WIPO Shakes Up Domain Name Rights

August 30, 2000

The debate over domain names continues to heat up, as the World Intellectual Property Organization (WIPO) arbitrates in what appears to be favor of the big companies.

In a decision that was handed down last week, WIPO has put itself on the map as an arbitrator and changer of the domain name rights structure. The procedure behind domain name disputes, established under ICANN, is that a complaint is filed and the person who filed the complaint is allowed to choose which of the four qualified arbitrators will hear the case. The decisions made by the arbitrators are recommendations, but they hold a lot of weight. Most recently, the city of Barcelona brought a complaint before WIPO against another person had been using the domain name Barcelona.com for a travel site for the city for five years. WIPO recommended in favor of the city on the basis that the end-user would be confused if the city’s official site were not at Barcelona.com. Although somewhat understandable, this reasoning is not completely supported by logic because the official site should be located with the .es extension (.es to signify Espana, Spain).

This is not the first time that WIPO has created an uprising with its decisions. There was another case where the domain name, crew.com was taken away from its registered owner and was given to J Crew to avoid confusion. Additionally, Yahoo was awarded 40 domain names that were variations or slight misspellings of its domain name. This is the pattern that WIPO has established - taking generic domain names which could represent a number of meanings and assigning them to the trademarked owner, which in most instances is the bigger company.

If this pattern is followed, especially the ruling in Barcelona.com, the complexion of domain name disputes will increase because geographical locations, personal names, and trade names will be protected entities, as established by precedent. If such broad categories of domain names are protected, it will be very narrow pickings for new or small businesses looking for their niches in the domain name game, perhaps even if ICANN increases the number of top-level domain names as has been proposed.