Number: 397
ATTORNEYS AT LAW
TUCKER, FLYER & LEWIS
A PROFESSIONAL CORPORATION
1615 L STREET, N.W.
SUITE 400
WASHINGTON, D.C 20036-5612
(202) 452-8600
FACSIMILE: (202) 429-3231
HENRY W. LEEDS
(202) 429-7187
August 1l, 1997
Ms. Patrice Washington
Office of Public Affairs
National Telecommunications and
Infromation Administration (NTIA)
Room 4898
14th Street and Constitution Avenue, N.W.
Washington. D.C. 20230
Re: Comments on the Registration and Administration of Internet Domain Names
Dear Ms. Washington:
I wish to take this opportunity to comment on the registration and administration of Internet domain names, in response to
the July 2, 1997 Federal Register request of the Department of Commerce.
I am an attorney who has been principally engaged for the past forty-one years in the practice of trademark law. In the past
three years, I have been involved in a number of domain name disputes. As a result of those disputes, I have developed some
views which some may consider radical regarding the issuance of domain names. However these views would simplify the
issuance of domain names, avoid the present unfairness in granting rights "in gross" in a domain name, and, hopefully,
prevent disputes, and certainly disputes involving the issuer of the domain name. Before addressing the specific questions
raised in the notice published in the Federal Register on July 2, 1997, a few preliminary comments may be helpful.
The domain name issues today have developed as a result of the issuance of domain names by Network Solutions, Inc.,
Reston. Virginia ("NSI"), without proper regard for what was involved. The consequence has been an inherent unfairness in
granting "in gross" rights in a second level domain name, without regard to the goods, services or business with which it is
used. This has also allowed pirates to steal valuable company names and sell them back to the companies.
The problem will not be cured by adding more first level domain names, nor will it necessarily be cured by expanding the
number of entities of who can grant rights in a domain name. It will, however, be cured by taking a realistic look at the
purpose of a domain name.
ln the simplest of terms, a domain name is nothing more or less than an address. It is like a name in the telephone book.
There should be no domain name disputes involved. All that should be required is to make sure that the identical domain
name has not been preempted.
Using the telephone book analogy, one distinguishes amongst the many Smiths that are listed by reference to their given
names, middle initials and/or address. The same type of distinguishing characteristics should apply to a domain name.
Restated, every domain name should be a combination of at least two or more terms. The first term should be the dominant
identifying term. the second should be descriptive of the field of interest associated with the prefixed term, and additional
terms should further identify the registrant's business or location.
To illustrate, there is the Ford Motor Company and the Ford Talent Agency. Both are well known. Each should have a right
to have a domain name with the Ford prefix. The suffix or suffices would distinguish the two. Thus, the result might be:
"ford-auto.com" for the car manufacturer
and
"ford-talent.com" for the talent agency
This concept can be expanded almost indefinitely through the use of imaginative terms. For example, a Ford dealer in
Bethesda, Maryland would be:
"ford-auto-dealer-bethesda-md.com"
The foregoing approach is believed to be simple and effective. Anyone who is interested in a particular URL could check the
"Whois" directory and would get a listing of all of the "Ford" URLs. By looking at the suffix, the party would have a much
better idea of address in which he or she is interested.
The downside, of course, is that the domain names become long. But this is a small price to pay if the result is both fairer and
clearer.
Under the foregoing approach, the party responsible for recording the URLs would not be engaged in any trademark disputes.
Today, the disputes arise only because one party has obtained a domain name which is blocking a trademark user from using
its mark as part of a domain name. Under my approach, any trademark issues would have to be resolved through negotiation,
or through standard court proceedings for trademark infringement/unfair competition/dilution.
lf there is a concern that the courts would be cluttered with cases involving domain names, a federal law might be considered
which would require that any dispute involving a URL must be arbitrated under the rules of the American Arbitration
Association.
This leaves the question of what to do with the domain names that already have been issued for a single term with ".com".
Each of these must be renewed in due course, and all within the next two years. My proposal is to require each domain name
holder on renewal to modify the single term domain name to the hyphenated form suggested above. To avoid any unfairness,
a six month grace period might be given before this policy goes into effect. Anyone within the grace period will only be
renewed for a one-year term. In this way, all of the second level URLs would be "prefix-suffix.com".
Directing my attention to the questions posed in the July 2, 1997 Federal Register, I believe that Section A recites the
appropriate principles that should govern the issuance of domain names. The general organizational and framework issues
have been addressed in my comments above. However, I again stress that the current domain name registration system is
unfair because it grants rights "in gross," and the present procedures for resolving domain name disputes are essentially "first
come, first served", without regard to the equities of the parties.
In my opinion, the entire system can be improved by recognizing that URLs are merely addresses, and nothing more. Once
that principle is established, it is merely a matter of how to identify one address from another. It can be done through
additional modifiers; it is not necessary to make the matter even more difficult and complicated by adding additional first
level domain names.
I should also mention that under my suggestion, it would not be necessary to retire generic top level domain names (for
example ".com"). but the use of geographic or country codes should probably be considered because the Internet is, by its very
nature, worldwide. It is entirely foreseeable that two different entities in separate countries might have identical domain
names, even under my "prefix-suffix.com" approach. They could be further distinguished by the use of the country modifier.
Section D dealing with policies for registries should be exactly the same as it is for phone books. On the other hand, phone
books, by their very nature, have built in limitations because of area codes and the like. URLs do not. Therefore, as a practical
matter, there should be only one entity that is authorized to issue URLs.
Section E dealing with trademark rights becomes a moot issue under my approach. The issuer has discretion only to issue or
not to issue because the identical term is already taken. The issuer should not be engaged in any type of resolution of a
domain name dispute. That should be the sole province of the parties, either by way of negotiation, court action or arbitration.
It also keeps the issuer from being joined as a third party, as it happens in current litigation.
I hope that foregoing comments are helpful. I realize they are somewhat radical, but they are intended to simplify the entire
URL process and to avoid the proliferation of suits arising from them. When a party has obtained a URL which is truly
damaging to a trademark owner, the owner has full recourse to remedies under the Lanham Act, in my opinion.
Very truly yours,
Henry W.Leeds
HWL :pks
16 15PSBK.'D/93