[ga-roots] Alternate Root Memo sent to Names Council

["List Admin" <patrick@corliss.net>]

Re-posted from [ga] mailing list.

----- Original Message -----
From: Neuman, Jeff <Jeff.Neuman@NeuLevel.com>
To: <ga@dnso.org>
Date: Tue, 15 May 2001 08:02:59 -0500
Subject: [ga] Alternate Root Memo sent to Names Council

All,

Enclosed is a memorandum that we sent to the Names Council on the issue of
Alternate Roots, specifically with regards to the Atlantic Root.

Please let me know if you have any questions.

 <<Alternate Roots[1].doc>>

> Jeffrey J. Neuman, Esq.
> Director, Policy and Intellectual Property
> NeuLevel, Inc.
> p: (202) 533-2733
> f: (202) 533-2970
> e-mail: Jeff.Neuman@NeuLevel.com


MEMORANDUM

TO:           DNSO Names Council

FROM:    Jeffrey J. Neuman,
                 Director of Policy & Intellectual Property, NeuLevel, Inc.

RE:           ICANN and the Alternate Roots

DATE:    May 8, 2001

____________________________________________________________________________
__

Arguments have been made that the process used by the Internet Corporation
for Assigned Names and Numbers (ICANN) to select new top-level domains
(TLDs) for use on the Internet has been unfair and unlawful to alternate
root providers.  These arguments are incorrect, legally and factually.  In
selecting the new TLDs, ICANN balanced the goal of expanding the scope of
the Internet with its paramount interest in maintaining its stability, while
also recognizing existing legal protections.  Moreover, ICANN's selection of
the new TLDs followed a comprehensive process that afforded all interested
and affected parties the opportunity to be heard.

As demonstrated below, claims by the alternate roots that their property
rights have been infringed are without merit because generic top-level
domains are not and cannot be considered intellectual property.  This means
no property rights are being lost or taken away.  The alternate roots, like
other members of the public, were afforded the opportunity to participate in
the application process and express their positions, yet many chose not to d
o so.  In fact, the alternate roots' operation may deprive others of
valuable property rights as they appear to invite cybersquatting, trademark
infringement and other fraudulent activity.

The alternate roots' arguments should not prevent swift approval and
implementation of ICANN's proposed new TLDs, unimpeded by the meritless
arguments offered by the alternate roots, which are discussed in greater
depth below.

I. ICANN's Management of the DNS Ensures the Stability of the Internet

Management and oversight of the domain name system is essential to the
stability and functionality of the Internet.  The Department of Commerce has
exercised oversight of the domain name system through a series of agreements
with ICANN.  Pursuant to these contracts, ICANN has controlled the domain
name system through the "authoritative root server."  The "authoritative"
root is often referred to as the "legacy root" because it is the
continuation of the original DARPA net root system.  Attached as an appendix
is an explanation of the domain name system on the authoritative root and
the historical development of its oversight.  In sum, the authoritative root
is the predominant root on which Internet traffic travels.  Alternate roots
do exist, however, they use private domain names that do not exist on the
authoritative root.

ICANN recently approved the addition of seven new suffixes to be used as
generic TLDs on the authoritative root.  These are: .aero, .biz, .coop,
.info, .museum, .name and .pro.  ICANN's first priority in assessing the
proposal to operate new top-level domains was the preservation of the
stability of the Internet.  ICANN's assessment included a review of the
prospects for continued and unimpaired operation of the TLD in compliance
with technical requirements and with minimal outages or other technical
difficulties.

A. ICANN's Decision to Expand the gTLDs to Include .Biz Has Not Taken Away
Business On the Alternate Roots

One of the new suffixes, .biz, has been used by the alternate roots.  The
Atlantic Root Network ("ARN") has complained that the use of .biz on the
authoritative root essentially takes away its business.  This argument is
wrong both factually and legally.

First, with respect to the facts, the Atlantic Root can continue its
business on the alternate root because ICANN's decision relates only to the
authoritative root.  While ARN will not have the ability to use the .biz TLD
on the authoritative root server, it cannot do so now, so the status quo is
preserved.  Notably, the Atlantic Root Network had the opportunity to apply
to operate the new .biz domain on the authoritative root and chose not to do
so.  It chose to remain an operator on its alternative root and can continue
to do so.  There can be no legal "taking" under United States law, where the
business will continue to operate.  At best, Atlantic Root complains of a
possible, future disparate impact on its business.  However, in a wide
variety of contexts the United States government executes laws or programs
that may have comparable consequences and such actions never constitute a
taking.

Moreover, the companies that have registered names on the Atlantic Root know
that those names do not exist on the authoritative root and have no
reasonable expectation that they can be used on that root.  They
specifically contracted to have names to be used on the alternate root and
knew or should have known that someday those names might be overlapped on
the main authoritative root server.  Indeed, Atlantic Root's web site
contains a disclaimer to this very effect, warning potential registrants of
possible future collisions, and therefore putting those
companies/registrants on notice:

Registrant acknowledges that ICANN has accepted applications for several new
TLDs and that included in those applications is .BIZ. Atlantic Root Network,
Inc.tm has NOT applied to ICANN and has no intention of doing so at this
time. If .BIZ is chosen by ICANN and delegated to a different registry
administrator, we do not know how it might effect the BIZtld registry'stm
domains. Therefore, registrant agrees that there is no guarantee that there
will not be a colliding TLD issue which may not be resolved in registrant's
favor. In that case, .BIZ domain names may no longer resolve. Registrant
holds AtlanticRoot Network, Inc. and PacificRoot harmless in any situation
regarding a colliding TLD which might result in their .BIZ domain no longer
resolving in the domain name space. Registration of domain names is a
service. Fees are NOT REFUNDABLE.

The argument that the alternate root is losing some legitimate business
interest is further belied by the fact that the names registered on the
alternate root often ignore the rights of intellectual property owners and,
thus, could not be used on the authoritative root.  Indeed, these alternate
roots appear to be havens for cybersquatters.  For example, "aol.biz",
"yahoo.biz", "cocacola.biz" are already registered in Atlantic Root's .biz
registry, and appear not to be registered to the legitimate trademark
owners.  Leah Gallegos, the President of the Atlantic Root Network and
probably the most vocal advocate of the positions taken by the alternate
roots, has herself registered wipo.biz, oracle.biz, and gap.biz.  Similar
.biz registrations in Atlantic Root include:

Cocacola.biz  Registered by Trond Atle Skarling, Norway
Neustar.biz  Registered by dotBIZ, James Rezzino, Old Forge PA
Neulevel.biz  Registered by dotBIZ, James Rezzino, Old Forge PA
Mcdonalds.biz  Registered by Trond Atle Skarling, Norway
Microsoft.biz  Registered by Hatchers Investments pty ltd, Australia
Att.biz   Registered by DomainInvest.com, Norway
Warnerbrothers.biz Registered by Trond Skarning, Norway
Disney.biz  Registered by Net Step, Sam Middelstaedt, Stanwood WA

There simply can be no reasonable expectation that such names could be used
on the authoritative root.

B.  There Can Be No "Taking" Where There Are No Legitimate Property Rights

It is axiomatic that there can be no "taking" without the prior existence of
a property right.  The Atlantic Root Network never acquired property rights
to support a claim that their business would somehow be injured.
Significantly, no intellectual property right is infringed by the allocation
of the .biz TLD or the maintenance of a .biz registry on the public root.
Generic top- level domains are not and cannot be "property".  Top-level
domains designate a particular user space on the Internet, .com for
commercial enterprises, .biz for businesses, and .org for organizations, and
are thus generic terms that inherently cannot function as trademarks.  TLDs
were created for no other purpose than to order and organize the World Wide
Web.  No intellectual property right is therefore infringed by the
allocation of the .biz TLD or the maintenance of a .biz registry on the
public root. To treat a TLD as property would violate well established
intellectual property law.

Indeed, this was most recently confirmed when another alternate root
registry attempted to prevent the establishment of competing roots by
asserting intellectual property rights in a top level domain, ".web."  In
1999, Image Online Design, Inc. ("Image"), who purported to operate a
registry for a .web TLD on an alternate root, filed a trademark infringement
and unfair competition action against another root service asserting
proprietary rights in the .web TLD.  ".Web" has never been approved by ICANN
as a TLD on the public root.  The Court refused to acknowledge trademark
rights in .web, noting that it simply did not indicate the source of the
registry services at issue.  The Court went further to note that .web was
generic, and thus inherently incapable of trademark protection, because it
told Internet users that the web site was related to the World Wide Web.
Any other ruling would have been a significant departure from established
law.

Thus, like Image, the Atlantic Root Network cannot assert that because it
began registering .biz names several years ago, that it has the exclusive
right to continue to do so in the future.  Atlantic Root has no property
right in the .biz TLD and thus no right has been taken.

Nor can a TLD be copyrighted.  The copyright, a right that protects original
works or authorship, does not extend to individual words or short phrases.
Thus, as a matter of intellectual property law, TLDs are not protected from
copying by others.

A more general misappropriation argument by ARN is also unwarranted under
well established law.  A wrongful appropriation of property is an essential
element to a misappropriation claim and, as noted above, there is no
property right in a TLD.   The process of allocating the .biz TLD and the
maintenance of the .biz TLD on the public root does not and will not
appropriate any data, database, technology, or IP addresses of any alternate
root system.  The new TLDs will be implemented with the technology and
resources and according to the business models of the new TLD registries,
all of which were examined and approved by ICANN in a public process.

C.  The ICANN Process for Awarding New gTLDs Was Fair

Finally, to suggest as Atlantic Root has that its business has been taken by
an arbitrary process rings hollow.  ICANN's selection of the new TLDs is a
significant step towards the expansion and strengthening of the Internet,
which is ICANN's mission and purpose under its contract with the Department
of Commerce.  See Memorandum of Understanding between the U.S. Department of
Commerce and ICANN, dated November 25, 1998.  ICANN selected the new TLDs
only after a comprehensive process that afforded all interested and affected
parties the opportunity to be heard.  Indeed, contrary to some of the recent
criticisms of the selection process, ICANN was more accommodating and open
to public comment than was required.  Notably, as a private, non-profit
corporation acting in a technical "standard setting" capacity, ICANN is not
subject to the strict rulemaking guidelines required of government agencies.
Moreover, to the extent that ICANN can be considered to be acting on behalf
of the Department of Commerce, and in accordance with the terms of its
Memorandum of Understanding, the "public contracts" exception to the
Administrative Procedure Act (APA) would apply.  See 5 U.S.C.A. 553(a)(2).
Consequently, ICANN - and indeed the Department of Commerce, when acting to
adopt ICANN's recommendations - would be exempted from the specific notice
and comment provisions of the APA.

ICANN seeks to reflect the functional and geographic diversity of the
Internet and its users.  The process for selection of the new gTLD reflected
ICANN's goals to be fully representative, to support competition and to
involve bottom-up consensus building.  The alternate roots, on the other
hand, criticize the process when, in fact, they are motivated purely by
self-interested business motives.  The decision by ICANN to introduce the
new gTLDs was made after many committees addressed the issues of whether and
how to introduce the new gTLDs, a public comment period and careful review
and evaluation by supporting organizations.  It is simply disingenuous for
self-interested alternate root providers to suggest the process was unfair
particularly since their goal is to protect their individual business
interests.

II. Policy Concerns Related to the Recognition of Alternate Roots

There are several important policy reasons for a single, unique root.

First, the legal analysis described above is crucial because it protects the
functionality of the Internet. Without that protection, a recognized unique
root, such as the authoritative root, and a designated process for
populating that root with additional TLDs, the Internet would quickly become
dysfunctional with a proliferation of competing and conflicting TLDs.  This
is because alternate roots would succeed in establishing protected property
rights that would hinder reliable operation of the Internet.

Many argue that the alternate roots must not be recognized to avoid
confusion in the DNS space.  Indeed, that has been the position of the
Internet Architecture Board (the "IAB") which oversees critical technical
and administrative functions relating to administration of the Internet,
including the Internet Engineering Task Force ("IETF") which establishes the
technical protocols for operation of the Internet.  In its oversight
capacity, the IAB released the "IAB Technical Comment on the Unique DNS
 Root" which was published in May 2000. Summarized, this statement provides
that to remain a functioning global network, the Internet requires the
existence of a single globally unique public name space.  As IAB notes:

Put simply, deploying multiple public DNS roots would raise a very strong
possibility that users of different ISPs who click on the same link on a web
page could end up at different destinations, against the will of the web
page designers.

This does not preclude private networks from operating their own private
name spaces, but if they wish to make use of names uniquely defined for the
global Internet, they have to fetch that information from the global DNS
naming hierarchy, and in particular from the coordinated root servers of the
global DNS naming hierarchy.

This statement provides the basic argument in support of a single unique
global root such as the root operated by ICANN.  Like the telephone system
where duplicate area codes would create havoc in the public switched
network, alternate roots can generate significant consumer confusion and
Internet instability.

The issue of Internet stability aside, other important policy grounds argue
against the public recognition of alternate roots:

If alternate roots are recognized, anyone then could establish an alternate
root and not be subject to the bottom-up consensus-building and
international decision-making that was established through ICANN.  The
alternate root could be free from any sort of dispute resolution policy or
any type of registry or registrar license meant to protect consumers and
businesses.

The potential for fraudulent activity is also high as "spoof" websites could
be established solely to confuse consumers into believing that they are
visiting the authorized Web site.    Allowing alternate roots to be
recognized undercuts this authority and severely limits the ability to take
action against fraudulent or criminal activity occurring on alternate roots.

If an IP owner determines that registrations infringe upon its rights, that
legitimate owner may have little recourse outside of the courts to challenge
the use of a given name.  Under the existing procedures established through
the international consensus process, the UDRP was created to provide an
inexpensive alternative to litigation.  Alternate roots typically do not
adhere to these procedures.

In addition, names in the alternate roots typically are not sold through
separate registrars.  Thus, like Network Solutions in its early days, they
often operate as virtual monopolies by acting as both the registry and the
registrar.  Thus, they reap all the benefits without adhering to any of
ICANN's well-established principles or providing choices to the Internet
consumer.

The ICANN process, including any reformed process, would be frustrated
because a large proportion of the valuable TLDs that could be selected by
ICANN likely reside in some alternate root (there are hundreds of TLDs
within the alternate roots - e.g. .biz, .web, .xxx, .sex, .kids, .news,
.lib, .law, .k12, .USA - to name only a few).  Thus, formally recognizing
the alternate roots would mean ICANN likely could never add another good TLD
to its own root unless it allowed the alternate root operator to insert its
registrations, which often are cybersquatting registrations, into the new
ICANN TLD.  Moreover, because there is no necessary process for forming a
new alternate root, and because the ICANN process is entirely open, TLD
squatters could hold the ICANN process hostage by establishing new alternate
roots as soon as they are identified in ICANN applications.

DNS services have become critical elements of the Internet.  Although, as a
technical matter, many TLDs arguably can easily be added to the Internet
without technical mishap, the failure of a registry operator after its
registrants have invested significant resources in establishing its domain
presence could have a catastrophic effect on the Internet economy.  Many
alternate roots are not sufficiently funded to take on the task of managing
mission critical infrastructure.  Thus, turning over the mission critical
DNS to alternate roots could jeopardize the stability of the Internet.

III. Conclusion

The alternate roots have chosen to operate separate and apart from the
public root system, and do not have any property right in any TLD that is
recognized under existing law.  Moreover, those who wished to be considered
as candidates to operate a new ICANN chosen TLD, participated in ICANN's
selection process.  This process was public, fair, and comprehensive.  The
complaints raised by the alternate roots, who chose not to participate,
should not be considered now, especially since they have no legal merit.


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