WIPO Internet Domain Name Process

Transcripts - part 5: San Francisco regional consultation

Fairchild Auditorium, Stanford University
September 23, 1998

Ms. Sally Abel (Member, Board of Directors Vice Chair, Issues and Policy Committee, International Trademark Association):

Good afternoon. As part of my unofficial comments I would like to welcome you to the Independent Republic of Northern California where we truly believe in self-governance. My name is Sally Abel. I am a partner at the law firm of Fenwick & West just across the parking lot. But I am appearing here today on behalf of the International Trademark Association which is commonly known as INTA. I currently serve as a member of the board of directors of INTA as well as Vice-Chair of INTA's Issues and Policy Committee with oversight responsibility for INTA's Internet Sub-Committee. As with all INTA Board members and Committee members, I serve on a voluntary basis which means I don't get paid for this. INTA has more than 3500 members in a 120 countries, and is a not for profit membership organization open to those with an interest in trademarks, including businesses only in trademarks and those who serve those businesses. All of INTA's members regardless of their size or international scope, share a common interest in trademarks and a recognition of the importance of brand identity to the businesses that own trademarks to the general public, to competitive economies and to the global market place.

Now, I am sure you will agree, and I don't think this is controversial, that this ongoing international debate regarding the domain name system is truly historic. What we are part of is a true exercise in self-governance. That has been brought on by the development of the global marketplace through electronic commerce. I don't think it is an understatement to say we live in interesting times. INTA has been active in this debate since it began making sure that trademark community interests are taken into account in modifications to the domain name system. The trademark community is the business community. It is not without a certain degree of déjà vu that I appear before you today having served as INTA's representative to the IHC, the body which on the basis of public input carefully considers and makes consensus-based recommendations on each of the issues before you today; dispute prevention, dispute resolution, protection of famous and well-known marks and addition of new gTLDs. Through all the debates to date, INTA has advocated a fair, rational, reasonable and practical approach to modifying the domain name system. Recognizing that these are not issues of a big trademark owner versus small trademark owner, or trademark owner versus domain name holder. Everyone is in this together. Most domain holders, like traditional brand owners, also have an interest in protecting their names and marks and in ensuring that their customers can find them without being misled. We must recognize that most businesses are both trademark owners and domain name holders. In fact INTA, well a "trademark organization" may well be one of the world's largest organizations of domain holders. So, just to clarify the debate, the trademark concerns are not limited to brand names, other trade symbols including company names, slogans, celebrity names and even domain names themselves may, depending on how they are used, be entitled to varying degrees of legal protection to avoid consumer deception and confusion. Protecting against confusion or deception is just as important in the e-commerce world as it is in the more traditional physical world. On the Internet, name becomes location, location becomes brand and vice versa. And consumers have come to rely on this principle when purchasing products or services or seeking information on the Net.

Turning to the first of the four issues before you today, it’s not at all controversial to suggest that everyone agrees dispute prevention is the ideal. Preventing disputes decreases everyone’s costs and bolsters the stability of the domain name system and in turn enhances consumer confidence. Dispute prevention depends in large part on two interrelated factors. First, accountability of those requesting domain names and availability of information for those who may have a policing obligation, trademark holders, domain holders and the like. INTA has long advocated modifications to the domain name system that would operate to minimize disputes. In November 1996, which is many Internet years behind us, INTA issued a policy proposal which I would commend to the Panel for your consideration of this issue, in which we identified key aspects of dispute prevention that should be incorporated as part of any domain name policy, that is, across the top-level domain space if possible. In summary, the application process should at a minimum require applicants to provide sufficient contact and intended use information. Today, as the representative from Porsche pointed out, it’s far too difficult to find many domain holders. Appointment of an agent for service of process and contact information for that agent, agreement to jurisdiction at least in the jurisdiction of the registrar in the event of litigation, and very importantly, publication of all application and renewal information on an easily accessible public web site. Now, you can find INTA's proposal in this regard as an addendum to our White Paper on our web site at INTA.org and we will also provide it to the Panel if we have not done that already.

The proposals that are contained in that document, many of which found their way into the IHC Report and into the White Paper, are not particularly controversial. And none imposes an undue burden on the domain applicant or the registrant. There are some questions that have been raised as to the ability or the willingness of the registrars to engage in oversight as to the authenticity of the information provided. But an approach that does not overburden the registrars but ensures, for example, that an application is at least complete before a domain name is issued, would benefit the system significantly by reducing instances of true cybersquatting.

Three other important considerations. First, pre-payment for domains absolutely must be required. Again at least among legitimate domain holders this has not been particularly controversial, once the reality that a fee would in fact be charged settled upon the Internet community. Requiring payment up-front deters the cybersquatters who grab as many well-known names as they can and knock off those well-known names, and then offer them for sale to the highest bidder only paying the fee under the current policy, under NSI’s current policy, if the name sells and if NSI asks for the money, that is the money for registration and not for the sale of a name. Second, the applicant, as in the case of the gTLDs space now, should continue to be required to provide a statement that it has no knowledge of competing intellectual property rights or reasons to believe such rights exist. Third, in its November 1996 proposal INTA advocated a mandatory waiting period to obtain a domain to facilitate the dispute prevention process. This was proposed not only to protect the trademark owners' interests by providing time to police if necessary, but also would or could protect domain holders against the specter of losing their rights after they have made a significant investment in a domain name that actually infringes existing trademark rights. Now, this was eliminated in the public debate over the IHC plan, as much of the comment felt that there was too great a burden on this spontaneity that is the Internet. Now, INTA still supports a waiting period. We understand that there is some burden on spontaneity, as there is in any other business transaction. And, that there may be instances in which someone will not be able to start business immediately under an infringing name or under a non-infringing name. But, we still believe that, on balance, a waiting period is going to be beneficial both to the trademark owners and to the domain name holders in resolving issues before they get out of hand, and not necessarily with litigation. Hopefully not with litigation. If there is to be no waiting period, which I have to tell you frankly I am surprised to hear so much discussion of the waiting period at this stage of the game, then if it is absolutely imperative that the dispute prevention mechanisms that I have outlined above, which are otherwise contained in INTA's November '96 proposal and in our response to the US Department of Commerce's Green Paper, be incorporated into the registry policy.

And as to dispute resolution. This is a difficult area given that trademark rights exist on the basis of national law. So, that it is not within the purview of the domain authorities to offer an effective, comprehensive panacea for disputes involving claims of trademark infringement or dilution. It should be possible, however, to carefully craft limited dispute resolution mechanisms. This was the initial intent, with an emphasis on initial, of the ADR provisions that were built into the IHC plan. And I commend IHC plan to you with regard to the ACP formulation, that is, the concept of the ACP formulation in thinking about what kind of dispute resolution makes sense. I do not think, and INTA does not believe, that it is unreasonable to impose on the domain name system an obligation to police the domain space to ensure that famous marks are not registered as domains by strangers to those marks, and to prevent extortion by domain name holders, and to take action against fraud in the application process. However, INTA strongly believes that, given that trademark rights are based on national law, that the administrative body governing the domain name system is not in a position to take judicial action. And the dispute remedies that should be created should be very, very limited in scope to the situations that I have referred to. There has been, as you know, much discussion during the IHC gTLD-MoU, Core or whatever you want to call it, a process back and forth about what the guidelines should be for the administrative challenge panels. How many marks you need to have registered and how many jurisdictions, third party rights, a variety of factors that could go into the creation of essentially objective guidelines to determine what in fact will be considered to be famous enough marks in the domain name system to preclude the registration by strangers of those marks. INTA also supports mediation and arbitration mechanisms, although we do not support them being binding for the same reasons that the representative from Porsche already explained.

As to famous marks, I think we can all agree, though like the Supreme Court Justices of the United States perhaps we can't always define it when we see it, what is a famous mark. Famous marks should be entitled to a broader spill for protection within the domain name system. Cybersquatters, and I am speaking here about true cybersquatters who go out and register the name essentially solely for the purposes of selling it back to the trade name owner or to the company who created the goodwill and the name, essentially extorting or attempting to extort money from the legitimate trademark holders. This is something that the domain name system should be in a position to deal with. Certainly not in every case, because as I mentioned earlier there are situations that are not black and white and those situations should be going to court, but in those situations that are black and white they sign objective standards, we can have a dispute resolution mechanism that works.

As to new gTLDs. Don Heath can tell you that I have always been opposed to new gTLDs. INTA's position on new gTLDs is to adopt a go-slow approach. Everybody, domain holder, registry, hopeful registry, trademark owner, everybody down the line except perhaps the cybersquatter, wants to avoid consumer confusion on the Internet. The ideas that we have heard today and in the last several years about directories are good ones and we will continue to pursue them. And I would predict that in a few years we will all wonder why we spent all this time talking. But for now, we need to realize that there is a huge policing burden that goes along with expanding the gTLD space. Trademark owners who are obligated by law to police their trademark rights or risk an abandonment of those rights, know that trademark laws, I am sure those of you who are not lawyers have already figured it out, are not really black and white. There are a lot of gray areas and the exact extent of the trademark owner's policing obligation is not known. And when you throw in a new media, a new market through the domain name system, we really don't know the extent of the trademark owner's policing obligation. So, understandably, trademark owners are concerned because if they risk losing rights in their trademark, of course they are going to go to court, of course they are going to beat down NSI's door. So, we need the law to evolve but unfortunately the law is not evolving as quickly as our needs are with regard to modifying the domain name system.

The cost to business of cybersquatting has been enormous. And for each reported case, Panavision, Spice Girls, Burger King, British Telecom, there are a myriad of others that have to be resolved outside the court room but at significant cost to the companies and to the consumers who buy their brand of products. So, I think it is really important in thinking about new gTLD space that we avoid unwittingly imposing huge policing obligations on brand owners which will ultimately and necessarily result in higher overhead and ultimately higher prices to the consuming public. Do we need new gTLDs? When I was on IHC I was frankly surprised that the engineers on the IHC were split as to whether we were running out of space in the .com domain or not. Now there is significant pressure being brought to bear by an industry of potential registrars who are looking at gTLDs as a commodity for sale. Obviously the more that are available, the more money to be made, the more successful the business model. But in facing cybersquatting, with its increased policing cost to brand owners which ultimately result in higher prices to consumers and potential consumer confusion it’s ill advised to rush headlong into the abyss. Because you can't go back. Even in the ongoing debate in which we are engaged, there has been much discussion over the last two years about whether maybe we should have done things differently. Maybe we should have created a different .us space, or maybe we should have stayed with IP numbers, because this is getting out of hand. But the fact is you can't go back. And so if we can't go back we need to go forward, but carefully and thinking about all the issues and all the ramifications of what we are doing. Hindsight is always twenty twenty. But the domain name system process too can be twenty twenty, if the expansion is only done if it is actually necessary and only if it is done in a measured pace, taking care to iron out the wrinkles along the way. Now, I personally have always perceived this as an evolutionary process and I think that is confirmed by the developments we have today from the IHC to the White Paper to these hearings. But that evolution shouldn't be hurried and the red flags along the way should be respected with a go-slow approach. Thank you for your time and INTA is available to help in any way that you think would be productive.

Mr. David Muls:

Thank you very much. Do we have any questions from the Panel or the audience?

Mr. Ken Fockler:

It’s Ken Fockler, thank you very much. A few questions. As an observation, I guess I had not expected to hear so much history of IHC and some others and I don't even want to attempt to touch some of this background. But I am aware that much of the process that you described got put into dispute resolution and that was observed and well regarded and I am not sure if we are starting with a blank piece of paper, but I am kind of starting there, and I guess I am asking in what way can I see your policy statement that you referred to and be sure I am reading the most current one. And is there a section of that dispute resolution ADR and the alternative challenge panel, guidelines and some detail that I can also see? So a pointer to those or whatever is my first request.

Ms. Sally Abel:

Our policy proposal has not changed since November of 1996 and that did not incorporate, as I recall, a dispute resolution mechanism. It spoke to the issue of dispute prevention.

Mr. Ken Fockler:

You know I was referring to two things you referred me to, one was your document. November 1996 whatever I find is your most current issue and where do I find that, at your web site?

Ms. Sally Abel:

Yes. And I will make sure that it is made part of the record of these proceedings. The dispute resolution mechanism is one that was created during the IHC process and INTA responded to three rounds of proposed guidelines that came out of the IHC. I am sorry, one round out of IHC and two out of IPOC, I am not exactly sure what the organization was called at the time. But those are all within the archives at I would assume the gTLD-MoU.org and we can also make them part of these proceedings.

Mr. Ken Fockler:

And they are just a section addressing that particular point of dispute resolution like lots of other processes. That is all I have been looking for.

Ms. Sally Abel:

The administrative challenge panels are what I am referring to.

Mr. Ken Fockler:

I would appreciate from you or the gentleman representing Porsche a concept I am hearing to understand the downside of arbitration. Just run that one by me again.

Ms. Sally Abel:

I would have to defer to my colleague from Porsche on that.

Mr. Gregory Phillips:

In general, at least in the United States, in binding arbitration, the review of decisions is very narrow and as I think my law professor stated at best it’s basically the arbitrator who can decide that the facts are wrong. He can misapply the law and a court is still obligated to enforce the award. You have to show basically that there was fraud in the arbitration process. And what one example I thought of was, well sitting there and listening to her presentation is, we had a case recently in Chicago where we sued a gentleman who was operating a business called Nanny's Porsche Shop and all he repaired were Porsches. And his claim was Porsche shops do it for Porsche oriented-repair shop services. He was not infringing on our, or diluting our trademark in any way. He convinced the judge to assign it to a magistrate who had no clue what he was doing. His opinion was twenty pages. It started out as Goliath versus Nanny's Porsche Shop. And you can tell from the first sentence what the result was. Luckily, we had a District Court judge who understood a little bit about trademark law and quickly reversed that decision and we were able to go on our way. But, our fear is that we are going to get an arbitrator or arbitration panel that has no clue and we are stuck with the result and therefore companies like Porsche do not go into arbitration unless it is non-binding.

Mr. Ken Fockler:

Thank you. It is a bit of a roll of the dice. And the alternate dispute resolution is not considered arbitration or is it?

Mr. David Muls:

Maybe we should clarify this point. I think when you use the term ADR this describes a broad category of procedures. Arbitration is one of them. And I think maybe to make sure that everybody understands what the debate is, it is true obviously in arbitration that if you have an exclusive arbitration clause that the grounds to go to court to reverse the order are limited. I think that is obviously correct. However, the ACPs were an administrative procedure so they were ADR in the sense that it was a procedure that allowed you to file a complaint in a body that is not a court of law. But they were not arbitration, because they did not have those same characteristics as an arbitration procedure. And I think it would be interesting for the audience and the Panel to hear your views of having an ADR procedure which is not arbitration but which is more administrative in nature, and the goal of the procedure would be to resolve the dispute directly, quickly, but you could still go to a court of law if you are not happy with the results. And I think it would be useful to see whether such a model would be more convenient for you than and arbitration procedure or solely a court procedure.

Ms. Sally Abel:

That is in fact what was intended by ACPs and it would not supplant the jurisdiction of the courts.

Mr. Gregory Phillips:

In companies like Porsche, they do favor alternative dispute resolutions, mediation, non-binding arbitration, anything where you can make the litigation process less expensive. In fact, 95% of the time you can resolve disputes in that context. Our only concern is not having the ability to have proper review of the results. I don't want anybody to leave here with the impression that companies such as Porsche don't favor alternative dispute resolutions. Binding arbitration - that is the problem.

Mr. Ken Fockler:

I understand. Thank you.

Mr. R.A. Reese (Research Fellow, Stanford Law School):

My name is Tony Reese. I am a Research Fellow at Stanford Law School, although my opinions are my own and not those of the institution. It seems to me that the discussion has been mostly about the commercial uses of domain names and I think that is understandable given the commercial interest of most of the speakers who are trademark holders or who are part of the trademark community. But it seems to me that the domain name system is used for the entire system of the Internet and there are a great number of non-commercial uses. And I think it is important to keep that in mind. And I have a couple of issues in particular with the dispute prevention mechanisms that you talked about and that the speakers earlier have mentioned.

First, the 60-day waiting period, and the analogy has been made that that is the same thing that happens with trademarks when you register you have to wait to see if there is an opposition. But, the problem is that with the domain name system if you have to wait you can't use the domain name for 60 days. And while that may make sense in a commercial context, I can think of other contexts where that does not work so well. For example, in the context of elections. There are countries where elections don't occur on a regular schedule, they are actually called at the option of the government and I can imagine situations where the time between the call for the election and the election would actually be shorter than 60 days and so the possibility of opening up a site to participate in the election wouldn't be possible if you had to wait for 60 days. In fact that might be possible in some campaigns in California in the initiative process.

And secondly, the issue of identification of registrants and the ability to contact and find contact information for somebody who is applying for a domain name. Again, while I can understand the commercial concerns and those make perfect sense to me, there are cases where someone is using a domain name not for a commercial purpose, but to speak and occasionally to express unpopular ideas or ideas that particularly might be unpopular in a certain geographic area where that person is located, of where that organization is located. And one of the advantages of anonymity of course is that if someone belongs to a persecuted minority or if someone has an unpopular opinion to express, they may feel more free to do that on the Internet where their neighbors can't go to who it is and find their address and associate them in person with those ideas. So, I think it is important not just to be limited to the commercial uses of the domain names system, particularly in thinking of these dispute prevention mechanisms, but also to keep in mind what effect those mechanisms might have on non-commercial uses of the domain name system.

Ms. Sally Abel:

One of the things we discussed within IHC and now I am putting on my IHC hat and not my INTA hat, was with regard to the .nom space which was meant to be for individuals, whether you could set it up in such a way so that it would have different entry requirements. Or to put it in differently, whether you set up all the new gTLD’s to have different entry requirements. Right now, you have got the individuals lumped in with the commercial interests so its very hard to pass out those individual interests and they can in fact be competing. One example, in the quasi-commercial context, is the People for Ethical Treatment of Animals case. I don't know if you are familiar with that, but that is one where the People for Ethical Treatment of Animals took issue with the domain PETA which was a parody and stood for People Eating Tasty Animals. Now, People for Ethical Treatment of Animals were very unhappy with that. They then turned around and obtained the Ringling Brothers domain so that they could then put up a site against the treatment of elephants in circuses. So, it is very hard to know what shoes are fitting where, and when they change and I think that is my message here today, that this is an issue that should not be polarizing us, though we should be coming together and trying to resolve it in the way that makes most sense for the Internet in going forward.

Mr. Robert Padilla (Patent Attorney, U.S. Department of Energy):

My name is Rob Padilla, and just following the words of the previous gentleman who spoke, I work for an agency of the United States government and I can't go into a lot of detail because we have an ongoing dispute right now. But let me just say that we have a situation where a government-funded software product has become kind of tied up with a domain name and so there are also issues that do relate. It’s not really commercial related, well it is, but it is just kind of the intermingling of both commerce and government and so there are some unusual situations that arise and it’s not just purely commerce. I just want to echo those words.

Mr. Robert Connelly:

Ms. Abel nice to meet you, I spoke this morning for Internet Counsel Registrars (CORE), and I am on the Executive Committee and I learned of the IHC work in February of last year and climbed abord as a result of a favorable impression of the way those procedures addressed the conflicts of trademarks on the Internet. Part of what I want to say right now is my own personal opinion and I do not attribute it to CORE because I know my colleagues would disagree. But, after listening to the gentleman from Porsche I realize that even just having preemptive exclusions is not adequate because the mind of man is very devious in coming up with further iterations. And I can see perhaps covering maybe 10 derivatives of Porsche with preemptive exclusions, but beyond that it would be difficult to imagine what other ideas people might come up with. Nonetheless, I am very favorably, impressed with the idea of having preemptive exclusions. I am concerned with one element which my colleagues will not share my opinion on, but as I do know that the whole concept, one of the concepts of having the new so-called perhaps southern new top-level domains, was to increase space on the Internet. In fact we have had much correspondence when we were back in the days of the policy advisory body before CORE was actually formed, by people who wanted to know how they could get in there and stake claim on all seven of what they already had one of. And so, I have put forward the idea in the past and has not been favorably reviewed, but the idea is that if somebody applies for one of those seven, there ought to be a red light flashed on when they apply for a second of those seven unless there is some reasonable rationale for it. I can tell you that many of the applications I have seen in our queue have been for the whole seven. An anecdote is that I do have a friend by the name of Bob Sharp who was Vice-President of the American Chamber in Japan and then went on to be President. And we gave him Sharp.nom which I was delighted to find was opened in our queue, because sharp was being ................ and did not apply for sharp.nom. So, I think the idea of perhaps going slow has some merit, and also some way of knowing that it is not just a matter of trying to block things. I would much rather see Kodak with a preemptive exclusion of all iterations in all seven top-level domains than to have it create a lot of disputes. Thank you.

Ms. Sally Abel:

Thank you for your comments. I agree with you, you said that a red light should go off if there is not a reasonable rationale for it, though I think there may be difficulty in the details in terms of determining the parameters that are reasonably rational. Some of this, if you put famous marks aside for a moment, is the issue that I raised earlier about policing, and where the trademark owners’ obligation to police ends. Because if the trademark owner was absolutely comfortable that their obligations to police ended at a certain point, then there would not be this rush to tie up all the gTLDs, unless there was use of gTLDs creating confusion. But part of what we have is a trademark law that does not tell trademark owners exactly where to stop, or what is okay, and trademark owners are shaking their heads saying, my God there is this whole new system, what do I do, and then you get the people registering in every one of the new gTLDs. And you have that if you do implement new gTLDs. At least until the law is fully developed.

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

Hi! my name is .........................., I am a law student at Santa Claire University. And I am writing a research paper on this WIPO process for the computer and high technology law agenda. I just have a couple of comments and a question in reference to this gentleman's comments about web sites for public opinion and elections, the 60-day waiting period, how is that going to be a problem? Is it possible to create temporary web sites that have just been used for a month or two? We wouldn't worry about a trade name issue because they would only be there long enough for someone to voice their opinions and then they go away after a while. On the issue of directories, how about creating, I know we are talking about the seven new ones to be formed .firm .car whatever. How about creating a directory more like a phone book where Porsche could fall under .car. So you wouldn't have all these problems with .that and .org and things like that. It might be a little bit more confusing for the consumer but maybe in the long run it would kind of focus things a little bit more. And finally I have a question, what happens to the web sites that people sign up for and use for maybe a few months, a few years and then kind of abandon are they still floating around in cyberspace somewhere, does that create any problems with taking of space and things like that?

(Ms. .......?............):

There is something called the lame delegation policy but I don't know whether that would apply if there is a web site out but nobody is home. And I think you are right, I think the majority of the controversy over the waiting period was business having to wait 60 days to launch an enterprise. But you are right that in the election of a government or another similar situation, you could use a temporary site. There have been suggestions that there be a temporary site and there is a lot of traffic and there are a lot of sites that move and there may be hot links involved or something along those lines, so it isn't out of the question.

(Mr. ..........?...........):

I should also remind people that the name space is essentially infinite or for some value of infinite, if the number space is not. In the IFWP process it was very popular to say that the new entity and everything to do with it should be a very democratic process and everyone should be represented, but we ought to remind ourselves that all the new entity does is to dish out the top-level IP address base which is a finite resource, very much like the North American numbering plan and although you and I get to suffer through area codes splits from time to time and although we probably have some limited voice in the process through our public utilities commissions or consumer groups or whatever, that is not the same as saying that we are directly, that we get to vote on the matter necessarily, because it is a limited resource and the IP address base is also a limited resource. So things that are floating out there, and if its an unused IP address base it should be given back. The other comment I had was that in setting rules and regulations for some of those things, I would hope that even the trade mark owners would have a little bit of a sense of humor and a little bit of flexibility. There is a very popular web site called untide.com which looks like a misspelling of united, it’s in fact a web site which deals with United Airlines bad customer service and is visited frequently by United employees who try to fix problems. In other words they think it is a good thing.

Mr. Christopher Gibson:

Just one point of timing in time for today and there are still two more speakers,

Mr. Nils Montan for Times Warner and Ms Anne Gundelfinger. Now we have to vacate the room at 5 p.m. because Stanford University needs this for other purposes. We have a coffee break scheduled now. If we take that and we take the full period that we would come back in the room at 4 o'clock and we would still have one more hour. I think that would be just enough for two speakers if we stick to the twenty minute rule per speaker with a few questions. So, I think we should more or less finish up with this intervention, maybe have one last observation and then break for coffee and try to be back at 4 o'clock sharp otherwise we may run into some minor problems.

Mr. Bill Washburn (Chief information Officer, Centraal Corporation):

Thank you. My name is Bill Washburn. I am with Centraal Corporation, I am not a historian of the Internet but I have been involved with it for quite some time and I would like to suggest to you in the spirit of going slow and in the related issue for me at least of management of the Internet main space, that five and a half years ago when NSF let out the contract to NSI and to AT&T and General Automics with respect to Internet, that at that time the seven top-level domains were all managed with the exception of .com. That is to say that .edu.org.net and the like were managed name spaces, so that you couldn't just get any string that you wanted. And, indeed, if you note even today in the .edu space each institution only gets one name. And I suggest to you that that's an important consideration as you think about this, and the fact that .com happened to be a garbage miscellaneous category, it didn't really have to do with commercial exclusively and probably never will. It was simply the last remaining domain name space that nobody wanted because acceptable use policies precluded commercial use of the Internet at the time DNS was created. Hence .com was of no value at the time, and when NSI took over the responsibility to manage this space they did so at no charge and they did so in the cheapest possible way, which is to say machine management with no human oversight. And frankly, in my opinion at least, that's why a great deal of this problem exists today. It is because there is the assumption, the predominant assumption today, that nothing can be managed in advance. And I suggest to you ladies and gentlemen that is not the case. Thank you.

(Ms. ......................):

I just want to say again thank you for this opportunity not only to appear before you today but to have my five year old daughter Hannah come and hear me speak, I have spent a lot of hours away from her in being involved in this process and I am thrilled to have had the chance. Thank you.

Mr. Christopher Gibson:

Thank you. So, we have the coffee break now and we continue at 4 o'clock.

Mr. Christopher Gibson:

We have right now indications that there are two more speakers. Is there any one else here that had intended to make a statement in the audience, that hadn't already indicated that to us? Okay, then I think we are all set and we will go ahead right now.

Mr. Nils Montan (Vice President, Senior Intellectual Property Counsel, Warner Bros.):

Good afternoon ladies and gentlemen and esteemed panel members. My name is Nils Montan and I am Vice President and Senior Intellectual Property Counsel for Warner Brothers, the entertainment studio down south of here in Burbank, California. And I am making this presentation today on behalf of Warner Brothers and our affiliated companies under the Time Warner banner, including DC-Comics the owner of Batman, Superman, Hannah Barberra, Turner Enterprises and some other companies. Time Warner very much appreciates the opportunity to participate in this international process which I think is extremely important, that it be an international process. And thanks to the World Intellectual Property Organization for its consideration of our comments and concerns.

Now, I am sure everybody here knows that Time Warner is a very large media conglomerate, I guess you would say, with a lot of interests and a lot of fields of entertainment. And, as such, it is probably somewhat in an unique position because it is using the Internet as the Internet develops for a lot of purposes, for the distribution of its products, for the promotion of its motion pictures and its television shows. And, although sometimes the media is depicted as this large oligarchy and octopus that is trying to strangle legitimate expression, if you think about it, a company like Time Warner is a company that is constantly expressing itself. In fact there is no company that will go to the bulwarks faster if they feel that there is an encroachment of the First Amendment, than companies like Time Warner. Because they don't want the government telling them what to do. So, I like just to set the field a little level by saying that although sometimes we are depicted as being the bad guys, in this context I don't really think we are. I think, as some of the speakers said before, we are really in all this together and what we want to see is a system where our legitimate interests can be treated fairly, but where people can have this new form of distribution and expression develop in a natural way. Now, like the gentleman from Porsche, my responsibilities at Warner Brothers have doubled or tripled in the past several years largely because of the Internet. And my principle concern here today, as is with the last few speakers, is with us trying to see that the Internet develops while we still give legitimate famous mark owners the ability to protect their trademarks. In my opinion, in the past several years there has really been an inordinate amount of time, energy and money spent by my company keeping the domain name register clear of names registered by others incorporating our famous trademarks. And I think what we really want to prevent is that kind of social waste, where we are spending all of our time in disputes, chasing people down and we really want to stop this phenomenon of cybersquatting and similar kind of activities.

So what I would say in connection with the addition of new gTLDs has been already said here and actually I am going to curtail much of my statement, because much of it was said by the gentleman from Porsche, Greg and by Sally Abel representing INTA. I don't see the need now and certainly from our perspective there should be no new gTLDs until there are adequate safeguards in place for protecting or at least accommodating the interests of trademark owners and domain name holders. I know that also Senator Leahey has introduced a Bill which speaks to having a study of the impact of the domain names on the Internet and what effect that will have on intellectual property generally. And I think along with the number of hearings that WIPO is going to hold we are really now entering onto a fair and open process that allows us to assess the situation without jumping in and creating more chaos. I know, for example, that in my legal budget in 1998 I am spending more money on Internet related issues than I am on consumer products piracy in the United States, and that really is unbalanced in my view. So, I don't see any reason to add to that problem right now if those new domain spaces are not necessary.

Dispute prevention. In my mind again, dispute prevention is key and we should try to do everything we can to stop disputes before they start. Again, echoing comments that have been made earlier, I think the main name disputes are often exacerbated by the failure of domain name registrants to provide accurate identifying information in the application process. This system has cost us untold grief trying to find people who often misuse the system by registering variants of our famous trademarks, and then giving the registrars misleading or inaccurate information. In addition, publication of that database that Greg mentioned of new domain name applications or registrations, would assist legitimate users in resolving domain name disputes informally if possible.

Just very quickly these are some of the things we would like to see in the domain name applications:

Now let’s turn to dispute resolution itself. I believe we need a system that will protect famous and well-known trademarks. And although, as has been mentioned earlier, trademark law is territorial and national, there is a growing body of international law pursuant to the Paris Convention and just general principles that will protect famous trademarks across what we would call classifications. That is if you truly have a famous trade mark like Coca-Cola or Rolls Royce, Bugs Bunny etc., then you should be able to protect that trademark against anybody who uses that for any purpose. Now, Warner Brothers and Time Warner encourages the development of centralized administrative mechanisms to resolve domain name disputes. Particularly, in cases of clear trademark infringement and cybersquatters. Through such mechanisms of owners of rights may achieve speedy resolution of disputes that would otherwise mire the parties and the domain name system in expensive and lengthy litigation. This was the question that was brought up earlier. Like most trademark owners we have a, perhaps an inordinate fear of binding arbitration. The fear is that law and jurisprudence tends to develop in situations where they can actually look for specific facts and apply precedent and so forth. We think that this is an important process to ensure that these famous marks that are worth billions of dollars are properly protected. But again we do not want to spend a lot of money. We do not think it is in society's best interests to spend a lot of money in litigation. So, we would be willing to participate in some forms of alternative dispute resolution, especially forms that would be able to develop jurisprudence that recognize famous mark protection as it is developing in this kind of worldwide sense. And as long as we have access to a court as a sort of court of appeal to ensure that there was some appropriate scope of review.

As for the provisions of dispute resolution policy, Time Warner recommends that the policy allow for provisional suspension of a domain name registration during the pendency of a domain name dispute. I recognize that this is a somewhat controversial matter and perhaps there needs to be some kind of criteria or procedure similar to that required when a company seeks a preliminary injunction today in the United States. That is, at least a strong showing of likelihood of success on the merits and the fact that you have a famous trademark. Some of this, and may be all of it, could be prevented if we had some kind of mechanism for clearing famous trademarks, or as this gentleman referred to, some kind of preemptive mechanism for depositing famous trademarks. And I will agree that on the edges there can be disputes as to whether a certain mark is famous, and whether the second comer has actually infringed the famous marks. But in actuality I think we could get together and come up with a fairly clear set of criteria for determining what famous marks are. And those criteria again are something that are emerging in nations all around the world now and are actually a fairly set standard. And I think that most of us would recognize these famous trademarks when we saw them, and if we didn't, once the evidence was reviewed pursuant to these criteria, we would see what these famous trade marks are, and we could find a mechanism for protecting them across all the new registries should they ever become necessary. Then we would cut down a lot of the societal waste and the activities of cybersquatters.

To ensure its effectiveness, clearance of these established marks or their prevention should encompass marks that are identical or that differ only in ways that would clearly mislead Internet users. Once a mark is clear across the gTLDs, the dispute resolution process should allow challenges to this famous mark status. That is, I do not want everybody to rush to this preemptive kind of deposit system and say "of course I have a famous mark" and then that be used to stop everybody from using that name as a trademark. There needs to be some effective challenge to that status. I think that has really covered most of the things I wanted to say, again most of them had been said prior to this statement by the gentleman from Porsche and by Sally Abel from INTA. So, if there are any questions or comments?

Mr. Frederick Mostert:

I just have one quick question and this is something that has come up before on this issue of the amount of time and resources that you devote in chasing cyberpirates, and the question is, is there such a thing or could there be such a thing as hard and fast clerical evidence as to how much time and resources are spent and how many cases are devoted to piracy? And the flip side of the coin, is that there is a school of thought that this is more similar and akin to statistics on counterfeiting. You can never have a hard and fast rule on this, it is always an estimate of statistics on crime in any rate because you only see the tip of the iceberg on those that surface. What is your opinion on this?

Mr. Nils Montan:

Well, I think it would be easier for famous trademark owners to provide you with that kind of information, because although the time they spend in-house would be an estimate, in our case, for example, I use outside law firms and I can tell you how much the fees are. And they are substantial. Like I said, they are more now than I spent on chasing tee-shirt pirates, and the like. So, we are talking about numbers high in the six figures just for Internet monitoring, domain name disputes and the like. It is very, very expensive. So, I think it is something that you could quantify, if such a study was thought to be useful.

Mr. Ken Fockler:

I would really like to clarify for my sake on the jurisdiction statement, when the application process comes in, the domain name applicants submits to jurisdiction and then there is a number of where the registry is domicile, where the registry database is maintained or where the root service is maintained. Are those all "or" choices or are they "and"?

Nils Montan:

I think that the place that was mentioned earlier is where the registry is domicile and that would seem to me to be the most likely balanced place where the business is run.

Ken Fockler:

Where the business is run. So I run my business out of Toronto, I have my data base in Finland and the root server is in Oraston? Which jurisdiction am I, Toronto, Canada?

Nils Montan:

As long as there is a submission to some recognized jurisdiction and I think that trade mark owners will be willing to live with that if it was felt too burdensome to have multiple ones.

Ken Fockler:

Then of course the enforcement question comes in. If one jurisdiction says yes, that is wrong, so take it out of your database and .......

Nils Montan:

Yes, right, we have litigated the main name cases in different parts of the world and as I said earlier I think that there is a growing recognition of famous mark protection that is required under the Paris Convention that most commercial jurisdictions are members of, and there is a jurisprudence that is growing that will allow you to fairly litigate these cases.

Mr. Ken Fockler:

I did not know whether we meant "ands" in there and whether that would be almost too much to ask.

Mr. Nils Montan:

Yes, the jurisdiction is always, at least in this country, limited by obviously a sense of fairness and that is what the idea of personal jurisdiction is. But, unfortunately a lot of people who use the Internet have used anonymity, if that's the right word. I mean, I recognize what the gentleman said earlier and I think that is a valuable and interesting point, but people have used that anonymity for unscrupulous purposes, I would say, and I think we want to avoid that and we just want a place where we can have a level playing field.

Mr. Ken Fockler:

Did you mean or as well in each of those? Yes. Ok, thank you.

Ms. Ellen Rony, author, the Domain Name Handbook:

I have two questions. Question number one, sir, among the mechanisms you proposed I didn't hear you mention as a possibility creating a taxonomy under .us to better differentiate and provide more information about what is on the site, who the site is registered to. In other words .med.us, .law.us, .art.us, .tm42.us for trade mark class 42 or any thing like that. I am wondering why if, as I have heard today, so many trademark owners express a concern about protecting and policing their marks, why aren't you pushing for this concept of better information in the URL which better defines the categories and therefore you don't have to worry if somebody is using a Warner Brothers name under .med for example, warner.med.us because you would know that that might be Warner hospital? Do you understand my question?

Mr. Nils Montan:

Yes, I understand the basic principle. First of all, I have to admit that I don't even know what a taxonomy in that nature would be. That is an interesting idea. I am really not qualified to speak to it, but I mean this is why this panel is here. So, if I were you I would submit to the panel a statement that then we can all consider and that may be extremely valuable and something that would be worthwhile.

Ms. Ellen Rony:

And two more questions. You mentioned cybersquatters and I guess I would like a better definition of cybersquatter. I think we all know, in my mind a cybersquatter is somebody who grabs up names for the sole purpose of trying to resell them to a party who might have a better affiliation. But, I am an author of a book you may not be familiar with it, this is the Domain Name Handbook and I actually have been tracking one of your main lawsuits involving roadrunner.com. And I took a look at Warner Brothers domain names in August 1997. Just Warner Brothers, not things like BugsBunny.com, but I found 30 names that were a variations on Warner Brothers; Warner Brothers.com of course, but wb domain, wb.com, wb.warnertv, wb.funzone. I understand that what you are doing is trying to protect the Warner name, but from a user point of view I wouldn't know where to find you. I mean, what you have done is obfuscate the answer as to how a user finds your main home page, your main site and at that site I would assume you could have as many offshoots, as many pages, as many subdirectories as you want to for all your different activities. But, this list of 30 just defeats the purpose of getting a user to you and that is what trademark owners are complaining about when other people take domain names, so how do you answer that?

Mr. Nils Montan:

Well there are two answers. Some of those registrations were probably defensive as you said and that is that I don't want to see, for example, the seven new top-level domain names open up and it would be like the Oklahoma van rush. Everybody is there, in fact today people are queuing up trying to pre-register names. So there is that defensive aspect to it. The other aspect of it is that we have divisions like Warner Online which again, although Time Warner is a very big company, Warner Online is a small kind of nimble entrepreneurial division that is trying to do what it thinks is best for its on-line business and they are most likely registering those domain names for their own purposes and maybe that is at a cross purposes with what you are trying to say. But again, I think you make a very interesting point. I would like to read your book if you could tell me how to get it or on your amazon.com, but I would need your name to search it. Thank you

Ms. Ellen Rony:

My final question is, you used the term fear and paranoias and other things. It seems to me that trademark owners are very concerned about abuse of their intellectual property. I am not clear on what you are afraid of when so many of these other sites have absolutely nothing to do with your company.

Mr. Nils Montan:

It was something that Sally Abel said before. These are very valuable assets. I mean somebody did a valuation of the Coca-Cola and Marlboro brand at one time and they were like 30, 40 billion dollars. So, these trademarks, these companies are worth more than their plants, are worth more than their trucks, they are worth more than everything. So, they are very worried about those trademarks. The second thing is that the law has always put a burden on trademark owners to police their marks. That is to say, the law says Mr. Warner Brothers, if you don't stop people who are using the Warner Brothers name without your permission you might be found to have abandoned your rights to that name. So, you can in effect lose that 30 billion dollar asset if you don't go after people who are misusing your name. And the other thing Sally said was that in the Internet there are no new rules, so these trademark owners don't know when to stop. So, in a certain sense we are kind of feeling our way along. I try to be judicious and not go after people unnecessarily. In fact, in the roadrunner case that you mentioned, if you look at what happened in that case you will see that basically I made a mistake. I went after somebody based on the roadrunner. Most people know we have a roadrunner character that is like roadrunner and coyote. And we tried to stop somebody from using roadrunner.com. Well it turned out that this business had been in business for quite a while and I considered under the equities that roadrunner was the state bird of New Mexico where this business was located. But we really did not have the trademark rights to trump that. So, I ultimately backed off. And I am not a raving maniac trying to stifle everything. You know I just want a clean playing field and a logical process that we can all work under.

Ms. Ellen Rony:

Could you explain this business about policing your trademark? Does that mean that any use of a name regardless of the context you will have to protect against?

Mr. Nils Montan:

No. I don't have to go after every Warner.

Ms. Ellen Rony:

I am not asking you. I am asking more generically the law. You said trademark owners must police their trademarks. But I want to know what that means in terms of policing your trademark, in a certain context in a marketing channel. or does that mean any use of that character string worldwide, because earlier today we heard from another trademark owner from Porsche, who was saying that there was a man who had registered a name, he hadn't paid for it, and they couldn't find him because the record wasn't authentic. That must mean he does not even have a web site, he has nothing to offer, he obviously hasn't infringed because he has not put up anything up there on the web. So I don't understand what there is to police. Because my understanding of trademark law is that it doesn’t give you worldwide rights to a character string, it gives you rights for use in a certain specific context for specific goods, for specific services. So, could you explain what you feel as a trademark owner policing means and what you are so fearful about. Because I think we need to know that. I think that's at the heart of this.

Mr. Nils Montan:

Well I don't know what a character string is.

Ms. Ellen Rony:

A character string is alpha you know that the words and the letters put in...

Mr. Nils Montan:

I am at a great disadvantage here.

Ms. Ellen Rony:

Warner. Does that mean that every use of Warner, does policing your trademark mean that every time the word Warner Brothers appears no matter in what context, whether it is applied to bras, or bananas or you know cartoons, that you have to be there and respond to that?

Mr. Christopher Gibson:

I am sorry. But before you answer that, I think I'd like to indicate that to be fair we have someone else who is here to make a statement. So, we would have to keep that going given that essentially we are at 4.30 now.

Mr. Nils Montan:

Yes. My quick answer is no. I mean you are right that generally trademark laws are contextual and apply for the product that you used. But some trademarks have become famous trademarks and I would argue that there are world famous trademarks for which the context gets very much broader. And you can't protect that against many, many different kinds of users like if somebody tries to use Rolls Royce for their bank for example. It is not a car, but I would argue that Rolls Royce is a famous trademark. We don't go after everybody that uses Warner. Warner is obviously a surname. Everybody who uses Warner Brothers, I would at least try to investigate to see what they are doing. I won't necessarily always try to do something about it. You have to be practical and contextualize it.

Mr. Robert Connelly:

I want to make sure that you differentiate between registrar and registry. Admittedly at this point the only registrar you know is a registry. But of course in the UK there is a registry with 400 registrars registering under it. So, your use of the word registry a few minutes ago could have been the incorrect term. I like to speak with my cold hat pulled tightly down around my ears in that you mentioned the desirability of having publication of new database. Our system is designed in such a way that you can download daily if you wish every new entry. And it is my understanding, and I certainly stand to be corrected, that with the existing NSI data base you can interrogate word by word and perhaps with wild cards, but as far as having that kind of service I don't think its available and that then results in really an overuse of the who, is making it difficult for people to use it because of the excessive use. As said, I am willing to be corrected on that point. We don't have your requirement for updating within two weeks, but I see no reason something like that perhaps mitigated to four weeks could not be added. We do require payment up-front the registrar must pay the registry. If the registrar does not get paid, well then he is out. So, most of us are working ways to get our money up-front. You mentioned provisional suspension. I believe that is a part of the WIPO system as I understand it and you suggested challenging other preemptive exclusions and that is also a part of the system as defined.

Mr. Christopher Gibson:

Thank you very much Mr. Connelly. I suggest that we move on to the next speaker, Ms Anne Gundelfinger.

Ms. Anne Gundelfinger (Managing Attorney, Trademarks and Brands, Intel Corporation):

Thank you very much. My name is Anne Gundelfinger and I am from Intel Corporation, a global manufacturer of microprocessors and other computer components. As I am sure most of you know, Intel has an enormous interest in seeing the Internet grow if for no other reason than it fuels demand for powerful computers which in turn fuels demand for powerful microprocessors. So, we obviously do want to see the Internet continue to grow and become the marketplace that it has already become and continues to develop into. Intel is also an owner of a number of trademarks, including a number of world famous trademarks. Such as the Intel brand, the Intel Inside logo and the Pentium brand. So we do have a genuine interest in making sure that our marks are not, shall we say, abused on the Internet.

I would like to open my remarks by noting that there has certainly been much emotion around this issue. I think most of it is a result of misunderstanding the concerns of most trademark owners. I think it is very important for us to try to put things in perspective, both trademark owners and other participants in the Internet world. I think for trademark owners its important to remember that with every new market that opens around the world, whether it is a cybermarket or simply a developing market, trademark owners generally do experience a rash of counterfeiting and other infringing and misleading activity until that market matures and is brought into the mainstream of commercial and legal norms. Most trademark owners are in fact capable of handling these sorts of problems, provided that they have access to a developed and fair legal system. Well, it is important not to overact to these sorts of problems. It is also very important not to ignore them or passively tolerate them. The problems need to be acknowledged and examined and then resolved with specific targeted solutions. This is entirely "doable", even in the completely overheated arena of domain names.

So, I would like to start by looking at some of the types of problems trademark owners are having with domain names. And this is by no means an exhaustive list, but it is certainly the sorts of things that we have seen at Intel and I have seen for other clients that I represent. First, there is the sort of routine wrangling over a desired second level domain name where both wranglers have legitimate trademark rights in the name. I think that an example that is frequently used, is United Airlines vs United Freight Lines. I don't think that they actually ever had a fight, but it’s a good hypothetical example of two companies that do have legitimate trademark rights who might hypothetically have had a dispute over the united.com name. A different type of problem would be the more routine trademark infringement dilutions, some of which have been described by the speakers who preceded me today. This is the use of a domain name that may potentially be confusing or diluting of another's trade mark rights. Then there is what most of us know as cybersquatting. I think most of us know it when we see it, although sometimes we have a little bit of a hard time defining it. Nevertheless, it is generally recognized as the holding of a domain name or domain names that the holder knows or believes that someone would wish to purchase, because the domain names are made up in whole or part of known trademarks or trade names. Then, a fourth category of problems, which is really a sub-category of dilution that I think takes on dimensions of its own, are porn sites. In this particular instant I am referring to use of a second level domain name for a porn site where the domain name is made up of another's trademark, usually a well-known one, sometimes with an extremely minor variation on or a misspelling of the well-known mark. I have brought with me today several examples of this because I think when you see them it really brings home just how significant an issue it is for owners of well-known marks. The current examples I have brought today are three domain names that currently are active. They are the www.intle.com domain, as you can see the l and the e are transposed, the www.pentium2.com domain name and the pentium3.com domain name. I will be later submitting written comments and I will include this information with my written comments, but I thought at least the panel today would be interested in seeing these. I will warn you some of them are raw so they have appropriate covers. The intle.com domain is simply a porn site, there is nothing particularly unique about it other than its a porn site. The second one, pentium2.com actually at least has the good taste to warn you that it’s a porn site before you actually get to the raw footage, and also asks that you please be over 18 before you enter. We know that does not do a lot of good but at least they get credit for trying. The third one is actually my favorite. This is pentium3.com and it is not only a porn site but a cybersquatter. You come to the first page of pentium3.com and you are instructed to click here "to see some fine ass nude celeb photos", which if you do click there they take you to those photos. The other place that you can click on the front page is that the domain is for sale, "please click here for details." At which point you get to a page that, and I am not making this up, says "hello, you seem to have an intuitive mind like me. Just imagine how many hits this page will have when Pentium ships their new P III chips sometime next year. I am already getting 30 hits with no promotion at all. I am getting offers left and right for this site, so right now I am going to the highest bidder format. Current highest bid is $9,350. Current incremental bid needed to purchase US currency blatablatablata...." So, he is basically soliciting bids for the site on a theory that when Intel ships Pentium III next year that this would become a very valuable site to Intel. As you might imagine, we have a letter out to this fellow and I have no doubt that we will in fact resolve the matter. I frankly shouldn't even think we would have to do this, but we do. At any given time, lest you think that these are aberrations, at any given time Intel has a handful of these sites that it has to police against on dilution and tarnishment grounds. We generally, with a fair amount of arm twisting and threats of legal action, can persuade these folks to abandon the current domain name that they have, only to see them pop up somewhere else some months later under some different misspelling of the domain. I also know, because we have checked out a number of these folks, that Intel is not their only victim. They own marks that misspell a number of famous marks, disney.com is misspelt as dismey.com, etc., etc., etc. So, you know this is a scam on their part presumably to attract traffic. I also think that they are trying to avoid detection by parents who are watching where their kids are going on the Internet. That is my personal theory. In any event it does dilute our mark. We do get complaints from consumers about how they mistyped the domain name and suddenly their child was staring at this terrible web site. And so, it’s of concern to Intel. What to do about all of these? Well, going back over the types of disputes I have talked about, certainly in the case of routine wrangling over a desired second level domain name where both have legitimate trademark rights, it’s basically something that parties should resolve themselves and they generally will, either through a purchase or through one of the parties choosing a slightly different name. I don't see that as a real significant concern for most trademark owners at this point. Routine trade mark infringements and dilutions, and by saying routine I don't necessarily mean that they are not important, but what I do mean is that they are the sorts of infringements and dilutions that the law knows how to handle. And this is in fact what we have a court system for. Our court system and our legal system here in the United States, and I think most countries around the world, is well-suited to the conduct of an in-depth factual and legal enquiry necessary to resolve the dispute fairly and to craft appropriate remedies. I personally, and I don't think Intel sees any compelling reason to create new fora to resolve these types of disputes. Nor is there a compelling reason to give registries or registrars judicial or quasi-judicial authority to adjudicate disputes and create a new body of law. You will simply add unnecessary and duplicative bureaucracy and will increase the cost of the domain name system for everyone. Over time, I think also it’s become more clear that the courts can effectively handle these disputes and that they have done so, Case law has developed not only here in the United States, but in a number of other jurisdictions and I believe we are seeing and will continue to see a slow but steady reduction in the really outrageous cowboy-type behavior that we have seen on the Net in its early days. For example, cybersquatting is now recognized as actionable under US and EU law, and the laws of other countries as well. And we are as a result seeing less of it. The problem has not gone away, it is still a real problem but we are making progress. However, I will say that if we are going to rely on our existing legal system to resolve these disputes, and that is something I think we should do, it does mean that trademark owners should have access to the courts to resolve these issues and should not have to put up with barriers to that access. Moreover, to the extent the disputes can quickly and efficiently be resolved through voluntary mediation or voluntary alternative dispute resolution, then this is a good thing for trademark owners. It’s a good thing for the Internet and society generally.

This brings me to several of the topics that were highlighted in the request for comments. In particular, dispute prevention and resolution. I believe that we should have a consistent domain name registration procedure across all registries, and I guess registrars to the extent that there is a distinction, and all top-level domains. This procedure should require registrants to provide contact and location details, certification regarding intended use and actual use, certification regarding non-infringement, agent for service of process, consent to jurisdiction somewhere presumably that is reasonably convenient for the parties, but somewhere, and other relevant information as has been set forth in both the IHC and INTA proposals in this past year. This would allow entities who believe that their rights have been trampled to pursue normal judicial remedies without undue expense or inconvenience. And registrants should have no objection. I do not believe that the right to privacy is being violated or even implicated in a case like this. When somebody wants to participate in society in a manner that may result in the infringement of another's rights then one must be accountable for ones activities. The registration process is tended by IHC and by the INTA both, doing no more than to ensure accountability. An annual renewal process that will keep this information updated is also necessary and it will also serve to reduce registry deadwood.

Finally, registries should maintain a publicly available database that is searchable by the public and this will allow future registrants to search for available names and allow trademark owners to police their marks effectively. Without requiring a duplicative, expensive and bureaucratic duty of examination or policing by the registry or registrar itself. In addition, alternative dispute resolution procedures should be encouraged and developed. However, I firmly believe they should be voluntary. Such voluntary mechanisms work extremely well to encourage settlement in every other area of legal dispute and there is no reason why they shouldn't work here. However, it is far too early to implement mandatory procedures. The Internet is still in its infancy, it may not feel like it but it is. And the law in this area is still developing. To oppose a mandatory dispute resolution procedure now could have unforeseen and truly unpredictable effects.

Finally, I would like to say a few things about new global top-level domains. There is no question in my mind that as the Internet grows additional top-level domains will be needed to expand the available domain name real estate. However, to add such top-level domains now without having adopted a set of procedures such as those I have described will simply compound the problem for trademark owners by giving cyberpirates, cybersquatters and pariahs of porn more space in which to do their damage. Moreover, there does not yet appear to be a shortage of domain name real estate. I see no crying need for additional top-level domains now. So, I think a go-slow approach makes the most sense here. Get the appropriate procedures in place, continue to allow the law to develop and add top-level domains on an "as needed" basis to make sure all registries or registrars for all top-level domains implement the same registration and database procedures. And that concludes my remarks, are there any questions?

Mr. Christopher Gibson:

Thank you very much. We have about five or six minutes left and we can take one or two questions from the panel or the audience.

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

My name is Kaye Caldwell. I am curious to know what you thought of the suggestion earlier that we might have a different registration procedure for our commercial interests and for say personal interests?

Ms. Anne Gundelfinger:

I wasn't here to hear the suggestion.

Ms. Kaye Caldwell:

The point that was made was that using the Internet as a public forum, some individuals might be speaking out on things that were not popular politically in the countries where they lived. And anonymity in those cases can be something very valuable and I think he suggested that it might be appropriate to have different mechanisms. And I am asking you this because you were just speaking in favor of always having the same mechanism. What do you think of the concept of having different types of registration procedures available depending on what kind of entity it is that's doing the registering?

Ms. Anne Gundelfinger:

Well, I certainly don't see a problem with that. I think you would still need to have some means by which the identity of the owner of the domain name could be known if there were a problem. Perhaps, however, certain screens could be set into place for a kind of individual top-level domain or something along those lines where you would provide a forum for people who wish to act in an individual capacity and exercise their rights of free speech. Assuming that those people are actually doing that and not engaging in any infringing activity I can't imagine that there would ever be a significant problem. Problems arise when somebody views that as an opportunity to actually have their infringing activity cloaked. But I imagine that there could be a procedure by which that would work.

Mr. Ken Fockler:

Perhaps it is along the same lines, but you had asked for consistent procedures across all top-level domains. Would that also apply to country code domains if possible?

Ms. Anne Gundelfinger:

I think so, if possible. Certainly there are cultural and legal differences on a country by country basis that might make that not entirely possible. But I think the sorts of procedures that at least I have outlined are so de minimis as to be pretty unobjectionable in most jurisdictions and cultures. In fact, as far as I can tell many, many countries regulate this base much, much more than the United States does. If anything, the procedures I am suggesting are far less than are already in place in many of these countries.

Mr. Ken Fockler:

But you are aware that some country top country codes are now being almost turned into generic top-level domains by entrepreneurs probably living in some other part of the world?

Ms. Anne Gundelfinger:

I am aware of that.

Mr. Ken Fockler:

One other quick thought. You really brought up the pornography issue a little more than others and I don't really know whether it is within our mandate, but the way you described its impact on your company, your business, your trademark almost starts to draw it in. I wondered in context with some previous discussions with youth, about the benefits one way or the other if there was such a top-level domain as XXX, you had directories and you had browsers that really just meant that, so that's the only place you find them. And if you don't want them you don't have to have it in your browser, or you click on it, that may create a red light district, I guess I don't know.

Ms. Anne Gundelfinger:

Contain it to a bad neighborhood in other words?

Mr. Ken Fockler:

Yes, but even at home it’s like an easier way for you if the browser is built that way that says that this machine is never going there.

Ms. Anne Gundelfinger:

Well, I have not given a lot of thought to the creation of a top-level domain devoted to this kind of activity, because I guess the first question I would have in my mind is, would it become a requirement that this kind of site register in that top-level domain and no other? You know, at the end of the day, in my view, if there is a clear dilution or tarnishment of a trademark, this is it, and the fact that you have school children going off and doing a research project on microprocessors landing at a site like this makes that pretty clear. So I do think that it does impact our trademark rights. I also think that because it is a relatively clear case it is a resolvable thing. Either through legal means or otherwise. So, you know certainly a number of creative possible solutions are out there and available. I wouldn't want to rule any of them out.

Mr. Ken Fockler:

It’s just an expansion of the topic of categories.

Ms. Anne Gundelfinger:

I just don't know if you would necessarily get the voluntary cooperation of this industry in kind of shepherding itself into a particular top-level domain.

Mr. Ken Fockler:

Not unless you got the cooperation of the registry industry. You might not get the cooperation of the porn industry, but if you weren't very successful in registering and then you are out of business.

Ms. Anne Gundelfinger:

That's true. Thank you very much.

Mr. Christopher Gibson:

I know that Professor Barton wanted to say a very quick word or two but I want to say on behalf of WIPO, thank you to everyone that came here today and who gave up their time to put forward your comments, and to be involved in this discussion. Thank you very much to the panel of experts who came here from a distance to be here today and to be educated on the issues that we discussed. We very much appreciate Stanford University's hosting of this first meeting of these consultations

Professor Barton:

Mine is to say thank you as well at the end of the day to all those who helped make today, I hope, a success in terms of giving you some of the information you needed. Simply in this room I want to quickly thank Gary Hackman, Paula Doney, and Connie Jansen for all the work that they did to make today possible. Thank you, and thank you again from Stanford Law School for your presence at this hearing.