WIPO Internet Domain Name Process

Transcripts - part 4: San Francisco regional consultation

Fairchild Auditorium, Stanford University
September 23, 1998

Ms. Shelley Hebert:

Thank you and good morning. My name is Shelley Hebert, and I am the Director of Business Development for Stanford University. So, I feel I should actually start by welcoming you all to the University. I was delighted when I learned that this hearing would be held here. I appreciate the opportunity that this Forum provides to offer the perspective of a trademark owner who is dealing with the issues you are discussing on a daily basis. Stanford University is a non-profit educational institution whose name is recognized around the world. As the owner of various trademarks that represent the institution's excellence in teaching, learning and research, the University is responsible for protecting its name and mark against infringement. In recent months these responsibilities have increasingly included pursuing individuals and entities that have no relationship to the University, but have registered Internet domain names that include the word mark Stanford. In just the last 30, domain names have been registered that include stanfordalum.net, stanfordlaw.com, .net, .org, stanfordfootball.com, stanfordmba.com, stanfordmail.com, net, org and many others. The absence of a trademark review or posting period in the domain name application process means that anyone who chooses to incorporate Stanford's name into a domain name may do so, as long as the exact word that they choose to attach to Stanford does not duplicate an existing registration. When contacted by the University, such registrants often indicate that they were very surprised at how easily they were able to do this. Part of their surprise seems to be based on the erroneous notion that the University should have been required, by whom I am not sure, to register every possible word in the English language that could be attached to Stanford. Clearly, this is impossible. The University has retained a domain name watch service for notification regarding these registrations. However, this notification is after the fact, and the registrant may already be actively using the Stanford name in Internet commerce or other on-line activities which may cause harm to the University.

As a trademark owner, Stanford has the responsibility to track down domain name registrants one by one to assert its trademark rights. And here I would add, in regard to Ms. Smith's comments, that we often do find that the registrant's information that is provided on whois through Internic is completely unreliable. In many cases when I personally, called those telephone numbers they don't get answered, they are inactive, they are out of service etc. E-mail addresses are likewise very hit-and-miss on that activity. And that is the source of information that we have to rely on. So, if that information is inaccurate then our next step would have to be to hire a private investigator to go and actually seek out that individual or that entity and try to find them. Once, we have done that, the next step is to file individual challenges with Internic with the results and timing of those challenges being very uncertain. And again, we have to do this one by one by one. The proliferation of these registrations, which are now averaging several per week, mean that staff time and legal costs required to pursue these infringements are growing exponentially while the array of activities engaged in by infringers increases almost daily. And here, I really want to emphasize that by and large these are registrants whose use of the Stanford name is not legitimate. They are primarily commercial entities who are seeking to profit by use of the University's name and registration.

The issue that is being addressed by these hearings is one that affects all trademark owners, not only those engaged in for profit business activities. For non-profit educational institutions such as Stanford, the resources required for trademark protection concerning domain names are not only becoming burdensome but detract from the Institution's primary mission by increasing administrative costs. The potential for confusing the public about the true source of on-line material that has a domain name including the word Stanford is very significant. The University can also be exposed to real risks and liability through activities that appear to be conducted in its name. An example, that I would give you in that arena is that non-profit organizations are precluded from engaging in political activities, and you could actually lose your non-profit status on that basis. So, if someone chose to set up a web site of a political nature and do that under a domain name of Stanford, that could cause real harm. I also want to mention that the idea that these kinds of trademark issues should be resolved in the courts would impose very high litigation costs on non-profit organizations if that is to be our only recourse. We would suggest that, at a minimum, an initial period in which domain name applications are posted publicly and trademark owners are able to file challenges before the registrations are executed should be adopted. The trademark owners need the opportunity to exercise their protection responsibilities before activities that infringe upon or tarnish these marks occur. Such up-front challenges would not necessarily need to involve attorneys and therefore would cost less than the current system. Again, if we have to rely on litigation then the costs would escalate enormously. We also recommend that the entity reviewing domain name challenges recognize the challenges which incorporate the entirety of an inherently distinctive mark like Stanford, but which tack on some additional letters. And again I really want to emphasize that this is a key point for us. So, the fact that someone can apply for stanfordteach.com, stanfordtack.com or any acronym or word that they choose to append to Stanford and get that name on the basis of uniqueness is really a critical issue for us. So, as you look at things related to famous marks and so on, I hope that you would look more broadly than just the use of the word mark itself. It is the attachment of other letters or words to that, primary mark that is also a serious concern.

Finally, I would just like to point out that while many organizations and individuals seek to profit by Internet related activities, non-profit educational institutions use the Internet primarily to spread knowledge and information. An improved process for domain name registration will help assure that the resources intended to support education are not wasted chasing infringers seeking to profit from a university's good name. I appreciate this opportunity to share our views with you and I would welcome any questions that you may have.

Mr. Fred Mostert:

You refer to challenges during the registration process. I take it that what you are probably referring to something akin to something which we all know in the physical world in terms of trademark registration, and that is something called the opposition or the opposition period?

Ms. Shelley Hebert:

Yes, that is a similar concept where the fact that someone has applied for a name gives the trademark owner the opportunity to inform the granting agency, whoever that might that be, that this is a potential infringement and to state the basis for that before the registration is provided instead of having to do it after the fact.

Mr. Fred Mostert:

I suspect that perhaps one of the reasons that you are facing some of these challenges, and I am sure 99% of them are bogus, is that Stanford is also a locality. Stanford has a post office, Stanford is a place, stanford.ca.us would be a perfectly legitimate domain name in the U.S. domain and I was wondering whether you had any objection to people registering in the U.S. domain. It has been suggested that the U.S. domain in fact be operated by the U.S. post office in some point in the future. I don't know if that is going to happen or not.

Ms. Shelley Hebert:

Actually, you raise a very interesting point for the University. Because in fact Stanford is not a place. The only place that is Stanford is contiguous with Stanford University. So, although there is a post office located on the University property, there is no geographic location called Stanford. That for us is a very important distinction, because I am sure many of you are aware that Princeton University, for example, is in a city called Princeton. So, for trademark protection purposes if someone chooses to call themselves Princeton Consulting or Princeton Technology, they can always claim that they are doing that on the basis of the city rather than the University. In Stanford's case, however, because there is no place called Stanford other than university on lands, our position is that someone who chooses to call themselves Stanford Technology or Stanford Consulting cannot do so by claiming its name is based on a geographical location. So no, we would not welcome a domain that implied Stanford as that of locale rather than an institution.

Mr. Fred Mostert:

I guess you would have to challenge that with the U.S. post office then, because according to the U.S. post office, I can mail a letter to Stanford, California and it has its own zip code.

Ms. Shelley Hebert:

Right. The only place of that zip code would be university land. So, if you were a business entity not located on university land with a direct relationship to the university, then we would....... (she was interrupted here).

Mr......................?

How about the shopping centre?

Ms. Shelley Hebert:

The shopping centre is on university land. It is actually owned by the University.

Ms. Ellen Rony (Author, The Domain Name Handbook):

I am Ellen Rony, I am co-author of the Domain Name Handbook and I am a Stanford alumnus, proud of it. You raise the concern about cybersquatters taking a well-known name and exploiting it. It is a double-edged sword you see, because if you are saying that Stanford claims the right to any words appended to the Stanford name, you are really expanding the reasonable protection of that name. People could use Stanford friends who may have nothing to do with Stanford at all but may be friends of Sally Stanford. So, what gives Stanford University the right to claim that name? And I would like to make an example that was actually litigated. The Academy of Motion Picture Arts and Sciences contacted NSI and challenged something like 22, 23 names, the oscars.net, oscar.1.net, academyawards.com etc. And among those names were lososcars.com. Now, lososcars could be in fact a car dealership owned by a man named Loso. So, what we are talking about is character strings and I think you have to be very careful when you try to extend the realm of your name beyond that. But I would like to suggest something. I have the belief, for example, that in the real world marriage should be more difficult to go into but divorce should be easier, and that we should apply this to the current situation. I think that when people are registering domain names. I think that more should be asked of the registrants. I know that this is very controversial, but there was a time three or four years ago when NSI would allow a company or corporation to have one name and one had to have a legitimate lexis next to that name to do it. And then there were places like car companies saying "we want to have our brand," "we want to have our private line," and so there were legitimate reasons for relaxing that requirement. But now we have gone way to the other end, where there are registrants who just do their acronym generators and they accumulate thousands of names. And I think that if one of the things that WIPO is tasked with, is to figure out how to resolve not only trademark disputes but those specifically involving cyberpiracy. There may be the need to have mechanisms at the outset, and that might be prepayment, right at the outset. I know it is not for you to decide that, that will be for the new corporation, but if you make registrants pay when they register as we do for Viacom etc., then you are not going to get people just gathering up all these names. Another thing is, that I think it is perfectly appropriate to ask what is the purpose of this registration. I don't know if there is a magic number, but it seems that if you get a request for hundreds of names that are known in the world that are famous names, that should trigger a question then and that is reasonable to ask that. Furthermore, I think that people should have easy, open and very cheap access to registered trademark names. So, we know from the beginning that if we register a name there is somewhere in the world a registrant whose hackles may be raised because they are concerned about protecting their intellectual property. So, I think that these are devices that can be set up before somebody goes out and registers a name.

Shelley Hebert:

I would like to respond to two points that the speaker raised. One, is on the issue of people whose last name is Stanford. Clearly there are such people and I am not so concerned about their setting up web sites or domain names incorporating their personal name. And, I think the issue of the registry that has been discussed a little bit earlier this morning would help make a distinction between an institution's name, a trademark owner’s name versus that of an individual seeking to use their own name for communication over the Internet. The second point that I would really like to make is that I think that the issue of intent is one that is usually rather transparent. It is not hard when you look at a web site to tell whether someone is in fact using the Stanford University name for some commercial purpose that they wish to exploit for their own gain, versus some other purpose that might be more legitimate. So, I would hate to see us err on the side of protecting all users rather than allowing the trademark owner the opportunity to challenge those for whom a challenge is quite legitimate. Thank you.

Mr. Mark Partridge:

I have a question for you, just a point of clarification here I guess. In talking to trademark owners, I hear from many of them that they would like an understanding that they are not seeking any greater rights on the Internet than they have in the non-Internet context with respect to enforcement of their trademark rights I wondered if you concurred with that?

Ms. Shelley Hebert:

Yes absolutely. I agree with that entirely. We have clear responsibility in the trademark domain that goes beyond someone naming their business Stanford University, and that responsibility extends to naming their business with any string of words that incorporates the word Stanford, and that is quite a clearly defined responsibility under trademark law. So, the kind of protection that we are seeking on the Internet is really not so much protection, as it is opportunity to exercise our legal responsibility to protect our trademark in the same way that we are required to protect it elsewhere.

Mr. Don Heath:

Let me just say, and this time instead of speaking as President of the Internet Society, I am the ex-Chair of the IHC, and I say that because in the days of the IHC our first recommendation was to do the following. Are you ready for this Ellen? Pay when you register, justify legitimacy, and define the purpose of your registration, have a posting period of 60 days so that as soon as you get the registration it would be posted for 60 days and people could protest it, which would have certainly have helped us then, I think. Outrage in the community. Now, that was two years ago and the reason was, of course, that we can't wait 60 days, because the Internet would change two generations in 60 days and it’s insane. But you know, now I am wondering if maybe a waiting period that provides in that 60 days or whatever it is, you can use it but it is subject to revocation or something, this is a sort of a category. I just think in two years that times have changed so much that we have almost gone full circle. And to hear these arguments again, well we liked them a couple of years ago too.

Ms........................?

I would just add in reinforcing that concept, that I think two years ago people were thinking of an Internet address in the same way that we might think of a street address, as literally a way to find someone. And that we now understand that an Internet address is much more than a way to find someone, that it is literally a way to identify someone and that in the trademark realm the whole concept of trademark has to do with the source of goods or services or information and clearly a domain name has become a way of identifying the source of goods or services or information. So, to usurp a trademark owner's name in a domain name goes way beyond the notion of a street address, I believe, at this point.

Mr. Ken Fockler:

Thank you for a very clear description of the situation you are facing. You described the challenge that you have faced, and then you came to your main recommendation, I think which was a minimum period of time to review. And I wanted to be clear in my mind as to what you would do during that time, what would be the better way for you to overcome the problems you mentioned, if you have got problems, with who is information, if it is clear to go to the web site and see the intent. Well, you can't go in this way if it’s a minimum period and there are constraints to use it. What mechanisms would help you, what would happen during that minimum period that would alleviate your expenses, your resources, those costs and that clear picture you painted of the challenge you have?

Ms. Shelley Hebert:

I think, speaking to the criteria that were just mentioned, one could obviously be accurate contact information for the individual or entity seeking the registration. The second one being a description of the intended purpose for the registration and, at that point if we can see from the intended purpose that its not a problem, it is not something that we should be concerned about, then we might just let the posting period lapse as you would in a trademark process and not respond. If, however, the description causes concern or raises questions, then I think it would be our responsibility to contact that applicant, to try to ascertain whether this intended use would constitute an infringement and, if we felt that it would, then our hope would be that there would be some clear and succinct process not involving attorneys that would allow us to communicate that back to the registering entity.

Mr. Ken Fockler

And you would be proactive in this? You would constantly monitor it? (he was interrupted here).

Ms. Shelley Heberts:

Absolutely, because that monitoring is, as I have come to understand, it is part of a trademark owner's responsibility anyway. So, what we are doing is just extending our responsibility in the non-cyberworld to the cyberworld. But I can say that the magnitude of what we are facing in the Internet domain name issue is really quite daunting.

Mr. Robert Connelly:

Thank you. Bob Connelly speaking. Ms. Hebert, I made some comments before you arrived regarding the Internet Counsel Registrars (Core), and I am glad Don Heath spoke out to anticipate what I was planning to say. To me, the centerpiece of the IAHC, Internet Ad Hoc Committee proposal which was put forth in the gTLD-MOU was the administrative challenge panels under the control of WIPO. The original draft of this, as Don mentioned, had a mandatory 60-day waiting period. And when I proposed this opposition system of trademarks at the meeting at Geneva, I was almost shouted out of the room. And David Maher, now Chair of the POC, said that he had death threats against him for that proposal. So, they made it optional. But in our system, the Core system, each registrant is given the opportunity to accept a 60-day waiting period and the plan of the original draft of the ACP was that in case of a challenge where the registrant refused the optional 60-day period, he was disadvantaged in any arbitration undertaking. The idea of having the 60-day waiting period or at least a 60-day period where they are at risk, is that there are trademark watch services. And any one of the gentlemen in the head table would know them well. One of our registrars in Core is Thompson & Thompson, one of the very well-known trademark watch services. I suspect, but I don't know what are the motivations of becoming a registrar, is in being at the front row of those having access immediately on a daily basis or hourly basis to do the final marks on domain names. These firms that have these large services have a complex system of saying, well this looks like, or sounds like an existing mark and their customers, who largely are represented through their counsels, are constantly watching and then finding oppositions when applications are filed at that time. So, that type of thing does exist, is planned and indeed our Core Memorandum of Understanding requires that our applicants indicate some intended use for their domain. Our members say, "well what is that going to do?" We don't know what it is going to do, but WIPO hopefully will then have access to that, and if there is a challenge then something can be done about it. It could be incorporated in the things that the Panel will consider.

Ms. Shelley Hebert:

I think I referenced in my remarks that I have obtained a watch service for this exact purpose. It is the Thompson & Thompson trademark watch service, so I am one of their customers. And without that watch service I really would not have any means of finding out anything approximating a timely basis about these types of registrations. But again, I want to emphasize that by the time I find out, it is after that the person has already received in the domain name. So, whatever activity or intended purpose they have, its now incumbent on the University to go and argue with them about it, after they have already been given the domain name. And what we are trying to emphasize here is that it is a combination of the posting period and the availability of the information and the upfront review that would actually make a difference, so that you are not always in the position of chasing people one by one after the fact. And I do receive every week watch reports where I look at maybe 20 or 25 entries that are being brought to my attention, and perhaps only a handful of those are ones that are of concern. But, again if you are having to track down individually four or five or six a week, you can imagine the volume of effort and resources that have to go into that. I almost feel like I should be getting a volume discount at Internic at this point, because if I have to file these challenges one by one, by one, by one. That can't be to any one’s benefit.

Mr. Robert Connelly:

I have another comment, which should be more of a question to WIPO. For some reason in the final iteration of the Core MoU, there was a provision made that we must offer to our registrants the option to refuse the expedited arbitration. I am not sure whether that means that the registrant is refusing any arbitration or only the expedited version of the arbitration. And one last thought is that no one has talked about any languages but English here today and we do have the consideration of many different languages which have other words which may be trademarks in those other languages.

Mr. Chris Gibson:

I wanted to just mention in relation to the use of these search firms, that it isn't just something that is happening here in Silicon Valley. We at WIPO often get requests from companies and entities as far away as India or Tokyo that they have also retained the services of some sort of Internet search firm and they’re giving us lists of words that are variations on that particular mark that might be involved and asking us what they can do. And so there are various parts of the world facing this same issue, whether they are using these search firms, whether Thompson & Thompson or a number of firms located in London or in England and in other places. It is interesting and of course we tell them at this point that we hope that they would participate in this process to try and develop.

Mr........................?

In the document that you referred to today, there were three basic procedures that were foreseen. The ACPs, which was an address at this procedure and then next to that there was a possibility of mediation and expedited arbitration. Expedited arbitration is a different form of arbitration. It is just basically an arbitration procedure that is intended to be faster than the usual arbitration procedure. And of the three procedures that are foreseen in the document, there is one that is mandatory, mandatory in the sense that when the registrant applies for the domain name he cannot say "I do not want to be bound by this procedure if a third party attacks me." The only binding one is the administrative challenge procedure. The mediation procedure and expedited arbitration procedures are intended, as they are drafted in that clause, to be optional. That is to say, a registrant who wishes to register a domain name may indicate that he would not want to be bound by such procedure in the case of a third party who wants to claim against him or her in relation to the domain name in question. Which means that if a registrant tikes the box where it says "I do not wish to be bound by the mediation or expedited arbitration procedure," this means that, apart from court proceedings which are always possible under the system, the third party would only have the possibility of following the administrative procedure to attack the registrant. I think that this different element of a binding, or non-binding procedure whether it is arbitration or an administrative procedure, was put in there because it was felt that certain communities were not necessarily comfortable with mandatory arbitration procedures in relation to certain trademark issues.

Mr. Chris Gibson:

I have another comment on that same point. I think that as people started to think about a very innovative way of conducting their dispute settlements, there was concern that people are most comfortable when they take their disputes to court, to their local court if they can get jurisdiction over a defendant there, and that that is what they are most comfortable with. Some companies are obviously not comfortable with arbitration as a mechanism, or with the binding nature of arbitration that would be enforceable under the New York Convention of 1958, a treaty that over a hundred countries have signed. So, I think this is also part of the reason that there was a question about whether that particular procedure, the expedited arbitration, should be binding or non-binding or optional. Also, I would make a point of clarification for everyone here today where this work stands. We feel that there was very good work done and some very careful thinking in what was the context of the gTLD-MoU system. As we see the history of the discussions on this domain name issue, the United States Government issued the Green Paper, which essentially stopped at that point the process that was going forward with the various bodies that were operating under the gTLD-MoU. The United States is also, of course, one of WIPO;s Member States. And what we see today is that we are starting with a full discussion of these very issues. The Chairman of the Policy Oversight Committee, David Maher has, in response to RFC-1 said, here is all our good work and we hope that you consider it as you go forward and try to develop recommendations on these issues. So it is out there, and we are aware of it, and the Panel of Experts working with WIPO will be aware of, the approaches and models that were developed in the context of the IAHC initiative.

Ms. Shelley Hebert:

I would just like to make one last comment in relation to a previous comment by Ms. Smith in describing her company's very noteworthy efforts to protect trademark infringement and their terms of use. As a trademark owner, I would hope that you would not expect the trademark owners to have to notify every search engine of possible infringers. It is a wonderful concept to have the people who are actually setting up these web sites attest in some way through their acceptance of terms of use that they are, in fact, not infringing. But, if they are, I don't believe it should be the trademark owner’s responsibility to have to go to each and every search engine and individually notify them that that use constitutes an infringement. I just thought that would be a point worth making. Thank you very much.

Mr.......................?

I think perhaps there is some confusion between a watch service and a search engine. They are not the same thing. A watch service is a commercial service you subscribe to, probably through your attorney.

Ms. Shelley Hebert:

No, I understand the distinction. I believe that you are from Infoseek, is that correct?

Ms ............................?:

That is correct and we certainly don't want to be notified by all trademark owners of infringements that they find on our service. We know they exist ( she is interrupted by someone).

Ms. Shelley Hebert:

Okay, so I do have a watch service that notifies me about applicants who have registered a domain name incorporating the word Stanford. What I was referring to concerning the search engines, was that Infoseek offered to have the people who are actually setting up the web sites, by acceptance of their terms of use indicate that they are not in fact infringing on someone else's trademark rights. So, thank you.

Ms. Laina Greene:

I just have three questions I would like to ask you. The first question is that you seem to indicate that you do recognize in cyberpiracy the mala fide intention to try to trade off your names, versus legitimate interests. You seem to recognize legitimate interests and yet you also seem to indicate general exclusion from TLDs. So can you just clarify exactly what the position is? Do you want general exclusion? Or are you willing to recognize that when you do challenge that there might be a counter-challenge on a legitimate interest basis?

Ms. Shelley Hebert:

We would like to be able to make a challenge on a basis of legitimate reasons, recognizing that there are individuals in the world whose last name is Stanford.

Ms. Laina Greene:

So what procedure would you propose? In your suggestion you said you want a waiting period where you want to be able to challenge. What if the other person counter-challenges with a legitimate interest? What would be the procedure you would propose?

Ms. Shelley Hebert:

Well, part of our challenge would be on the basis of trademark ownership. So, at the point of making our challenge we would present evidence that we are the owners of certain trademarks when they are registered. At that point, I think it would be incumbent on the other party to demonstrate that they are not infringing on our trademark ownership. And for someone who is reviewing these to make a decision that either our challenge is legitimate or not. And to render a decision on that basis and then, as a further recourse, we might have to go to court. But right now we don't even have that first step, because there is no review being done.

Ms. Laina Greene:

So, you are proposing that the registry takes it upon itself to decide which of the competing interests is more legitimate?

Ms. Shelley Hebert:

Well, I guess my understanding is that the registry has that responsibility now, only it is after the fact, and so you can make a challenge now once the name has been issued and someone has to make a decision about the worthiness or legitimacy of that challenge. So, what I am saying is that instead of having it after the fact, once the name is already issued and whatever commercial activity or infringement activity is already occurring, if you could make the opportunity to challenge be up-front, then it would not necessarily have to be done by attorneys. It could be greatly simplified, it could be less costly and so on. Particularly, if you were to establish the criteria for what constitutes legitimate challenge.

Ms. Laina Greene:

That may be the procedure at NSI, but it’s not necessarily the procedure in a lot of the other registries, especially the gTLDs. So, I am just curious whether this is what you are proposing. Because Mr. Neil Smith, who spoke earlier, seemed to indicate that the registries should not be involved in that. It should be left to other procedures. So I was curious to clarify what your position is. So, is your position that you would preferably like it to be done by the registry?

Ms. Shelley Hebert:

I would like it to be in a registry, but in a simplified form. Because I would not expect a registry to go into the depth of the issues that you would find once you get yourself in court, and you are litigating. But I think if you indicate that the only area in which these issues can be resolved is the courts, then the costs that are imposed on trademark owners are going to be truly burdensome.

Ms. Laina Greene:

My second question is, you mentioned in your statement that you thought that the directories that people were earlier discussing would certainly help the situation. If we were moving in that direction, would Stanford then not be looking for general exclusions, or would you be able to co-exist with other people if there were directory services?

Ms. Shelley Hebert:

I think it would be a partial solution from our perspective, because, again it would allow you to make distinctions between say individuals whose last name is Stanford who have some legitimate claim to be using that name, versus a listing of domains associated with the University. But then if there was a third category, say domain names that contain the word Stanford that are not associated with the University, I would still continue to look at those and assess whether those activities constitute infringement or not. So, I still have responsibilities as a trademark owner regardless of how listings of information would be presented. It would not absolve me of the responsibility I have to look at each of those and say whether this is an infringement or not.

Ms. Laina Greene:

Would it then be a different position, if there was no directory service and you would be asking for pre-registration action, than if there was a directory service and exposed registration action. Is that correct?

Ms. Shelley Hebert:

I don't see the directory service as addressing the issues that I have identified in relation to the pre-registration challenge opportunity.

Mr. Fred Mostert

Just to pick up on the last point. Could you also envisage that, apart from the registries looking at this review period, what we refer to as oppositions in the real world, or challenges in this area, also being conducted not by the registries but possibly being placed under something akin to the administrative challenge panels which were mentioned in the IHC and MPOC reports?

Ms. Shelley Hebert?

Yes. In fact that might actually be a preferable way to do it. If the concept again is not to both burden the registry with that responsibility and also put them in a position of being an arbiter of these kinds of issues. But some duly constituted objective group I believe would serve that purpose.

Mr. David Muls:

Before the last two speakers I want to tell you that the staff University has been kind enough to organize a lunch for all the participants in the meeting which is just outside in the hall, so I would suggest that we have the last two interventions and that we break for lunch.

Mr. Philip Sbarbaro:

Philip Sbarbaro again, and let me say that we totally empathize with trademark owners. In fact we have been alleged to be pro-trademark by such people as Ellen Rony. It is not a little problem, it is an enormous problem and Greg Phillips is going to get up in a moment and explain from Porsche's point of view how bad it is. They wrote a letter to say that they had a thousand trademarks times all of the combinations and permutations - it’s off the scale. There is no way they can do it. And that is just for the one TLD. There are 248 registrars around the world. Some of the country code TLDs are being used precisely like a global TLD. But you start with the premise that it’s a trademark owner's responsibility to police their own trademark and that is the law. That being said, understand that every time you ask a registry or registrar to do something that imposes liability, the moment that we acknowledge that we require the purpose to be stated in the registration, that knowledge is imputed to the registrar. So, we are called in as a contributory infringer and that is precisely what the Motion Picture Academy from Los Angeles did in the Oscars cases. I was the counsel. And of course the first thing you argue, the first thing I argued in chambers was my bologna has a first name and so its C A R. And that is the answer isn't it? Because there is Oscar Dealer Rent, there is Oscar the Grouch, there is Oscar Mayer. And the Motion Picture Academy of Arts and Sciences has no lock on that name, anymore than anybody else does. That is your job to police it. I did not write that law, no one else did. The Internet certainly came long after that responsibility was assigned to you.

If you take Stanford. What is that, eight letters? There were 22 possible characters right now to be expanded, contracted. But right now that is a factorial off the scale, that's trillions of names. Now, if you slow this Internet down to require a 30 or 60-day waiting period for trillions of names for one trademark, you have forever changed the nature of this medium. And there are potentially millions, perhaps billions of people who want to get on it. And if you slow it down and make it a trademark-filter apparatus, that is an enormous change. So, there are more than two sides to this. And that is why this organization is charged with coming up with some sort of answer. Because there isn't any answer right now. I commend that, but the second you ask a registrar to require a purpose, first off since there are none right now that are liable to purpose. So, again you have garbage. I just thought that you ought to know.

Ms......................

I certainly agree that these competing interests need to be balanced, but I would just point out again that if someone applies for a trademark, it’s quite a lengthy process that can take many, many, many months. So, the notion that someone needs to receive an Internet domain within a matter of days, I guess it’s one that I would take exception to. Certainly, in recent weeks, we have seen examples of the ability of the Internet to communicate almost instantly on things that we are all seem to be fascinated about. But I can't imagine that even under those circumstances that there aren't existing domains that could be used to provide immediate communication needs. So, as a trademark owner who is having to live with this problem on a daily basis, I find the notion that a brief waiting period would significantly change the nature of the Internet, is just not one that I agree with.

Mr. Don Heath:

Just so that Phil does not have to jump up, I will speak for him. Of course the difference between trademarks and the Internet is that the trademark people can still function. They just don't have a register or trademark yet. Whereas on the Internet, if you don't have a registration you are not on the Internet and you can't do your business, if your business is the Internet. So, the time does make a big difference.

Ellen Rony:

I am Ellen Rony of www.domainhandbook.com. First, as I understand your comments, you want up-front review and I translate that to mean that you think that the registry or registrar should serve to police the marks and I think this is very disingenuous. I don't know the current figures, but I know that NSI was receiving 4,000 registrations a day and I cannot imagine asking this company to go through each of them and try to ascertain whether these registrations indeed have any possibility, remotely or otherwise of infringing on a trademark.

Ms.....................

I think you misunderstood my proposal. I was not proposing that the registry review every application. I was proposing that there would be a posting period in which trademark owners are given the opportunity to file a challenge, and that is a very fundamental difference. So, I need to make that correction.

Ms. Ellen Rony:

The other thing is that although you have acknowledged that people may have personal names, your concerns don’t acknowledge there is also common-law use of a trademark. And I am really concerned about this infusion of trademark rights into the Internet. It’s almost like the tail wagging the dog. This is a public medium, there is free speech, there are many other uses of names than trademark ownership. And in fact, I would like to emphasize that domain names are not trademarks. Trademarks are not domain names. Domain names are a new form of intellectual property. See, trademarks are geographically specific and they are contact sensitive. Domain names are international in scope, and in fact that they may not have any hint or connection to what is there. So, I recognize it is a daunting task, but if Stanford, my Alma Mater, wants to go after every use of the name of Stanford your pile is going to be very, very big and I think that is also disingenuous. You know, on the Internet content is king. Content is king. When people go to a site, they will know if it is not Stanford and if it is, you have courts to protect from true infringement. And it is as simple as that.

Ms. Shelley Hebert:

Again, I am requesting that we not be sent into court to litigate all of these matters at great cost and expense to non-profit institutions and also would again point out that it’s not a question of whether we want to, it’s a question of being legally required to as a trademark owner. And I believe that was pointed out by another speaker. Thank you.

Mr. David Muls:

Thank you very much. I think we can stop for lunch now. I just want to before we go mention the speakers for this afternoon. You might find it interesting to see who will make presentations. At 2.30 you would have Mr. Gregory Phillips who is an attorney for Porsche AG and Porsche Cars North America Inc. Then after that we have Ms. Sally Abel from the International Trademark Association, Mr. Nils Montan of Warner Brothers and Ms. Anne Gundelfinger of Intel Corporation. I suggest we break for lunch now and according to the agenda we should come back in the room around 2.15. Thank you.

(lunch)

The first speaker will be Mr. Gregory Phillips, who is an attorney and who is speaking on behalf of Porsche AG and Porsche Cars North America Incorporated.

Mr. Gregory Phillips (Trademark Counsel, Porsche AG (Johnson & Hatch):

Good afternoon. My name is Gregory Philips, I am a partner in the law firm of Johnson & Hatch in Salt Lake City, Utah, and I am outside trademark litigation counsel in the United States for Porsche AG and Porsche Cars North America Inc. Porsche wants me to express its appreciation to WIPO and this Panel of Experts for conducting these hearings and providing a Forum to discuss important issues and policies that will govern the Internet as we move into the next century. Porsche is one of the most famous names and trademarks in the world, and I believe the fame of the trademark Porsche and the magnitude of the problem that Porsche faces with Internet domain names is best demonstrated by turning to exhibit A, to the written testimony I have provided. What exhibit A is, is a list of all unauthorized domain names that have been registered under .com, .net or .org., and then the last page of exhibit A is the domain names that Porsche have registered under various country codes.

Porsche and I are firmly convinced that each one of these unauthorized domain names as set forth here in exhibit A, has been registered solely for the purpose of taking advantage or trading upon the reputation and goodwill of Porsche. And as you can see there is no limit to the different variations that you can use on Porsche. Two of my favorites are on the first page, I put two dots by them. First page of exhibit A, one is Porsceh.com and right below that is Porshce.com. Those were both registered by the Misspellers Rescue Company. So, I guess there is a Company out there that now registers domain names for misspellings. As was commented by Stanford University, approximately once a week I receive from the Trademark Council and the trademark paralegal of Porsche, a list of new domain names that have been registered in the past week from our trademark watch service. We also use Thompson & Thompson and this list continues to grow every week. The domain names listed in exhibit A basically come down to three categories. One category of domain names, in particular porsch.com without the e and porschecar.com, are web sites that contain explicit triple X hard-core pornography. Then, we have many domain names here that have web sites that sell both Porsche and non-Porsche related products and then the rest, we believe, are domain names that have been registered by cybersquatters or cyberpirates. Porsche has been frustrated in dealing with this problem. At first, we tried to pick them off one at a time through litigation and the domain name dispute resolution procedures that have been implemented by Network Solutions Inc. But, that was unsuccessful for several reasons which I will get into. And so Porsche right now is attempting to deal with these domain names in two ways. One is through proceedings like this, in trying to change the policy in the way the domain names are registered. And second, we anticipate filing a legal proceeding in the next month where we will try to remedy the situation in one law suit.

Porsche has several recommendations for this Panel and for the soon to be formed corporation that will deal with new domain name registrations. The first recommendation we have is that there must be some protection for famous trademark holders. Second, is that a requirement that applicants for domain name registrations must provide correct and accurate information regarding their names and addresses. And they also agree as part of their application or their registration agreement to appoint the registrar of the domain names as an agent for service of process. Third, that applicants be required to submit to the jurisdiction of various courts. Fourth, that the certification language that is put into the domain name registration agreement, the one that is currently used by Network Solutions Inc. that that verification language be strengthened. And finally, that there be a single database that is created where worldwide searches for domain names can be made by the public and also by trademark holders without the necessity of employing trademark watch services. Porsche believes that companies with famous trademarks should be able to apply for and receive famous trademark holder status. And we concur in the comments that were made earlier this morning that there be a waiting period of at least 60 days before a domain name is registered. The applied for domain names must be published in a register and famous domain name holders should have the ability to object to the registration of a domain name. In Porsche's case, Porsche is such a unique and arbitrary name, even though it is the last name of a family, but it is so unique that as far as Porsche has been able to determine none of the domain names that have been registered have ever been registered by somebody who has the last name of Porsche or by somebody who is using the domain name for any purpose other than capitalizing on the goodwill of Porsche. There needs to be some protection before the domain names are registered.

The second recommendation that Porsche has is that accurate information be provided when the domain names are registered. Right now, probably 30% to 40% of the domain names listed in Exhibit A, have fictitious or fraudulent domain name registration information. When we attempt to contact people who have registered these domain names, nobody answers the phone, the mail is returned and the e-mail does not go through. The first case we did for Porsche was in 1996. It was Porsche.com and had been registered by Heinz Porsche Lawman Eckett Consulting of New York. The name was fictitious, there was no such entity, the address was fictitious. We were unable to contact the entity and we eventually filed suit. We couldn't serve whoever it was. After we filed suit we were contacted by a gentleman named Lee Chen, who said that he would transfer the domain name to Porsche upon the payment of a substantial amount of money, plus $2,500 a month for the rest of his life to monitor and keep track of this domain name for us. Finally, we ended up hiring a private investigator and after spending several thousand dollars, we were able to find his father, and serve his father in New York city. And with the assistance of Mr. Sbarbaro and Network Solutions Inc. we were able to convince the judge back in the eastern district of Virginia, that we had effected service of process and we were then able to get the domain name transferred. Porsche has now discovered that several entities in the United States register domain names, variations of the Porsche trademark and they use offshore corporations in Honduras and other places that are actually the entity that registers the domain name. And we believe they are doing that to make contacting them and serving process on them difficult, if not virtually impossible.

The third suggestion that Porsche has is that registrants or applicants when they apply to register a domain name, that they agree to submit themselves to the jurisdiction of various courts. Again, we have had a difficult time finding many of these entities and serving them with process. And Porsche would suggest and recommend that as part of the application agreement, the applicant agrees to submit him or herself or the entity to the jurisdiction of the court where the registrar is located or the registry is located, where the root server is located, where the newly formed Internet Corporation is located and wherever jurisdiction otherwise can be obtained. There has been some discussion about alternative dispute resolution and how that would fit into this entire process. As a general matter, Porsche and corporations like Porsche I believe are not in favor of alternative dispute resolutions and binding arbitration. And the reason is simple. Arbitration for the most part does not allow any kind of review or appeal. It is binding under the standard that I learned in law school, that unless you can prove that the arbitrator was sleeping with the other side, you basically are not able to get review of an arbitration decision. In addition, in the arbitration or alternative dispute resolution process there is really no precedent when trademark owners like Porsche go to court. One of the reasons they go to court is that they hope to establish favorable precedents that can then be decided in other courts. And in fact, in trademark litigation, Porsche goes out of its way to request the decisions that are made in the litigation be published so that they are out there and can be used as precedent.

I want to make one last comment on the frustration that Porsche now experiences with Network Solutions Inc. and I have talked at great length with Mr. Sbarbaro about this. For example, the two pornographic domain names porsche.com and porschecar.com when we contact Network Solutions Inc. and request Network Solutions Inc. to cancel or transfer those domain name registrations over to Porsche, Network Solutions Inc.’s response is that we have a policy that unless the domain name is identical to the trademark there is nothing we can do, even though Network Solutions will acknowledge to us that whoever has registered porsche.com and porschecar.com are clearly attempting to capitalize on or trade off of Porsche's reputation. And if you go to those web sites, the web sites on the home page indicate that they receive 14,500,000 hits or visits per day. And when you think about that from a trademark holder's stand point, the dilution, the tarnishment, the bad-will that is created by such web sites is clearly damaging to Porsche.

Porsche also believes that there needs to be certification language put into the registration agreement that basically says that the applicant, in applying for the domain name registration is not infringing, dilution or otherwise interfering with the trademark or other intellectual property rights of any trademark holder. And in addition, Porsche would request or suggest that there be a database that is created where members of the public or potential applicants and trademark holders can make global searches and locate new domain names that have been registered. And we hope that this is before the fact instead of after the fact. Right now the only way that Porsche can search throughout the world is to hire watch services or other services that have the capability to do those searches.

If you look at exhibit B. Exhibit B is an example of an advertisement that was forwarded to Porsche showing how one cybersquatter, one cyberpirate, is attempting to sell the domain name porscheparts.com. This is not an isolated incident for Porsche. Several or many of the domain names that are listed in Exhibit A are up for sale and we have a difficult time just keeping track of that. Again, Porsche appreciates the opportunity to provide these comments and these recommendations and we hope that this Panel and the newly formed organization that will deal with domain names will take into account in formulating the policies and procedures and dispute resolutions, some of the legitimate concerns that famous trademark holders have in dealing with domain names in the Internet. Thank you.

Mr. David Muls:

One observation. Mr. Phillips has distributed his paper which not only you may have, but it will also be posted on our web site so that you will be able to download it in a few days.

Mr. Chris Gibson:

Do we have questions or comments for Mr. Phillips?

Mr. Ken Fockler:

Yes, I would like to understand about bad information, so that you are unable to locate the registrant. Is that the situations where there is a domain name that has been registered that you can see, but there is actually not a web site to correspond? Is there a situation where you can see a web site, but you can't get at the person running that web site?

Mr. Gregory Phillips:

We have had both. Some where there are domain names and it is just the domain name that has been registered and we try to contact them. Some of them where they do operate web sites and we still can't contact them. For example, Mr. Chen when he pirated porsche.com, he did have a web site, part of it was pornographic, part of it was for his Heinz Porsche Lawman Eckett Consulting Services. He tried to legitimize it both through the domain name, through the web site and through the information that had been submitted with the registration, but we were unable to locate him.

Mr. Ken Fockler:

I was just wondering if it seems possible technically that if there is a web site operating, if there is an IP address that is functioning, there may be a way of tracing that through to whoever it is allocated and from the allocation whatever. But I want to differentiate on your list, that it has probably some domain names that have been registered that you had to concern with and others that are putting a poor image out because of an actual web site.

Ms. Ellen Rony:

Ellen Rony of www.domainhandbook.com. You mentioned that your frustration with NSI was that you had requested that company to either cancel two pornography sites or to transfer them to you, and, with all due respect, I think that requiring or suggesting that NSI or the registry police your trademark is totally inappropriate. Again, they get about 4,000 registrations a day and there is already considerable flack or considerable concern that NSI has been operating as a monopoly franchise. Now, from what I have heard from two trademark owners today, is that they would like this one company to be the policeman of who gets to use these names. Remember, these are just neumonics for IP addresses, and I just think it is a slippery slope if you put that kind of power into the hands of a company, that you are not going to even give to the court system. This is complex material. On what criteria should you be asking the registry to determine that you have the rights to these names? We have a court system that can do it. You are saying here in your paper, on page 4, first no protection is provided to famous trademark holders against domain names that use variations of their famous trademarks. I am not an attorney, but I think that the Dilution Act would actually help you. I don't understand why you think the courts won't provide that. And I even understand under the Lamham Act that you don't have to have a character-by-character comparison, which you have to have if confusion as to the source of goods and services.

And my other concern is in traditional commerce, there are places that sell Porsche cars and they are called "Porsche Cars" and nobody is concerned about that. It is only on the Internet that this seems to be arising, but in traditional commerce we have substantial overlap of names. And, so I am a little confused that the trademark community is trying to impose this burden on registrars and registries to police your marks. But, I would like to say about dilution. Dilution is a concept in America, it is not in other countries, so you can't have that to go to if perhaps a company in Japan wants to use the name. So this brings up the whole concept of global gTLDs. And since this hasn't really come up, at least since I have been here, I missed the first hour. Personally, I think these jurisdictional issues are huge and the problems with cross-border disputes which hasn't really come up here today are also huge. And maybe this group should consider how wise it is to have new global top-level domains which will exacerbate these cross border issues. In other words, Porsche may be a famous name here, but maybe in another country it has a completely different meaning and a completely different use and completely other trademark owners. But, if we have .com.US or .TM whatever number is cars class.US, then you have a specific jurisdictional element and then you have this more localized and so your problems in policing your trademark are minimized.

Mr. Gregory Phillips:

If I could respond briefly. First of all we are not asking Network Solutions Inc. to police our trademarks. We are perfectly happy to police our trademarks and also police the domain names. If there was some register where these domain name applications were published, we could look at them beforehand. We are happy to do the work with respect to porsche.com and porschecar.com, I don't think there is anyone in this room who can reasonably take the position that those two domain names were not selected with the express purpose of capitalizing on Porsche's goodwill. That's why they are there and we think that some policy ought to be put in place where famous trademark holders can go to the registry or the registrar and say, "look, is there any dispute that this domain name has been registered for the purpose of capitalizing on our goodwill and reputation?" And, if that is the case, rather than go out and litigate this issue and spend $25,000, $30,000 the way we had to with Porsche.com, there ought to be some procedure put in place where we can do that short of that. With respect to the dilution, I think you are exactly right. Any court and we hope the court does when we file our lawsuit will give all of the domain names on exhibit A as diluting Porsche's trademarks. The frustration we have is that you have to file, on our case probably potentially 200 lawsuits to deal with that, or every week when I get the list of the new Porsche domain names, we are going to be filing another lawsuit or five new lawsuits. And then finally, with respect to your statement about fair use, Porsche has no objection to people selling parts and accessories for Porsche cars. That happens all the time. What Porsche does have an objection to is when entities out there use the trademark and the name Porsche and the name of their business, or we believe the domain name contacts, in the advertisement or the address of their business. And Porsche will litigate those issues and I think Porsche will be successful on those.

Mr......................?

Your fundamental problem is that it is a flat name space. In other words, if there was such a thing as Porsche sweaters or Porsche pencils or something like that, and if there was a way to distinguish between those kinds of companies and your kind of company. It seems to me what you are doing here is saying, because we have a strong trademark, we don't want arbitration, we don't want to hear anybody else's claim that they might have a right to a name that sounds similar to ours. I understand that what is happened to you is a bad thing. I am not trying to defend any of these examples you cite. But, I can see cases where there are legitimate other companies in completely different classes doing completely different things that happen to have gone to NSI long before you did in order to register their name. So, it is perhaps a solution to divide up the name space in such a way that there is no confusion, between porsche.com and porsche.sweater.com or whatever.

Mr. Gregory Phillips:

That might well be one solution. Porsche believes that the better solution would be to have the potential applicants of the potential domain names published in a register where then Porsche could take upon itself the obligation and the burden to contact the applicant and find out for what purpose the applicant is registering the domain name and if there is legitimate use. For example, porschesweaters. I don't believe with Porsche that would be a legitimate user, but if there were a legitimate use, Porsche would allow the domain name and Porsche does when there are legitimate users, allow users of its trademarks in other contacts.

Ms. Laina Greene:

Just checking the last statement that you made, it would sound as if you are against cybersquatting and cyberpiracy, but you are saying that where there are legitimate rights that Porsche may not want more rights than it has in the world today.

Mr. Gregory Phillips:

Right. What Porsche would like is, just as the representative from Stanford, the opportunity to look at, investigate and object to a domain name registration before the fact as opposed to after the fact. And I think that if some procedure were put in place whereby the objections could be made before the fact, it would save a lot of resources for the applicant, for the trademark holders and for the judicial systems around the world that deal with these issues.

Ms. Laina Greene:

I am going to pose to you the same question I posed to the lady from Stanford, where she suggested having a waiting period and the opportunity to challenge. If somebody does challenge it, and the other person counter-challenges that they have a legitimate interest, what is the procedure you would propose in such a case?

Mr. Gregory Phillips:

Porsche obviously would prefer that the domain name not be allowed to be used while the challenge is going forward. But, we recognize the way the Internet works and that people may need to use that for their businesses. So, I think Porsche would probably agree to a procedure where they can use it conditionally upon resolution. And once there has been resolution of the issue the domain name be canceled and I think we would even be willing to support, I think NSI has a procedure right now where they give them 90 days to transfer traffic over to their new domain name. But just as long as there is some kind of procedure where we don't have to deal with it only after the fact.

Mr. Neil Smith:

Neil Smith with Limbach & Limbach. I spoke earlier, dealing with the issue of having a 60-day publish to opposition period. I have mixed feelings about that, because just as we have cybersquatters we may have cyber and torpedo-opposes. That if you publish that list, make it available you may find people with their spiders and whatever just oppose and try to torpedo things and then get paid-off for that. I think there needs to be some significant barrier to doing that which may be some obligation, maybe some contract and maybe some money. And they may have to pay in order for that and in order to start that process. Not that I am trying to make it expensive, rather that having some barrier to discourage non-serious oppositions and people just torpedoing those things in order to get their foot in the door and basically being paid without having some legitimate rights to the name.

Mr. Gregory Phillips:

I think that would be an important point and I think maybe an objector ought to be required to post some kind of bond. Maybe of $100, $200 so that that does not happen. One of the problems Porsche has right now is that many of these domain names are registered by people who don't pay in advance and, for example porscheag.com was registered by someone over in Germany and when we tried to contact him we found it very difficult because the information he provided was not accurate. But when we did finally got a hold of him we found out that he had not even paid the money to register the domain name and it was tied up, and we probably spent a couple of thousand dollars dealing with this issue. If he had to put the money up we believe he probably would not have registered the domain name in the first place.

Mr.................

I would like to take the opportunity to explore a one point because I am impressed with your attachments, and that reminds me of the school of thought that I have heard and read that if there were 200 new top-level domains and there was a .car, and there was a .firm and a .bis and an arts and a museum and all sorts of things, your attachments might be this big. Is there a point where the whole thing, is there a scaling of effect here where there is so much of this, it is so trivial that it does not hurt you in some cases. I don't know, I am trying to wrestle this thought in my own mind from the arguments that I have heard people put forward that we are dealing with such a small number right now, mostly the .com and a few active country codes and I am challenging myself and taking the opportunity to ask you about that too.

Mr. Gregory Phillips:

I think the problem for trademark holders and particularly, famous trademark holders is that you are required at least in the United States to police the trademarks and make sure that people are not diluting and infringing upon your trademark and so you really have no choice. If there were 3,000 names, we have to go after 3,000. And at some point in time this becomes so cost prohibitive that even a company with the financial means which Porsche has can't do it.

Mr......................

We just do away with that whole concept altogether.

Mr. Mark Partridge:

Let me follow up on that thought. What would you see as the effect of additional generic top-level domains? Would having more of them help resolve your concerns or would it increase your concerns?

Mr. Gregory Phillips:

I think it would probably increase our concerns, but I do think that when we get to that point where there are new top-level domains created, there needs to be a procedure put in place so that companies such as Porsche can go out and at least register Porsche.firm or Porsche.car and basically reserve that for themselves. But I think as was mentioned by the representative from Stanford, there is no way even a company like Porsche can go out and register every possible variation of Porsche, to avoid this problem. I think some procedure does need to be put in place when the top-level domains are expanded so that the problem is not aggravated exponentially.

Mr. Fred Mostert:

To pick up on this point a little further, are you going down the route to say that there should be some right of preemption? If there is an extension of top-level domain names almost like vanity telephone numbers that Porsche should be reserved in .store, .firm, .whatever.

Mr. Gregory Phillips:

I believe for famous trademark holders there ought to be a means to determine who a famous trademark holder is. That I don't know, but for example for Porsche, Coca-Cola and some other trademarks I think that does need to be put in place. I will tell you this in dealing with telephone companies, for example AT&T or whoever it is who registers 800 numbers, when somebody comes in and tries to register some variation of Porsche as an 800 number of Carera or Taga or some of our Boxters as in other famous trademarks, I haven't showed you the list of Boxter names, but it’s growing as well. A lot of times we would get a telephone call from the telephone company or whoever registers that, saying so and so wants to register this, do you have any objection. And a lot of times we do and we are able to resolve the problem in its infancy as opposed to having to deal with litigation after the fact.

Mr. Chris Gibson:

You mentioned the possibility, I believe, of appointing a registrar as an agent for the service of process. Can you just describe in a few words what you meant by that or what would be involved.

Mr. Gregory Phillips:

What Porsche believes ought to occur is that when an applicant enters into a registration agreement with whoever the registrar is, the applicant agrees in the agreement that the registrar is appointed as an agent for purposes of service of process. And that if there is any legal proceeding all someone needs to do is serve the registrar with service of process and the registrar then would mail the complaint, the summons, the legal process to the registrant at whatever address is in the registration agreement or the registration application and that the registrant or applicant would agree that that constitutes service of process. And I can see Phil thinking, well that is going to cost a lot of money. There could be some requirement that when you serve Network Solutions Inc. or whoever the registrar is, that the person serving the lawsuit would be required to pay in advance to cover the cost of Network Solutions Inc. mailing the lawsuit, the service of process. There ought to be some fee associated with that. I think that would be a fair way to deal with that problem.

Ms. Kaye Caldwell (Policy Director, Commerce Net):

I am Kaye Caldwell and I am the Policy Director for Commerce Net. I just wanted to point out on that issue that that is something very similar to a piece of California law, where if you get a mail box at one of our commercial mail receiving agencies, that mail box location isn't your agent for service of process and that is how we do it here, and it does not seem to be causing a lot of problems although it has not been on the books very long.

Mr. Gregory Phillips:

And I think that is the law in a lot of states when you register a corporation or when you register to do business in states, you have to appoint the Secretary of State or somebody else in the state as your agent for service of process and in that way if somebody ever has a claim against the corporation all they have to do is serve the Secretary of State. The Secretary of State then drops it in the mail and if the information is not current, it is the problem of the corporation and not the plaintiff or the Secretary of State.

Mr. Ole Jacobsen:

I have been using the Internet, although we did not call it that in those days, since 1976. Before we had names we had IP addresses and I would just like to remind everyone at this point that the reason we have these names is to make them more user-friendly so we don't have to go around remembering IP addresses. Although, these days I am almost beginning to think it might be easier to just remember IP addresses because they are shorter in most cases. In any case, the point here is there seems to have become out of history a traditionally strong linkage between trademarks and domain names. I don't think that this is other than perhaps some case law. I don't think that this is sort of written and stored anywhere. And what I think I hear you saying or the implication of what you are saying is that creating more new top-level domains isn't going to solve the problem because you are immediately going to go out and register yourself on all those top-level domains, which completely defeats the purpose of having it in the first place, which is to give a lot of people a chance. Also, that isn't going to be a solution so I am becoming more and more enamored by this idea of directory, which basically works kind of like a phone directory and just sort of gets you to the place you want go eventually through an indirect stop. Again, being a technical person I am not sure if that would scale, but I am beginning to be quite worried about the company name, trademark name, versus the domain name issue. Because it is already pretty badly ............ there aren't that many companies that you can guess the domain name for any more. It simply isn't that simple.

Mr. David Muls:

No more questions or views? Thank you very much.

Mr. Gregory Phillips:

Thank you very much. I appreciate your time and your consideration.

Mr. David Muls:

The next speaker is Ms. Sally Abel, INTA.