If you're famous and someone else registers your domain name, the odds are that you can get it back again, as Madonna has proved this week. Does that point to problems with the current arbitration system?

Published on Newswire, October 17 2000

One of the most frequent complaints levelled at the World Intellectual Property Organisation (WIPO), which has aimed to resolve disputes over the ownership of domain names since January, is that it sides with big business against the individual.

The majority of the complaints filed with WIPO are from large companies (which can afford the arbitration fees of up to $US35,000) aiming to win back domains which they consider trade on their existing business names. WIPO's own statistics show that most cases end up being won by the complainant, with 61% of decisions to September 2000 ending with a domain name being transferred. That seemingly high number has led activist groups such as the Top-Level Domain Lobby and the Association for Domain Owner's Rights (ADOR) to call for changes to the arbitration process.

However, if you consider a smaller subgroup of complainants -- celebrities who have sought to win back the domain associated with their names -- the numbers are even more striking. Since January, WIPO has made binding decisions on nine famous individuals. In eight of those cases, the decision has gone the way of the celebrity, even though critics argue that the right to an individual name is much less clear-cut than that of a company.

It would be easy to assume that celebrities can barge their way through the arbitration process, and many Net observers have made that claim, describing Madonna as a "greedy corporate bully", for instance. However, a look at the actual case decisions reveal a more complex pattern.

What's in a name?

The first decision in this area related to the domain dodialfayed.com, which was successfully won back by Harrod's owner Mohamed Al Fayed on March 16. That decision was relatively straightforward, as Harrods had registered the name of Dodi as an EU trademark, and the decision was not actively contested by the original site owner.

More controversy surrounded the successful efforts by actress Julia Roberts to win back the domain juliaroberts.com from Russell Boyd, who had used the domain to host a satirical site, but then placed it up for auction on eBay. Boyd said he was willing to sell the domain to Roberts if she asked personally, but he seemed less willing to accept the WIPO arbitration. Currently, the juliaroberts.com site displays a smiley face and a pop-up message which notes in part: "This site is not owned, operated, or influenced by anyone named Julia Roberts, the 23rd most common name in the U.S."

Other cases received less publicity and were quickly disposed of. In May, novelist Jeanette Winterson successfully won back three domains from a UK academic who had registered the names of more than 130 writers. That case established a precedent: a trademark was not necessarily needed to defend the right to a domain. Comedian Rita Rudner's application in August was not even challenged by the existing domain owner, and a similar situation saw actress Isabelle Adjani win back isabelle-adjani.net earlier this month.

As with many WIPO cases, a company being challenged for a domain name which has registered other opportunistic domains is poorly regarded. Earlier this month, 80s pop singer Sade won the rights to sade.com from a company which had sold email addresses at that name, and which had also registered the names of numerous other popular acts. This evidence of what WIPO terms "a pattern of conduct relating to the registration of domain names" helped the singer's case. A similar finding was made in favour of the estate of Jimi Hendrix in August after evidence of cyber-squatting was presented.

Can't stand losing you

The sole unlucky celebrity to date has been Sting, who failed to win back the sting.com domain in a decision that received widespread media attention. The critical elements in the Sting decision were that the registrant, Michael Urvan, had been known as 'Sting' in online communities, and that Sting was a common term in the English language.

That finding led many to expect that Madonna's battle with cybersquatter Dan Parisi might have ended in a decision against the singer. However, as Newswire reported today, WIPO rejected Parisi's argument that he was entitled to the Madonna.com domain, maintaining he had not made a clear case for his ownership of the domain.

Madonna's case is unlikely to be the last celebrity decision faced by WIPO; tribunals are currently considering a domain related to country star Ricky Skaggs. WIPO will be defending its policies at a tribunal on electronic commerce dispute resolution in Switzerland next month.