Unsuspecting fans of Madonna would until have got a shock if they had linked to www.madonna.com. Instead of photos of the American singer with her new baby, they would have found a pornography site. Madonna Louise Ciccone has filed a complaint with the Geneva-based World Intellectual Property Organization (WIPO) against Dan Parisi, owner of the site.
This is a string of high profile domain name disputes between famous people and lesser mortals, who are accused of registering Internet domain names with the express purpose of extorting① sums from the domain’s “rightful” owner. The Internet Corporation for Assigned Names and Numbers (ICANN), the technical hefty② body responsible for overseeing the allocation of domain names, set up a procedure to resolve cases outside the legal system. But identifying and deciding such cases is harder than it sounds. And ICANN’s decision to create new domains, which it is in the process of doing, may even make the problem worse.
Domain names are handed out on a first come, first served basis. Trademarks, by contrast, are harder to get. So one man’s trademark often turns out to be somebody else’s domain name. In the first seven months of the new disputes procedure, WIPO, one of the four organizations which appoints arbitrators in disputes, has been swamped③ with a steadily rising number of cases. An actress, Julia Roberts, an author, Jeanette Winterson, and an Irish prime minister, Bertie Ahern, have already successfully pursued “stolen” domain names through ICANN’s procedure.
ICANN’s policy determines whether or not the dispute concerns a genuine case of cyber squatting on the basis of three tests. It asks whether the name is “identical or confusingly similar” to the trademark of the aggrieved④, whether the domain holder has a legitimate interest in the name and whether it was registered in bad faith. A British rock musician, Sting, lost his case because his adversary established that he had been using “Sting” as an alias⑤. in online games for years.
Sting’s defeat was unusual: 83% of the cases brought to WIPO have gone in favor of the trademark holder. Andrew Mc Laughlin of ICANN argues that these figures are not alarming, but rather evidence that the policy is being used for the purpose for which it was intended.
Michael Froomkin, professor of law believes that arbitrators have not got the message that the policy was meant to apply only to the clearest cases of abuse. The result is a procedure biased in favor of the trademark holder, which, Mr. Froomkin argues, damages the consumer’s right to use the Internet for purposes other than capitalism—such as free speech, posting pictures of your children, or parody⑥.