Testimony of Michael M. Roberts Before U.S. House Committee on the Judiciary, Subcommittee on Courts and Intellectual Property
28 July 1999

U.S. House of Representatives
Committee on the Judiciary
Subcommittee on Courts and Intellectual Property

Mr. Chairman and Members of the Subcommittee:

I welcome the opportunity to appear here today to discuss the activities of the Internet Corporation for Assigned Names and Numbers (ICANN) regarding the relationship between Internet domain names and intellectual property rights.

ICANN is the non-profit, private sector corporation formed by a broad coalition of the Internet’s business, technical, and academic communities in October 1998 in response to the invitation of the U.S. Government in its Statement of Policy on Management of Internet Names and Addresses, 63 Fed. Reg. 31741 (June 10, 1998), usually known as the "White Paper." ICANN has been designated by the Government to serve as the global consensus entity to which it is transferring responsibility for coordinating the assignment of Internet protocol parameters, the management of the domain-name system, the allocation of the IP address space, and the management of the Internet root server system.

Recognizing the large number of witnesses appearing today, I will devote my presentation to a concise report on the status of ICANN’s consideration and treatment of intellectual property rights in connection with the domain-name system. As noted above, the White Paper contemplated that ICANN would assume responsibility for four Internet coordination functions. One of those functions involves overseeing operation of the domain-name system.

As the White Paper recognized, the increasing commercial use of the Internet has given rise to increasing conflicts between the domain-name system and intellectual property. To help resolve this "trademark dilemma," the White Paper envisioned that "the World Intellectual Property Organization (WIPO) would initiate a balanced and transparent process, which includes trademark holders and members of the Internet community who are not trademark holders," to recommend procedures for minimizing problems between the trademark and domain-name systems. 63 Fed. Reg. at 31747. Accordingly, in the White Paper the U.S. Government stated its intent to "[a]sk WIPO to convene an international process including individuals from the private sector and government to develop a set of recommendations for trademark/domain name dispute resolutions and other issues to be presented to the Interim [ICANN] Board for its consideration as soon as possible . . . ." 63 Fed. Reg. at 31751.

Following this request, in late 1998 and early 1999 WIPO conducted an extensive process to gather comments from interested parties and, on April 30, 1999, WIPO submitted its Final Report to the ICANN Board containing recommendations in the following areas:

• Domain-name registration practices to reduce conflicts with intellectual property rights. (Chapter 2 of Final WIPO Report.) Although the Final Report included a large number of recommended registration practices, the most noteworthy relate to ensuring that accurate contact information is available about domain names and to providing that registrars receive prepayment before name registrations go active.
• A procedure for administrative resolution of disputes over domain-name registrations. As reflected in Chapter 3 of its Final Report, WIPO recommended that an administrative dispute-resolution procedure be required only in cases arising from "abusive" domain-name registrations.
• In Chapters 4 and 5, the Final WIPO Report recommended that famous and well-known marks be excluded from registration as domain names (other than by their owners) and that new global top-level domains be introduced only at a controlled rate after famous-mark exclusions are in effect.

ICANN began consideration of the WIPO Final Report at its quarterly meeting on May 26-27, 1999. At that meeting, the ICANN Board responded to the WIPO Report in the following manner:

• Nearly all of the WIPO recommendations on registration practices had already been included in the ICANN registrar accreditation policy, which the Board adopted in March 1999 in preparation for the April 26, 1999, onset of competition in the business of registering names in the .com, .net, and .org domains. In particular, the ICANN registrar accreditation policy requires that accurate contact information be made publicly available on a real-time basis and that registrations not be activated until the registrar receives a reasonable assurance of payment, such as through use of a credit card.
• With respect to dispute-resolution procedures, the ICANN Board endorsed the WIPO-recommended principle that there should be a uniform dispute policy for all registrars in the .com, .net, and .org domains. At its May meeting, the ICANN Board also took action to institute the ICANN Domain Name Supporting Organization (DNSO), which is responsible for evaluating policies concerning domain names. The details of the appropriate uniform dispute-resolution were referred to the DNSO, which was requested to propose a specific policy in time for adoption by the Board at the next quarterly ICANN meeting, in August 1999.
• To avoid unnecessary conflicts pending adoption of a formal policy, the ICANN Board passed a resolution calling on the testbed registrars, who are in the process of entering the domain-name registrar business, to work together to formulate a model dispute resolution policy for voluntary adoption.
• The topics of famous-names exclusions and establishment of new top-level domains appeared to engender more controversy in the Internet community. Accordingly, the ICANN Board asked the DNSO to evaluate these aspects of the WIPO report and develop recommendations on these topics once the DNSO completes work on the dispute-resolution policy.

Since the quarterly ICANN meeting in May, the DNSO has been working diligently on the dispute-resolution issues. A working group has issued a report, which is being considered by the DNSO Names Council. Two of the other witnesses at this hearing are members of the Names Council, and can provide you details on those proceedings. The ICANN Board looks forward to receiving the DNSO report on dispute resolution in the near future, so that it may be considered at the ICANN Board meeting at the end of August.

I thank the Committee for the opportunity to present this report, and look forward to answering any questions you might have.

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