MICHAEL GEIST
Thursday, August 24, 2000
While many people have been off at the cottage this past summer, the World Intellectual Property Organization has been busy resolving domain name disputes and developing potential new domain name policies.
The combined effect of its activity is frightening, since an expanded domain name dispute resolution process could ultimately lead to thousands of new disputes.
In addition to its policy making duties as the United Nations agency responsible for intellectual property matters, WIPO serves as one of four accredited domain name dispute resolution providers. It performs these duties under a system established by the Internet Corporation for Assigned Names and Numbers (ICANN), a California non-profit company that is charged with administering the domain name system.
One of its most controversial decisions was rendered last week, when a WIPO arbitrator ordered the transfer of Barcelona.com to the City of Barcelona. Barcelona.com was registered in 1995 by a Spanish couple who have used the domain as a portal for information about the city. The city, however, claimed the domain was registered and was being used in bad faith.
The arbitrator, a former deputy director-general of WIPO, agreed with the city, ruling that a "non-official" city site would confuse the public, who would expect to find the official city site at the domain. Not only is such reasoning questionable -- if anything, the official site would likely be located at Barcelona.es, the domain name incorporating the country code -- but the city's own actions raise the spectre of bad faith.
Only two months before lodging its domain complaint, city officials applied for a range of trademarks, including Barcelona.com and Barcelona.edu. In actual fact, the city is ineligible to register Barcelona.edu as a domain since the dot-edu extension is reserved exclusively for U.S. educational institutions.
The city initiated discussions with Barcelona.com's owners to discuss a potential investment in their portal, only to later characterize the negotiations as evidence of bad faith by the domain name owners. The city argued that the site's owners aimed to profit from the domain name.
The Barcelona.com decision is not an isolated case. WIPO arbitrators have rendered several questionable decisions over the past few months, including orders transferring the generic domain crew.com to J. Crew, a clothing company, and corinthians.com, a book of the Bible, to a Brazilian soccer team.
In fact, the track record of WIPO arbitrators suggests strong sympathies toward complainants, who are invariably trademark holders. To date, WIPO arbitrators have ruled in favour of transferring or cancelling domains in more than 80 per cent of their cases.
In contrast, complainants bringing actions with eResolution, a Canadian-based domain name dispute resolution provider, are winning about 55 per cent of the time.
Not surprisingly, the WIPO trend has not gone unnoticed. Since ICANN rules give the complainant the right to pick the dispute resolution provider, WIPO is winning a dominant share of the business. While WIPO received 29 per cent of the complaints filed in January (when no provider had established a track record), it received 61 per cent of the complaints filed in July, easily more than all the other providers combined.
If WIPO gets its way, the Barcelona.com decision may actually signal a broad expansion of the domain name dispute process. The organization has published a discussion paper that expressly contemplates expanding the current process, which is limited to registered trademarks, to include geographical, personal, and trade names. This expansion would signal the official inclusion of these entities in the dispute resolution process, likely resulting in hundreds of new disputes.
The impact of such change would be dramatic, particularly in Canada. Leading media companies such as Southam (Canada.com), Torstar (Toronto.com), and Telus (Alberta.com) have made sizable investments in their geographic domains, and a change in policy could result in the respective governments claiming rights to those domains.
Although WIPO's recommendations are not binding, it is worth noting that the current ICANN rules are based on an original WIPO proposal. That proposal included coverage of personal names, but was ultimately rejected by ICANN. With the Barcelona.com case and the new discussion document in hand, it appears that WIPO may think that the time is ripe for a further shift in domain name policy.
Michael Geist is a law professor at the University of Ottawa Faculty of Law specializing in Internet and e-commerce law. He can be reached at mgeist@uottawa.ca and on the Web at http://www.lawbytes.com.
