Letter from Louis Touton to Hon. Howard L. Berman, U.S. House Judiciary Committee 1 May 2001

By First Class Mail and Telecopy

May 1, 2001

Hon. Howard L. Berman
Ranking Member
Subcommittee on Courts, the Internet, and Intellectual Property
Judiciary Committee
U.S. House of Representatives
Washington, DC 20515-0526

Dear Congressman Berman:

This letter responds to yours of March 27, 2001. Please accept my apologies for the slow reply.

Thank you for giving me the opportunity to appear before the Subcommittee on Courts, the Internet, and Intellectual Property. I was impressed by the level of preparation and the substantive nature of our discussions on ICANN, the new TLDs, and the protection of intellectual property.

I will address each of your questions (quoted in italics) in sequence:

"1. ICANN has made a lot of progress toward completing negotiations with the operators of four new top level domains, and final charter policies for the new top level domain names appear likely to be determined in the very near future, perhaps in the next couple of weeks. Can you assure this Subcommittee that intellectual property interests will have adequate time to evaluate these resolutions and to have input into the final agreements before they were signed off by ICANN?"

"I understand that the ICANN Board of Directors has authorized the staff to sign the agreements after they have been posted for as little as seven calendar days. Some of these issues are quite complex. If a period of seven calendar days is not enough time for a thorough but prompt review of how these issues are resolved, can you assure this Subcommittee that enough additional time will be allotted to permit this review to take place?"

We have taken seriously our responsibility to give all interested parties an adequate opportunity to analyze and comment on the new TLD agreements. As you note, these issues can be complex, and it is entirely reasonable for Internet stakeholders to expect an adequate period of time to read, analyze, and critique the posted documents. At the same time, in all its activities ICANN must seek to accommodate the very fast pace of developments in all things related to the Internet.

Here, I believe ICANN struck a reasonable balance, within these admittedly tight constraints. We have asked each of the registry operators for the new TLDs to consult closely with interested Internet stakeholders concerning the procedures that will be followed in their registries, and each has done so. In particular, each has met repeatedly with representatives of intellectual property owners, including ICANN's Intellectual Property Constituency, which was established to give organized and coherent voice within the ICANN process to the interests of intellectual property owners. From the time the new TLD proposals were made at the beginning of October of last year, the selected TLD proponents have shown sensitivity to the need to protect intellectual property. Since before the selections were made in early November, each of the selected TLD operators has extensively discussed its proposed procedures with many different interests affected by the Internet, including intellectual property interests. As a result, the proposed procedures have been refined and made more specific to accommodate particular issues that have been raised.

After several months of these discussions, in the last several weeks we have posted on the ICANN web site the language of the proposed registry agreements as well as supporting appendices that give specific, concrete commitments to back up the discussions that have been ongoing for over five months. These materials are the result of extensive consultations among a broad array of stakeholders affected by the Internet-including intellectual property interests. A review of the materials shows the detailed procedures that have been developed to deal seriously with the need for protection of intellectual property in the new TLDs. The process that has resulted in these commitments by the registry operators has been a months-long broad-based effort to converge on a final product. The final seven-day review period is the last step in that extended process and I believe it allows adequate time to verify that the final version of the documents captures the various commitments that have been made.

"2. During our hearing, you stated that ICANN's role is not to set a baseline for intellectual property protections in the new top level domain names, especially as a 'consensus' has not been reached in the Internet community. If it is not ICANN's role to set such a baseline, and therefore ICANN will not set such a baseline, and yet we on this Subcommittee believe that such a baseline should be set, whose role should it be to set these standards? Should Congress step in and mandate a baseline that all new TLDs would have to include?"

The new TLDs are not exempt from existing laws protecting intellectual property; thus, applicable law must be seen as the fundamental baseline for protecting intellectual property in the domain name space. ICANN, through its consensus development process can also establish (and has done so) procedures designed to reduce disputes surrounding use and misuse of intellectual property. In the new TLDs, like in the .com, .net, and .org TLDs, individuals will register domain names through registrars, all of whom have entered into Registrar Accreditation Agreements with ICANN (for the current Registrar Accreditation Agreement, see http://www.icann.org/nsi/icann-raa-04nov99.htm). These agreements provide that registrars will follow various best practices, many of which were recommended in Chapter 2 of the World Intellectual Property Organization's April 30, 1999 "Final Report of the WIPO Internet Domain Name Process" (available at http://wipo2.wipo.int/process1/report/finalreport.html#III). The Registrar Accreditation Agreement also provides that every registrar will make ICANN's widely-praised Uniform Dispute Resolution Policy (UDRP), which targets bad-faith registration of trademarked names, a part of the registration agreement for every domain name that it accepts for registration.

Thus, the Registrar Accreditation Agreement provides additional, global protection for intellectual property and other third-party rights in the registration of domain names. Although the Registrar Accreditation Agreement that registrars will enter with ICANN for the new TLDs will have minor differences from the current agreement for technical legal reasons, the substance of the protection of intellectual property will be the same.

Additional issues concerning the protection of intellectual property may arise as the process of introducing new, general purpose TLDs to the Internet-something that has not been done since the Internet was opened to commercial activities in the early 1990s-proceeds. Because of the novelty of this endeavor, there is little relevant experience on which to base the optimum design of effective protections for intellectual property in the start-up process. The introduction of new global, open TLDs is an unprecedented, untested event, and no one can credibly claim to know the exact best way to proceed. Many different approaches have been proposed, and each has its strengths. In addition, because each new TLD has a different purpose and registration requirements, a one-size-fits-all approach simply would not serve well the goals of enhancing the Internet's utility while effectively protecting intellectual property.

For these reasons, ICANN has not mandated a single, uniform mechanism for the protection of intellectual property in new TLDs. Rather, ICANN has provided a degree of flexibility to the new registry operators to design and implement a reasonable set of registration procedures to augment the best practices of the Registrar Accreditation Agreements. The new TLD operators share the common objective of minimizing cybersquatting and other abusive registration practices; within that overall objective, each has developed a somewhat different practical implementation. From our perspective, this is a feature of the process, not a flaw.

In my written testimony to the Subcommittee, I detailed the various approaches to intellectual property protection taken by the new TLD operators. You will find that the procedural variations among the globally open registries are not great. In the view of many observers (including me), it is impossible to predict with certainty which set of procedures will work best to protect intellectual property; each approach stands a reasonable chance of working best.

Consistent with ICANN's overall objectives for this "proof of concept" introduction of new TLDs-a kind of controlled experiment in the evolution of the Internet's domain name system-we expect that the real-world experiences of the new TLDs will provide useful information about the relative merits of their different approaches. Informed by that real-world data, ICANN will be better able to build consensus around a set of uniform requirements for different categories of new TLDs in any future expansions of the DNS.

You also ask whether Congress should "mandate a baseline" regime of intellectual property protections for all new TLDs. In my view, this is not the time to legislate, for at least two reasons.

First, a single, inflexible policy for intellectual property protection in new TLDs could stifle the development of innovative approaches, and undermine the core values of diversity and decentralization. Because the new TLDs come in differing shapes, sizes, and flavors a "one size fits all" approach would likely produce one of two results: inevitably, such a policy would be either under-inclusive or over-inclusive. What works for a small, specialized registry will not be appropriate for a globally open, unrestricted TLD.

Indeed, most of the new TLDs are not globally open, unrestricted TLDs, but rather specialized, restricted TLDs intended to serve communities of very different sizes and compositions. For example, the .aero TLD will be administered for the benefit of the air transport community by SITA, which is a membership organization representing the various sectors of that community. The protection of intellectual property rights is obviously a very high priority for the many trademark holders, such as airlines, that constitute the air transport community. In our view, the accountability of a specialized, restricted TLD like .aero to the community it serves will go far to encourage the development of innovative, well-tailored, and effective means of protecting intellectual property. The same is true for the .museum, .coop, and .pro TLDs.

Second, the ICANN process seeks to develop consensus policies-including reasonable intellectual property protections for new TLDs-that are acceptable to the many diverse interests that comprise that global Internet community. The imposition of registry policies by a single national government-even with the best of intentions-would likely undermine the ability of the Internet to realize its potential as a trusted medium for global commerce and communication. Moreover, an act of Congress is unlikely to be enforceable with respect to the overseas top level domains, over 200 of which are up and running as country-code top level domains.To best achieve the Internet's very great promise, it is important to proceed with a high degree of global collaboration to address the issues involved in the DNS, including the important issue of protection of intellectual property.

ICANN takes quite seriously its responsibility to provide reasonable protections for intellectual property and other third-party rights. Though the new TLDs have not been required to implement identical registration procedures, the various approaches of the new TLD operators are all good-faith efforts to protect third-party interests, including rights in intellectual property. Each TLD proposal has been refined through an extensive consultation progress, which included substantial input from intellectual property owners and their representatives. We expect that the community at large will learn a great deal from their practical experiences implementing those procedures later this year. Those real-world experiences should be of great benefit to the Internet community as it considers future rounds of TLD expansion in the future.

Please do not hesitate to contact me if I can provide any additional information on these or other areas of concern.

Best regards,

Louis Touton
General Counsel