Yahoo Casts Wide Net To Protect Domain Name 04/27/00 - Company Business and Marketing

SANTA CLARA, CALIFORNIA, U.S.A., 2000 APR 27 (NB) Somehow Web portal Yahoo Inc. [NASDAQ:YHOO] always ends up Number 1. The company's Yahoo.com domain regularly tops the traffic charts created by Web measurement firms, and now - in order to protect that address - the company has set a record for the largest number of look-alike names shoveled at once into a recently launched domain-name dispute resolution system.

Santa Clara, Calif.-based Yahoo is objecting to 37 registered domains - ranging from geographical variations such as AtlantaYahoo.com and DCYahoo.com to the more obscure Jahu.com and Yhu.com - and has taken its case to the Internet Corporation for Assigned Names and Numbers (ICANN) for arbitration under its Uniform Domain Name Dispute Resolution Policy.

Designed to help speed the process of settling spats over the practice of "cyber-squatting," the uniform dispute resolution protocol went live in December in the hands of the Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO).

Since resolving its first dispute - the World Wrestling Federation's reclaiming of worldwrestlingfederation.com from an alleged cyber-squatter - WIPO arbitrators have cleared an impressive queue of disputes.

Still pending is a 21-domain submission covering Internet addresses which appear to conflict with the trademarks of the Fox Entertainment Group [NYSE:FOX] - and which was a record-setting request before Yahoo filed its complaints last week. So far, the fattest file closed by WIPO at one sitting was a 15-domain dispute that went in favor of the Federation Internationale de Football Association (FIFA) and the marketing organization licensed to use soccer's World Cup trademarks.

Internet law expert Michael Geist, of the University of Ottawa Law School in Canada, said the volume of Yahoo's recent filing isn't as important as its liberal interpretation of what might constitute a look-alike domain name.

He said entries such as SeattleYahoo.com and NYYahoo.com may seem straightforward - but what about Jahu.com and Youhoo.com?

One thing all 37 disputed names seem to have in common is dubious registration information in the master databases on Network Solutions Inc. many of the addresses - including Jahu.com and Youhoo.com - are registered to the same individual and who appears to be unknown to people answering the phone at the number provided in his domain registration documentation.

Geist said many rulings have gone against individuals who have registered domains that appear to be versions of well-known trademarks but with typographical errors. For example, Hewlett Packard Corp. was successful in quashing the domain HewlittPackard.com. But Geist warned that one person's intentional typo might be someone else's idea of a legitimate business name.

"We are without question seeing the development of an Internet law - or an Internet common law - around the issue of domain names," he said. "Arbitrators are, with increasing frequency, citing previous ICANN decisions to support their findings. While some of the very early cases looked at traditional laws - particularly US laws with regards to domain name issues - there is a sufficiently large body of (decisions) that the arbitrators are able to refer to their own decisions as support for their findings."

"That's fine if the body of case law is something that merits approval, but I believe that there's a bit of concern that, on a pure numbers basis, I believe they're finding in favor of trademark holders at a ratio of three to one."

"There's some appearance of a bias towards trademark holders," Geist said, "but it may simply be the case that trademark holders had legitimate claims in a large number of instances."

He said one case which struck him as "a little odd" was the successful claim by the Canadian company eResolution against the holder of the domain EResolution.com, even though the Canadian company wasn't even incorporated until several months after the domain was originally registered in the US.

"It struck me as odd that a trademark holder could register a trademark after the fact and, essentially, reverse (the process)."

But Geist said the dispute resolution process seems to be achieving one of its primary goals - to speed up the system and cut legal costs through arbitration.

"There are large numbers of applications currently before the arbitrators, and they are required under the rules to render a decision quite quickly and, in fact, have been following through in that regard," he said. "So, certainly that's a positive."

Officials from Yahoo have yet to comment on their domain-dispute submissions.

Reported by Newsbytes.com, http://www.newsbytes.com

(20000427/Press contact: Michael Geist, 613-562-5800 ext. 3319 /WIRES ONLINE, LEGAL, BUSINESS/YAHOO/PHOTO)

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