DNSO Archives: [ga-roots]

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 do 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.[1]

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's^tm 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[2], 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”.[3] 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.[4] 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.[5] 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. [6]

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.[7] 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.

[1] Penn Central Transportation, Co. v. New York City, 438 U.S. 104 (1978).

[2] WIPO is the World Intellectual Property Organization.

[3] For example, the U.S. Patent and Trademark Office policy states that “Generic tlds are designated for use by the public.” The U.S. Patent and Trademark Office will accordingly refuse registration of a tld for “domain name registry services” under 15 U.S.C. § 1051 as a designation incapable of functioning as a trademark. Examination Guide No. 2-99 (September 29, 1999).

[4] Singer Mfg. Co. v. June Mfg. Co., 164 U.S. 169, 41 L.Ed 118, 16 S. Ct. 1002 (1896) (generic terms are in the public domain, free for all to use); Abercrombie & Fitch Co. v. Hunting World, Inc. 537 F.2d 4, 189 U.S.P.Q. 759, 769 (2d Cir. 1976) (to protect a generic name would be to confer a monopoly in the sale of the named product); Restatement (Third) of Unfair Competition, Section 15, comment a (1995) ("Generic designations are not subject to appropriation as trademarks at common law and are ineligible for registration under state and federal trademark statutes.")

[5] Image Online Design, Inc., v. Core Association, 120 F.Supp.2d 870 (C.D. Ca. 2000).

[6] The main reason TLD’s are not copied is because the Internet could not function smoothly with identical TLD’s on the same root.

[7] While Atlantic Root argues that the Memorandum of Understanding between ICANN and the Department of Commerce specifically provides that the process not be “arbitrary,” the process was not arbitrary and Atlantic Root could never sustain the extraordinarily high burden it would have to meet to establish that it was a third party beneficiary to a government contract. See Moore v. Gaither, 767 A.2d 278, 287 (D.C. 2001) (ruling that third party beneficiary of a government contract is generally assumed to be merely an incidental benficiary); see also, Iacampo v. Hasbro, 929 F. Supp. 562, 580 (D.R.I. 1996) (requiring plaintiff to meet a "heightened standard" in order to assert rights under a government contract) (emphasis added).

[ga-roots]

[ga-roots] ICANN and the Alternate Roots-Attach: