Settling domain-name disputes

Journal Record, The (Oklahoma City), Jul 5, 2001 by Ray Carter The Journal Record

As officials prepare to roll out seven new top-level domain names (such as .biz, .info and .name), the potential exists for a massive number of Internet domain-name disputes.

Now, one Oklahoma City lawyer could play a pivotal role in those legal skirmishes.

Joseph Ferretti, an attorney with Crowe & Dunlevy specializing in intellectual property, has been appointed Internet domain name dispute arbitrator for the Internet Corporation for Assigned Names and Numbers Uniform Dispute Resolution Policy.

In that position, Ferretti could be called on at any time to help settle domain-name disputes.

Currently, when a domain-name dispute occurs, a plaintiff has two choices: the courtroom or dispute resolution through the Internet Corporation for Assigned Names and Numbers. Since a lawsuit in federal court "takes a lot of time and a lot of money," many people are choosing ICANN arbitration, which Ferretti said is a "cost- effective, more expedient way to resolve these domain-name dispute issues."

Filing for an ICANN dispute resolution costs $1,500 if a claimant wants only one arbitrator and $3,000 for three arbitrators. Briefs can be filed online, and no visits to an actual court are required.

The plaintiffs and the domain-name holder select arbitrators online.

Dispute resolution takes roughly 60 days from the filing of briefs to the rendering of a decision. (In cases where three arbitrators are used, a dissent can be filed along with the group's decision.) Should a plaintiff not like the decision, that person has 10 days to file in court if he or she still wants to pursue the issue.

However, while ICANN provides a quick and inexpensive method of resolving disputes, the organization's decisions do not carry the weight and power of court rulings.

"The arbitrators do not have the power to award money," Ferretti said. "They can cancel the domain-name registration or they can transfer it. But that's the only power."

As a result, he said people should carefully consider which venue best meets their needs.

"It really depends on what's in the entity's best interest. There are pros and cons of going forward in both," Ferretti said.

He said trademark owners have won about 75 percent to 80 percent of all cases filed to date.

Ferretti became involved with Internet issues through his work on intellectual property issues at Crowe and Dunlevy. Due to the growth of those issues, Crowe and Dunlevy officials wanted a lawyer specializing in the field with an advanced legal degree, so Ferretti went to Franklin Pierce Law Center in Concord, N.H., and obtained a master's degree in intellectual property. He graduated first in his class in 2000.

He believes that degree led to his appointment as a domain-name arbitrator for ICANN. Arbitrators must be nominated; you can't simply apply for the job.

The issue of "cybersquatting" is the main reason for most domain- name disputes, Ferretti said. Cybersquatting is considered to have occurred when a person does not have a legitimate interest in a domain name, has registered in "bad faith" and has intent to profit from registering the name.

Ferretti said officials are working to prevent cybersquatting as new domain names are granted. For example, in the first round of registrations for the new .biz sites, people can file an intellectual property claim to a Web site name until July 9. Then a registration period will follow. Dispute resolution can then occur to decide who has the intellectual property rights to a site name before it actually goes live.

"The .biz people have tried to subvert some of the cybersquatting," Ferretti said.

In addition, officials are requiring that applicants hold a domain name for several years before having the right to sell it in an effort to prevent cybersquatting.

"They're really implementing some mechanisms to try to avoid the cybersquatting that has occurred," Ferretti said.

The .biz sites will officially roll out on Oct. 1. The other top- level domains (.name, .pro, etc.) will soon follow.

A top-level domain is the ".com" or ".biz" or ".net" in a domain name. The second-level name is the portion coming before the top- level domain name, such as "journalrecord" in "journalrecord.com."

Seven new top-level domain names will be rolled out in the next few years, including .biz, .aero, .info, .name, .pro, .coop and .museum.

The existing top-level domain names are .com, .org, .net, .edu, .gov, .mil and .int. The only top-level names that have been heavily regulated until now are .mil and .gov.

"You have to be a governmental entity to get .gov and you have to be a military to get .mil," Ferretti said.

The intent was to regulate the other domains just as fervently, but it just didn't happen, he said.

ICANN has approved the rollout of the new top-level domain names. To achieve that goal, ICANN contracts with different organizations to issue those domain names and set up rules.

Neulevel is the company contracting with ICANN to launch .biz sites. Neulevel is now contracting with domain-name registrars who will actually deal with the general public.