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On Sept. 1, 1999, [email protected] sent an e-mail to the Corinthians, a Brazilian professional soccer team. “Dear sirs, please excuse the fact that i do not speak portugese [sic],” it began. “As the owner of the url ‘corinthians.com,’ however, i want to inquire whom i might contact, associated with the football club, regarding the sale of this domain…. It occured [sic] to me that it is in your interest to own it.” The soccer team did want to own the domain. But they didn’t want to buy it from a so-called cybersquatter — somebody who registers domain names in order to sell them for profit to trademark owners. Instead, the Corinthians went through the somewhat bewildering world of online dispute resolution. Follow the bouncing ball: The Brazilian team hired a New York law firm, which contacted a Geneva�based online dispute center. The Swiss outfit farmed the work out to an arbitrator in Buenos Aires. He ultimately ruled against the sender of the e-mail, a Brookline, Mass., man, after a series of online submissions by both parties. This is not how our mothers and fathers learned to practice law. But online dispute resolution is becoming standard operating practice among lawyers whose clients covet domain names held by somebody else. It’s quicker and less costly than litigation, and it usually works. The trademark owner has won three-quarters of the more than 1,000 arbitrations decided so far. A DECIDING MECHANISM ICANN — the Internet Corporation for Assigned Names and Numbers — is the nonprofit body set up to oversee the distribution of domain names. One of ICANN’s key roles has been to create the online arbitration system, which took effect Jan. 1. Lawyers who have used the new system generally say they like its speed and certainty. Plaintiffs pick one of four approved arbitration services. Arbitrators range from former judges, to prestigious law professors, to practicing lawyers, to a few nonlawyers like Milton Mueller, a Syracuse University information studies professor and domain name expert. All of the services follow ICANN’s rules for resolving disputes, and decisions are made in 60 days or less. Decisions may be challenged in a court whose jurisdiction extends either to the registrar or the owner of the domain name at the time of the complaint. The Brazilian soccer team’s firm, Gottlieb, Rackman & Reisman, began by picking an arbitration outfit. Associate Marc Misthal chose the World Intellectual Property Organization, an affiliate of the United Nations. “We thought the WIPO decisions were extremely well-considered,” says Misthal. On May 18, Misthal submitted an online complaint to WIPO and David Sallen, the sender of the e-mail. Generally, the proceeding consists of a complaint, an answer, and a decision. Misthal was allowed to submit supplemental materials in the Corinthians case, but that’s supposed to be done only in “extraordinary circumstances.” All of this happens online, although hard copies of the complaint are delivered to the defendant and arbitrator. THE REAL CORINTHIANS? During the online proceeding, Misthal had to show three things: that the domain name at issue is identical or confusingly similar to the soccer team’s trademark, that the registrant has no rights or legitimate interests in the domain name, and that the domain name is being used in bad faith. Sallen, who represented himself, might have held on to the name if he hadn’t offered it for sale. After all, why should a soccer team in Brazil have a lock on a word that describes the inhabitants of an ancient city in Greece, as well as those of a small town in Mississippi where a Civil War battle was fought? Sallen insists that he did not register corinthians.com in bad faith but because he liked the book in the Bible by the same name. “I thought it would be a nice conduit for communicating with people, which is pretty much what the Internet is supposed to be about,” he says. The arbitrator, however, didn’t see it that way. Roberto Bianchi, an Argentine lawyer, ordered the name to go to the soccer team in his neighboring country. Some critics think that these fast-track resolutions are biased in favor of trademark owners. For example, in a split decision, a three-arbitrator panel ordered that a company called Telepathy Inc. give crew.com to J. Crew International Inc., the clothing company. Arbitrator G. Gervaise Davis III, a Monterey, Calif., lawyer, argued in his dissent that trademark owners should not be able to wrest away control of generic words. “The majority seems to assume that a trademark owner has some sort of God-given right to use the trademark to the exclusion of others,” Davis wrote. But Sting the rock musician didn’t fare so well when he became Sting the complainant. He tried to recover sting.com from Michael Urvan, a software engineer from Georgia who had registered the name five years ago. The arbitrator — a professor from Melbourne, Australia — ruled that “the personal name in this case is also a common word in the English language, with a number of different meanings.” Urvan, who represented himself, says that he was glad to have an inexpensive forum in which to defend himself but worries that other innocent parties may not be so fortunate. Many individuals and companies could conceivably have a legitimate claim on a particular domain name. Under the first-come, first-served online arbitration process, the ultimate owner “is completely open to interpretation of the panel,” Urvan says. Sting’s lawyer, associate Jennifer deWolf Paine of New York’s Proskauer Rose, declined to comment on the case. She has done about 10 online proceedings. This was her first loss. KEEP IT SIMPLE If a trademark owner merely wants to get hold of a domain name, online dispute resolution generally makes sense. Some owners, however, want money damages, or they want very fast temporary relief in the form of an injunction. A new federal law, the Anticybersquatting Consumer Protection Act of 1999, was written for them. “Litigation can run upwards of over $50,000,” says Amy Goldsmith, a Gottlieb, Rackman partner, estimating the cost conservatively. Goldsmith also worked on the Corinthians case. Arbitration, on the other hand, sets parties back much less. The complaining party pays the arbitration fee, usually about $1,000 for a single arbitrator. If the respondent wants the case heard by a three-arbitrator panel, then the cost is split. Like Sallen and Urvan, many respondents choose to defend themselves. All decisions are available online at www.icann.org. Lawyers are still forming opinions on the four arbitration services. The National Arbitration Forum consists mainly of retired judges, and their decisions tend to favor trademark owners. On the other end of the spectrum, eResolution has an impressive roster of panelists from academia. WIPO arbitrators tend to be trademark and intellectual property specialists. The fourth provider, the CPR Institute for Dispute Resolution, was approved just last May. It hasn’t been around long enough to develop a reputation. Louis Touton, general counsel for ICANN, says that the organization will take stock of the process early next year and consider revisions. The habits of lawyers, however, are unlikely to change. “I was arbitrating one case in which there were well over 50 appendixes. I thought [the attorneys] would have more sense,” says Michael Froomkin, a law professor at Miami University, a member of ICANN’s advisory board, and arbitrator for eResolution. Lawyers, after all, will be lawyers.

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