The Slippery Slope of Domain Disputes

Lately, the World Intellectual Property Organization (WIPO) has been more opinionated than Judge
Judy at high noon, delivering blow after blow to domain prospectors panning
for Internet gold. Despite the sleazy nature of cyber-squatting on a famous
trademark with the intention of selling it to the highest bidder at a later
date, my feeling is that WIPO’s broad arbitration authority related
specifically to “famous and well-known” brands is a dangerous precedent.

Since WIPO’s global arbitration service was established last December, more
than 700 cases have been filed with the organization. As part of its
fast-track procedure, WIPO appoints a neutral arbitrator to decide the case
within a month and a half in an effort to sidestep the slow wheels of
justice and high-priced lawsuits. WIPO assistant director general Francis
Gurry says, “The rising number of alleged cyber-squatting cases shows the
growing premium placed on domain names by companies and individuals
operating in the wired environment.”

That sounds peachy in theory, but already we’re starting to see plenty of
room for abuse. With more than half of all cases filed from the U.S. alone,
nearly 85% of these were found in favor of the complainant. On the surface,
things seem to be running smoothly, until you take a look at the growing
number of iffy and generic names being contested that point to signs of a
slippery slope and prejudicial policies.

Under WIPO’s guidelines, owners of certified globally famous trademarks get
the upper hand from an evidentiary presumption. In plain English, any
person who registers a domain name identical or similar to a widely
accepted trademark is already presumed to be a cyber-squatter. Where I
live, that’s called guilty until proven innocent. And it opens the door to
potentially harassing strong-arm tactics from over-funded big business
against under-funded individuals.

Rather than saddling the plaintiff with the burden of proof, the trademark
holder can show the arbitrator that a domain is “misleadingly similar” or
is being used in a way that damages its interests. But those simplistic
assertions provide for trademark protections that go beyond what’s
currently available under intellectual property law online or offline.

The case of
raises another concern. Sure, the domain owner didn’t have
Wal-Mart’s best intentions at heart. In fact, he
had a prior dispute with the retailing giant over a previous domain. But
WIPO saw it fit to hand over the “sucks” domain to Wal-Mart, along with a
slew of other domains that contained the same word. What makes the move
particularly shameful is that it’s widely known that Wal-Mart has had an
interest in suppressing criticism from consumers on the Net, having itself
already registered “Wal-Mart” and “sucks” in a variety of variations this
year and last.

On a side note, BUY.COM is the proud owner of
nearly 2,000 domain names ranging from to Off the top
of my head, I’d have to say the company would be considered one of the most
egregious cyber-squatters, since almost none of the registered domains
point to anything. Furthermore, a federal appeals court in San Francisco
ruled last year that simply registering a domain name does not establish
the owner’s right to trademark protection. Who knows – despite spending in
the neighborhood of $140,000 in registration fees, the downtrodden dot-com
may look ripe for arbitration.

Any questions or comments, love letters or hate mail? As always, feel
free to forward them to [email protected].

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