leaves as the real problem issues of speed and cost. Speed, because trials aren't just fast enough and cost because trials are too expensive. And this is a place where we all agree. I think we would all agree, domain name owners and trademark owners. Speed and costs and this is where we need your help. What can WIPO do to solve the problems of speed and cost? Mr. Gurry knows and Mr. Gibson because they are already doing it. They are taking the lead in developing an online form that can be used for domain name trademark disputes. They have within their power and they are doing it to create a model for other online forms. You can set the standard and I believe you are well on your way to doing it, other people will follow. What else can we do to keep the costs low and the speed high? What we can do is to keep the issues limited, focused and narrow. And here is how we do it. First, the dispute forms must have limited jurisdiction. Only look at domain name trademark issues, not copyright, not rights of personality and not anything else, just trademark. Second, the dispute forms must have a varied, limited remedy, keeping or revoking the domain name. Not damages, not fines, not penalties. Third, very limited scope. The online forms should be limited to so-called paper pleadings, all submissions should be in writing. If you want a full-blown cross-examination discovery, go to court. Just to have people submit materials, and let me go into some details here, because I think that these forms can be very lean and very mean. At the outset, make the trademark challenger meet their burden of proof. Let them show you that they have a trademark or service mark. Let them show you that the domain name owner is using that domain name in commerce, which is a critical part of both dilution and infringement under U.S. laws and other laws. Let me explain that actually, that the trademark owner is using the domain name in commerce or that the domain name owner is engaged in the business of buying and selling domain names, which is cybersquatting. Then, make the trademark challenger give clear, specific allegations of how the domain name is causing confusion, or infringement or dilution to their marks. Make these .............. requirements. Make them show very clearly and very specifically what is going on. Don't let them get away with babbling, Network Solutions let's them do that, sorry Mr. Sbarbaro. Don't let them get away with babbling, make them show what is going on, because remember what is at stake here, that when you take away that domain name you are going to be taking away that speech, that business, that identity on the Internet that people have. Let them know, whether it be through advertising or word of mouth, those links mean something to domain names that are located and they mean something. Okay, so the trademark owner has met the burden of proof, shift it to the domain name owner to respond. Let them show you why they think they have rights in the domain name that they have registered. Let them show you that they are in apple growing using the word apple in a generic way. We are the only ISP on the Internet using the word Intercom as a corporate name and operating for years without causing any confusion to any other Internet service provider or to a real estate firm in California, this is a real example I am talking about. And, let them show you why they are not cybersquatters. Let them present their defense in as formal or informal way as they can handle in a court. And then have the panel sit back and evaluate. The panel can meet in real space, cyberspace, telecom space, satellite space or a combination of all the above. And the panel is actually very important, it should not be one person. I absolutely believe it should be five people. Two attorneys who are known for being pro-trademark and an absolutely equal number of attorneys, actually I am sure you really need attorneys, but people on the other side who are pro-domain name attorneys. And a fifth party who is an expert in evidence, choice of law and arbitration. All of the panel should be well versed in the domain name system, intellectual property law and litigation generally. And from this panel I think will emerge a sense of fairness as to what the decision is. Because the scope of the authority is so limited, because the material is in writing on paper, the evaluation should be very straightforward and very fast. One to two hours per case per person maybe one afternoon a week to clear all the challenges. Who should adopt these panels? I believe it is the registrars. After all it is their businesses in question, they are the ones dealing with the end-user, they are the ones dealing with the domain name owners. The domain name owners will have a very good idea where the registrars are located. And I should say that where country codes are concerned you know sovereignty is in question, so of course it should be the local registrar.
Now, we get to the real interesting issue. Who should pay the cost? I want to make sure that domain name owners are sitting down, because I am going to say that domain owners should pay the cost, but in a very interesting way. Let one dollar for every domain name registration go to the registrars fund for arbitration. Don't let the registrars use this, you know, take this fund and use it for anything they want. It goes for arbitration. Require that the money is only used for arbitration. And then let the cost of bringing the domain name challenge be free and let the cost of defending the domain name challenge be free. I think this is fair for a big trademark owners who are bringing multiple challenges and to small businesses, individuals and community organizations who are defending the domain name challenge. No one will have to drop out of the Process merely because they can't afford to pay.
Is there a role for the World Intellectual Property Organization in all of this? Absolutely. I absolutely believe that these panels cannot be chosen without your input. Also, without the input of the Domain Name Rights Coalition, the American Arbitration Association, the International Trademark Association, we are all going to have to work together to create fair and balanced panels. And particularly to create them for the different registrars that are out there. Further, the World Intellectual Property Organization can take the lead in keeping these panelists up-to-date on domain name and trademark laws and their development in different countries around the world. This stuff is moving very, very quickly and it is hard to keep track of all the different cases in different countries. I think that is a very special role for the World Intellectual Property Organization, so providing names and providing information and education.
Now, let's take a step back. Does this system work? Does it solve the three problems I set out. Does it create a way of stopping cyberpiracy? Yes, it is fast and quick and clean. Does it lower the cost and increase the speed for large trademark owners who need to police their mark? Yes, it is cheap and fast and it is an online solution ................ for the Internet. Does it compromise rights? No, it creates no new laws, no new regulation of the Internet. Because arbitrators have to find existing laws in traditional choice of law principles. So, I think I have met the requirements that we are looking for. We have got something of limited scope, limited remedies, limited pleadings, limited time, and it works to solve the specific problems that we have, but not hurt the existing people on the Net. I also think that it will work because it is so clear and so easy and so persuasive. The only way things really get done on the Internet, the only way you are going to get the country codes to follow you is by setting up a Process that they want. Intimidation on the Internet ................. are real hard to impose. This will buy them up. Create a Process that is persuasive, that people want, that is quick and fast and cheap and it will work without that. So, I think by virtue of persuasion an example others would follow it. So, I plead, don't throw the baby out with the bath water. We can protect everyone with this Process of carrots not sticks and Process not law. Thank you.
(Mr. Francis Gurry): (his comment is inaudible).
(Mr. .......................): My question is where do you see this issue of mandatory (the rest is inaudible) ........... domain name resolution policy that you propose?
(Ms. Kathryn Kleiman): Not mandatory as imposed by ICANN, but perhaps as voluntarily adopted in the registrars contract with the domain name registrants.
(Mr......................): I see. So if I applied as a domain name holder to one of these registrars who followed this procedure, it would be part of my agreement that I would participate in this dispute policy?
(Ms. Kathryn Kleiman): I think that would be reasonable.
(Mr. Francis Gurry): I would like to announce that we have a large number of speakers. If it is possible I would like to take Michael Froomkin and then I would like to move on to other speakers.
(Professor Michael Froomkin): Would you be offended by, just suppose we believe everything you said that it is all wonderful (interruption) ..............
(Ms. Kathryn Kleiman): I believe everything you said.
(Professor Michael Froomkin): Ah! no, no don't do that. Let me ............ something to discourage frivolous ................... of the procedure. Wouldn't we have to charge something to keep people from doing this to other people?
(Ms. Kathryn Kleiman): As you know I have put in a lot of thought to frivolous law suits and the fact that I have defended a lot of small businesses from them. But what we have not ............. is very hard under the current rules. I think that actually this may be the beauty of the quick and dirty Process is that I am not sure there is much cost of frivolous suits, because the panel would probably, at least the frivolous trademark owner if that what we are talking about, the frivolous trademark owner has to put down on paper why they think what's going on is infringing. They have to make some kind of accurate showing more similar to a preliminary injunction than to kind of what we do under Network Solutions Policy, the domain name owner will respond. And I think the panel will very clearly and very quickly recognize what is going on, particularly if you see the same trademark owner again and again and again. I think the panel at some point will start dismissing them because they will recognize they are frivolous. Just as I think they will be able to spot cybersquatters pretty quickly.
(Mr. Francis Gurry): (Inaudible)
(Mr.Tod Cohen, Vice President & Counsel, New Technology, Motion Picture Association of America): Good afternoon. Good afternoon to the members of the Panel, good afternoon to the audience. My name is Tod Cohen and I work for the Motion Picture Association of America as a Vice President & Counsel for New Technology. My comments today will focus on the one issue that we are very concerned about, in addition to many of the other things discussed today. But I would like to focus on paragraph 87, the filtered access question, which isn't a trademark issue and its not a copyright issue, but it is a consumer fraud issue, and it is one in which a domain name registration systems be appropriately placed to afford anonymity towards websites or is that something that could be handled in alternative means. There are alternative places for people who want to have anonymous websites. It should not just be handled at the registry level. So, let me talk about first why we believe that the general public needs access, complete unfettered access to domain name registration information. For three reasons. First, consumers must have confidence and trust when they enter into transactions on the Internet, and how do they get that? Well, one of the things they do, they go to the Whois database. I have read at least and I have seen at least ten different newspaper articles through the .............. database that have told people when they have talked about investment fraud. One of the things they can do about investment fraud to find out if they are dealing with the real company is go to the Whois database. I went to the Junkposters' website, which is a privacy organization and the Junkposters talked about spam. And when they talked about spam, they said that one of the things you should do about spam is to find out who is sending you that spam. And where do you find that out? You go to the Whois database. That is two different examples. Last night on the news, former Chairman Dingle of the House Commerce Committee talked about pharmaceutical sales on the Internet. And one of the first things that I would tell his staff is one of the things he has got to do is make sure that individuals that when they go to websites they have a place to forge some accountability, and that is the Whois database. So, those are what we are talking about on the consumer side. If there is a copyright oversight, obviously we need to have access to that information, indisputable. We need to find out who is infringing our copyright and materials. It does not mean that we are necessarily haul them in front of court. It does not mean that we are necessarily going to court to infringe their rights, but we have the opportunity to find out how to take down that information. Last year, in the Digital Millennium Copyright Act here in the United States we set up a notice and takedown procedure. We gave up certain rights, ISPs and other online service providers and telecommunications companies quote "gave up some of their rights" and one of the key bases of this for us to be able to provide notice to them of the sites that we find that have infringing materials and that they would then take it down. Putting up any type of anonymous block at the domain name registry level stops us from use of the Digital Millennium Copyright Act title to it. And it is also important that we are not in a position where we have to go to a registry and ask for the information. We can't be in a position of waiting. Enormous amounts of copyright infringements go on in seconds, it is an instantaneous communication medium. If we find that one site has illegal material, that can then be downloaded and posted at another site almost instantaneously. So, our ability and the delay that we would confront by having to go to registries would harm our ability to take down these sites. And the other thing is, registries will either have to take liability for protecting these anonymous websites or they would have no incentive to provide us with any of the information on any timely basis. So, that is a question that registries have to think about. If you give anonymous websites then you also have to take the responsibility of what is on those websites. But, there is an alternative to this. There is an alternative that exists right now that allows people to have anonymous websites. They go to their OSPs, they go to their online service provider and they say, I want you to register the domain name for me, and it is going to be movies-are-great.com. And Arrows Internet as my service provider can go and register that domain name. They can then be the one that has the contact information and I don't have to ever have any link whatsoever to the Whois database. But that a consumer or a copyright holder or any of you can go to the Whois site and say Arrows is the company that registered it, Arrows is where I am going to go for recourse. And so that is what it comes down to. What we really fundamentally believe is that registries are not the right place for anonymity. We are not talking about individuals and their privacy rights as they surf the Web. We are talking about individuals and their consumer rights as they surf the Web and where they are going. Thank you.
(Mr. Francis Gurry): Ted Cohen thank you very much ( the rest of the comment is inaudible).
(Mr. .......................): Two short and very simple questions. (the questions are inaudible).
(Mr. Tod Cohen): Those are fair questions. On the first question, on the question of the unlisted phone number, in no instance is an unlisted phone number do you have it posted out there and place material on your unlisted phone number. You can have that on a website already. You can get a password protected website. You can close people from accessing it. The second issue which is spam, is one that can be handled by limiting the number of times somebody can download material from the Whois database. What NSI has already done seems to me to be a reasonable way to deal with the spam issue. And, if you are so concerned about spam and you put that information in go to your ISP. Have the ISP do the registration.
(Mr. Francis Gurry): Thank you very much. Thank you very much Tod Cohen, Sarah Deutsch please.
(Ms. Sarah Deutsch, Sr. Intellectual Property Counsel, Bell Atlantic): Hi! thanks a lot. I have got a little handout here and I will pass this down. I want to thank WIPO and the Panel for listening to input from stakeholders around the world and for creating an impressive set of recommendations that was extremely scholarly. I was just extremely impressed with the thoughtfulness that went into this document. And I am not going into any detail, but some of the excellent ideas included requiring accurate information in a domain name application recommending that the applicant submit to jurisdiction, uniform dispute resolution procedures, prepayment of fees, limited registration periods and re-registration fees required, policies for obtaining and enforcing exclusions for well-known marks. Importantly, RFC-3 endorses that new gTLDs should be introduced in a slow and controlled manner only after uniform procedures are in place to protect intellectual property rights. And Bell Atlantic wholeheartedly endorses this go-slow approach for the introduction of new gTLDs.
The last time I spoke to the Panel in October I presented you with a virtual telephone directory of all our infringement problems over a nine month period and I wont torture you with another exhibit, but I did want to give you a sheet summarizing what has been happening since I last spoke in October, for Bell infringement matters in .com, .net and .org. Just to clarify any misconception that cyberpiracy problems have either peaked or are abating. As you can see from our list here, we are still averaging about 50 matters a month. The only exception was December, we only had 34 matters that month, but I guess even pirates needed a little holiday to engage in some legitimate electronic commerce. Our grand total for the year, this is just again for one of our marks Bell in .com, .net and .org, was 784 infringing matters. Of this 784 matters, only 10 could be resolved through NSI's dispute resolution policy. So, if you hear this, you can keep this in mind when you hear that NSI's policy was invoked a whole 838 times in 1998. I just want to raise a few quick points about RFC-3 and I would urge you to look at our written comments for more detail. First, Bell Atlantic echoing Typhoons comments has very serious concerns about the alleged need for privacy and anonymity in domain name applications. We question whether there really is such a need for privacy in the first place. Permitting anonymity under the guise of privacy is going to result in IP piracy, fraud and will seriously injure and hamper trademark enforcement and monitoring efforts. Trademark owners must have reliable access to the information in the Whois and other databases to ascertain the true identity and addresses of the cybersquatters and domain name infringers. And one important point that must be considered is that if a consumer wants anonymity they have that available today. If the user or business or a company wants to remain anonymous it does not need to own its own gTLD. It can simply reside on a web page owned by a third party. And in fact millions of users do this today. Geocities, for example, has more than four million customers and it gives out these web pages for free. And most companies and customers are actually happy to reside on those sites. If a user wants the benefits of owning their own gTLD however, they will need to adopt the responsibility that goes along with such ownership. And I also want to briefly mention the problems with the idea of appointing an agent without revealing the applicant's name or address. Again, when we are searching for problems on the data base, if all we see is an agent's name or address, that does not give us any real information. And in the non-online world, Bell Atlantic has had considerable difficulty dealing with agents. For example, if the business incorporates and we don't know where they are, they only left CT Corporation in Delaware, I don't think I would have ever even have got a response to a cease and desist letter from the agent, much less finding the real identity of the party and interest. And I think we would almost have to sue the agent each and every time, even to find out whether there was an infringement problem to begin with. So, for all these reasons I think anonymity should be discouraged.
We also endorse the recommendation that inaccurate information in the domain name registration will result in a material breach of the contract. And the Panel of Experts heard from numerous witnesses about the co-relation between false information and cybersquatting infringement, copyright infringement and fraud. And the notice and takedown procedure that Todd talked about earlier would be an excellent mechanism for enforcing this requirement. And third, Bell Atlantic also has concerns about the jurisdictional issue, in particular limiting the domain name applicant to submit to jurisdiction only in the applicant's country of domicile or in the country where the registration authority is located. Until the trademark laws are significantly harmonized we see as a real risk that cybersquatters and other infringers will seek to exploit the differences in national trademark laws by forum shopping for registration authorities whose national trademark laws are much more loosely interpreted and enforced. If, for example, an infringer is a citizen of a country with less than adequate trademark laws and she used to register in a ccTLD whose country effectively supports the first-come first-served principle over trademark laws, the trademark owner is going to be left without any effective judicial remedy. We propose that the term "registration authority" be clarified to include both registrars and registries. The countries that issue it must also comply at a minimum with the TRIPS Agreement. Rights holders should also have access to the jurisdiction where the ICANN is located. And finally, WIPO should clarify that submission to jurisdiction does not create any negative presumption that the applicant based on its behaviour or its activities could not also be subject to jurisdiction elsewhere.
Finally, with respect to the scope of ADR, in light of the fact that the trademark laws are not harmonized Bell Atlantic suggests that for a short experimental period ADR be limited to cases of bad faith, cybersquatting and fraud. And over the course of time as harmonization occurs we would support adding to the role of ADR panels. But, we strongly encourage WIPO to limit initially the group of decision-makers to a narrow extremely high qualified pool. Users of the ADR Process would have a greater comfort level knowing that an extremely high-qualified pool was making decisions in a consistent manner and building up the right type of precedence for the future. I also think its critical that stakeholders have the opportunity to see the guiding principles that were referred to in RFC-3. These principles would again provide certainty for all of the parties involved. It could be designed in such a way to create a check-list and if the complainant met the requirements, they would need a evidentiary presumption which would then shift the burden over to the other side. Over time it is our hope that WIPO's role would be expanded again in the types of disputes that it would ultimately handle. Thanks again for all your hard work and support.
(Mr. Francis Gurry): Thank you very much Sarah. (the rest of the comment is inaudible)
(Mr.......................): The same question I asked before, I guess maybe I am trying to nit pick what is considered to be part of the ADR. If somebody has to make a judgement as to whether it fits the narrow focus items right up in the first couple of steps, then it could be said its part of the ADR to decide. This seems to have merits to be a cybersquatter case of both here. It doesn't so its not included. So, am I thinking about that correctly, where somebody has to make a decision I agree that is limited but then it is part of a Process in here somewhere.
(Ms. Sarah Deutsch): And I agree. And I thought actually that the RFC-3 had an excellent list of factors that could be looked at to see whether it was cybersquatting.
(Mr....................): By the spam?
(Ms. Sarah Deutsch): Right.
(Mr. ....................): I think this handout you gave is very, very interesting because one of the major questions is, of course, how big is the problem. And if I understand this, I wonder if I got this right, you are suggesting that the ratio of what you consider to be the real problems, to what you consider to be NSI reportable problems is about 80 to 1 and that, therefore, we ought to inflate the NSI figures by a factor of 80 to get a measure of the true problem.
(Ms. Sarah Deutsch): Well, maybe.
(Mr.........................): Just humour me for a second. So, I just took out the pen and I started writing and I took the 838 report and just lets assume that all problems are caused by new registrations and not by the whole population, alright? So, then we take the 838 multiply that by 80 and divide that by 1.9 million and we find that .035 per cent of new registrations cause problems. And the question I want to ask is, is that plausible? Looking at your figures, is that a plausible conclusion? I am trying to figure out the best scope of the problem.
(Ms. Sarah Deutsch): Well, again I think that the problem is huge. You are taking one company and one trademark and we had a thousand (interruption)
(Mr.....................): I am grateful to you, it is the first data of its kind I have ever seen. You know its very helpful. You are right. One data ............................. swallow is not a summer and I accept that. If you were represented would that then be fair? And accepting who knows whether you are or not.
(Ms. Sarah Deutsch): I mean there are several ways you can look at it. If you look at the number of trademark infringement problems in the universe of all the names of NSI registers it seems very small, but if you look at it from the number of large medium sized companies whose names are being taken and what percentage of their legal department resources, infringement resources are going into this, compared to their traditional infringement problems prior to the whole domain name system, I think you will see it in a different light. So, you have got to measure it in context.
(Mr. Francis Gurry): Okay, thank you very much Sarah Deutsch for your ............ and comments. And for the written comments that you submitted also.
(Mr. Ousmane Kane): First of all I don't speak good English, so I may not have worded that correctly, but I wanted to know what is the geographical region concerned in the ..................
(Mr. Francis Gurry): Sarah, the question that Ousmane Kane has asked you is do you have any indications of the geographical breakdown of where the infringing problems are coming from?
(Mr. Ousmane Kane): Correct.
(Mr. Francis Gurry): All over the place, okay.
(Ms. Sarah Deutsch): (Inaudible)
(Mr. Francis Gurry): Okay, fine thank you. Michele Farber and then we will have Greg Phillips. I know that there is a time constraint that you are .................... and hope we will be able to respect that.
(Ms. Michele Farber, Senior Attorney, AT&T Corp.): Good afternoon. I am Michele Farber I am a senior attorney and on behalf of AT&T Corp. I am pleased to provide comments on the work being done by the World Intellectual Property Organization to develop recommendations regarding intellectual property issues associated with Internet domain names. It is clear that WIPO and its Panel of Experts had made a very sincere effort to create what we believe is a comprehensive Interim Report, that contains many recommendations for resolving the growing problem, the very real problem between Internet domain names and intellectual property rights. We applaud the efforts that the Panel of Experts have made to listen to and considered the testimony of not only those present here today, but of those witnesses from around the world and wish to express our gratitude for WIPO's leadership in this critical endeavour.
AT&T is in agreement with many of the recommendations made in the WIPO's December 23rd Interim Report, including the following,. requiring accurate and complete information in the domain name registration Process; mandating that the registration document is accurate and comprehensive and that it contains an agreement that allows for continuing firm identification of a domain name registrant and provides for jurisdictional basis; requiring, we think this is very important, this particular issue, uniform dispute resolution procedures; mandating prepayment of fees before receiving a domain name registration; limited registration periods and required re-registration fees; and policies for obtaining and enforcing exclusions for well-known marks. We are very pleased that the Interim Report acknowledges the proliferation of disputes, and I can tell you from working as a trademark lawyer at AT&T, the proliferation has been tremendous resulting from the collision of the Internet domain names and intellectual property rights. This is burdening not just companies such as my own, but also small, I think we have to remember the small trademark owners which is leading to, and this is the pivotal issue, consumer confusion and in some cases consumer deception and fraud. We fully support the Report's recommendation that new gTLDs be introduced in a controlled manner, and only after uniform procedures are developed, tested and in place. AT&T has consistently maintained that a go-slow approach is essential for the addition of top-level domains for several reasons. And I have some concrete examples that I would like to share with you. We have seen at AT&T the number of infringements increase over a 100 per cent. This is a real and growing concern not only for my company, but other companies as well.
First, trademark owners are encountering tremendous growth in the number of infringements of their trademarks as part of or as domain names. For example, and this is a recent example that just happened, third party unrelated to AT&T registered attphones.com, which directed users to a website that stated in part "attphones.com" and underneath in capital letters "For all your AT&T and lucid needs". Second, trademarks are being used by non-trademark owners and domain names to lure consumers to third party sites and this has been another frequent problem. Frequently (end of tape) ...........................
(Mr. Griffith B, Jr. Price, Chair, Trademark Law Committee, American Intellectual Property Law Association): The concept set forth in paragraphs, 115, 119, 128, 134 and 138 of RFC-3 and are responsible to provide some specific detailed comments about one or two of those paragraphs. We also concur with respect to the provision of alternative dispute resolution procedures with paragraph 142 of RFC-3, to the affect that an alternative dispute resolution procedure should be provided through the registrars and/or registries by whatever methods are appropriate in the different jurisdictions involved. We have some concern about the issue put forth in paragraph 145 and that is specifically the mandatorily proposed or possible mandatory nature of such ADR procedures. That, we feel, may be problematical depending on how the term "mandatory" is understood, defined and applied. We believe, for example, that it should not be understood to mean an exclusive remedy for either party, but binding on the applicant for domain name registration if it is invoked by the challenger of such registration. And this by analogy, I think, can be thought of as an international equivalent in the domain name world of the procedures for opposition of an application for trademark registration which has been available in the United States and counterparts available in many of the countries. In the United States, that procedure has been available and quite successful, although not without flaws for more than half a century.
In short, we believe that an ADR provision should be afforded, but should be applied and should operate in an even handed manner, not necessarily a mirror image for both parties to such a dispute, but not to the prejudice of either party in its impact. It includes at least four components I think. And these are from the lawyers point of view, I speak to some extent as a practicing attorney, and these are to some extent addressed by the discussion of the mandatory alternative dispute resolution procedure in RFC-3. Obviously, there are jurisdictional questions to be resolved. There are jurisdictional consent and labour considerations to be addressed and venue questions. Second, there are questions as to choice of law. I think at this point the thinking are among many intellectual property law community and I believe this will be reflected in the final response to RFC-3 which will be put out on Friday by AIPLA, is that choice of law that the ADR provision in its entirety should reflect a true alternative to the court procedures and mechanisms which otherwise would be available to the parties to a dispute. And this would involve the application of national law, or at least subject to the principles of choice of law that would be applied in a court of competent jurisdiction to resolve such a dispute between the parties. The third major issue area that is involved to me is what procedure is to be applied? And again, as many of the speakers today have indicated it surely is desirable that the procedure should be inexpensive, quick and effective. One of the considerations in this respect is the presentation of evidence in a forum which may be at some great distance from the location or place of business of one or both of the parties to the dispute. This to me, at this point a personal comment, this suggests a set of procedural rules which would contemplate the submission of evidence largely on paper without live testimony appearance in the forum where the ADR proceeding is conducted. Again, to say a parallel an analogy to opposition proceedings in the Trademark Trial and Appeal Board in the United States Patent and Trademark Office. And the fourth issue which I think must be addressed is avenues of appeal. And RFC-3 does touch on this issue. It seems to us that two of the issues that are concerned are the centrality and finality of such an appeal, whether there should be a single appellate body, regional appellate bodies and the issues which go along with that. So, to summarize on that set of issues, we feel that ADR, whether mandatory or in part optional, is a very important part of this new structure that is being created to resolve disputes which will continue to arise. And that it is important to provide an ADR system which will be attractive, and attractive to the parties to the dispute.
A brief also on ADR paragraph 151, we do agree with the comments set forth in RFC-3, that the scope of issues in the ADR proceeding should be limited to the domain name registration issues only and should not include other issues, claims of infringement or the like, which should be relegated to disposition by the national courts of proper jurisdiction. The only other comment which I wish to make this afternoon has to do with paragraph 221 of RFC-3 on the definition and determination of well-known marks to afford some special or broader protection to them in a domain name context. AIPLA believes at this point that those definitional questions should be deferred to WIPO, which as many of us are aware is concurrently conducting proceedings and meetings relating to international issues having to do with the definition of well-known marks. Thank you.
(Mr. Francis Gurry): Thank you very much Mr. Price. I think we have time for one comment or question if there is one. No, I otherwise thank you very much for your patience having seeing you sitting there all day and it is very late in the day that you are coming on, and thanks for your participation and we look forward to receiving the comments of AIPLA by the end of this week. Ms. Shari Steele please, Electronic Frontier Foundation. Can we try for ten minutes too please.
(Ms. Shari Steele, Director of Legal Services, Electronic Frontier Foundation): Thank you. As this day has progressed, my speech has gotten more and more written, so I am hoping I am going to be able to follow what it is I want to say to you. Again, my name is Shari Steele and I am Director of Legal Services for the Electronic Frontier Foundation. EFF is a non-profit public interest organization working to protect rights and promote responsibility in the online world. We like to thank the Panel of Experts for sitting through this long day and for still giving us the opportunity to make some comments related to the rights of trademarks holders versus the registration of Internet domain names. We believe that there are some problems with the Interim Report. Many of these problems have already been pointed out to you. I am still going to touch on them so that you understand where EFF stands on things and we have different shades of grey on some of these things as well. First, the Interim Report is making the assumption that domain name registration and trademark law are necessarily at odds. Well, so it seems from reading it. As Ms. Rony pointed out earlier in the day, a mere registration of a domain name does not infringe upon a trademark. It is when the domain name holder misuses a domain name by, for example claiming to be someone else or causing confusion, that the use of the domain name rises to the level of infringing behaviour. It is this behaviour and not the Process of registration or even of ownership that WIPO should be concerned with. Domain names like trademarks are a first-come first-served intellectual property regime. There is no reason to the link the two, except to further the interest of trademark holders. And there are many reasons why such a linkage is such a bad idea. The management of the Internet domain naming system impacts greatly on the fundamental of human rights of free expression, free association, due Process and non-discriminatory administration. It is through Internet domain names that individuals and organizations place their speech on the Internet and give titles to that speech. And it is through these addresses that others locate that speech in order to be able to use it.
Secondly, the Interim Report places limitations on domain name registration based on trademark principles of damage. But, many domain names are not primarily commercial and therefore don't fall under trademark law. And you have heard all sorts of examples, domain names might be nicknames like Pokey, hobbies, favourite characters, names of pets, literary references, geographical names, concepts, invented words, symbols, phrases, ordinary words, acronyms, parodies, criticisms or surnames. WIPO's application of trademark principles of damage results in businesses where trademarks being superior rights to any other domain name registrants. This is problematic, because domain names would be taken away whenever a trademark or other intellectual property holder complains, without balancing the other rights involved. However, making domain name distinctions between commercial and non commercial, or even personal uses of the domain name, is not the answer. That distinction in the online world is extremely hard to draw and it gets harder and harder to draw. For example, I know of people who have personal websites and they sell books that they have self-authored on the website. They leave it as an honour system, say you send a cheque for ten dollars and I will send you a book. They don't need to have a credit card, they don't need to be big business people, and then there are also businesses that advertise their business online and give a free service, for example, on how to register your copyright or register your trademark even and give that information online. But, don't sell that information online. Do these people deserve different types of protection than others who are actually engaging in electronic commerce. It is very difficult to draw this distinction and I don't think that is the answer. I also think that it is very easy for websites that are being used for one function now, for example, personal use, could very easily change into being a commercial use. So, I just don't think that is the right distinction to be making.
The WIPO proposal confuses or belies multiple property machines. It speaks of intellectual property rather than trademarks, apparently trying to slide in rights for other forms of unnamed property. In fact one of the speakers today talked exclusively about copyright law, didn't even mention trademark law at all. In this respect it tilts the playing field in one intellectual property arena to favour holders of a different type of intellectual property law. And this is an expansion of intellectual property law. This does not happen in other areas. As apparently written, the Interim Report establishes a prior restraint system of contracts that would require domain name users to give up fundamental rights in order to register for the domain names in the first place. The WIPO requirement that everybody agreed to ADR, in order to be able to even register a domain name is really problematic. And WIPO hasn't established the details of its proposal for how these administrative proceedings would occur. Administrators, not judges, are given vague and uncertain guiding principles to uphold. As a result, there is no guarantee that the Process will support fundamentals of due Process such as actual notice of defendants. And in tradition there really can't be much confidence in the outcome of the system. This is especially egregious because the Interim Report permits a trademark holder to arbitrarily interfere with a domain name. Use his ability to use a name long before there is even an opportunity for judicial review. And that is another time that you are ignoring due Process. You claim that the proposal is unthreatening because anyone dissatisfied with the results of the administrative arbitration will be able to challenge the results of the procedure in court. But as Professor Froomkin has suggested and others have commented on, in fact if the domain name challenger wins, it immediately gets the domain name from the original registrant, in the U.S. at least that registrant now has no options, he has been stripped of his domain name and he does not have any recourse.
Finally, the Interim Report fails to offer even minimum privacy protections. WIPO would require the collection of large amounts of personal data when an individual registers a domain name. But, you fail to require that domain registries collecting this data adhere to state of the art privacy principles or even any meaningful privacy principles for the use of that personal data. Instead you propose that the registrants' names, addresses, telephone numbers and other information be available on an open world readable database. Well, here is a place where EFF is going to come out being pretty radical. We are the first ones, I think, that are going to stand up here and say domain name registrants must not be required to identify themselves or provide their street addresses in order to register a domain name. In other words, we believe there should be anonymity available. There are many individuals particularly in foreign countries who could be subjecting themselves to physical danger because of the political nature of their communications. One of the speakers today said that, actually several of the speakers mentioned that it takes trademark holders extra time and effort to track down cyberpirates if there is no transparent identification database available to them. Given the extreme harm that could come to some individuals, if their anonymity were exposed, we advocate privacy protection over convenience. Again, I would like to thank you for giving me the opportunity to talk with you. EFF would be happy, me personally and the organization in general, would be very happy to talk with you further about our concerns and help you work through a new Report that will more accurately give a compromise for all of the different rights and interests of the people who have spoken today.
(Mr. Francis Gurry): Thank you very much for your comments and thank you very much for your patience so late in the day. I can take two questions if they are very brief, because we are under real time constraints and we still have two speakers to hear.
(Mr...................): Mine is very brief because it is a very simple question. Who owns a domain name and who owns a trademark, strictly speaking legally? And the second one is to what extent would you protect or afford any protection for trademark rights over the Internet?
(Ms. Shari Steele): Okay, to answer the second question. Of course we believe that there should be protection of trademark rights on the Internet and that there are protections for trademark rights on the Internet and they are properly arbitrated in courts. And that is what we are seeing happen now and its working just fine. As far as who owns domain names and who owns trademarks. The owner of the trademark is the guy who registered the trademark, the owner of the domain name is the guy who registered the domain name and they are not one and the same.
(Mr. Peter Rony, Professor of Chemical Engineering, Virginia Tech): My name is Peter Rony you mentioned trademark people have superior rights. My question is, when we have scalability we have 40 or 50 million domain names, aren't the individuals really the dominant users of the Internet? And I agree with you, why should the trademark people have superior rights over so many people?
(Ms. Shari Steele): We are in agreement. I don't have any answer I don't think they should.
(Mr. Francis Gurry): Fine. Thank you very much once again for your comments Shari Steele. Michael Sondow of the International Congress of Independent Internet Users please.
(Mr. Michael Sondow): Hello! My name is Michael Sondow I am the Chairman and Organizer of the ICIIU. That is the International Congress of Independent Internet Users. Independent Internet Users are not yet organized politically and has not been represented in these debates. The ICIIU is attempting to fill this gap by providing a forum for independent users on domain name system issues and Internet governance in general. As regards the WIPO Request for Comments No. 3, the Interim Report. While recognizing the need or a fair, coherent and balanced system to limit unfair exploitation of domain names that might cause injury to trademark holders, we believe that the WIPO recommendations as embodied in RFC-3 go far beyond any such fair measures and are inimical to the continued use and expansion of the Internet as a medium of free enterprise and free trade. If enacted, the measures in RFC-3 will severely curtail the willingness and ability of entrepreneurs and incipient businesses to register domain names essential for having a presence on the World Wide Web in promoting their business. None but already large businesses are able to afford the cost of the unpredictable and contentious arbitration proposed in RFC-3. In requiring that a domain name registrant accept it though a contract of adhesion will have the effect of the impeding many would-be registrants from signing such an agreement, since the registrant would thereby be putting his or her business after your ENS code to arbitration authority, in this case WIPO. Or, of making the registration so precarious as to obstruct and block investment in and capital development of the new enterprise registering the name. It is furthermore unfair and unconstitutional to recognize and provide for the rights of third parties in potential commercial disputes, while not recognizing the primary rights of freedom of speech and freedom of usage to the first party, the domain name registrant, who by investing in a domain name and Web presence and thereby creating new enterprise, is the prime mover of the Internet with all the great boom to our economy this has (het) and must continue to meet for the future of our country. Not only large and established enterprises use domain names and need protection for those names, but also and perhaps even more importantly for the continued expansion of world trade, the small and newer enterprises that are set up to compete with the larger ones and that force them to be competitive. Yet, under the rules set out in RFC-3, an advantage is given to the established larger and wealthier enterprises to the detriment of the smaller and newer ones. Just the opposite is needed in order to keep a level playing field and preserve free trade and competition. Because the larger and wealthier enterprises can afford to make use of the legal structures that already exist to deprive smaller ones of the use of names and thereby reduce competition from them. The Internet must not, through an unfair and ill thought out restriction on domain name usage, be allowed to become a tool of cartelization, monopoly control, the formation of trade constraining trusts and combines, or any other effort on the part of established businesses to limit competition artificially.
Domain names are also registered and used by many individuals and not for profit organizations for purposes whose cultural and educational value maybe even more useful to our society in the long-term than commercial ones. And these domain name holders must be protected from the curtailment or destruction of their important activities by unscrupulous commercial enterprises who might want to avail themselves of their domain names which the recommendations in RFC-3 abet, without giving any protection whatsoever to the non-commercial and legitimate name holders. We therefore, ask WIPO to reconsider the ill-thought out recommendations contained in RFC-3 and to consult further with all the users of the Internet and not only trademark holders and big businesses which has not been done so far. And to formulate in conjunction with all the users of the Internet a policy for domain name dispute resolution that will not infringe the rights of domain name holders, nor give unfair advantage to trademark holders. Nor, restrict the registration of new domain names. Nor cause the inhibition of investment in new Internet commerce. Thank you very much.
(Mr. Francis Gurry): Thank you Mr. Sondow. Please stay for one moment if you wouldn't mind, because I can take one comment or question if there is one. No. Thank you very much for your participation and for your comments Mr. Sondow. Centre for Democracy and Technology, the last speaker.
(Mr. Alan Davidson, Staff Counsel, Centre for Democracy and Technology): Thanks. I guess I get the back clean up. My name is Alan Davidson. I am Staff Counsel for the Centre for Democracy and Technology. I would like to thank you for the opportunity to be here today and for your endurance and patience and the openness of your Process. I think ultimately will be a metric that a lot of people look to in the court of public opinion when your final recommendations come out. So, I encourage you to try and make it as open as it possibly can and I am glad that we are here today to have this conversation. We are a civil liberties group based in Washington D.C. and we are here to comment on the civil liberties implications of the latest RFC and I would recommend that hopefully you would have had a chance to look at our comments which we are submitting. They are available on a table somewhere around here and hopefully you folks have had a chance to look at them.
I will just summarize them briefly, and they are available online also at www.cdt.org, our website. And I would just start by saying our top line here is that we are concerned that the plan put forward in RFC-3 does not adequately protect privacy and civil liberties online and that because of that it is a challenge to the basic character of the Internet, the decentralized nature of the Internet that is the promise of the Internet. And that is basically where all of our concerns come back. I would like basically just quickly to make three points, one of which is to say first of all that we think that the rules have a broad impact on the decentralized character of the Internet. We believe in a promise of the Internet to reinvigorate democracy, to promote free speech. a lot of that has to do with providing access to individuals and small businesses and diverse groups, religious, social, political groups who haven't necessarily had access to the market place of ideas before. And our concern is that unless their security and privacy is protected, that we won't realize the promise that the Internet offers to these people to get online. We view the domain name system and access to the domain name system as synonymous to access to the Internet. And because the domain name system is in many ways the one point of centralized control in what is otherwise a totally decentralized network, our concern is that the rules that you are putting into place ultimately will have a huge impact on the character of the Internet. And our concern ultimately is that people shouldn't have to sacrifice their privacy in order to have access to this new decentralized medium.
Our second point then is that the plan put forward in RFC-3 does not adequately protect individual privacy. It's spelt out pretty explicitly in our comments, but the top line is that the domain name system is a massive collection and dissemination of very sensitive information about individuals and small organizations and our concern is not about the use of this database for its intended purpose, but its use for unintended purposes. And I think that the rules that are in the RFC right now do not adequately protect people from those unintended uses, and they are not hypothetical. I think the last couple of speakers have done a good job in explaining how these are very real concerns for individuals who are concerned either about marketers out there or for software out there, or other people who want to use the information for ways that were not intended for it. This is very sensitive information of people, their home address, their phone number and putting out there in a way that is largely accessible to everybody is an invasion of their privacy. The question of human rights groups I think gives a good example of how many of these social, political and cultural groups cannot be protected and cannot have access to the promise of the Internet unless we find ways to protect this information. We need better guidelines than what we have got in our RFC right now, I guess that is our message.
And, I would sum up with a third point, which is that we believe that there is a balance that can be struck here and I think that is what is so interesting about this. We were encouraged by some of the things that were in the latest RFC, with filtered access being a step in the right direction. I was encouraged by some of the comments that we have heard from people today about some of the possibilities. I think that we have heard that there are a lot of possibilities out there about things we can do. We have laid out a whole series of models in our comments about things that could be done to try and strike the balance. It is not dichotomy between anonymity on the one hand, and absolute access to all information on the other. But, there are things that can be done between. We haven't figured out what all the answers could be. The possibilities include registrars holding this information and then releasing them in certain situations. Certain kinds of pseudonimity, fair information practices, different or better rules for access and an audit Process for who is asking for this information. All of these things could be done to mitigate some of these privacy problems. I think our bottom line is that there needs to be another, but we have not reached that balance yet. We do not dispute the fact that there are legitimate interests by trademark holders here. I think our concern is that we are putting into place rules that are going to really harm the character of the Internet and we are committed to helping in a Process to try and find the right balance here which something the right balance has not been found yet. And it is going to take some work. I appreciate the work that you folks have all done already. We would like to help if we can and when you put in your questions and hopefully you will get a chance to read our comments. Thank you for your time.
(Mr. Francis Gurry): Thank you very much Mr. Davidson. May I just ask one question before we conclude and that is, how do you find the idea of differentiation on the basis of basically commercial or non-commercial as a means of accommodating on the one hand the interests and for the protection of intellectual property, and on the other hand the interest of allowing the greatest possible freedom of expression?
(Mr. Alan Davidson): I think there maybe some promise there, but I have to honestly say I think we need to look at it more carefully because the problem that I think is how you draw that line. It is a very difficult thing and I will be interested to see if we can draw it in a way that satisfies some of these interests, but I think especially from the point of view of small organizations (end of tape) ..........................
we would be concerned about how and where they fall on that line. There are some possibilities here though and I think we are sympathetic to the idea that perhaps commercial speakers have different rights and different needs than individual speakers and non-commercial speakers and that maybe we should be thinking about that. But, I would say it is not clear that, that is the answer. Sorry for the vague answer.
(Mr. Francis Gurry): Fine, thank you. Okay, thank you Mr. Davidson very much for your interest. And so, we have come to the end and I would like to thank first of all the United States Government for once again, as I mentioned at the outset this morning, making available this facility and for the support for the conduct of this Process. I would like to thank everyone who has participated today. I think it has been certainly speaking personally an extremely valuable day. We have heard a wide divergence and diversity of views which has been a valuable part of it. Just before coming over as a matter of interest I went back to the book of Nicholas Niegroponte On Being Digital which was published 1995 which is four years ago, and therefore was probably written a year earlier than that, five years ago. And I was interested just as to whether he had any comments on domain names. He doesn't really, but in the last part of his book interlogue 'An Age of Optimism', it is interesting that his general conclusion is the next decade will see cases of intellectual property abuse and an invasion of our privacy. So, the two things that he mentioned, two of the things that we have been discussing today as different ends of a spectrum in which there is a considerable amount of tension. We are all aware of that and we are grateful to you for the constructive way in which you are seeking to assist us in finding means of accommodating that within the general principles that I think everyone agrees, of not impeding the development of this medium.
If I may make two other points that may not be entirely obvious, just in concluding. The first of those is that we believe very fundamentally that this question and all of the other questions that are going to arise in the area of electronic commerce, questions which have to find solutions on an international basis. If solutions can't be found internationally, then there is some inherent contradiction with the phenomenon that we are addressing. And we need to avoid, I believe, a situation in which any single national approach becomes a de facto norm which other countries are required to adopt without any satisfactory international discussion.
Finally, we are as you know an intergovernmental organization and this Process has been an innovative Process for an intergovernmental organization which normally has as its interlocutors governments. We have tried in this Process to open it as broadly as possible, it remains to be seen what the final outcome will be. We have to find a way of not simply reporting our final recommendations to ICANN, but also some way of bringing it back to our own Member States. And the whole Process has been, this is another example of something in the Process where we are very much feeling our way, but we have had I think a great deal of indulgence on the part of our Member States in giving us the latitude to be able to conduct this in a way which does ensure and has ensured openness in the Process to the greatest extent possible within the time-frame constraints.
Now, just turning to my final remark concerning the Report. We had always announced that it would become available at the end of March. And our thinking right at the moment is that we have a meeting of our Expert Panel in Geneva on March 24 and 25. We feel that there is a large amount of legitimate concern in the whole community about the impact of the recommendations. That it would be wise of us to ensure that we give as much possibility for reflection in the overall time constraints as possible. We understand that the final recommendations or the Final Report will be on the agenda for action by the ICANN Board Meeting in Berlin in May. We have that as a time limit to deal with. We are therefore, thinking that it is likely that the Final Report at this stage will be published in the second week of April, rather than at the end of March. We also want to avoid publication around about the period in which various parts of the world take a number of days off at Easter. So, with that let me thank also the members of the Panel who really have given us extraordinary support throughout this whole Process and thank you once again for having come today.