COURTS AND INTELLECTUAL PROPERTY
COMMITTEE ON THE
U.S. HOUSE OF
INTERNET DOMAIN NAME TRADEMARK PROTECTION
Wednesday, November 5,
Rayburn Building, 10:00
DAVID STIMSON, PRESIDENT
INTERNATIONAL TRADEMARK ASSOCIATION
THE HOUSE COMMITTEE ON THE JUDICIARY
SUBCOMMITTEE ON COURTS AND INTELLECTUAL
HEARING ON THE RELATIONSHIP BETWEEN
TRADEMARKS AND INTERNET DOMAIN NAMES
NOVEMBER 5, 1997
Mr. Chairman, the International Trademark Association ("INTA") appreciates the
opportunity to testify today in connection with the Subcommittee's investigation of the Internet
domain name assignment system. The emergence of the Internet, and the problems of piracy,
trademark infringement, and false advertising associated with its evolution, have made it clear
that we must make every effort to preserve and protect trademarks on this new mode of
communication. We therefore thank you Mr. Chairman for your willingness to conduct these
hearings and offer the trademark community an opportunity to voice its opinion on this topic.
My name is David Stimson, and I currently serve as Chairperson of the Board of
Directors and President of the International Trademark Association. I am employed by INTA
member Eastman Kodak Company in Rochester, New York as Trademark Counsel. As with all
INTA officers, board members and committee members, I serve on a voluntary basis.
INTA is a not-for-profit membership organization, which just recently
celebrated its 119th anniversary at its annual meeting in San Antonio, Texas. Since its founding
in 1878, membership has grown from twelve New York-based manufacturers to more than 3,400
members that are drawn from across the United States and from 119 additional countries.
Membership in INTA is open to trademark owners and those who serve
trademark owners. Its members are corporations, advertising agencies, professional and trade
associations, and law firms. INTA's membership is extremely diverse, crossing all industry lines
and spanning a broad range of manufacturing, retail, and service operations. It is equally
important to note that not all of INTA's members are large corporations. Many of the
Association's members represent small businesses which are looking to expand operations and
contribute to the domestic economy based on the strength of their trademarks. Nonetheless, all
of INTA's members, regardless of their size or international scope, share a common interest in
trademarks and a recognition of the importance of brand identity to their owners, to the general
public, to the economy of the United States and the global marketplace. During the on-going
international debate on the future of the domain name assignment system, INTA has served as
the voice of trademark owners in the United States and around the globe, ensuring that their
trademarks are protected.
Value of Trademarks
Trademarks are a subtle, yet fundamental element of our daily lives in the
identification of products in the marketplace. They are a basic mode of communication, a means
for a company to convey a message of quality, consistency, safety, and predictability to the
consumer in an easy-to-understand form. Equally important, trademarks generate an economic
ripple effect that starts even before a consumer buys a branded product. First, trademarks benefit
the suppliers of raw materials and equipment needed to make the product. Then trademarks
stimulate advertising oriented to the brand $174 billion for the U.S. in 1996 alone. Finally,
when the consumer purchases the trademarked product, the manufacturer, distributor and retailer
benefit as do their employees and shareholders. The consumer benefits by easily being able to
recognize and select products or services.
For the reasons just discussed, trademark owners are eager to protect their
products' names and distinguishing features in the real world, as well as cyberspace. There is no
denying that a trademark is a tremendously valuable asset to a company and our economy. It is
usually one of the most significant property assets of a company. Further, if we are successful in
our efforts to protect trademarks here in the U.S., then there is greater assurance that their status
in the global marketplace will be better protected against international counterfeiters, unfair
foreign competition and others seeking to unjustly profit from the efforts and investment of the
The Structure, Assignment, and Global Nature of Domain Names
From a technological perspective, every computer connected to the Internet is
assigned a numeric address, with which other computers on the network use to communicate. A
typical numeric Internet address is a string of numbers, such as 126.96.36.199. Because these
numeric addresses are difficult for people to remember, Internet authorities also assign
alphanumeric addresses or "domain names." Examples of domain names are
www.whitehouse.gov and www.saralee.com.
There are actually two parts to a domain name: the generic top level domain
(gTLD) and the second level domain (SLD). Examples of gTLDs or root identifiers include:
.edu, .gov, .com, .org, and .net (for entities which are educational,
governmental, commercial, organizational, and network infrastructure in nature, respectively).
The SLD's are the first part of a domain name - typically the familiar name or phrase (e.g.
saralee, INTA, reebok, etc.) that describes the product, service or topic which the Web site
The present system for assigning domain names was established by several
private and government organizations working together, including the National Science
Foundation (NSF), the Internet Society (ISOC), and the Internet Assigned Numbers Authority
(IANA), among others. Together they established InterNIC (Internet Network Information
Center) to provide services in the United States. InterNIC, through NSF contracted with
Network Solutions, Inc. (NSI) a private company, to register domains with the gTLDs .org,
.net, and .com.
NSI, like most registries, assigns domain names on a first-come, first served
basis. By the end of 1995, the number of .com domain names exceeded 200,000; by the
end of 1996, the number of .com domain names exceeded 600,000. Through July 1997,
over 1.4 million domain names had been registered in the .com gTLD. As a result,
domain names including the .com suffix now form the overwhelming majority of names
on the Internet and the longer one waits to apply to NSI for a .com, the greater the
chance that one's choice will not be available.
Just as trademark owners register their trademarks abroad in different national
trademark offices, it is also possible to register domain names in over 200 national and quasi-national registries using two-letter country code TLDs such as .de for Germany and
.ca for Canada. These registries are totally independent from NSI, just as, for example, the
United Kingdom's Patent Office is independent from the U.S. Patent and Trademark Office. In
certain countries, there are also sub-domains, e.g. .co.uk for United Kingdom
Commercial and .ac.uk for United Kingdom academic, so there are over 400 distinct
domain name registration possibilities. An example of a domain name using a two-letter country
code would be www.acme.co.uk.
Numerous trademark owners utilize the country code domains in the local
marketing, with locally-oriented Web sites in the local language, ostensibly to emphasize the
local presence of their company.
The Connection Between Trademarks and Domain Names
Short, simple, distinctive, and indicative of origin. These are the essential
qualities which trademarks and domain names share. Just like trademarks, people use domain
names as "shorthand" reference tools to locate specific information concerning a particular
product and learn about the company which is offering the product for sale. The important thing
to remember is that domain names can function as trademarks. Both serve to educate and
reassure the consuming public that they are in the right place and that they are purchasing the
right product for their particular needs. When a "Web surfer" logs-on to
www.kodak.com, he/she should expect information about Eastman Kodak
Company, not some unrelated or possibly slanderous subject. That is why it is essential for
companies to have some mechanism to ensure that their trademarks and the use of those marks as
domain names are safeguarded in the new world of online commerce.
Conflicts Between Trademarks and Domain Names
Most domain name registries, including NSI, maintain that domain names have
no legal significance, but are used only as addresses of various sites in cyberspace. Further, NSI
states that its only purpose is to register domain names, not to perform trademark searches or
arbitrate trademark rights. NSI contends that it is not equipped or funded to perform such
searches, nor should it be responsible for any infringement that takes place involving the domain
names it registers. As a result, a number of problems for trademark owners have arisen.
First, the current domain name registration policy of NSI is inadequate to
combat "cybersquatters" - online pirates who routinely register domain names in bulk, without
regard for the rights of trademark owners and with no other purpose than to ransom the names off
to the highest bidder. The most famous "cybersquatter" is Dennis Toeppen, who up until he was
enjoined by a federal district court, had obtained 240 domain names, including:
www.aircanada.com, www.anaheimstadium.com, www.australia.com,
www.deltaairlines.com, www.eddiebauer.com, www.neimanmarcus.com,
Second, NSI procedures are also not properly equipped to handle cases where
two companies own the same name or mark. Take for example, the name UNITED. Which
corporate entity has the right to own www.united.com: United Airlines or
United Van Lines? Both have used the name extensively in commerce and both equally deserve
to use it in cyberspace. However, under the current system, only one company can use UNITED
in the .com gTLD.
Third, NSI's procedures permit the registration of confusingly similar domain
names. So long as the name being sought is not precisely identical to one which is already
registered to another party, the applicant may obtain it. For example, while the owners of the
fictitious Acme Company, famous makers of widgets, may have registered
www.acmewidgets.com, another party, with no relation whatsoever to
Acme, can register www.acme-widgets.com, www.acme.widgets.com,
or www.acme_widgets.com and place any form of content it so desires
on the Web site even material which is slanderous towards the legitimate Acme company.
This can lead to consumer confusion and customer dissatisfaction.
In addition to the problems posed by NSI's procedures, trademark owners are
faced with the difficulty of learning the rules and regulations established by the various two-letter
country code registries. These rules are often complicated to the novice. For example, most
countries in the developed world have a requirement that the domain name applicant must have
residence in the country (e.g. a subsidiary), but numerous countries have no such requirement,
and register domains, like the U.S. on a first-come, first served basis. In addition, each registry is
entitled to have its own dispute resolution policy. Finally, the rules change often, and foreign
domains can be expensive to register and to maintain.
An Alternative to the Existing System: The IAHC Plan
Both the trademark community and the Internet community recognized that
there was a need for change. Given that INTA's membership is representative of much of the
corporate world, the Association was one of seven organizations (and the only organization
representing the trademark community) chosen to be on the International Ad Hoc Committee
(IAHC), a group charged by ISOC and IANA, with charting the future of the Internet -- a future
that takes trademark rights into consideration.
After pouring over the needs of several competing and divergent interests,
including the trademark community and the Internet engineering community, and studying
public comment, the final IAHC plan was released on February 4, 1997. Due to the participation
of INTA, the IAHC plan includes a number of trademark related provisions which seek to
achieve a balance among the competing interests. These include:
(1)A detailed application procedure requiring an applicant to provide specific information regarding its intended use of the domain and to submit to the jurisdiction of the appropriate court (this is intended to alleviate the often complicated problem of
obtaining jurisdiction over a challenged domain);
(2) Publication of domain name applications on a public Web site, with full particulars of
the domain name applicant, enabling trademark owners to monitor potential
infringements of their trademarks;
(3)An alternative dispute mechanism, including an online challenge process that will
permit a trademark owner to contest the granting of a particular domain name
(It is important to note that neither this online challenge process, nor
other alternatives in the plan in any way whatsoever preclude a party
from seeking relief in a national court.); and
(4)An initial limit of new generic top level domain names to seven ( one prior initiative contemplated immediate activation of an unlimited number).
For the above reasons, INTA supports the IAHC plan and has signed a Memorandum of
Understanding (MoU) to that effect. Thus far, this initiative is the best and only real alternative
for trademark owners. If the trademark community is to realize true relief from infringement,
then the IAHC plan, or a similar initiative which addresses trademark concerns, must be given a
fair chance to operate.
NSI has put forth an alternative plan which calls for an unlimited number of
generic top level domain names. This is a direction which the trademark community opposes.
During deliberations of the IAHC, INTA fought hard to minimize the number of generic top
level domain names, since such additions would exacerbate the policing problems already being
experienced by trademark owners. For example, at present, Eastman Kodak Company must not
only monitor for infringement in the .com registry, but also be wary for cases in the up
to 200 two-letter country codes that exist around the world. Imagine how difficult it would be
for a trademark owner to monitor hundreds, if not thousands of additional gTLDs for possible
infringements. The amount of time and money it would take is staggering to even think about.
INTA believes that it is imperative, if trademark rights are to be protected, that a deliberative
approach, such as that proposed by the IAHC, be taken on the addition of new generic top level
Mr. Chairman, I would like to thank you once again for the privilege of
appearing before the Subcommittee today to discuss the intersection of trademarks and domain
names. A more thorough discussion of the issues surrounding this highly complex and dynamic
subject can be found in INTA White Paper: The Intersection of Trademarks and Domain
Names, a document which has been prepared by INTA's Internet Subcommittee. I have
brought with me today copies for each member of the Subcommittee and I ask that these be
distributed so that the Subcommittee members may benefit from the information that it contains.
In conclusion, I want to re-emphasize the important role trademarks play in the
domestic economy of the U.S., the global marketplace, and in cyberspace. INTA supports the
IAHC plan, because it is the only plan to date which contains realistic protective measures for
trademark owners. There may, in the future, be other proposals. INTA remains available to the
U.S. government to assist and cooperate in exploring and considering other approaches that
recognize the rights of trademark owners in the new and ever-changing world of the Internet,
should they become available.
House Rule XI Disclosure
Pursuant to House Rule XI, clause 2(g) (4), the Subcommittee is hereby informed that the
International Trademark Association has received no federal grant, contract, or subcontract in the
current and preceding two fiscal years.
I have been a lawyer on the Trademark, Advertising and
Copyright Legal Staff of the Legal Division of Eastman Kodak Company in
Rochester, New York since May 1986. I am responsible for the worldwide
trademarks and copyrighs of the Consumer Imaging, Kodak professional
and Entertainment Imaging Divisions of the company.
Prior to joining Kodak, I was a partner in the law firm of
Rogers, Hoge & Hills in New York City.
I was born in Cincinnati, Ohio. I received my BA from
Hamilton College in Clinton, New York and my JD from the University of
Cincinnati College of Law.