nettime's roving reporter on 14 Aug 2000 13:42:21 -0000

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<nettime> New rules for domain name redistribution

[Pretty much all negative prediction about the handling of domain names
(expansion of redistribution beyond "cybersquatting" and trademarks, the
most industry-friendly arbitrator will get all the business) seem to come

Agency could be coming for your domain name
August 11, 2000

An international organization has proposed rules under which established
Web sites could lose the right to use names with common geographical
terms, such as "Bordeaux."

The World Intellectual Property Organization (WIPO), an agency of the
United Nations, recently opened a comment period on its proposal

The current draft of the proposal suggests revoking the domain names of
Web sites that conflict with "geographical terms," individuals' personal
names and "tradenames." Tradenames are broader than trademarks and do not
require trademark registration.

The development is significant because the WIPO first proposed a
domain-name dispute resolution policy in April of last year. That
proposal, reduced somewhat in scope, was adopted last December by the
Internet Corporation for Assigned Names and Numbers (ICANN), the Net's
coordinating body.

WIPO subsequently became one of four arbitration bodies approved by ICANN
to arbitrate cases.

The dispute-resolution policy is written with specific and targeted
language. It applies only when a domain name has been used in "bad faith."
ICANN defines bad faith narrowly to apply only to "cybersquatters"--those
who register multiple names merely to resell them to holders of registered

Arbitrators in many cases, however, have greatly expanded the policy. 
Domain names have been taken from some legitimate businesses and nonprofit
organizations that never attempted to resell their names.

For example, a WIPO arbitration panel last April announced a decision to
take, a generic name, from a small-business owner and transfer it
to J. Crew International, the sportswear manufacturer.

Considering all cases decided between Jan. 1 and June 30, 2000, the WIPO
transferred domain names from defendants to plaintiffs in 84 percent of
all cases. A competing body, eResolution, found for the plaintiffs only 47
percent of the time.

Under ICANN's rules, plaintiffs are allowed to select the arbitration body
they prefer. The WIPO quickly increased its market share, receiving the
majority of all cases by the second quarter of 2000.

Here are the definitions of some of the factors that could cause a Web
site to lose its name under WIPO's proposal:

-- Geographical terms. This includes "a geographical place of origin of a
product." The example the WIPO gives is "Florida oranges." But many others
come to mind such as "Maryland crab," "German beer" and so forth.

-- Personal names. Alternatives include applying the new rules to "all
names," only the "names of famous persons," or the "names of government
officials or other persons in the public eye." 

Perhaps as a precursor to this new policy, a WIPO decision in June
transferred the domain names and to
horse trainer Monty Roberts. The WIPO ordered the transfers, although
Roberts acknowledged that he held no registered trademark on his name at
the time.

-- Tradenames. This is perhaps the broadest category. Trademarks must
identify specific products or services. But tradenames "distinguish a
business," according to the WIPO proposal, "independently of the goods or
services that the business offers."

In addition, "tradenames receive protection," the WIPO says, "without the
obligation of a filing or registration." For this reason, a company you
had never heard of might have a legal basis to take away your Web site's
address based on the concept of tradenames. 

Already, arbitration cases have ranged far beyond exact matches of
trademarked words. The proposed rules may create a new class of phrases
that can threaten the existence of established Web sites.

At this point, the WIPO is seeking comments, which must be received by
Aug.  15, only on the scope of the proposal. The organization says it will
publish a new draft Sept. 8, with comments on that document open until
Nov.  17. 

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