Testimony of

Louis Touton

Vice President and General Counsel

Before the

House Committee on the Judiciary

Subcommittee on Courts, the Internet, and Intellectual Property

"ICANN, New gTLDs, and the Protection of Intellectual Property"

March 22, 2001

I. INTRODUCTION

Mr. Chairman and members of the subcommittee, I appreciate the opportunity to appear here today and offer a report on the evolution of the Internet's domain name system and its effects on intellectual property.

In the fall of 1998, the Internet Corporation for Assigned Names and Numbers (ICANN) was formed by a broad array of Internet stakeholders in response to an initiative of the United States Department of Commerce to transfer some of the Internet's technical coordination functions to the private sector. ICANN itself is a unique entity, but it follows a great tradition of finding and using practical means to address problems that stand in the way of progress. Several years ago, the US government was confronted with the fact that its agency assignments for coordination of Internet activities were seriously lagging the rate at which the Internet was growing, especially in areas related to commercial use. To very much shorten an interesting story, the result of scrutiny of the issues involved was a judgment that the most appropriate solution was to entrust the management of a small set of key technical infrastructure management and coordination responsibilities to the private sector. That judgment led the US Government to call on the private sector to form a global consensus development body to assume these responsibilities, and ICANN was formed by the Internet community as a private-sector, non-profit, global consensus-development entity in response to that call.

ICANN's responsibilities focus on a few aspects of the Internet's technical management, but the Internet community's decisions it implements can have non-technical effects. It is also important to keep in mind that ICANN's responsibilities involve only specific parts of the Internet's vast technical infrastructure, and that most societal effects of the Internet have little to do with ICANN's technical-coordination responsibilities other than establishing their context. Despite these limitations, in its deliberations ICANN considers and seeks to minimize or ameliorate harmful any non-technical effects that may arise from its actions.

Today I would like to describe some of the effects on intellectual property of recent evolutionary steps involving the Internet's domain-name system, specifically the planned deployment of seven new global top-level domains.

II. BACKGROUND ON THE DOMAIN-NAME SYSTEM.

In recent years, the domain-name system (DNS) has become a vital part of the Internet. The function of the domain name system is to provide a means for converting easy-to-remember domain names into the numeric addresses that are required for sending and receiving information on the Internet. The DNS provides a translation service that permits Internet users to locate Internet sites by convenient names (e.g., http://www.house.gov) rather than being required to use the unique numbers (e.g., 143.231.86.196) that are assigned to each computer on the Internet.

The Internet engineering community devised the DNS in the early 1980s. ⁽¹⁾

One of the Internet's prominent engineers, Dr. Jon Postel took on responsibility for coordinating a decentralized system of computers throughout the Internet to implement the DNS. (Now deceased, Dr. Postel was the creator of the IANA function that preceded ICANN, and the principal force behind the creation of ICANN.) These computers are organized in a hierarchical manner, with "root nameservers" at the highest level that point to nameservers for top-level domains (e.g., .gov), that in turn point to nameservers for second-level domains (e.g., house.gov), and so on. In all there are 253 top level domains, of which the greatest number are assigned to the national, or "country-code," top level domains such as .uk for the United Kingdom, .jp for Japan, or .tv for the western Pacific island of Tuvalu.

Upon the deployment of this new system in 1985, Internet users worldwide could point their computers to the root nameservers, and use them to receive the translation services (i.e. from names to numbers) that the DNS provides. The system is highly redundant and decentralized, consisting of almost 100,000 nameservers arranged in a topologically and geographically distributed system. It has repeatedly demonstrated its technical resilience and robustness, including during last year's Y2K event during which the system functioned smoothly without interruption.

As a first step in deploying the DNS nameserver system, Dr. Postel arranged for operation of the root nameservers by a group of expert and trusted individuals and organizations throughout the world, who each volunteered to operate a root nameserver. This group now numbers nine organizations, plus the U.S. Government; they operate the thirteen root nameservers on a completely voluntary, free-of-charge, and public interest basis. The following chart shows the identities and locations of the organizations operating the DNS root servers:

List of the Root Servers

At lower levels in the DNS hierarchy (for example .com), the operators of the nameservers and the associated registries have received compensation, first by governmental subsidies in the late 1980s and early 1990s and then, beginning in the mid-1990s, by charging those who wished to register domain names within the system. The root nameserver system itself, however, has always been operated on a voluntary, public-sevice basis and without user fee (or even government subsidy, though the U.S. Government does contribute by operating some of the thirteen root nameservers). As a result, the system has become broadly accepted by Internet users worldwide as an integral feature of the Internet.

III. THE INTRODUCTION OF NEW TOP-LEVEL DOMAINS

A. Selection

Since long before ICANN's establishment, there has been intense interest in the Internet community in the introduction of new globally available top-level domains. As the Internet has evolved from primarily a US-based academic and research network to a ubiquitous global commercial medium, there has been a great clamor to augment and diversify the top-level domains established in the mid-1980s when the DNS was originally deployed. But the introduction of globally available top-level domains presents both technical and non-technical challenges. While most Internet engineers believe that some number of additional top-level domains can be added without serious risks of instability, there is considerable uncertainty about how many could be added without adverse side effects, and very few engineers have been willing to absolutely guarantee that there was zero risk of instability. Many involved in the Internet have also cited the potential for a confusing deployment process or the possibility of prevalent abusive registrations as possible pitfalls in introducing top-level domains. Given the increasingly critical role the Internet now plays in everyday commercial and personal life, the almost uniform consensus in the community has been to be cautious and prudent in this process.

Because ICANN is a consensus development body that relies on bottom-up policy development, the issues of whether and how to introduce new top-level domains were first taken up by the Domain Name Supporting Organization (DNSO), the ICANN constituent body responsible for name policy issues. The DNSO organized a Working Group, which recommended that a small number (6-10) of top-level domains be initially introduced, and that the effects of that introduction be evaluated before proceeding further. That recommendation was forwarded to the Names Council, the executive body of the DNSO, which reviewed the Working Group recommendation and public comments on it, and recommended to the ICANN Board that it establish a "policy for the introduction of new top-level domains in a measured and responsible way." The Names Council suggested that "a limited number of new top-level domains be introduced initially and that the future introduction of additional top-level domains be done only after careful evaluation of the initial introduction."

Consistent with the ICANN bylaws, the ICANN Board accepts the recommendations of Supporting Organizations if the recommendations meet certain minimal standards designed to ensure that they truly represent a consensus position. Thus, the Names Council recommendation was published for public comments, and following the receipt of numerous public comments, the ICANN Board established a procedure for selection of a limited number of top-level domains intended to lead to a measured and responsible introduction. ⁽²⁾

In early August 2000, ICANN posted nine factors for selection of new top-level domains and called for proposals from companies and groups interested in operating them. The application process required the filing of a detailed proposal speaking to all the factors. The application deadline was early October, and by that time forty-four complete applications were received from those proposing to introduce one or more new global top-level domains. An extensive community-based consultation process was then held, including intellectual property interests, which ultimately led, on November 16, 2000, to the selection of proposals for seven top-level domains to move into the process of negotiation of appropriate agreements between ICANN and the proponents:

As can be seen, top-level domains with a great diversity in intended purposes were selected. The right-hand column in the above table reflects that they fall into two broad categories: commercially operated top-level domains of broad appeal (known as "unsponsored" top-level domains) and narrowly targeted top-level domains operated by non-profit sponsoring organizations (known as "sponsored" top-level domains).

B. Negotiations Toward Agreement.

Since November, we have been in the process of negotiating and drafting agreements with the selected applicants. Since it is hoped these agreements will be templates for future agreements, we are taking great care to make sure that the structure and terms are replicable in different environments. Since these agreements will contain the promises and commitments under which the applicants will have to live for some time, the applicants are also being very careful.

The initial focus of the negotiation process has been on the four "unsponsored" top-level domains: .biz, .info, .name, and .pro. To promote uniformity in the basic terms under which these top-level domains will be operated, the goal has been to achieve a uniform base agreement with all four applicants and to accommodate differences by use of appendices to the base agreement (twenty-four in all) covering technical standards, start-up plans, restrictions on the availability of registrations within the domains, and other items specific to each top-level domain.

In late February, ICANN and all four of the selected unsponsored top-level domain operators achieved agreement on the language of the uniform base agreement. That agreement was posted on ICANN's web site ⁽³⁾

and the public was given the opportunity to comment both over the web and in an in-person held at ICANN's meeting in mid-March. ICANN and the four selected operators have also reached agreement in many, but not all, of the appendices. Work is continuing and as appendices are completed they are posted for public comment.

At its meeting in mid-March, the ICANN board of directors considered the public comment and determined that the structure of the agreement language that had been negotiated was a sound approach for the unsponsored top-level domains. The board called for prompt completion of the negotiation and drafting process and authorized the agreements to be entered once the language of the agreements and appendices is completed and has been posted for seven days. We expect that at least one of the four sets of appendices will be completed in approximately two weeks. That should allow public announcements of the roll-out schedule for the top-level domains to begin as early as late May of this year. Some of the domains are likely to begin actual registrations in the third quarter of this year.

C. Intellectual-Property Aspects.

The agreements and appendices primarily cover the technical and economic terms under which the top-level domains will be operated. They do, however, have some contractual provisions designed to facilitate the protection of intellectual property rights:

1. Dispute Resolution. All four of the unsponsored top-level domains will employ the Uniform Dispute Resolution Policy established by ICANN for the fair and cost-effective and speedy resolution of disputes where a trademark owner alleges that a domain name identical or confusingly similar to its trademark has been registered and used in an abusive manner. The policy contemplates that good-faith trademark disputes are to be resolved in court, and provides that court decisions will be promptly implemented by the domain-name registrars.

1. Start-up provisions. The introduction of the new top-level domain is likely to lead to an initial surge in registrations. This surge can challenge the ability of trademark owners to defend their marks, as well as the more general proposition that all those wishing to register names not subject to trademark should have a fair chance to do so. Because no global top-level domains have been introduced for over fifteen years, we have no real-world experience concerning how to meet these challenges in the now-heavily-commercial Internet. Accordingly, based on extensive consultations with the Internet community, including intellectual property interests, the selected operators have taken great care to design start-up protocols to address intellectual property issues specifically and fairness concerns in general. These plans take somewhat different approaches, the achievements of which will be closely monitored with the purpose of developing real-world experience as to what works best. All of the approaches incorporate detailed publicity plans, so that intellectual property owners and potential registrants will have the information they need to protect their interests.

1. Restrictions. Three of the selected unsponsored top-level domains (.biz, .name, and .pro) have restrictions of one sort or another. The use of restrictions, if properly implemented, offers the potential to avoid consumer confusion about Internet naming by segregating similar names associated with different activities, and thus holds some promise to lessen the domain-name/trademark issues that have arisen with undifferentiated commercial domains such as .com. The three restricted unsponsored top-level domains have extensively consulted with the intellectual-property and other concerned entities to achieve an appropriate statement of the restrictions for each, as well as an appropriate mechanism for enforcement of the restrictions.

IV. CONCLUSION

The process of introducing new global top-level domains has been a long one, and the limited number of top-level domains that will be introduced initially is disappointing to some in the Internet community. The community generally realizes, however, that it has limited experience in how best to deploy new top-level domains or what the exact effects will be. In recognition of these limitations, ICANN has established a very careful, step-at-a-time process for introducing top-level domains. This approach allows detailed monitoring of the process by all affected, including intellectual property owners. The applicants selected to operate the top-level domains have shown a highly responsible and careful approach to protection of the rights of others in the deployment of these new top-level domains. While no process can be guaranteed to be foolproof, based on the careful progress that has been made to date we are hopeful that the introduction of these new top-level domains will proceed in a manner that protects the rights and expectations of all involved.

LOUIS TOUTON

Louis Touton is Vice-President, Secretary, and General Counsel of the Internet Corporation for Assigned Names and Numbers (ICANN).

He holds Bachelor of Science degrees from the Massachusetts Institute of Technology's departments of Electrical Engineering and Computer Science (1977) and Mechanical Engineering (1977). He received his JD degree from Columbia Law School (1980), where he served as an editor of the Columbia Law Review and as co-editor of the thirteenth edition of A Uniform System of Citation (1981), commonly known as the "Bluebook."

In 1980-1981, he served as law clerk to the Honorable Jerome Farris of the United States Court of Appeals for the Ninth Circuit. Upon completion of his judicial clerkship, he joined the law firm of Jones, Day, Reavis & Pogue, where he practiced for eighteen years, first as an associate (1981-1988) and then as a partner (1989-1999) in its Los Angeles and Dallas offices. During this time, his work focused on technology-related commercial litigation, including patent litigation in the semiconductor and communication industries. He is a member of the bars of Arizona, California, Texas, and Washington; is admitted to practice before nine U.S. federal courts; and is registered to handle patent matters before the U.S. Patent and Trademark Office.

1.

The DNS replaced an earlier, smaller capacity translation mechanism known as the "hosts.txt" system.

2.

See Resolutions of the ICANN Board on New TLDs, athttp://www.icann.org/tlds/new-tld-resolutions-16jul00.htm.

3.

http://www.icann.org/melbourne/new-tld-agreements-topic.htm