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Comments on Interim Report of the WIPO Internet Domain Name Process

Comments of CPSR, EFA, and FrEE on
WIPO RFC-3, Interim Report of the WIPO Internet Domain Name Process

March 5, 1999

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

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

The bone of contention

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

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

Browser name completion: an anachronistic concession to laziness

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

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

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

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

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

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

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

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

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

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

Solutions to laziness and ignorance

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

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

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

Problems with the Alternative Dispute Resolution (ADR) policy

The policy described in RFC-3 has been criticized thoughtfully and persuasively by A. Michael Froomkin in a well-publicized paper,, and we have relied upon that paper for some of the points in this section.

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

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

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

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

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

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

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

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

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

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

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

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

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


Computer Professionals for Social Responsibility —

Electronic Frontiers Australia —

Electronic Frontiers Spain (FrEE) —

Questions or comments on this document can be directed to:

Andy Oram
(617) 499-7479 (Cambridge, Mass., USA)

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