[Federal Register Volume 65, Number 40 (Tuesday, February 29, 2000)]
[Notices]
[Pages 10763-10765]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 00-4857]


-----------------------------------------------------------------------

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.

-----------------------------------------------------------------------

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 doc.gov">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 doc.gov">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:
---------------------------------------------------------------------------

    \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;
---------------------------------------------------------------------------

    \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)
---------------------------------------------------------------------------

    (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]
BILLING CODE 3510-BW-P