`New economy' - whose name is it anyway?

In a little-noticed decision in July, the World Intellectual Property Organization forced an American woman, Virginia Comito, to hand over the Internet address www.tonsil.com to Sued-Chemie, a German chemicals company that had held a trademark on the word since 1952. The address was deemed "identical or confusingly similar" to a bleaching product called Tonsil.

A month later, an arbitration panel of the organization ruled that David Sallen, a Boston entrepreneur, would have to turn over the domain name corinthians.com to the Corinthians, a Brazilian soccer team. The panel decided that Sallen, whose site published a handful of biblical quotations, had acted in bad faith, determining that, among other things, he had hoped to profit from selling the name to the Brazilian team.

In both cases, the trademark holder prevailed. In the continuing battles between the owners of trademarks and individuals with Internet domain addresses identical to them or nearly so, the trademark owners appear to be far ahead. Of 1,000 cases that have gone before four approved arbitration boards (of which the World Intellectual Property Organization is one), three quarters have been won by trademark owners.

Francis Gurry, the organization's assistant director-general, points out that it would only make sense that trademark holders prevail, as only companies that are fairly sure that domain holders are acting in bad faith take their cases to arbitrators.

"The procedure is not for cases where you have some rights and I have some rights," Gurry said in an interview from his office in Geneva. "These are supposed to be black-and-white cases."

Andrew McLaughlin, president of the Internet Corp. for Assigned Names and Numbers, the international nonprofit group that administers the domain-name system, which is also known as ICANN, defended the arbitration process, which started last December as a way of giving trademark holders an easy way to resolve the growing number of battles over names. He says ICANN plans a formal review of the process later this year.

McLaughlin pointed out that the statistics on domain name arbitration are skewed because many domain name holders do not even bother to defend their positions.

At the heart of ICANN's domain name arbitration system is the Uniform Dispute Resolution Policy, a set of rules for determining if a domain name holder is acting in bad faith or is out to hijack a trademarked name. Only trademark holders can take their case to one of the arbitration and mediation centers. The decision of the arbitrators is not binding; companies and individuals can still take the case to court. And in November, the Clinton administration passed the federal Anti-cybersquatting Consumer Protection Act, giving trademark holders the right to take speculators to court and to collect damages. But the arbitrators' decisions are enforced by domain-name registrars, who carry them out by transferring domain names, or canceling them.

Of the four arbitration and mediation centers approved by ICANN, the World Intellectual Property Organization hears most of the cases, followed by the National Arbitration Forum in Minneapolis; Disputes.org/eResolutions Consortium in Amherst, Mass., and Montreal; and C.P.R Institute for Dispute Resolutions in New York.

The intellectual property organization has come under scrutiny lately by critics who say it is biased in favor of trademark holders.

James Love, director of the Consumer Project on Technology, a consumer advocacy group based in Washington, says the organization's decisions de-emphasize free speech in favor of protecting commercial interests. "The ability to call attention to your information is important," Love said. "To say that big companies can do that and individuals can't is wrong."

Granted, sorting out domain name rights is no easy job. Take the case surrounding corinthians.com, which Sallen has not taken down despite the ruling. For starters, there is the fact that the Web site operated by Sallen contains little more than a few biblical quotations and a missive stating "This website is about to be pirated by a huge corporation in Brazil." (Lawyers for the Brazilian team argue that the biblical quotations appeared after the complaint was filed, presumably to make it appear the domain name was being actively used when it was not.)

Sallen had earlier sent the Brazilian team an e-mail offer to sell it the address, raising a red flag for arbitrators.

And, of course, the organization's litmus test of "confusingly similar" is, well, confusing.

Take the case of Yahoo, which has just successfully argued that several dozen domain names registered by the Data Art Corp. and others, including ayhoo.com, eeeyahoo.com and yafoo.com, are too easily confused with yahoo.com.

A related question arises from the abundance of parody and protest sites, some of which attach a disparaging or crude word onto the trademarked name, as in the case of the London-based electronics chain Dixons and a parody site with a similar and suggestive name. Is anybody really likely to confuse one address with the other? According to the intellectual property organization, they could. The "adoption" of the Dixons name in the address "is inherently likely to lead some people to believe that the complainant is connected with it," the panel wrote in its ruling, which favored the electronics store and forced the parody site to give up the address.

Another case heard by the board was that of the World Wrestling Federation, which argued that a California man was trying to profit from reselling the domain name www.worldwrestlingfederation.com. The federation, which has long maintained a site at www.wwf.com, dating back to when domain names were limited to only 22 characters, took the case to the intellectual property organization, which ruled that the address holder had acted in bad faith, hoping only to profit from reselling the name, and gave the name to the federation.

Still, consumer advocates like Love argue that the rulings lack balance and create precedents that may have far-reaching effects. The domain name problem, he says, stems from the scarcity of domain names, much of which will be alleviated when ICANN next year approves new domain names to supplement .com, .gov, .org and .net.

In the meantime, a rash of celebrity domain name cases should help keep the arbitrators busy. A case brought by the entertainer Madonna against a California pornographer who until last year published a site at www.madonna.com is pending. Madonna, who has her own site at Madonnafanclub.com, is widely expected to win. But the singer Sting, whose real name is Gordon Sumner, lost his battle for the address www.sting.com after arbitrators ruled that the word sting is generic and that Sumner had not trademarked it.

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