Don't brand so close to me
Summary Description Sting's recent failure to win back the sting.com domain has serious consequences for other big names. Simon Vandore investigates the growing powers of the World Intellectual Property Organisation to resolve domain name disputes.
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Roullas Top10 Simon Vandore

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Editorial InformationArticle Location
Article Topic Special Report, Domains
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Story Group 000813
Post Date 07/08/2000 12:28 PM Status Posted Entered by Simon Vandore on 07/08/2000 09:25 AM


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Introduction
When Gordon Sumner, the artist known as Sting, lost his appeal for the rights to the sting.com domain name on July 20, the World Intellectual Property Organisation (WIPO) made a landmark decision.

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The findings were announced by University of Melbourne technology law expert Dr Andrew F Christie, who is on WIPO's panel of neutral arbiters. Sting had complained that '=Sting=', a US online games fanatic otherwise known as Michael Urvan, was not entitled to own the domain name because the musician owned a trademark on the word.
In his defence, the gamer argued that there were 20 other trademark registrations of the word 'sting' in the US and the word was part of everyday English. Urvan denied he was trying to cause any confusion between Sting and himself, claiming to have used the nickname online for eight years.
The songwriter countered that Urvan was a cybersquatter. The gamer had pointed the domain name to an auction site for the person-to-person sale of firearms, in an apparent attempt at blackmail while trying to sell the rights to sting.com for $US25,000.
But Christie found that this had been an error on the part of Urvan's ISP (though it later emerged that Urvan's brother owned the gun site). He found that the domain name had not been registered in bad faith, and it was not proven that Urvan had registered the domain in order to force the musician to buy it from him at a high price. Although evidence of Urvan's right to use the name =Sting= online was "at the weaker end of the spectrum" and he probably shared the name with dozens of other gamers, Christie found that simply being world famous under a name which was also a common English word did not give Sting the right to call it his own.
The sting.com case is just a high-profile example among hundreds of domain name decisions recently handed down by WIPO, which is funded by the United Nations and based in New York. In determining who owns a domain name, WIPO follows the Uniform Domain Name Dispute Resolution Policy set down by the Internet Corporation for Assigned Names and Numbers (ICANN), which requires complainants to prove that the domain was registered in bad faith and establish prior association with the name.
But it is the application of these rules which has created the precedents that truly govern domain names. In an earlier case determined by Christie, Telstra won back the rights to the domain telstra.org from a mysterious Newcastle company called Nuclear Marshmallows. The words of that decision now serve as a benchmark for new cases.
"It is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under a trademark law," reads the Telstra vs Nuclear Marshmallows decision. As 'Telstra' was an invented word, the proof of this was quite easy to establish -- Christie quoted dictionary definitions of the word 'sting' to show that this did not apply to the more recent decision.
The .org namespace is intended for nonprofit organisations, and although Telstra is a business, the WIPO took the position that use of a trademark in any type of domain name falls under ICANN's rules.
=Sting= the gamer now has some hot property in sting.com. No less than four banner ads and a promotional blurb for a bank fill his front page, but the site also contains busy discussion forums where his supporters duke it out with fans of Sting. He is planning to add polls on a variety of controversial topics, is a vocal advocate of free online music distribution, and urged his readers to register for the ICANN board elections prior to July 31 (158,000 Internet users worldwide have registered).
As the WIPO and ICANN rules have usually led to decisions favouring the trademark holder, in some cases this is seen as pandering to big business. But a study of the case documents shows a logical pattern has emerged.
Companies with names including BuyThisDomainName, Net-Promotion and DomainHouse.com are clearly cybersquatters and usually lose their cases. The same goes for companies who have registered their rivals' products as domain names. But it's not that simple -- these cases have also gone the other way, such as in the case of Interactive Television versus Noname.com over the possession of the interactivetelevision.com domain.
The theft of a domain name takes cunning. Simply going out and registering coca-cola.org will get you nowhere unless the name on your birth certificate happens to be Coca-Cola. But Penguin Books had a harder time of it: the publisher lost its case against the Katz family who had registered penguin.org, presumably out of an interest in the flightless bird; while Inter-Continental Hotels failed to secure the domains intercontinental.com and inter-continental.com.
Another trend is to register misspellings of a popular domain name, such as yahou.com, aamazon.com, or even wwwreuters.com -- often 20 variants at a time. These too have usually gone back to the trademark holder, because it is clear they were registered in bad faith. But if the misspelling happens to result in a real word that is not trademarked, the cybersquatter has struck gold.
Australia has taken a prominent role in the WIPO proceedings, not only through the presence of Christie. The whole process began after a letter from communications minister Senator Richard Alston, asking the organisation to look at domain name disputes. Alston wrote on behalf of 19 governments worldwide, asking WIPO to develop guidelines to reduce the uncertainty over cybersquatting. In the long run, the coalition of governments wants to see recommendations regarding words that cannot be trademarked, such as personal names, pharmaceutical substances, intergovernmental organisations and even geographical terminology.


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Bulletin SummaryDon't brand so close to me
Sting's recent failure to win back the sting.com domain has serious consequences for other big names. Simon Vandore investigates the growing powers of the World Intellectual Property Organisation to resolve domain name disputes.

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Special Report: Don't brand so close to me

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