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Wed, 11 Nov 1998 09:12:25 -0500

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Domain Name Statement

Professor Brian Fitzgerald
Dean of Law
Southern Cross University Law School, NSW Australia

Gail E Evans
Professor of Law
Southern Cross University, Law School, NSW Australia

Introduction

The issues concerning domain name allocation are not narrow or simple
issues. To the contrary, they are integral to important questions of
globalisation, informationalism and economics. This is an issue, the
resolution of which will have important consequences for the building of
the legal framework for the information economy.

Central to this issue is the notion of intellectual property law. If it
were not for intellectual property rights and law we would not be
concerned with the policies that inform domain name allocation. At
bottom, the issue of domain name allocation is one concerning the
protection of intellectual property rights.

Intellectual property law commodifies information and makes it possible
to buy and sell information in the market place. Without intellectual
property law there would be no reward for the creators of informational
products and consequently no incentive to create and no market.

A fundamental question often asked by the early inhabitants of the
internet was why intellectual property rights should be relevant to, let
alone a dominating factor of, domain name allocation. While we concede
that disputes over domain name allocation have caused inefficiency in
the information economy it seems clear that intellectual property law
(particularly trademark law) forces us to consider the issue. In the USA
dilution statutes make trademarks relevant to the allocation of domain
names, at least in dispute resolution after the event, while in
Australia it is arguable that in relation to well known marks s 120 (3)
Trademarks Act 1995 and ss 52 and 53 Trade Practices Act 1974 raise
similar issues. [Note s 120 (3) requires the offending mark to be used "
as a trademark" and relates to well known marks (sectorially based) a
concept not as broad as famous marks].

As to whether the entity allocating domain names will be implicated in
the intellectual property question the answer depends on whether the
allocation policy is value laden (policy rich/weighted) or value free.
The first come first served allocation policy of NSI contrasts with that
applied in Australia requiring relationship to a business name (see also
the gTLD MOU allocation policy).

The gTLD MOU was an impressive start to resolving many of these issues.
It needed much more work but it is hoped it will not be ignored in
future proposals.

We consider the key issues for the future regulation of domain names
are:

- the expansion of generic Top Level Domain Names (gTLDs)
- effective measures for resolving competing claims for gTLDs
- adequate governance structures

1) Expansion of gTLDs

A crucial decision is whether there should be generic TLDs or only
ccTLDs. Arguments for both should be closely examined. In this age of
global informationalism it seems inevitable that an international
generic TLD should exist.

The next issue arising is whether there should be a number of gTLDs
other than .com and if so how many? Five or seven new ones or more?
While expansion may make it more difficult to find commercial sites it
seems necessary that expansion occur. Close attention must be given to
the task of identifying what those new generic categories should be and
what
function they should seek to serve. Are they to be in the mould of
trademark classifications?

2) Resolution of Competing Claims

While disputes between domain name registrants and trademark holders now
dominate this topic, if a value laden policy is adopted and its seems
inevitable that it will, then the big question will be as to how to
reconcile competing claims of trademark holders for domain name
registration.

It is clear that conflicts between trademark holders will emerge as the
next big issue for domain name allocation. Any new regulatory strategy
must clearly articulate how competing trademark holders will gain
priority in the global gTLDs. This needs close attention.

3) Adequate Governance Structure

Domain name allocation must be backed by an adequate governance
structure. The Internet has become a primary space for electronic
commerce. Cyber-commerce increasingly constitutes a major sector of the
global economy. Therefore, the governance of domain names should not be
approached as a peripheral issue. It is appropriate that states, as
major actors in international society, should become directly involved
in the governance of domain names.

Thus far, the debate has assumed that the governance of domain names is
a matter of either private or public administration, that is, a
dichotomy between either WIPO or private corporate governance. What is
needed, we submit, is a system of multi-level governance, which is
inclusive of both public and private entities. Multi-level governance
encompasses a hybrid system in which public and private entities are
appropriately involved in accordance with their respective capacities
and capabilities.

Our research into the legislative process of the World Trade
Organisation, in particular the making of the TRIPS Agreement, shows
that producer associations and other private entities were involved in
constructing minimum international standards of protection. In addition,
recent WTO case law shows that private entities are becoming involved in
the international process of dispute resolution.

With respect to the settlement of domain name disputes, the major
difficulties with a private system of arbitration referable to courts at
the municipal level are as follows:

- Private entities have no jurisdiction nor can they invoke jurisdiction

- Private entities cannot make rules for governments
- If domain name governance remains exclusively private we will not
build up the body of jurisprudence needed to facilitate their orderly
administration and to give rise to certainty in cyber-commerce.

Thus we submit that the administration domain names should be
streamlined and integrated within the present structures governing
intellectual property both at the national and international levels.
Nationally for example, where good working relationships exist between
corporate administrators of domain names and trademark registrars, such
forms of coordination should be further developed and extended.
Internationally, domain names should be integrated with the
administration of trademarks by WIPO and in so far as domain names are a
trade-related issue, integrated within the WTO, which could assist with
dispute resolution. The borderless cyber-market requires international
coordination and administration. Equally, it requires the proper
representation of all stakeholders including governments, the
intellectual property community, and not least the general public as
users. Given that developments in the technology and cyber-commerce
outpace the traditional lawmaking process, wherever possible the
internet should be used to speed lawmaking and expedite dispute
settlement.

In sum, international lawyers and international relations theorists
together with economists and business strategists should begin working
out appropriate governance models. In this exercise particular attention
should be given to the role of states and private corporations and
individuals in the governance and dispute resolution structures. The
question of the moment across many international issues is this very
question of appropriate governance models, which adequately represent
the interests of states and private entities.

See further:

G Evans, "Issues of Legitimacy and the Resolution of Intellectual
Property Disputes in the Supercourt of the World Trade Organisation"
[1998] 4 Int TLR 81.

G Evans and B Fitzgerald, "Information Transactions Under UCC Article
2B: The Ascendancy of Freedom of Contract in the Digital Millennium"
(1998) 21 UNSWLJ 404.

A Fitzgerald, B Fitzgerald, P Cook, C Cifuentes, Going Digital: Legal
Issues for Electronic Commerce, Multimedia and the Internet (1998)
Prospect Publishing, <http://www.prospectmedia.com.au>

B Fitzgerald, L Gamertsfelder, T Gulliksen, "Marketing Your Website:
Legal Issues Relating to The Allocation of Internet Domain Names" (1998)
UNSWLJ 549.

BF Fitzgerald "Trade Based Constitutionalism: The Framework for
Universalising Substantive International Law" (1996-7) University of
Miami Yearbook of International Law 111.

Professor Brian Fitzgerald
BA LLB BCL (Oxon.) LLM (Harv.)
Dean School Southern Cross University Law School
NSW AUSTRALIA
Telephone + 61 02 66 203 368
E-mail: bfitzger@scu.edu.au

Gail E Evans
Professor of Law
Southern Cross University Law School
Tel: + 61 2 6620 3111
Fax: + 61 2 6622 4167
http://www.scu.edu.au/schools/lawj

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