| Cybertelecom | Anti Cybersquatter Protection Act |
[Federal Register: February 29, 2000 (Volume 65, Number 40)]
[Notices]
[Page 10763-10765]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr29fe00-35]
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DEPARTMENT OF COMMERCE
Office of the General Counsel; Abusive Domain Name Registrations
Involving Personal Names; Request for Public Comments on Dispute
Resolution Issues Relating to Section 3002(b) of the Anticybersquatting
Consumer Protection Act
AGENCY: Department of Commerce.
ACTION: Notice and request for public comments.
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SUMMARY: The Department of Commerce requests written comments from any
interested member of the public on the resolution of Internet domain
name disputes involving the personal names of individuals. On November
29, 1999, President Clinton signed into law (as incorporated into
Public Law 106-113) the ``Anticybersquatting Consumer Protection Act''
(or ``Act''). Generally, the Act is intended to protect the public from
acts of Internet ``cybersquatting,'' a term used to describe the bad-
faith, abusive registration of domain names, and section 3002(b) in
particular contains a prohibition on certain acts of cybersquatting
that involve the personal names of living persons.
Section 3006 of the Anticybersquatting Consumer Protection Act
directs the Secretary of Commerce, in consultation with the Patent and
Trademark Office and the Federal Election Commission, to conduct a
study and report to Congress with recommendations on guidelines and
procedures for resolving disputes involving personal names, the subject
of section 3002(b). The required report is due to Congress no later
than 180 days after enactment of the Act. This Federal Register notice
is intended to solicit comments from interested parties for
consideration by the Department of Commerce as it prepares the required
report. The specific questions posed by section 3006 of the Act are
reprinted in the portion of this notice called ``Supplemental
Information.''
DATES: Written comments must be received by March 30, 2000.
ADDRESSES: Please address written comments to: Department of Commerce,
Room 5876; 14th & Constitution Avenues, NW; Washington, DC 20230,
marked as ``Public Comments'' to the attention of Sabrina McLaughlin,
Office of General Counsel. If possible, paper submissions should be
accompanied by disks formatted in WordPerfect, Microsoft Word, or
ASCII. As an alternate means of submission, comments may be transmitted
by facsimile to Sabrina McLaughlin at (202) 482-0512. Electronic
submissions may be directed to DomainName@doc.gov. Any accompanying
diskettes should be labeled with the name of the party submitting
comment and the version of the word processing program used to create
the document.
FOR FURTHER INFORMATION CONTACT: Sabrina McLaughlin by telephone at
(202) 482-4265, by mail to her attention addressed to Department of
Commerce, Room 5876; 14th & Constitution Avenues, NW; Washington, DC
20230, or by electronic mail at DomainName@doc.gov.
SUPPLEMENTARY INFORMATION: Section 3002(b) of the Anticybersquatting
Consumer Protection Act (Public Law 106-113) creates the following
protection for the domain names \1\ of individuals:
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\1\ Domain names are a crucial component of the online world,
and yet many online users may not know by what technical device even
new computer users tend to easily navigate the Internet. A domain
name functions much like a cyberspace address book.
Domain names are the familiar and easy-to-remember names for
Internet computers that map to Internet Protocol (IP) numbers,
which, in turn, serve as routing addresses on the Internet. The
domain name system translates Internet names into the IP numbers
needed for transmission of information across the network. See June
5, 1998 Statement of Policy on the Management of Internet Names and
Addresses, also known as the ``White Paper'' at http://
www.ntia.doc.gov/ntiahome/domainanme/6__5__98dns.htm.
(b) Cyberpiracy Protections for Individuals--
(1) In general--
(A) Civil liability--Any person who registers a domain name that
consists of the name of another living person, or a name
substantially and confusingly similar thereto, without that person's
consent, with the specific intent to profit from such name by
selling the domain name for financial gain to that person or any
third party, shall be liable in a civil action by such person.
(B) Exception--A person who in good faith registers a domain
name consisting of the name of another living person, or a name
substantially and confusingly similar thereto, shall not be liable
under this paragraph if such name is used in, affiliated with, or
[[Page 10764]]
related to a work of authorship protected under title 17, United
States Code, including a work made for hire as defined in section
101 of title 17, United States Code, and if the person registering
the domain name is the copyright owner or licensee of the work, the
person intends to sell the domain name in conjunction with the
lawful exploitation of the work, and such registration is not
prohibited by a contract between the registrant and the named
person. The exception under this subparagraph shall apply only to a
civil action brought under paragraph (1) and shall in no manner
limit the protections afforded under the Trademark Act of 1946 (15
U.S.C. 1051 et seq. or other provision of Federal or State law.
(2) Remedies--In any civil action brought under paragraph (1), a
court may award injunctive relief, including the forfeiture or
cancellation of the domain name or the transfer of the domain name
to the plaintiff. The court may also, in its discretion, award costs
and attorneys fees to the prevailing party.
The Internet has grown exponentially from its humble origins as a
tool for researchers and scientists. As more and more people are using
the Internet for business or recreational purposes, domain names have
taken on increased significance as valuable Internet locators. Online
users have become accustomed to being able to guess the domain name of
a company or entity, with a good degree of success. For example, in the
shorthand of domain names, ``the Department of Commerce'' (or DoC)
translates into the domain name ``doc.gov''. Businesses and other
entities rely on this ``seeking tendency'' of online users to establish
domain names that are valuable to businesses because the names are
predictable to users. However, the sheer number of domain names in use
on the Internet today means that an organization may find that their
desired domain name has already been registered by another party.
The Anticybersquatting Consumer Protection Act provides a
minimalist, predictable legal framework to address domain name disputes
that can result when different parties compete for the right to
register an identical name. It is not meant to override, but instead
facilitate other domain name dispute resolution mechanisms such as
those recognized by the Internet Corporation for Assigned Names and
Numbers (ICANN), the not-for-profit organization responsible for domain
name management. On October 24, 1999, ICANN approved rules for an
inexpensive, online alternative to litigation in the form of its
uniform dispute resolution policy (UDRP). Under this UDRP, disputes
alleged to arise from abusive registrations of domain names may be
addressed by expedited administrative proceedings. Additional details
about the ICANN policy may be found at http://www.icann.org/udrp/
udrp.htm.
Many domain name disputes are the subject of court actions brought
under federal trademark law (more precisely, under the Lanham Act)
because the commercially valuable asset that is in dispute is a brand
or other mark traditionally protected by trademark law. See, e.g.,
Intermatic Inc. v. Toeppen, 947 F. Supp. 1227, 1228-29 (N.D. Ill. 1996)
(adopting the report and recommendation of the Magistrate and adding,
``by applying the law of trademarks to the Internet, [the Magistrate
Judge] strikes an appropriate balance between trademark law and the
attendant policy concerns raised by defendant''), subsequent proceeding
1998 U.S. Dist. LEXIS 15431 (N.D. Ill. 1998). By definition, a
trademark is either a word, phrase, symbol or design, or combination of
words, phrases, symbols or designs, which identifies and distinguishes
the source of the goods or services of one party from those of others.
A service mark is the same as a trademark except that it identifies and
distinguishes the source of a service rather than a product. See 15
U.S.C. Sec. 1127.
The basic theories of trademark law that apply to non-personal name
domain disputes provide some basis for addressing the problem of
abusive domain name registration involving personal names. In
traditional court cases of trademark infringement, the complaining
party must show that the infringing use causes a ``likelihood of
confusion.'' 15 U.S.C. 1114. This concept suggests that the harm
suffered by the litigating plaintiff is one of deception. Trademarks
serve an identifying function. By leading the consumer to think that a
product originates from a source that it does not, an infringer is able
to divert sales into his own pockets. A court's determination of
whether there has been a likelihood of confusion turns on such factors
as: (1) the area of concurrent sale, (2) the extent to which the
products or services are related, (3) the extent to which the mark and
the alleged infringing name are similar, (4) the strength or novelty of
the plaintiff's mark, (5) evidence of bad faith or intention on the
part of the defendant in selecting and using the disputed name with a
view to obtaining some advantage from the goodwill that the plaintiff
has built, and (6) evidence of actual confusion. See Chopra v. Kapur,
185 U.S.P.Q. 195, (N.D. Cal. 1974).
Dilution'' is another available cause of action under the Lanham
Act. The term ''dilution'' means the lessening of the capacity of a
famous mark to identify and distinguish goods or services...''. 15
U.S.C. 1127. The section of the Lanham Act that provides for remedies
in cases involving the dilution of famous marks may also be
illuminating as a basis for personal name domain name protection. 15
U.S.C. 1125.
Finally, the claim of ``unfair competition'' may be invoked in
domain name disputes in which the trademark at issue has not been
federally registered. Unfair competition is a commercial tort that
evades precise definition. 1 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition Sec. 1.03 (3d ed. 1995). Courts have variously
described the tort as one that exists ``[w]hen competition is engaged
in beyond the boundaries of fair play'' or as a test that occurs if
``defendants have damaged plaintiff's legitimate business interest
through acts which equity would consider unfair.'' Johnson & Johnson v.
Quality Pure Manufacturing, Inc., 484 F. Supp. 975 (D.C.N.J. 1979); and
Reinforced Earth Co. v. Neumann, 201 U.S.P.Q. 205 (D.C. Md. 1978),
respectively. Some states treat the unauthorized commercial use of
another's identity as a form of unfair competition under a version of
the theory of a ``right of publicity.'' Importantly, the right of
publicity only exists as a concept under the common law or statutory
laws of certain states; there is no parallel on the federal level.
The Anticybersquatting Consumer Protection Act provides for federal
protection against the unauthorized use of personal names as domain
names by individuals with a ``specific intent'' to profit from such
name by selling the domain name for financial gain to that person or
any third party. In passing this Act, Congress concluded that some form
of federal protection was necessary to prevent acts of abusive domain
name registration involving personal names. As a part of the
legislation, Congress also directed the Department of Commerce, in
consultation with the Patent and Trademark Office and the Federal
Election Commission, to study and to recommend to Congress appropriate
``guidelines and procedures for resolving disputes involving the
registration or use by a person of a domain name that includes the
personal name of another person, in whole or in part, or a name
confusingly similar thereto.'' In the required report that the
Department of Commerce must prepare, the Department is being asked
whether the protections afforded by the Anticybersquatting Consumer
Protection Act are sufficient to address the problem. More
specifically, section
[[Page 10765]]
3006 of the Act asks the Department to consider and to recommend
guidelines and procedures for:
(1) protecting personal names from registration by another person
as a second level domain name \2\ for purposes of selling or otherwise
transferring such domain name to such other person or any third party
for financial gain;
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\2\ A second level domain name is that part of the Internet
address before the .com, .net, .org, or other generic top-level
domain open for registration. For example, if the domain name is
JaneDoe.com, the term ``JaneDoe'' is the second-level domain and the
term ``.com'' is the top-level domain. (Footnote not in the
original)
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(2) protecting individuals from bad faith uses of their personal
names as second level domain names by others with malicious intent to
harm the reputation of the individual or the goodwill associated with
that individual's name;
(3) protecting consumers from the registration and use of domain
names that include personal names in the second level domain in matters
which are intended or are likely to confuse or deceive the public as to
the affiliation, connection, or association of the domain name
registrant, or a site accessible under the domain name, with such other
person, or as to the origin, sponsorship, or approval of the goods,
services, or commercial activities of the domain name registrant;
(4) protecting the public from registration of domain names that
include the personal names of government officials, official
candidates, and potential official candidates for Federal, State, or
local political office in the United States, and the use of such domain
names in a manner that disrupts the electoral process or the public's
ability to access accurate and reliable information regarding such
individuals;
(5) existing remedies, whether under State law or otherwise, and
the extent to which such remedies are sufficient to address the
considerations described in paragraphs (1) through (4); and
(6) the guidelines, procedures, and policies of the Internet
Corporation for Assigned Names and Numbers and the extent to which they
address the considerations described in paragraphs (1) through (4).''
So that the Department of Commerce can examine the full range of
laws, policies, and regulations that may apply and may lend themselves
to use in resolving personal name disputes, we are asking for public
comments and input.
We note that on November 5, 1999, the Federal Election Commission
printed in the Federal Register a Request for Comments on the Use of
the Internet for Campaign Activity. Specifically, the Federal Election
Commission asked for public comments ``in order to assess the
applicability of the Federal Election Campaign Act and the Commission's
current regulations to Internet activity.'' Notice of Inquiry and
Request for Comments, 64 FR 60,360 (1999). Both the Federal Election
Commission Request, and the responding comments, may be read at the
Commission's Web site at http://www.fec.gov/internet.html. In the
interests of focusing this Request for Comments, we would welcome
public submissions on the use of the Internet for campaign activity
only as such submissions relate to the more limited, fourth prong of
the Act's study requirements.
Scope of this Request
Section 3006 of the ``Anticybersquatting Consumer Protection Act''
asks the Department of Commerce to study and recommend appropriate
guidelines and procedures for dispute resolution in cases involving
cyberpiracy of personal names. Information collected from responses to
this Federal Register Notice will be considered when the Department of
Commerce prepares the required report to Congress.
Therefore, we welcome comments that address the non-exhaustive list
of laws presented in the supplemental information section, comments
that assess the suitability of these laws for use in the context of
abusive domain name registration of personal names, and suggestions of
other frameworks that may be useful in considering approaches to
resolution of personal name domain disputes. Respondents are also asked
to provide comments on the degree to which the ICANN UDRP
satisfactorily handles domain name disputes involving personal names.
Comment is also invited concerning any legal or Constitutional issues
raised by any new guidelines or procedures as they relate to personal
name disputes, separate and apart from the legislative foundation
established by the Anticybersquatting Consumer Protection Act.
More generally, we would be interested in comments and suggestions
on the form that any new guidelines or procedures should take, and the
degree to which additional protection may or may not be needed in this
area. We encourage respondents to consider the extent to which
individuals would avail themselves of protections offered in this area
and to consider whether the appeal of such protections would be limited
to only high-profile or famous individuals. Respondents should also
consider the logistical problems that may attend implementation of new
guidelines in this area, particularly as these problems relate to the
current system of domain name registration. We would also like to hear
comments from respondents with personal experience in unauthorized
commercial appropriation involving a personal name.
Please be aware that all comments received pursuant to a
solicitation for public comment are treated as public information.
Respondents should not submit materials that they do not desire to be
made public.
Dated: February 24, 2000.
Andrew J. Pincus,
General Counsel, Department of Commerce.
[FR Doc. 00-4857 Filed 2-28-00; 8:45 am]
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