Resolving Certain Domain Name Disputes—The WIPO Recommendations - Commercial Mediation and Arbitration in the NAFTA Countries
M. Scott Donahey
Scott M. Donahey is a Partner with Tomlinson Zisko Morosoli & Maser LLP (Palo Alto) and has been Counsel in numerous arbitrions. and mediatons, especially those involving intellectual property.
Originally from Commercial Mediation and Arbitration in the NAFTA Countries
The World Intellectual Property Organization ("WIPO"), a treaty organization with 171 nation states as members, recently undertook a series of consultations concerning the management of the domain name system ("DNS"). These consultations were undertaken on the proposal of the United States Government for the purpose of presenting recommendations to the newly formed Internet Corporation for Assigned Names and Numbers (ICANN) which was established to manage the DNS. The focus of these consultations was on the questions which have arisen as a result of the impact of the internet and certain intellectual property rights. As the use of the internet for commercial purposes has increased exponentially, the value of a domain name, particularly one registered in the generic top-level domain ("gTLD") .com, has increased at incredible rates. As businesses have awoken to the value of a location in the internet marketplace and have sought to register their trade or service marks in the .com gTLD, they are often surprised to learn that someone else has had the foresight to precede them. That someone else may be a business that also has an interest in an identical or similar trade or service mark, but in a different field of commerce or different geographical region of the globe. That someone else may also be an individual who registers, or a business formed for the purpose of registering, as domain names the names of well known businesses and products, whether or not those names are protected by recognized marks. The registration of a domain name is an inexpensive proposition relative to the economic damage that can result from such registration. The registrants may be motivated by opportunity to profit from the sale of such names to the mark owners or to their competitors, or in some cases by spite, for some real or imagined wrong they attribute to the business in question. Such registrants have acquired a good deal of infamy in the internet community and are often referred to as "cyberpirates" or "cybersquatters."