Afilias, the registry consortium formed by about 20 domain name
registries, has entered into an exclusive agreement with the World
Intellectual Property Organization (WIPO) to help resolve any disputes
arising from the newly assigned .INFO top-level domain (TLD) during the
early stages of its upcoming rollout.
Afilias last week finished up negotiations with the Internet Corporation
of Assigned Names and Numbers (ICANN) to operate the new .INFO TLDs. To begin the rollout, Afilias is giving trademark and
servicemark holders the right to reserve their exact marks in the .INFO
domain during the first 30 days — a phase called the “Sunrise” period —
before opening the doors to the public.
But given WIPO’s history, some scholars and observers feel the
Afilias/WIPO combination will hinder, rather than help, the distribution of
new .INFO domain names depending on their resemblance to trademarks.
“Trademark infringement all depends on how it is used,” professor Milton
Mueller of Syracuse University’s School of Information Studies told
InternetNews.com. In previous cases, Dr. Mueller found that “trademark
holders were trying to take away the names from legitimate [domain name]
In 1998 when cybersquatting caught the public limelight, Dr. Mueller
penned a study that was highly critical of WIPO. “The study concludes that in the domain
name arena, property rights in trademarks are being pushed beyond the bounds
established in law.”
WIPO is currently one of only a handful of organizations approved by ICANN to administer the Uniform Domain-Name
Dispute-Resolution Policy (UDRP), which governs how domain name disputes
should be resolved. These so-called UDRP service providers adjudicate the
disputes but rulings have varied widely in terms of precedence as evidenced
by recent cases involving Madonna and Bruce Springsteen.
“The UDRP decision is not binding upon the court, thankfully, because the
decisions are anything BUT uniform and are not grounded in statutory
law…Afilias has created another layer for dispute resolution,” said Ellen
Rony, a noted ICANN observer and co-author of “The Domain Name Handbook.”
But now WIPO, based on the new Afilias arrangement, will be the only
party able to resolve disputes concerning trademarks (or servicemarks)
during the so-called Sunrise challenge process. “Through this association,
we feel the rollout of .INFO will significantly reduce the potential for
trademark abuse in the .INFO domain,” said Francis Gurry, director of the
WIPO Arbitration and Mediation Center.
And based on a separate recent study, Dr. Mueller predicts the
arrangement with WIPO spells further legal woes for individuals holding
domains that bear resemblance to trademarks. According to his November 2000
study, the professor found that WIPO rules in favor of the original
domain name holders more than 80 percent of the time.
By opening up the registration process to trademark holders before the
public, “Afilias is trying to give trademark owners prekmptive rights over
names regardless of how they are used…they are bending over backwards to
show they are trademark-friendly — subordinating the rights of individual
users over trademark holders,” Dr. Mueller said during a telephone
“Outcomes for the [defendant] are higher with WIPO than any other UDRP
provider and, not surprisingly, WIPO has the largest market share of cases,”
Rony concurred via e-mail.
But to WIPO’s credit, Afilias officials believe the arbitrators have the
experience to enforce policy properly.
“This is just to kick out registrants who don’t have legitimate right.
We’re not trying to give trademark holders the carte blanche to register any
domain name. We’re just giving them the rights to register their exact
mark,” explained John Kane, marketing task force leader at Afilias.
To commence .INFO operations, Afilias is still awaiting final approval
from ICANN, which is expected later in May. The “Sunrise” period will begin within 45 days of the contract