browse comments: Comments of CPSR, EFA, and FrEE on WIPO RFC-3

Comments of CPSR, EFA, and FrEE on WIPO RFC-3
Andy Oram (andyo@oreilly.com)
Thu, 11 Mar 1999 11:34:15 -0500 (EST)

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Computer Professionals for Social Responsibility, Electronic Frontiers
Australia, and Electronic Frontiers Spain (FrEE) submit the following
comment in reply to the World Intellectual Property Organization's
third RFC regarding Internet domain names.

The growth and accessibility of the Internet are in danger of being
fettered by ill-considered policies regarding intellectual property
and domain names. In this document, we explain why an exaggerated
concern for confusion over trademarked words can threaten the
potential benefits of a domain name system open to all. We suggest
that current problems can be solved by education rather than
heavy-handed and restrictive policies. We add our voices to those
warning that the Alternative Dispute Resolution policy recommended by
WIPO would introduce hazards into the development of the Internet.

The bone of contention
----------------------

The problems that led the U.S. government to request WIPO's
involvement in the domain name issue are quite small in scope.
Trademark holders are essentially worried that Internet users can be
misled or confused by names of trademarks (or names similar to
trademarks) within names of Internet sites unrelated to and
unauthorized by the trademark holder. While there is evidence to
support this concern, we will show below that the risks are
exaggerated.

The values we used in preparation of this comment and generally
accepted premises: that trademark holders have rights on the Internet
that can extend to domain names, but that mere use of a name is not in
itself infringing. We examine below two issues affecting the use of
domain names: browser name completion, and second-level names
registered in multiple top-level domains.

Browser name completion: an anachronistic concession to laziness
----------------------------------------------------------------

Since an organization can choose from any of dozens of
similar-sounding words to find a domain name, why are trademark
holders willing to pay huge sums to obtain particular domain names,
either in payment to speculators or through launching legal actions?
There are many legitimate concerns -- including the risk of dilution,
and ease of memorization for domain names -- but many of these
concerns could be addressed by investing money in advertising a
company's true domain name.

We suggest that a major contribution to contention and speculation in
domain names is the temporary consequence of a simple concession made
a few years ago by the major browser manufacturer, Netscape, to
laziness among users. Netscape took advantage of a convention whereby
many organizations set up Web servers with a host name of "www"
attached to their domain names. Given a bare word without punctuation,
its browser attached "www" to the beginning and (in a further
concession to the interests of businesses) "com" to the end.

People liked being able to type a well-known name like "ibm" in their
browser window and finding the Web site of the company or organization
they associated with the name. Many organizations chose domain names
to adapt to the simple completion algorithm, and often even
non-commercial sites registered in the .com domain in order to fit the
convention.

This crude name-guessing system could never scale well, and indeed it
is already being replaced by a more flexible system whereby the
browser maintains a list of keywords and popular sites. In early
versions of Netscape Navigator, if one typed "whitehouse" one would be
connected to http://www.whitehouse.com, an erotica (and originally
political parody) site unconnected to the President of the United
States. But in the current version, "whitehouse" takes a user to
http://www.whitehouse.gov, the President's official site.

The association of keywords to sites -- causing large sites to pay the
browser manufacturers to be featured -- has implications for the
visibility of small Web sites, but it relieves pressure on domain
names. If the Ford Motor Company tried to pay a browser manufacturer
to direct the word "porsche" to the Ford Web site, the Porsche company
could take up its trademark concern with Ford and the browser
manufacturer. The domain name system is no longer involved at all,
the way it was involved in a January 1999 lawsuit filed by Porsche
against 130 domain name holders that had the string "porsche" in their
names. (We are indebted to the Domain Name Handbook site,
http://www.domainhandbook.com/dd.html, maintained by Ellen Rony, for
histories of domain-name disputes).

Trademark holders and their advocates will hopefully realize that the
days when IBM benefited from owning the domain name ibm.com are an
anachronism. The "smart browsing" enhancement just described is only
the first of what will certainly become a wave of new search
techniques, and which will accentuate the current reduction in
disputes over domain names. The WIPO RFC's reference to "the sheer
number of instances" of names found by a trademark holder to be
infringing (paragraph 109) proves that, even in face of speculation, a
huge number of names remain for any trademark holder to choose from.

Network Solutions has reported that the number of disputes over names
in its top-level domains has actually decreased in the past year, even
though the number of registrations continues to rise. This statistic
has been cited by numerous commentators to suggest that the problems
posed by speculation are decreasing as all players get to understand
the domain name system better. No action should be taken to fix a
problem that may fix itself, particularly when the action would add
overhead to the domain name system and impair its normal use by
millions of legitimate sites.

Second-level names registered in multiple top-level domains: the fear of user ignorance
---------------------------------------------------------------------------------------

The Domain Name System was designed as a hierarchical system. While
the main reason for this design was technical (to distribute the
updating and resolution of names across multiple systems) it has the
side effect of preventing conflicts. A whitehouse.gov, a
whitehouse.com, and a whitehouse.org can all exist without technically
interfering with each other.

There is obviously room for confusion between sites in different
top-level domains, especially among new Internet users who do not
understand the hierarchical structure of the DNS namespace. But anyone
familiar with the operation of DNS would understand that there is no
necessary relation between the three whitehouse sites. Ill-advised
advocates for trademark holders are now fighting this most basic
feature of the system. They are trying to reverse the progress of
technology by requiring that a name be unique across all domains. We
might as well eliminate hierarchical domains altogether.

Solutions to laziness and ignorance
-----------------------------------

Laziness and ignorance are poor bases for policy. The way to combat
them is to ameliorate them, not form an overly restrictive policy that
accommodates them.

The growth in search techniques will eliminate much real contention
over domain names. It remains for the Internet community to explain
why whitehouse.com and whitehouse.gov should not be confused any more
than people confuse Van Ness Street in Washington D.C. with Van Ness
Avenue in San Francisco.

Therefore, in place of the Alternative Dispute Resolution policy (the
weaknesses of which we criticize next) the undersigned ask WIPO to
take on the task of organizing an educational campaign to inform
Internet users about the hierarchical organization of DNS and its
implications for domain names.

Problems with the Alternative Dispute Resolution (ADR) policy
-------------------------------------------------------------

The policy described in RFC-3 has been criticized thoughtfully and
persuasively by A. Michael Froomkin in a well-publicized paper,
http://www.law.miami.edu/~amf, and we have relied upon that paper for
some of the points in this section.

The RFC sets up an extraordinarily broad framework for those with
intellectual property rights to challenge other domain
holders. Essentially, anyone possessing a trademark can challenge
anyone else possessing a similar-sounding domain name. We are glad
that the RFC recognizes non-commercial use as a factor to be
considered before revoking a name (paragraph 191(ii) of the RFC) as
well as long-term possession (paragraph 167). But both of these
concessions to the rights of small domain holders are hedged in and
overridden by exceptions.

The RFC warns stringently (paragraph 122(iii)) against setting aside
certain top-level domains as "havens" for domain holders because of
the potential for "abusive registrations." Domain holders will be
able, under uniform procedures, to challenge any domain holder in any
domain. A Czech company in the .cz domain could cancel the name held
by a Japanese user in the .jp domain, or vice versa.

On the other hand, the RFC lays down no guidelines that would give
small domain holders any assurance that they can prevail against a
challenger; it simply offers comforting generalities in paragraph
122(ii): "ADR procedures should allow all relevant rights and interest
of the parties to be considered and ensure due process or procedural
fairness for all concerned parties."

Beyond this philosophical statement, the RFC recommends that the
determination be based on "various legal procedural traditions around
the world." But most countries in the world have no legal precedents
for applying intellectual property law to domain names. As stated
above, the countries where rulings exist leave conflicting precedents.
Therefore, participation in the ADR procedure involves a spin of the
Roulette wheel.

If users are deprived of names in which they legitimately own, and
risk losing the considerable investment in publicizing and using those
names even after years of use, the Internet will clearly fail many
people who depend on it, and there will be fewer users willing to take
the risk of registering domain names.

In the United States, many communities have suffered the difficulties
of having to change area codes on telephone numbers. In some
communities, even postal codes have changed. Every affected
organization can report the costs and lost opportunities engendered by
changes to addresses and telephone numbers. The Internet is rapidly
becoming a location as important as one's physical address and
telephone number. To threaten users with the risk of suddenly losing
their domain names is to jeopardize their move to online services.

As Froomkin points out, this threat is embodied in the WIPO dispute
resolution procedure. No one can be sure that their chosen name will
never be the object of desire by some trademark holder somewhere in
the world. While one hopes the dispute resolution process would
recognize legitimate interests of non-trademark holders, Froomkin
points out that the process includes no guarantee of fairness or
rationality.

Thus, the only people who can safely register domain names are holders
of trademarks at a national level. (Lesser trademarks are insufficient
protection. In one case in the U.S., the holder of a state trademark
had to relinquish his domain name to the holder of a national
trademark.) Ironically, the White Paper that asked WIPO to
investigate trademark issues mentioned several times that the
"stability" of the Internet was a key goal in its endeavors. While the
consideration on most participants' minds was operational or
functional stability (that is, making sure servers could continue to
provide names so that look-ups would work), a more general sense of
stability would, under the WIPO alternative dispute resolution
procedure, essentially vanish for all but large and well-funded
organizations.

What we fear is that WIPO regulations would inhibit small businesses
and individuals from exercising their prerogative to register a domain
name, or would unfairly deprive them of their domain name because of
frivolous actions brought by trademark holders. It is possible that --
in contrast to traditional media -- the mere use of a trademarked word
in a domain name would be considered infringement. Furthermore, the
chances of losing an intellectual property dispute would discourage
people from registering names at all.

Trademark holders have the resources to use courts to battle
infringement, and courts are prepared to look at the total context of
the use of a name. Furthermore, trademark holders have the resources
to advertise their domain names, and should be left the responsibility
for doing so just as they now advertise telephone numbers and other
contact information. Hence, the undersigned recommend that the WIPO
withdraw its recommendation for a dispute resolution procedure or
render it optional.

An optional procedure can still be a useful one. Parties can use the
procedure as a guide to how a court would rule, and the losing party
may decide to forego the risk of a costly court proceeding on the
assumption that the court is likely to uphold the result of the
optional procedure.

Governments everywhere have declared that the Internet is a medium for
all people at all levels of society, not just a medium for large
companies to reach their customers. The ability of small organizations
and ordinary people to register domain names and use them with a
feeling of security would be a boon to the development of the
Internet.

The issues that have caused disagreement over domain name policy are
relatively minor and can be solved without putting a regulatory brake
upon a well-functioning DNS. Furthermore, being far-reaching proposals
that would lock in untested mechanisms, the WIPO recommendations
should not be considered at this time when the organizations mandated
by the U.S. Commerce Department White Paper to make policy have not
yet been fully constituted or developed any membership.

Signed:

Computer Professionals for Social Responsibility -- http://www.cpsr.org/

Electronic Frontiers Australia -- http://www.efa.org.au

Electronic Frontiers Spain (FrEE) -- http://www.arnal.es/free

 ---

 Questions or comments on this document can be directed to:

 Andy Oram andyo@cpsr.org (617) 499-7479 (Cambridge, Mass., USA)