Domain name disputes on the rise

Statistics released by industry groups show an increase in disputes over Web domain names — something industry watchers attribute to the number of companies discovering the advantages of having a Web presence and the difficulty some face in finding an unused Web moniker that describes their business.

David Hicks, director of marketing and communications with Ottawa-based Canadian Internet Registration Authority (CIRA), said more companies are conducting business over the Web after realizing it’s great for marketing and connecting with their community.

“They may come in quite late to the game and decide they want to do these things and discover that in fact the domain they want to use has been registered by someone else.”

CIRA publishes statistics of dispute resolutions for .ca domain names initiated under the Canadian Dispute Resolution Policy (CDRP), which is based on the global Uniform Domain Name Dispute Resolution Policy (UDRP), a process established by the global but U.S.-based Internet Corporation for Assigned Names and Numbers (ICANN). They show a rise in numbers in 2005 that remain constant thereafter.

Another industry group, The World Intellectual Property Organization (WIPO) reported 2,156 domain name disputes in 2007, up from 1,857 in 2000. WIPO reported 48 cases so far in 2008.

Hicks said another cause behind the rise is that platforms like advertising sites, for instance, have become increasingly commercially-viable.

The scarcity of names, he added, is also a contributing factor, specifically around single-word domains and three-letter combinations. “As that happens, people are getting more aggressive about enforcing their trademark.”

Actually, he was surprised at one incident last year, in which Alberta premier Ed Stelmach threatened to sue a blogger alleging a domain name was registered in “bad faith.” He said it’s not uncommon to find a politician’s name already registered by a critic or campaign competitor. But, it’s odd that the name went unregistered by Stelmach for so long for someone so prominent in Alberta politics.

“From a marketing perspective nowadays, the Web is very important and that such an oversight occurred is somewhat surprising to me,” said Hicks.

There’s also a greater awareness around domain names, he said, due to the increased interest in .ca domains by the domainer community, in other words, people who speculate on domains and trade them.

The introduction of UDRP probably raised the level of awareness and influenced the spike in the CDRP’s numbers observed in 2005, said Neil Melliship, partner with Vancouver-based Clark Wilson LLP and the chair of the firm’s technology and intellectual property group.

The subsequent plateau might have been due to the fact that “the .ca names are not as critical to many companies as .com,” he added.

And the spike in WIPO statistics in 2007 could be attributed to the emergence of new areas of internet business and the recognition of the value in domain names, said Melliship.

Another cause, he said, is that companies are disappearing and names are “back in the hopper and are up for grabs.”

But although Melliship agreed that the availability of domain names has been getting progressively scarce for some time now, it’s become harder still to get a name that’s descriptive rather than distinctive. Most seek a descriptive name that describes the product or service but he said it’s harder to win on the UDRP because it’s tricky for a person to prove he or she already owned the rights to the phrase.

Often, Melliship said, the cost of a typical domain name proceeding is not conducive to maintaining a fight. “If [a registrant] is getting a lot of traffic from [the name], they may put up a bit of a fight, but at the end of the day, they would probably would just sell it than go through a dispute resolution proceeding.”

The law around domain name conflicts has changed with time as have the types of conflicts, said Gil Zvulony, information technology and internet lawyer, as well as founder and director of Toronto-based Zvulony & Company P.C.

The “first generation” of conflicts was characterized by the fact that the law generally favoured the first registrant. But then, he said, remedies were put in place that considered Web site content as an influencing factor as well.

For instance, he said, Apple Inc. can’t stop someone from being the first to register the generic name, especially if the registrant is using it for a legitimate purpose. “Selling apple pies is a legitimate purpose. If I’m selling iPods, then they have a good case against me.”

“So the issue isn’t so much one of domain name dispute law, but it’s really one of trademark law,” said Zvulony.

To help mitigate the risk of getting embroiled in a domain name conflict, as in the case of Stelmach, said Hicks, people should register early and renew often. “It’s cheap insurance to prevent that from happening,” he said, adding that the $20 to 25 average retail price per year to register is certainly comparable to the cost of creating a legal letter.

Personalities on the public stage, in particular, should take proactive steps with the help of internet marketing experts to secure not only their name but other related names, said Hicks.

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