WIPO Faces Task of Assigning Order to Chaos

More and more cases of website domain name controversies are popping up these days, and the United Nations has set up a system to deal with the global situation. The World Intellectual Property Organization (WIPO), one of a handful of arbitrators licensed by the United Nations, has been busy in recent months settling such disputes across the world.

WIPO, which was actually established in 1970, has a mandate by the UN to promote the protection of intellectual property through cooperation between states.

In December of 1999, the Arbitration and Mediation arm of WIPO was given accreditation through ICANN, the Internet Corporation for Assigned Names and Numbers.

With the accreditation WIPO is a dispute resolution provider. In dealing with such disputes WIPO, and others, apply ICANN's Uniform Dispute Resolution Policy (UDRP).

The policy is designed to settle differences between parties when each feels entitled to the same domain name.

Another problem with domain name disputes includes "cybersquatting," the practice of registering someone else's trademarked name for a site before the owner does.

In addition to cybersquatting issues, domain name disputes often pit celebrities and multinational companies against private citizens who may have a vested interest in the same domain name.

Companies and individuals with complaints over domain names can petition WIPO under the UDRP guidelines. The policy applies to the .com, .net, and .org domain names in addition to some gTLDs and ccTLDs.

Once a case is filed with the Center, a neutral, independent panelist is appointed to review the case. An administrative panel is composed of one or three independent and impartial persons appointed by the dispute resolution service provider that is selected to administer the dispute in accordance with the ICANN Policy and Rules.

The panel is independent of the dispute resolution service provider, ICANN, the concerned registrar(s) and the parties. This person(s) has about 40 days to submit a decision.

One of four things can be decided once a case is heard. A majority of cases end with a transfer of a domain name from one party to another. The panel can also decide to deny the case and frequently the case is withdrawn.

It is the fourth option that has created headaches for some of the petitioners--the option to cancel.

What is believed to be the longest running domain name dispute in the United States has the nations leading animal rights group in battle with free speech advocates. PETA (People for the Ethical Treatment of Animals) sued the parody site peta.org and its founder.

The site was for a mythical group People Eating Tasty Animals, which had links to mink merchants, trapping clubs and cattle breeders.

The site was registered in 1995, and the case is believed to be the longest running domain name suite in the United States.

In June a federal court ruled that the site's founder turn over the name of his site to the real PETA. The case is currently being appealed on grounds that the PETA parody is protected under the First Amendment.

While the PETA case remains in the courts, thousands of similar cases never see the inside of a courtroom.

Since December 1999, 1,500 cases have been filed with WIPO (as of October 31, 2000). In October alone, 202 cases were filed.

Of the cases filed since WIPO was founded, decisions have been rendered in 769 cases.

The majority of cases (467) did result in transferring the name, while 178 of the cases were withdrawn and 118 of the cases were denied being heard. Six of the cases resulted in the cancellation of the domain name.

Those numbers, mainly the 539 being ruled in favor of the complainant, have many criticizing the system with the high percentage of rulings favoring big companies.

Once such case forced Nat Cohen to transfer a website he registered to pay homage to one of his mother's hobbies, rowing, to a popular clothing retailer.

Cohen was ordered in February to transfer crew.com to the J. Crew chain.

Under the system companies can sue cybersquatters but the Geneva-based WIPO offers swift justice at a fraction of the cost of a court case. Filing fees average $1,000.

While a domain name can be "cancelled," that doesn't mean that it goes to the trash heap of domain names never to be used again.

When a domain name is cancelled by WIPO, it is de-registered and anyone on the planet has the ability to register it again, including the person who originally owned the domain name. The UDRP Cancelled Domain Project can intervene to prevent the original cybersquatter from getting the name back, and there are no cases where the name went back to the original register after the site was ordered cancelled.

A New York attorney has made light of the situation, by re-registering "cancelled" domain names simply to parody the whole UDRP process.

One of John Berryhill's re-registered sites was originally an online casino. In March of this year, Hollywood Casino Corporation, the owner and operator of casinos in Illinois and Mississippi, filed to get four domain names transferred or terminated. Global Interactive, a company that sublicenses online casino software developed by Starnet Communications International, had registered the domain names: hollywood-casino.com, hollywood-casino.net, hollywoodcasino.com and hollywoodcasino.net.

Hollywood Casino wanted two of the names--hollywoodcasino.com and hollywoodcasino.net--transferred to the company and requested that two of the names, hollywood-casino.com and hollywood-casino.net, be cancelled.

Hollywood Casino wanted the two transferred names so it could assume ownership of the sites and use them as vehicles for its business. The company hoped that the two cancelled domain names would wind up in the mysterious abyss of unused website names.

Global Interactive, which had registered the site names, was ordered to transfer ownership of the two names and cancel the other two.

In the meantime Berryhill re-registered hollywoodgoldcasino.com and uses the site to spread his displeasure with WIPO and the UDRP process. The site is billed as "Another online memorial to the UDRP 'cancel' option."

In it, Berryhill explains the process and how many who request cancellation are simply wasting their money. He also says the fact that the option even exists within the UDRP process is "stupid."

The Philadelphia-based lawyer has a disclaimer at the bottom of the site explaining that he has no intentions of selling the domain name--or any of the others he has set up--or making any money of the name.

While the option does exists to cancel, only 1 percent of the completed cases (six out of 769) ended with an order to cancel.

Another interesting stat associated with WIPO is that just under half of the filed complaints, 771, originated in the United States. The only other country in the world with more than 100 complaints (151 to be exact) filed is the U.K.

The American influence with WIPO doesn't end with the complaint either. The majority of those who had ownership of a domain name in which someone felt entitled to were also Americans, 810 out of 1,565.

Hollywood Casino wasn't the only gambling domain name to be in dispute.

A quick glance at cases brought to WIPO this year reveal a total of 20 cases, involving 77 different domain names, center on casino or gambling site names.

Yahoo, the world famous search engine company, found a gambling site using part of its name. On May 2, 2000, Jon Maranda and a Canadian Company, Casino Yahoo, Inc. registered the domain name "casinoyahoo.com." Neither the company nor the individual was able to give a valid postal address. Casinoyahoo.com offered free download software, which enabled users to gamble online. The Canadian government eventual shut down the site since it was in violation of laws that prohibited online gambling.

Although the site was shut down, Yahoo still wanted to see a transfer of the domain name over to the company. The case went before WIPO and the Internet giant won. Now the site acts strictly as a link to a Yahoo game site that offers free games and downloads.

WIPO is able to stand by its judgements due to its mandate from the United Nations. Both sides agree once a complaint is heard that the ruling will be final.

While there may not be an end in site to domain name disputes, as new companies and cybersquatters pop up all over the world, some critics feel there is a better way to go about resolving domain name disputes.

Berryhill admits that a large part of the problem is people not being familiar with the system.

"The idiot attorney who requested cancellation actually ran the risk of having spent his client's money for no good reason whatsoever," he said on the hollywoodcasino.com website.

He goes on to explain that hopefully his parody sites will help educate both attorneys and the public on the issue.

"With these online memorials to one of several moronic flaws in the UDRP, we hope that maybe even the most dim-witted attorneys who have an interest in domain name law might be admonished to serve their clients somewhat better in the future," he said.

Berryhill thinks he has his finger right on what has created most of the problems within the UDRP process and domain name disputes.

"One might wonder," he explained, "whether it is a good idea to have dim-witted attorneys deciding policy issues relating to the operation of a computer network which they clearly do no understand at all."