WIPO splits rulings in cybersquatting cases

The agency that resolves domain name disputes has gone each way in its latest batch of decisions.

          The World Intellectual Property Organisation (WIPO), a Geneva-based United Nations entity that resolves disputes over the ownership of Internet domain names, has handed down two new decisions in cybersquatting cases -- one in favor of the company that submitted the complaint and one that went in the opposite direction.

          Losing its case was The Burlington Free Press, a Burlington, Vt., newspaper owned by Gannett. in Arlington, Va. Gannett unsuccessfully tried to shut down a Web site called www.freepressclassifieds.com operated by Earthcars.com, a Burlington-based company that develops interactive Web sites for car dealers.

          The Free Press claimed that the Earthcars.com site infringed on its trademark for www.freepressclassified.com, an advertising site operated by the newspaper that prominently features car ads. But in a ruling issued last Friday, the arbitrator assigned to the case by WIPO said the term "free press" is ubiquitous and thus couldn't be protected by Gannett.

          The arbitrator, Natasha C. Lisman, wrote that the newspaper's "use of the 'freepress' component of its [trademark] is far from exclusive." For example, she noted, other newspapers, such as The Detroit Free Press, also use that phrase as part of their names. As a result, Lisman ruled that Gannett's infringement claim was invalid.

          But in another case decided recently, Wal-Mart Stores successfully stopped a self-proclaimed "domain name consultant" from Canada who registered sites such as www.walmartpuertorico.com and walmartcanadasucks.com with domain name registrar Tucows Inc. and then tried to sell the URLs to Wal-Mart.

          In a ruling issued last month, WIPO arbitrator Frederick M. Abbott sided with Wal-Mart by finding that there was a malicious intent behind the registration of the sites that used variations on the company's name.

          Kenneth J. Harvey, the Newfoundland, Canada-based individual who registered the domain names, claimed as part of the proceedings that "as a gesture of goodwill" he notified Wal-Mart of similar names that hadn't been registered yet. But he also asked the company for a fee in return for listing all of the domain names.

          In his decision, Abbott ruled that Harvey registered the domain names "in order to extract payment from [Wal-Mart] by threatening to disrupt its business." That provided "clear" evidence that Harvey was acting in "bad faith," added Abbott, who transferred ownership of all the domain names involved in the case to Wal-Mart.

          WIPO handles domain name ownership disputes under a mechanism set up by the Internet Corporation for Assigned Names and Numbers, a Marina del Rey, Calif.-based company that was created to manage the international domain name system.

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