Calendar No. 583

105TH CONGRESS

2D SESSION S. 1727

A BILL

To authorize the comprehensive independent study

cedures.level domains and related dispute resolution proerty rights holders of adding new generic topof the effects on trademark and intellectual propSEPTEMBER 17, 1998

Reported with an amendment and an amendment to the

title
II

Calendar No. 583

105TH CONGRESS

2D SESSION S. 1727

To authorize the comprehensive independent study of the effects on trademark

and intellectual property rights holders of adding new generic top-level

domains and related dispute resolution procedures.

IN THE SENATE OF THE UNITED STATES

MARCH 6, 1998

Mr. LEAHY introduced the following bill; which was read twice and referred

to the Committee on the Judiciary

SEPTEMBER 17, 1998

Reported by Mr. HATCH, with an amendment and an amendment to the title

[Strike out all after the enacting clause and insert the part printed in italic]

A BILL

To authorize the comprehensive independent study of the

effects on trademark and intellectual property rights

holders of adding new generic top-level domains and related dispute resolution procedures.

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled,
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S 1727 RS

1 SECTION 1. STUDY OF EFFECTS ON TRADEMARKS AND IN2 TELLECTUAL PROPERTY RIGHTS OF ADDING

3 GENERIC TOP-LEVEL DOMAINS.

4 (a) STUDY BY NATIONAL RESEARCH COUNCIL.—Not

5 later than 60 days after the date of enactment of this Act,

6 the Secretary of Commerce, acting through the Assistant

7 Secretary of Commerce and Commissioner of Patents and

8 Trademarks, shall request the National Research Council

9 of the National Academy of Sciences to conduct a com10 prehensive study, taking into account the diverse needs of

11 Internet users, of the short-term and long-term effects on

12 trademark and intellectual property rights holders of add13 ing new generic top-level domains and related dispute res14 olution procedures.

15 (b) MATTERS TO BE ASSESSED IN STUDY.—The

16 study shall assess and, as appropriate, make recommenda17 tions for policy, practice, or legislative changes relating

18 to—

19 (1) the short-term and long-term effects on the

20 protection of trademark and intellectual property

21 rights and consumer interests of increasing or de22 creasing the number of generic top-level domains;

23 (2) trademark and intellectual property rights

24 clearance processes for domain names, including—

25 (A) whether domain name databases

26 should be readily searchable through a common
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S 1727 RS

1 interface to facilitate the clearing of trademarks

2 and intellectual property rights and proposed

3 domain names across a range of generic top4 level domains;

5 (B) the identification of what information

6 from domain name databases should be acces7 sible for the clearing of trademarks and intellec8 tual property rights; and

9 (C) whether generic top-level domain reg10 istrants should be required to provide certain

11 information;

12 (3) domain name trademark and intellectual

13 property rights dispute resolution mechanisms, in14 cluding how to—

15 (A) reduce trademark and intellectual

16 property rights conflicts associated with the ad17 dition of any new generic top-level domains; and

18 (B) reduce trademark and intellectual

19 property rights conflicts through new technical

20 approaches to Internet addressing;

21 (4) choice of law or jurisdiction for resolution

22 of trademark and intellectual property rights dis23 putes relating to domain names, including which ju24 risdictions should be available for trademark and in25 tellectual property rights owners to file suit to pro-
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S 1727 RS

1 tect such trademarks and intellectual property

2 rights;

3 (5) trademark and intellectual property rights

4 infringement liability for registrars, registries, or

5 technical management bodies; and

6 (6) short-term and long-term technical and pol7 icy options for Internet addressing schemes and the

8 impact of such options on current trademark and in9 tellectual property rights issues.

10 (c) COOPERATION WITH STUDY.—

11 (1) INTERAGENCY COOPERATION.—The Sec12 retary of Commerce shall—

13 (A) direct the Patent and Trademark Of14 fice, the National Telecommunications and In15 formation Administration, and other Depart16 ment of Commerce entities to cooperate fully

17 with the National Research Council in its activi18 ties in carrying out the study under this sec19 tion; and

20 (B) request all other appropriate Federal

21 departments, Federal agencies, Government

22 contractors, and similar entities to provide simi23 lar cooperation to the National Research Coun24 cil.
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1 (2) PRIVATE CORPORATION COOPERATION.—

2 The Secretary of Commerce shall request that any

3 private, not-for-profit corporation established to

4 manage the Internet root server system and the top5 level domain names provide similar cooperation to

6 the National Research Council.

7 (d) REPORT.—

8 (1) IN GENERAL.—Not later than 12 months

9 after the date of enactment of this Act, the National

10 Research Council shall complete the study under this

11 section and submit a report on the study to the Sec12 retary of Commerce. The report shall set forth the

13 findings, conclusions, and recommendations of the

14 Council concerning the effects of adding new generic

15 top-level domains and related dispute resolution pro16 cedures on trademark and intellectual property

17 rights holders.

18 (2) SUBMISSION TO CONGRESSIONAL COMMIT19 TEES.—Not later than 30 days after the date on

20 which the report is submitted to the Secretary of

21 Commerce, the Secretary shall submit the report to

22 the Committees on the Judiciary of the Senate and

23 House of Representatives.
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S 1727 RS

1 (e) AUTHORIZATION OF APPROPRIATIONS.—There is

2 authorized to be appropriated $800,000 for the study con3 ducted under this Act.

4 SECTION 1. STUDY OF EFFECTS ON TRADEMARK RIGHTS OF

5 ADDING GENERIC TOP-LEVEL DOMAINS.

6 (a) STUDY BY NATIONAL RESEARCH COUNCIL.—Not

7 later than 30 days after the date of enactment of this Act,

8 the Secretary of Commerce shall request the National Re9 search Council of the National Academy of Sciences to con10 duct a comprehensive study, taking into account the diverse

11 needs of domestic and international Internet users, of the

12 short-term and long-term effects on trademark rights of add13 ing new generic top-level domains and related dispute reso14 lution procedures.

15 (b) MATTERS TO BE ASSESSED IN STUDY.—The study

16 shall assess and, as appropriate, make recommendations for

17 policy, practice, or legislative changes relating to—

18 (1) the short-term and long-term effects on the

19 protection of trademark rights and consumer interests

20 of increasing or decreasing the number of generic top21 level domains;

22 (2) trademark rights clearance processes for do23 main names, including—

24 (A) whether domain name databases should

25 be readily searchable through a common inter-
7

S 1727 RS

1 face to facilitate the clearing of trademark rights

2 and proposed domain names across a range of

3 generic top-level domains;

4 (B) the identification of what information

5 from domain name databases should be accessible

6 for the clearing of trademark rights; and

7 (C) whether generic top-level domain reg8 istrants should be required to provide certain in9 formation;

10 (3) domain name trademark rights dispute reso11 lution mechanisms, including how to—

12 (A) reduce trademark rights conflicts associ13 ated with the addition of any new generic top14 level domains; and

15 (B) reduce trademark rights conflicts

16 through new technical approaches to Internet ad17 dressing;

18 (4) choice of law or jurisdiction for resolution of

19 trademark rights disputes relating to domain names,

20 including which jurisdictions should be available for

21 trademark right owners to file suit to protect such

22 trademark rights;

23 (5) trademark rights infringement liability for

24 registrars, registries, or technical management bodies;
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S 1727 RS

1 (6) short-term and long-term technical and pol2 icy options for Internet addressing schemes and the

3 impact of such options on current trademark rights

4 issues; and

5 (7) public comments on the National Research

6 Council interim report and on any other reports that

7 are issued by international governmental bodies.

8 (c) COOPERATION WITH STUDY.—

9 (1) INTERAGENCY COOPERATION.—The Secretary

10 of Commerce shall—

11 (A) direct the Patent and Trademark Office,

12 the National Telecommunications and Informa13 tion Administration, and other Department of

14 Commerce entities to cooperate fully with the

15 National Research Council in its activities in

16 carrying out the study under this section; and

17 (B) request all other appropriate Federal

18 departments, Federal agencies, Government con19 tractors, and similar entities to provide similar

20 cooperation to the National Research Council.

21 (2) PRIVATE CORPORATION COOPERATION.—The

22 Secretary of Commerce shall request that any private,

23 not-for-profit corporation established to manage the

24 Internet root server system and the top-level domain
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1 names provide similar cooperation to the National

2 Research Council.

3 (d) REPORTS.—

4 (1) IN GENERAL.—

5 (A) INTERIM REPORT.—After a period of

6 public comment and not later than 4 months

7 after the date of enactment of this Act, the Na8 tional Research Council shall submit an interim

9 report on the study to the Secretary of Com10 merce.

11 (B) FINAL REPORT.—After a period of pub12 lic comment and not later than 9 months after

13 the date of enactment of this Act, the National

14 Research Council shall complete the study under

15 this section and submit a final report on the

16 study to the Secretary of Commerce. The final

17 report shall set forth the findings, conclusions,

18 and recommendations of the Council concerning

19 the effects of adding new generic top-level do20 mains and related dispute resolution procedures

21 on trademark rights.

22 (2) SUBMISSION TO CONGRESSIONAL COMMIT23 TEES.—

24 (A) INTERIM REPORT.—Not later than 7

25 days after the date on which the interim report
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1 is submitted to the Secretary of Commerce, the

2 Secretary shall submit the interim report to the

3 Committee on Commerce, Science, and Transpor4 tation and the Committee on the Judiciary of the

5 Senate, and to the Committee on Science and the

6 Committee on the Judiciary of the House of Rep7 resentatives.

8 (B) FINAL REPORT.—Not later than 7 days

9 after the date on which the final report is sub10 mitted to the Secretary of Commerce, the Sec11 retary shall submit the final report to the Com12 mittee on Commerce, Science, and Transpor13 tation and the Committee on the Judiciary of the

14 Senate, and to the Committee on Science and the

15 Committee on the Judiciary of the House of Rep16 resentatives.

17 (e) AUTHORIZATION OF APPROPRIATIONS.—There is

18 authorized to be appropriated $800,000 for the study con19 ducted under this Act.

Amend the title so as to read: ‘‘To authorize the

comprehensive independent study of the effects on trademark rights of adding new generic top-level domains and

related dispute resolution procedures.’’.