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August 24, 1998

Mr. Christopher Gibson
World Intellectual Property Organization ("WIPO")
34 chemin des Colombettes
P.O. Box 181211
Geneva 20
Switzerland

Re: Request for Comments on Terms of Reference, Procedures and Timetable for the WIPO Internet Domain Name Process - RFC-1

Dear Mr. Gibson:

The Domain Name Rights Coalition (DNRC), a public interest group representing the interests of entrepreneurs, small businesses and individuals in Internet policies and governance, together with NetAction, an Internet-based grassroots furthering use of the Internet as a tool for community organizing, outreach, and advocacy, hereby submit these comments in response to RFC-1.

DNRC has been a long-time participant in domain name/trademark matters. Our experience includes participation in the September 1997 Consultative Meeting on Domain Names and Trademarks at WIPO, appearance before the U.S. House of Representatives Subcommittee on Telecommunications on June 10, involvement on the Steering Committee of the International Forum on the White Paper, and participation in proceedings before the U.S. Department of Commerce on domain name issues.

I. Introduction:

The comments below address our concerns regarding the draft terms of reference, the background information section and the panel of experts. We commend WIPO for holding a round of comments on the language and scope of the proceeding.

II. Procedural matter:

As a procedural matter, the Domain Name Rights Coalition and NetAction would like to request that WIPO fully number each substantive matter. Rather than referring to full section titles, commenters could refer to the letter or number of the outline section and subsection. This expansion will make it easier to address comments clearly to a section, and much easier to skim the comments of others for those sections of interest. Overall, this change will lower the time and cost of participating in this proceeding for small and not-for-profit organizations.

III. Draft Terms of Reference.

A. Uniform Approach to Resolving Domain Name Disputes

We are very surprised to find the section "Uniform Approach to Resolving Domain Name Disputes" in this document. Although this is an area of great concern to WIPO members, it is an area entrusted to the New Entity and not to WIPO by the White Paper. Through the conferences organized by the International Forum on the White Paper, recently convening in Reston, Virginia, Geneva, Singapore, and Buenos Aires, participants from the diverse Internet Community, including Internet Service Providers, Internet name registries, Internet backbone providers, trademark associations, and domain name associations have actively debated whether a single uniform dispute resolution mechanism should be adopted by the New Entity. Some trademark owners actively support such uniformity; many other participants to this process do not. There is agreement that this issue is one delegated by the White Paper to the New Entity and that it is the New Entity which must establish a procedure for evaluating it.

As a participant in the Geneva IFWP Conference, a close reader of the White Paper, and an active monitor of Internet Governance issues, WIPO is certainly aware of the IFWP Process, and the division of labor created by the White Paper.

We urge WIPO not to start a session in parallel to that of the IFWP on issues reserved for the New Entity because:

1) It is duplicative of efforts taking place worldwide by large and small, technical and nontechnical, access-oriented and content-oriented Internet companies, organizations, public interest groups and leaders worldwide. We need one process, not two.

2) WIPO will not be viewed as an impartial party on this point. Under the IAHC/CORE/POC process, WIPO undertook to create and run a uniform domain name dispute policy. This dispute policy, called the Administrative Challenge Panels, was not accepted by the member countries of WIPO, or by the Internet Community. The White Paper process has replaced the IAHC/CORE/POC process, and the Internet community is earnestly building a New Entity to handle the technical and policy details of this proceeding. WIPO has been cast as a player - an expert player -- by the White Paper. This role will be assured if WIPO respects the work already being done and the limits of the White Paper request.

3) Creating a uniform dispute policy for all domain name/trademark conflicts is specifically an area not assigned to WIPO in this proceeding. The White Paper states that WIPO should not get involved in "conflicts between trademark holders with legitimate competing rights." Accordingly, it was not within the vision of the White Paper that WIPO would undertake in this proceeding to look at conflicts of legitimate users wanting the same string of characters - including the common conflict of noncommercial and trademark users interested in the same basic words. Since the uniform dispute policy proposed by WIPO in this document is not limited to cyberpiracy, it should be revised to narrow its scope to cyberpiracy.

4) The worldwide Internet Community does not have the time or energy to participate in two parallel, overlapping processes. This group of busy organizations and businesses is already devoting tremendous amounts of time to questions of conflicts and dispute resolution- though the medium accepted by the Internet community and the process mandated by the U.S. Government. WIPO should respect the current proceedings and limit its input to the specific areas assigned by the White Paper.

B. Cyberpiracy

Domain Name Rights Coalition and NetAction request that WIPO revise this section, in keeping with the White Paper to read A Uniform Approach to Resolving Trademark/Domain Name Disputes Involving Cyberpiracy (as per the White Paper).

The topic of cyberpiracy was specifically delegated to WIPO in the White Paper. Further, soliciting comments on this topic could be very useful for the Internet community. We recommend starting with the question: What is cyberpiracy? How widespread is this problem? We advise against assuming answers to this question, and instead, openly requesting and collecting information about the range of hoarding and warehousing problems that people allege are taking place. If WIPO asks this question in an impartial manner, it may help the Internet by collecting information about this point. However, to make the data more usable, the question must not be skewed upfront towards alleged trademark hoarding.

Further, to be fair, the questions in this section must include: Do you think the problems identified by the commenter would be improved by adoption of additional top level domains? Such a question will help the commenter focus on whether the intent of the hoarder is directed toward an particular person or company, or rather an economic arbitrage opportunity separate and apart from intellectual property intents.

In drafting these questions, we urge WIPO to call upon Professor Milton Mueller of Syracuse University. Professor Mueller has drafted many surveys and studies and could help WIPO to remove the bias that we believe is unintentionally imbedded in many of the questions and much of the background material.

C. Dispute Prevention.

As discussed above, this dispute prevention section involves matters not raised by the White Paper as part of the WIPO study. DNRC requests that it be removed as part of the WIPO White Paper proceeding. We note that the New Entity will be responsible for issues raised in this section, including, what information should be collected, and that WIPO should certainly participate in any proceedings the New Entity might hold.

We note that the White Paper specifically gave these issues to the New Entity to be determined by an open and transparent process. These issues are being debated in the IFWP process and certainly, WIPO should be a participant and key contributor. For all the reasons discussed above, however, WIPO should not be holding a separate and parallel proceeding issues on these same issues in this WIPO White Paper Process.

D. Dispute Resolution

As with the other sections under Uniform Approach to Resolving Domain Name Disputes, this section is duplicative of efforts of the IFWP and opens a proceeding assigned to the New Entity and not to WIPO. It is appropriate for WIPO to solicit its own members on this subject and then participate in the process of the new Entity. We again respectfully submit, that the Internet community should not be called upon to participate in two, parallel processes. Aside from the narrow and as yet undefined issue of cyberpiracy, this area is outside the scope of the WIPO White Paper process.

E. Process for the Protection of Famous Marks in the Generic Top-Level Domains

Domain Name Rights Coalition and NetAction believe that this section is appropriate and called for by the White Paper. While most of the questions are appropriate, we believe the main question is unasked:

On the Internet, what is a famous mark?
Also:
By what criteria can the millions of people on the Internet registering domain names know if a mark is famous?

And:
Does a famous mark which uses words that are generic or descriptive or an ordinary, dictionary words (in contexts outside the particular goods or services claimed in the registration) merit the same protection as a mark which is coined?

In setting out these questions, we urge WIPO to use difficult examples of the types of problems that might arise with famous marks, including McDonald's - as a name listed repeatedly in White Pages residential listings, and also in business sections; Pony - the name of a large multinational sporting goods company; and Apple - the name of a computer company, fruit, child's groups, a major record company, vendors and many other organizations and companies.

We also request that WIPO expand this section to include questions about the role of existing treaties and agreements outside of WIPO, including GATT and WTO treaties, and how famous marks have been defined and limited. These existing agreements are very important, and WIPO is in a unique position to collect, review and evaluate them.

F. Addition of New Generic Top-Level Domains and Related Intellectual Property Rights.

We do not have any comment on this section.

IV. Background Information Section of WIPO Website and Comment Material

The Background Information section (Background) on WIPO's Website and included with the comment material is very important because it introduces issues to those who have not spent the last few years deeply involved in these proceedings. The wording of the Background is as important as the wording of the comments themselves. Accordingly, DNRC and NetAction offer comments on the Background which we request be included in included in all future version of this material, and on an updated website.

In the first two paragraphs, we urge WIPO to clearly identify the specific issues that it has been asked to address by the White Paper/U.S. Government, and also to state the issues it was not asked to address and why (the string conflicts of legitimate users). We also urge WIPO to offer a description of the problems which is more detailed and much more balanced than the current introduction. For example, the introduction should include not only the observation that trademark owners are finding their marks registered as domain names, but also that domain name holders are finding trademark owners misusing and abusing trademarks to lay special claim to common, ordinary, descriptive or generic words registered by domain name holders for noncommercial and non-confusing commercial purposes.

In paragraph three, WIPO describes the uses of domain names in advertising. In addition, WIPO should also include a discussion of other types of commercial use, such as the website of a small business selling goods or services without advertising. Further, to be balanced and fair, WIPO should include a discussion of the diverse and robust noncommercial uses of domain names for personal and political speech. This discussion could include an overview of the growing use of domain names for family and clan websites, community and political organizations, research and educational institutions, and commercial and political parodies. The Background should also acknowledge that all of these users are legitimate and intended users of domain names, and that until recently, commercial speech was banned on the Internet.

In paragraph four of the background information section, WIPO summarizes the problem that "domain names have come into conflict with trademarks." This is not a balanced and fair way to set out the problem. In the interest of presenting a fair and balanced view of the problem, DNRC and NetAction request that "domain names have come into conflict with trademarks," be replaced with the neutral description: "the overlapping use of the same dictionary words among all domain name registrants, and the limited top level domain space have created conflicts between numerous users, including trademark holders."

Please delete paragraph 5. This paragraph assumes a definition of cybersquatting which, as discussed above, should be a part of the questions raised and comments solicited by WIPO.

Paragraph 7 regarding IAHC, we believe is incomplete and inaccurate. The relationship between Internet domain names and trademarks was first addressed by the National Science Foundation when it created .COM and allowed it be opened on a first-come, first- served basis. It was then addressed by Network Solutions, as a contractor of NSF, in its 1995 Domain Name Dispute Policy. It was then addressed by the International Ad Hoc Committee in a proceeding which has now been overtaken, scuttled and replaced by the White Paper process. Further, the phrasing of WIPO's information implies that the IAHC process provides precedent for the current process. It does not. The worldwide Internet community did not adopt the IAHC process, and it is the reason for the extensive negotiations, open proceedings, and work of the U.S. White House and Department of Commerce.

It is important for those members of the Internet community who followed the IAHC process to know that WIPO no longer follows the Administrative Challenge Panel documents that it created in these proceeding. Even WIPO's members (see comments above regarding DNRC attendance at 1997 Consultative Meeting discussing the ACP Guidelines above) never formally accepted the ACP. Affirmatively stating that the ACPs and IAHC experience has no precedential impact on this proceeding would go a long way to building bridges with alienated groups.

With the recent changes to WIPO staffing, many parties are looking forward to WIPO's contributions to the New Entity. Revisions to the Background to discuss a balanced view of the domain name/trademark conflicts will benefit the debate and bring more parties to the discussion table.

V. WIPO Panel of Experts

DNRC is the leading domain name organization, and yet we have not been solicited for input on who best to represent the interests of domain name holders on the WIPO Panel of Experts. We note that for a "balanced and transparent process" to take place, a diverse group representing all sides of this issue- including the position that the Internet is fundamentally for communication of all varieties, not just commerce - on the Panel of Experts.

We request that Professor Milton Mueller be added to the Panel of Experts. Professor Mueller, as an academic, can work with the Panel of Experts to frame issues neutrally. As an expert in formulating studies, he will be very helpful in interpreting the studies presented to the Panel. In addition, his presence will be seen by the "members of the Internet community who are not trademark holders," as the acceptance of a non-intellectual property representative onto the Panel.

Thank you for this opportunity to comment. We look forward to continuing our participation in this process.

DOMAIN NAME RIGHTS COALITION
Kathryn A. Kleiman, Esq., General Counsel
Mikki Barry, Esq., President

NETACTION
Audrie Krause, Executive Director

 -- Posted automatically from Process Web site