WIPO Internet Domain Name Process

Transcript - part 5: Washington, DC regional consultation

Georgetown University
October 1, 1998

Chairperson: Thank you, Professor Froomkin. So, if I may propose, we have very short period of time left now - we have approximately 40 minutes, what I would like to do is something that we did in Brussels and there we had about 100 persons present in the room and I state for the record here that we are not as numerous at other times during the day and therefore when we proceed with this part of the exercise it is on that understanding and it is also on the understanding that any responses are entirely non-binding and informal but it sometimes useful, just in the phrasing of some questions, to gauge responses and to gauge what the difficulties are in the way that the questions are phrased. So I would like to go through RFC-2, at least the principal point in it and would ask if you would not mind giving an informal showing of hands on issues just to see how the room feels about various matters.

The first matter that I would like to take up then is the first cluster of issues which has been discussed by a number of the speakers today and that is dispute prevention measures. May I ask is there anyone who objects to the institution of a series of measures, without specifying what they might be, but who objects in principle, to the idea that there be measures taken in the application, for example, contact details, the requirement of a specification of contact details which are directed at reducing the incidents of disputes, dispute prevention, if you like. Is there anyone who objects to that as a principle? No, that is fine. If there is, by the way, I would ask the person if they would like to explain why they have that particular position. So, the first set of dispute prevention measures that have been proposed is to require in the application that there be a series of contact details specified, for example, for the purposes of service of process and one of the issues that these are relatively easy to specify, they have been specified ....................................

Chairperson: .............. details of what they may or may not be. One of the big questions that does rise is the tension between, on the one hand, the high volume of domain name registrations and the need for automated procedures on the part of the registrars and the registry to deal with this high volume, and on the other hand, the need to have some sort of verification process. Verification of the details that are provided, it is a question of where one ultimately places the economic burden, does one place it on the registrars or registries in order to verify details with a consequent slowing of operations and the addition of cost to the operations for the registration of domain names or does one place it out there in the market for those who feel themselves, who perceive themselves to be damaged by a particular domain name registration, to go through this process. So, may I ask is there anyone in favor of placing the burden of verification on the registrars or registries? There are three such persons, can I take it that the others are against placing the burden on the registrars or registries and verifying details. Would anyone who is, I am sorry, the first question I asked, is there anyone in favor of placing the burden of verification of application details on registrars or registries? And, three people said yes. You are also in favor of a verification process on the part of registrars and registries. Would any of those who.....yes, Susan.

Ms. Anthony: [NOT CLEAR, MICROPHONE NOT ON] I guess I need to ask a point of verification...... was is actually meant by verification and how that burden might be construed.

Chairperson: That is a very good point, for example, one can imagine, as in the .IO system that there is an automatic message sent to the e-mail address that is given and if that does not produce a response, you find out through that process that the e-mail address is incorrect. Then that can lead to certain consequences, for example, non-prosecution of the application or non-registration of the domain name so. John, please.

Mr. Wood: [NOT CLEAR, MICROPHONE NOT ON] Before I say what I want to say, I want to make a distinction between the issue of the liability which may route to a registry or registrar buy I cannot for the life of me understand that all the other plans did not go off. The fact is that if we talk about in principle agreeing to putting into place certain basic rudimentary information that is verification by its very nature if we accept that one of those things to make the system work is that there is veracity .................................... .......................... being said and that is incumbent in that process so ..........................

Chairperson: But, tell me try to explain. I think that in the question that I do ask, I think, in general, there is going to be this sort of difficulty and part of the utility of the process, I think, is to clarify these points and thus clarify some of the issues. By verification, you know if I am speaking about an application form in which you would see that the person really does exist, that the contact details are correct or the registrars and the registries accept that on faith and let us just accept those details. Then it is up to anyone in the market who feels that his or her interests or its interests are damaged, to do something about it.

Mr. Wood: [NOT CLEAR, MICROPHONE NOT ON] Let me just go one step further ... the fact is that obviously as a trademark holders, a trademark holder want to have some kind of method by which they may be able to get to a party who has actually done a ........... act of infringement or in some way ................................................ ..................... Obviously decisions like the MDT decision and the .................... decision placed in great doubt the ability to get a registry here in the United States. Similar case hold ............... in another part of the world but there is a serious issue on the other hand that what should we, in the name of brevity, for crude commerce, say it is ........... seven minutes ...... such an important thing that we will actually forgo trademark rights, we will forgo something which is regarded as so significant merely because of a small passage of time. I find it really quite bizarre in this argument that there are so many ............... being processed. I would speculate that in an average day at the Patent and Trademark Office down the road, in Crystal City, that they are processing easily as many applicants for patents, trademarks and copyrights, you know, as in this area, I mean there are vast numbers and to use that as a ................... and therefore absolve one body from any sense of due diligence or any duty ................ I find very, very difficult and the question comes up, where does the trademark go to have some form of chain in order to get ........................ it does not have this at the beginning of the speech here .............. ............................... liability, what it means is there has got to be some form of responsibility, I am not sure to what extent there should be liability...........

Chairperson: I take your point. Your observation is noted. Roger Cochetti please.

Mr. Cochetti: I am Roger Cochetti with IBM and I apologize that I have not been able to join the proceeding earlier and in response to the question I guess I would say two things. First, speaking only for myself but perhaps for others in the room. I would not ever assume that my failure to raise my hand automatically places me in the opposite category. Therefore, many times I do not raise my hand because I am listening and learning and not because I can be put in a category for failing to do so. Having said that, the difficulty I have with the question is that I am not comfortable with the extreme position on either side. Clearly, I think as the point was just made, no trademark holder can rightfully say that these people are processing forms which have a material impact on my mark and they have no responsibility to do anything whatsoever. ON the other hand, anyone who is familiar with the Internet and the evidence of the exhaustive debates we went through recently over the last year and a half on the copyright issue, and the liability of ISPs for copyright infringements that are occurring over networks, can recognize that there is a need for some balance in the equation. Exactly where that balance falls, I do not quite know. What I do know, however, is that it is unfair and unreasonable to relieve at least the registrar and probably the registry of any responsibility and it is equally unrealistic to assume that they can verify all of the information that is submitted to them or even the material information that is submitted to them without incurring a substantial cost which will be passed on to the operation of the Internet as a whole. So, I think part of the task of all of us interested in this is to sort of find, as we did I think in the case of copyright and ISP liability, a middle ground which relieves the network of unnecessary costs but also gives some measure of assurance to the intellectual property holder.

Chairperson: Thank you, Roger Cochetti. I think that is a very good summary of the views on this issue and we do not have a resolved position, clearly, on it within this room, at any rate. I take two other observations on the point, please, Christina I am sorry, I have forgotten your second name.

Ms. Rosette???: I guess I would just say initially that I am not speaking for my firm, I am not speaking for my clients, but based on my personal experience, although I very much understand the need of the registrars and the registries to not incur any liability for contributory infringement. On the other hand, having been faced with the problem of someone, or somebody, some group of somebodies, who have gone out and registered multiple domain names providing only a P.O. Box number and a fake company name, there has to be some way other than for our clients to have to incur the expense of private investigators to identify these people, if for no other reason than to serve process on them and maybe there is a way to, whether it is e-mail or an automatic letter is generated and sent out that has to be signed and returned within a specific period of time, that perhaps there is some technological way that we can make this both efficient, cost effective yet at least provide domain name registrants, as well as trademark owners, with some certainty as to who has the registration for this domain name.

Chairperson: Thank you very much. Harold Feld.

Mr. Feld: I would initially cast my vote with no imputing any responsibilities to registrars or registries unless either the registrar or registry wishes to offer it as value added service. I would suggest two things, one that the volume of business that NSI reports in terms of domain name registrations suggests that any sort of verification is, particularly any that requires some sort of human intervention or human evaluation is going to slow down the process enormously and we will move from being able to register 80,000 names a month to some low number an order of magnitude beneath that. The second point is I would suggest that we have other models in the corporate world which do not rely on this sort of verification. I can incorporate in any state, for example, without demonstrating a trademark or demonstrating that my agent for service of process is not some bogus individual or bogus P.O. Box in the same fashion that I can do right now of registration of a domain name. So, perhaps we should not look at trademark registration as the only model but rather say, for example, at incorporation which is a means of going to do business rather than a mark which is associated with the business.

Chairperson: Thank you very much. Well, I take from this discussion of this limited group that there is a general feeling in favor of improving the system insofar as the amount of details required of an applicant is concerned, that there is still a considerable amount of exploration and investigation to be done on how exactly this can be done, or how the issues of verification should be treated, liability, it is a question of balance and, I think, the interests are out on the table at any rate. May I move then to ask, in terms of the RFC, a relatively straightforward question. One of the measures that is being consistently, dispute prevent measures, that is being consistently advocated, is the requirement that an applicant warrant that the information is true and correct, provided an application is true and correct and so, I would ask the question: is there anyone against requiring such a warrantee on the part of an applicant?

Mr. Feld????: : [NOT CLEAR, MICROPHONE NOT ON] I would just like to ask a point of verification. Is this different from the question of certification of no stronger right to use.

Chairperson: First we deal with the warrantee, that the information is true and correct. Anyone against such a warrantee? Let us then move to the question of the warrantee, that to the best of the knowledge of the applicant, the domain name does not infringe the rights of third parties. You are against, is there anyone else against requiring such a warrantee? Could you explain why you are against, for the record, it is Harold Feld.

Mr. Feld: I am concerned with the requirement to have individuals or unsophisticated businesses warrant such a thing even with the caveat that it is to the best of their knowledge and belief, some people may be deterred by this requirement since it would imply to people who understand it that there needs to be some sort of due diligence done, that they need to at least go an do a trademark search, which is not cheap, having had an experience once of starting up a small business, I can say it was enormously useful to be located here in Washington where I could just truck down to Crystal City but other people do not have that luxury and furthermore, I think that there is a real difficulty in people honestly wanting to comply but recognizing while they believe that they have a claim to a mark that they may also recognize that other claims exist and may be deterred from pressing those legitimate claims that they have.

Chairperson: Thank you for explaining your position and helping us to understand it, one could leave the warranties at that and leave the possibility of any remedies for a breach of warranty to be determined according to the general principles of law that might apply in the particular jurisdiction or one could seek to make a breach of warranty, a material breach of the contract with the consequence that the registry can automatically, and the registrar, terminate the contract and the application for domain name registration. May I ask the question, are you in favor of seeking to make a breach of warranty, a material breach of the contract, the registration contract? Is the question not clear?

?????: Which warranty?

Chairperson: OK. The first warranty then where the provision of false information would constitute a material breach of the contract of registration. Yes, OK, the second warranty that is the breach would show that it was know to the applicant that the domain for which it was seeking registration infringed a third party’s rights, that would be a material breach of the contract. Is there anyone who is against making it a material? You are again for the reasons that you have elaborated.

????: In this case the person knew that he was infringing and you are against that being a breach?

Mr. Feld: Yes, I would also like to clarify, that is to say that this raises a complex question of who is to judge and under what circumstances this effectively second breach of warranty action that is being created and it seems to me that at best it adds an additional and unnecessary layer to this entire process particularly where you have a case where are you going to go with the good faith standard, are you going to go with some sort of objective standard, all of these things need to be answered and quite frankly I am not sure that unsophisticated domain name users have the capacity to make those judgments if they have to make such warranties.

Chairperson: Thank you for putting those issues on the table, I think they require further reflection and thought. May I move briefly to some other questions relating to dispute resolution? Susan Anthony, I am sorry.

Ms. Anthony: I am thinking off the top of my head on this one but I appreciate the concern that Harold has articulated, I am thinking about this in a way I had not previously thought of it and I believe I earlier stated MCI’s position that the certification statement and the NSI registration statement has not really helped curb cyberpiracy, I am wondering whether there would be a way to refashion that certification to really get at the cyberpirate, I would tend to agree, based upon what Harold has said today that for a domain name applicant to certify that to the best of their knowledge, well I suppose that to the best of your knowledge it does not infringe on a trademark but it is a pretty onerous burden for somebody who does not routinely work in trademarks or is not a trademark owner but maybe this would be one way to get at the cyberpirates.

Thank you for that observation. May I move to some of the other measures that have been discussed in relation to improving dispute prevention. One is the question of waiting periods that is that there would be a compulsory waiting period before activating a domain name registration. Just as a matter of information informally, who is in favor of such waiting periods? And who is against them? So there is a large uncommitted majority out there. Roger Cochetti please.

Mr. Cochetti: Once again, I think it is a question more of balance than it is being uncommitted. The case in favor of a waiting period is obvious that it permits trademark holders to inspect the applicants list and take action prior to a registration taking effect and presumably helps the whole system avoid getting tied up in a dispute because the trademark holder can enter litigation at their discretion and keeps it outside of the system. The case against it I think is equally obvious which is that it slows the process down, the nimble overnight, you know, character of the medium is undermined and I therefore do not think that you could sort of easily, you certainly, and I am speaking for IBM, cannot put us in one side or the other. I think that the task is to create a system of incentives that provides an incentive for those who have the ability or care to put their registration on notice and in doing so, it benefits everybody if they are prepared to do so and deprives that incentive for those who decide that they have to have their registration instantly and therefore create a higher cost for the system and a potentially more difficult situation for trademark holders. So, I think the task of the group, and all of us really is to find and see if there, instead of going to the extreme and putting all the burden on the trademark holders or all the burden on the system and the applicants, to see if there is a balanced way where trademark interests can be respect but the system is not to pay an undue cost for doing that.

Chairperson: Thank you very much. Any other observations on that question? Prepayment has been discussed by a number of the commentators today. That is the notion that you do not activate the domain name registration until the payment has been received. Now, I think that there are some mechanical questions that would need to be sorted out in dealing with such a system of requiring prepayment because in a world of multiple registrars and multiple registries perhaps, then it is entirely probable that there will be a system of credit accounts and deposit accounts so as that tracing payment may be difficult until the end of the month and one has to also look at the legal relationship that is established between the applicant and the Internet service provider acting as a registrar and the registry and where the actual contractual payment falls down. But it seemed, to me at any rate, that in the discussions so far there was a general view in favor of, insofar as it may be implemented practically, not activating domain names until payment has been made for the registration. Does that view meet with the approval of those present? Yes. Is there anyone against, exploring at any rate, the practicability of requiring prepayment before activation of a domain name registration? You are.

Mr. Feld: I am not against, but I would like to make a clarification.

Chairperson: Yes, please. I think you should take up a seat near a microphone.

Mr. Feld: I would simply like to, as part of the complexities that would need to be examined, point out that unless there is some reliable means for payment on-line at the same time that a registration is made, that it presents another slow-down in the system, particularly if you move to a system where sophisticated business accounts will be set up with registrars but where individuals or small businesses trying to register would do it through... the process as it works now can do it very easily, but would encounter difficulty in trying to pay through some other, more complicated means in order to get the name activated.