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EFF Comments on WIPO'S DNS Intellectual Property Proposal

Electronic Frontier Foundation
1550 Bryant Street, Suite 725
San Francisco, CA 94103-4832 USA

November 6, 1998

WIPO Internet Domain Name Process
World Intellectual Property Organization
34 chemin des Colombettes
P.O. Box 18, 1211
Geneva 20, Switzerland

Re: Request for Comments on Issues Addressed in the WIPO Internet Domain Name Process (WIPO RFC-2)

Dear Sir or Madam,

The Electronic Frontier Foundation (EFF) is a nonprofit, public-interest organization working to protect rights and promote responsibility in the electronic world. We thank you for giving us the opportunity to submit our comments regarding the proper relationship between the rights of trademark holders and the registration of Internet domain names.

EFF has been tracking the Internet domain name process for the past several years. One of our Board members was on the IANA Transition Advisory Group; another is Chairman of the Interim Board of ICANN; a third was instrumental in the CORE effort to provide a capable competitor in global domain registration. In addition, our legal staff has tracked and commented on numerous proposed policies and drafts, while our activists have closely followed the controversies online and in the press.

We believe that the provision of Internet domain names is fundamentally a human rights issue, not an intellectual property issue. All discussions on how to protect the rights of intellectual property holders in the domain naming system are starting with the flawed premise that those rights are superior to those of the public-at-large. No one group of intellectual property holders' interests should outweigh any other group's, or outweigh any other rights held by individuals and the public.

The Domain Naming System Impacts Basic Freedoms

While it may not be obvious at a first glance, the management of the Internet domain naming system impacts greatly on the fundamental human rights of free expression, free association, due process, and nondiscriminatory administration. It is through Internet protocol addresses and domain names that individuals and organizations place their speech on the Internet and give titles to them or to collections of them, and it is through these addresses that others locate that speech to read and use it. It is easy for those responsible for administering basic Internet functions to lose sight of this core fact and unnecessarily burden these important human rights.

For example, currently trademark owners can suppress the speech of anyone who uses a trademarked word as a domain name, even if the domain and its holder are in a different category of commerce, or not commercial at all. This policy has been abused dozens of times. For example Warner Brothers has harassed the owner of roadrunner.com, a U.S. store located in the state of New Mexico whose name honors the state bird, the Road Runner. Another example is Prema Toy Co., owner of the trademark on the toys "Gumby" and "Pokey," which tried to shut down the web site of a 12-year-old child, nicknamed "Pokey" all his life due to his overdue birth, who received pokey.org and some Web software as a birthday present.

Permitting trademark law to trump free expression also gives domain name registrars the de facto right to reject or cancel any domain name at any time, with or without reason--a clear violation of due process. For example, there is currently an existing unwritten policy of refusing to register some names with sexual, excretory or otherwise "offensive" implications. This inconsistent policy allowed the registration of "suck.com" for an avant-garde magazine but refused "pimpshit.com" to a pop-culture clothing manufacturer.

Any governance process established for the Internet should preserve access to domain names for all Internet users and protect the use of domain names for all forms of expression and communication. The Internet should be administered on principles compatible with the United Nations Universal Declaration of Human Rights. The UN Declaration states in Article 19, "Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers." The new electronic frontier is no exception.

Giving Trademark Holders These Rights Is Not a Proper Interpretation of Intellectual Property Law

Giving trademark holders superior rights to the public in domain names does not reflect U.S. law, the laws of any other country, or any emerging international law of trademarks. The policy appears to have been adopted to benefit one company (i.e., Network Solutions, Inc.), in an attempt to reduce the number of lawsuits against it by large corporations, rather than to define a balanced public policy. Yet it appears that WIPO is about to perpetuate and lend credibility to this wrong-headed policy.

Under trademark law, more than one entity can hold a trademark on the same word, name, or symbol provided that it is used in completely different business categories. Failure to provide for multiple uses of the same trademarked character string in a domain name has resulted in big companies beating up on small companies (and individuals) using the same or similar names. Furthermore, large trademark holders have been registering their marks in all global top level domains, effectively "sealing off" that character string to those in other (or no) area of commerce who would otherwise legitimately be able to use it, leaving others no option but to register domain names that are less desirable. This flies in the face of established trademark law, which does not permit a global monopoly on all uses, in all categories, of a character string. Very narrow exceptions for "strong marks" (e.g., "Exxon," "Kodak," etc.) can be addressed with current law even in this new medium.

Furthermore, there are other legitimate uses of words, names and symbols that have nothing to do with trademarks that get and deserve legal protection yet are not dealt with in trademark law. For example, Kayvan Sylvan, a man who runs his own computer consulting business, registered the domain name sylvan.com. Sylvan Learning Systems, which holds a trademark on Mr. Sylvan's last name in their particular category of business, threatened to take that domain name under the current policy. Mr. Sylvan had to trademark his own last name in order to keep his domain! There are other examples of non-trademarked, yet legal, uses of terms. For example, the World Boxing Association might want to use the domain name knockout.com, even though Hasbro toys has trademarked the term "Knockout!" as the name of a board game. WBA's hypothetical use should be a legally protected use of a domain name.

Domain names cannot be equated to trademarks or brand names, since the sole domain name cannot be used by multiple participants to serve their various non-infringing functions. Instead, domain names should be distributed on a first-come, first-served basis, and taken away only if the company that wants a domain name can demonstrate a violation of established law. One example might be proving that the current owner is engaging in demonstrable and actual trademark infringement such as by confusing the customer (i.e., McDonald's Hardware decides to get into the fast-food business). Another example might be showing that the current domain name holder is engaging in unfair business practices (e.g., kaplan.com being controlled by Stanley H. Kaplan Education Center, Ltd.-competitor Princeton Review Management Corp., ostensibly to compare the competitor's products to Kaplan's, though more obviously to simply deny Kaplan the domain name it naturally sought). And even in clear cases like these, the domain seeker would not necessarily succeed in taking over the domain, just forcing the infringer to stop infringing on their trademark. The transfer of property (i.e., the domain name) from the holder to the seeker is a matter that may have to be separately negotiated under various legal conditions, and it is improper for WIPO to attempt to "short-circuit" those processes.

These are matters for existing courts to decide upon, using current and still-serviceable law. The WIPO DNS intellectual property proposal is a solution looking for a problem that does not actually exist.

Dispute Prevention

EFF is very concerned that in the name of preventing trademark disputes, the free expression and human rights uses of domain names will be harmed. We urge WIPO to adopt the following principles:

  1. Users of domain names must not be required to identify themselves or provide their street addresses in order to register a domain name. There are many individuals who could be subjecting themselves to physical danger because of the political nature of their communications. If a domain is registered and paid for anonymously, that is the business of the registrant and should be of no concern to the registrar or any other party. People do not have to be identified to pay registration fees. Cash and money orders should be sufficient forms of payment.
  2. No reason for registering a name should be required. Users should be able to register domain names without fear of reprisal from anyone who disapproves of their agenda, opinions or manners. Trademark holders should bear the burden of proof that a domain name was registered with the express intent of infringing upon a trademark, just as they do in trademark disputes in any other medium.
  3. No period of suspension of a domain name registration, which serves the same function as censorship in this context, should be imposed prior to an order by a court of competent jurisdiction, with the burden of proof being on the censor.
  4. Domain names should not be automatically taken away if the registrant does not actually use the name. Many users plan on setting up Web sites in the future and register their names in order to have them reserved. In addition, users might be planning a surprise unveiling of a site at some point when a future product is introduced. Again, the burden of proof that a domain name was registered with the express intent of infringing upon a trademark should be borne by the trademark holder.
  5. Domain names should not automatically be taken away and given to those who have the first trademarks. This gives an unfair advantage to large corporations that have been existence for a long time, to the detriment of smaller companies who were on the Internet first.
  6. Domain name registrants should not be required to subject themselves to enforcement in a forum that is inconvenient, whether that forum be a court or an arbitration body. Defense of registration of domain names should not be so burdensome that users give up domains rather than defend themselves.

    Dispute Resolution

    EFF understands the need for developing a dispute resolution procedure that is international in scope. We believe that a uniform procedure should be established for resolving domain name ownership disputes by contract among registrars of second level domains in each of the gTLDs. This procedure must strike a proper balance, enforcing the law as interpreted by courts, between domain name holders and the owners of trademark rights. It should offer an efficient and inexpensive means of dispute resolution without supplanting or interfering with the jurisdiction of national courts or the rights of Internet users to have resort to the courts. Any dispute resolution procedure should include explicit instructions on how an appeal can be taken. Due process must be preserved.

    One possibility is that domain name registrants could voluntarily agree to submit to arbitration when they register their domains. There are currently a few online dispute resolution bodies that have been developed, such as the Cyberspace Law Institute (http://www.cli.org). If domain name holders and trademark holders contractually agreed to submit themselves to arbitration with one of these organizations, domain name disputes could transcend national borders and provide relief to all parties concerned in an equitable way.

    In any event, domain name registries and registrars should be shielded with immunity for providing registrants with domain names and should not be involved in any way in the resolution of domain name disputes. The process of domain name registration cannot continue to be abused as a proxy for trademark litigation.

    Thank you again for giving us the opportunity to comment as you work to formulate international policy in this important area. EFF hopes that WIPO is willing to expand its field of vision to understand the human rights implications of the domain naming system including freedom of expression and publication, free association, due process, and nondiscriminatory administration. If we can provide you with any additional information or assistance, please feel free to contact me at +1 301 283 2773 (voice), +1 301 283 5337 (fax), ssteele@eff.org (e-mail) or the postal address above.

    Sincerely,
     
     

    Shari Steele
    Staff Attorney

    Please send any questions or comments to webmaster@eff.org

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