The bouts pit pugilists like One Sex Entertainment Co. against National Football League Properties Inc.; Red or Dead Limited vs.
Kid Pty Ltd.; and Madonna Ciccone vs. Dan Parisi and "Madonna.com". But they also include a swarm of global financial players such as New York-based Chase Manhattan Corp. (now, incidentally, on its way to becoming J.P. Morgan Chase & Co.) vs. Jehovah Technologies Pte Ltd. Other brawls pit Banca Popolare Friuladria S.p.A. against Giovanni Zago, while Hang Seng Bank Limited faces Websen Inc. There are many, many more on the bill. The fight for online "domain" names is one of banks' newest battles, and financial services companies are drawing lines in the sand.
It is a war that is ever raging. In the first nine months of this year, the Arbitration and Mediation Center of the World Intellectual Property Organization, or WIPO, the principal dispute-resolution provider for domain names, handled approximately 770 cases, which were decided by independent panelists (see chart). Some two dozen of these involved financial institutions.
Another 522 cases were in the pipeline at WIPO this past Oct. 1, awaiting resolution.
That banks are resorting to Geneva-based WIPO is no small matter. In the domain name game, they recognize that losing online can cost them customers, reputations and capital. And in a medium in which, some would argue, name is everything, the stakes are perhaps especially high. No wonder then that many financial services companies are telling their lawyers to take off the gloves.
Confused Clients
Take Bancolombia S.A.: In April 1998, the Medell n, Colombia-based financial institution realized it couldn't use its preferred name online because the name had been taken. In October 1997, the Panamanian company Elpidia Finance Corp. registered bancolombia.com with Herndon, VA-based Network Solutions Inc.
Founded in 1979, Network Solutions spearheaded the registration of Web addresses ending in .com, .net, .org and .edu.
Bancolombia, informed by Elpidia that it could only acquire bancolombia.com by buying it for (U.S.) $200,000, decided to take its case before WIPO, says a Bancolombia source, who asked that his name not be used.
At the World Intellectual Property Organization, the bank found a receptive audience. WIPO's recent decision in the Bancolombia case was typically straightforward. Panelist Roberto Bianchi wrote, "The Panel has found that the domain name bancolombia.com is identical or at least confusingly similar to the service mark of the Complainant, and that the Respondent has no rights to or legitimate interests in said domain name. The Panel has further found that the domain name has been registered in bad faith, and is being used in bad faith."
But much damage already has been done, the Bancolombia source maintains. "The consequences for the bank," he says, "were very grave. The Internet page read 'Under Construction,' which indicated to our potential clients that we did not yet have sufficient technology to develop our page.
"Given that the domain '.com' is universally known, many potential bank clients could have entered the page bancolombia.com and, having found that it was under construction, chosen not to join the bank."
The Panamanian company never developed the bancolombia.com site. Elpidia Finance Corp. registered the domain name just two months after the widely publicized merger in late August 1997 of Banco Industrial Colombiano and Banco de Colombia. The merger created Colombia's largest commercial bank, Bancolombia.
While the institution had registered its mark Bancolombia in Colombia, Peru, Ecuador and Bolivia, Elpidia Finance was not even registered to do business in Colombia.
Bancolombia's WIPO victory notwithstanding, Elpidia occupied the bancolombia.com site from late 1997 until August 7 of this year. In that period, the site counted 75,000 visitors. The visitors, many of whom may have been re-visting the site in search of ... something, found "Under Construction" instead.
Like Bancolombia, other financial institutions in Latin America have found themselves threatened on the Internet, including Banco do Brasil S.A. Based in the city of Brasilia, Brazil, Banco do Brasil also found itself facing an agent that scooped up its name. In December 1997, the Korean company Sync Technology paid about 50 bucks for "bancodobrasil.com". When the bank approached Sync Technology about the matter, Sync asked for $1 million to transfer the name.
Banco do Brasil passed, taking its case to WIPO. In September of this year, the bank won the rights to the Internet domain name.
The issue was frustrating from the beginning. "When Banco do Brasil started to deploy Internet applications in Brazil, we didn't know that someone outside of the country could register that domain name," explains Americo Mendes Jr., the bank's IT manager.
Spanish Duel
The domain name duels under the auspices of the WIPO Arbitration and Mediation Center are global indeed, involving 53 countries thus far. The majority involve U.S. companies.
Banks and other financial services companies have found themselves in the WIPO court opposite a wide range of businesses. Occasionally, they've even squared off against one another, as when Madrid, Spain- based Bankinter S.A. and Miami, FL-based BI Financial Inc. battled over the lucrative domain names bankinternet.com, bankinternet.org and bankinternet.net.
The Florida corporation prevailed. A few years ago, as commercial use of the Internet began increasing significantly, domain names became a hot commodity. So-called "cybersquatting" proliferated. Eventually, the U.S. government and later WIPO member states asked the international intellectual property organization to address the issue.
The body began to receive cases under registrars-companies that register domain names-in December 1999. The following month, registrar powerhouse Network Solutions agreed to come on board, and WIPO took off.
Many of the disputes have been unsavory for banks (see sidebar), and not all financial services companies have enjoyed smooth sailing at WIPO. Madrid, Spain-based Banco Atlantico S.A believes it now faces the bleak possibility that Internet users searching for the bank will find a sex shop instead. This past July, the bank became embroiled in a battle over the domain names viatlantico.com and viatlantico.net against another Spanish company, Infomax 2020 S.L., based in Alicante. Individuals who go to these Web sites are redirected to www.imax20.com, which is the main Infomax 2020 Web site and offers information about the computer industry.
Banco Atlantico argued before a WIPO panelist that it had used the Vi tlantico service mark since 1998 for finance, monetary and real estate services. Its sales volume under the mark since putting it into circulation totals more than (U.S.) $10 million, and it has spent $500,000 to promote the mark, the bank says. It claimed Infomax 2020 profited by charging Internet users attracted by the domain names in question for access to pornographic Web pages.
Infomax 2020 denies any affiliation with pornographic products or services of any kind.
Banco Atlantico was unable to convince the intellectual property organization's panelist that Infomax 2020 had no legitimate interest in the registered domain names, nor that the company's registration or use of the names was effected in bad faith. A spokesperson for Banco Atlantico says the bank has not yet evaluated the fallout from loss of the names.
Expensive sites
Banks have almost always won before WIPO. Nonetheless, the struggles they face over domain names can take a toll. There is the possible loss of, or confusion among, customers; the toil of negotiating with the company that purchased the domain; and the time and money spent in the courts. Even when banks win before WIPO, companies found to be acting in bad faith have probably incurred fewer costs as a result of the dispute. The WIPO only charges the complainant, not the respondent. The complainant pays the organization $1,500 for between one and five domain names under dispute, and $2,000 for six to 10 names. If more than 10 names are involved, a fee is imposed on a case-by-case basis. Should the complainant win the case, the respondent still does not have to pay a fee, and its only "punishment" is loss of the name to the complainant.
To get compensation, banks must take their cases to the courts of sovereign governments, where substantial fines and civil or even criminal penalties can be meted out to an entity found to be acting in bad faith in the purchase of a domain name.
Naturally, some disputes are resolved without recourse to WIPO or the judicial systems of the countries involved. However, because the Internet has no boundaries and the parties in a dispute are often geographically distant, in starkly different countries with starkly different laws, many end up taking their cases to Geneva.
No bank wants to have to go to court over its name, but there is often little option. Financial services companies can, and do, buy names from the registered owners, but many bankers express concern that doing so may reward Internet pirates.
In one of the the most publicized purchases of a domain name, eCompanies forked out $7.5 million for "Business.com" in 1999. And in January of this year, Charlotte, NC-based Bank of America Corp. paid the second-highest amount at a public auction of a domain name, acquiring the rights to "Loans.com" for $3 million. The amount is less startling when one considers that the site was receiving 3,000 to 4,000 hits per day at the time.
In cases such as these, which involve the acquisition of generic names rather than cybersquatting, no dispute fitting WIPO criteria for resolution comes into play.
"If someone is registering the names of other companies that are protected (names), for the purpose of selling it back to that company, I think it is abusive," says Christopher Ulrich, president of Cydian Technologies, a Melville, NY-based firm that registers domain names for individuals and companies "But if somebody is merely creative and registers 10, 20 or 100 names that they think are valuable, without infringing on anybody's rights, there is no problem with that. If I register 'citigroup.com', I would obviously be infringing on Citigroup's rights; but, if I register 'ATM', 'directdeposit' or 'onlinebanking.com', as far as I am aware no one owns holds a trademark on those. So the only time it is illegal or unethical is when you register the name of a competitor or for one of their markets and try to extort a fee."
Alleged Internet pirates or cybersquatters certainly remain on the prowl. This growing segment of "netrepreneurs" apparently figure if they have $25 or $30 and a hunch, they can make millions. That's the average going rate to register a domain name, says Ulrich, adding that Cydian discounts services down to $15 per name. Network Solutions used to have a monopoly on domain registration, but now there are 40 significant-and hundreds of small-players offering the service, says Ulrich.
There are important details to bear in mind. "You have to register it immediately," notes the Bancolombia source, "and simultaneously register your mark before the respective country to enforce protection. In the majority of the cases before the WIPO, the owners of the registered mark have been favored in the verdicts."
The right name
How many names is enough then-3? 10? 50? Hundreds? And is it now too late to register names?
"Typically, companies should register at least one, sometimes as many as three, sites for each product they offer," counsels Ulrich. "So if they have Product XYZ, they should register XYZ.com, XYZ.net and XYZ.org." Thus, as you introduce new products, you buy new domain names. "A lot of our clients register from 10 to several hundreds of names at one time," he says.
Mendes says Banco do Brasil has registered 36 domain names, in part because it has many products but also to guard against losing a domain name it may value.
However, snapping up domain names isn't always simple. "The difficulty for all major companies is, if you have a big name, once the Internet started to develop they would have almost certainly been advised to register their names in a variety of forms," says Richard Woods, a spokesperson in the UK for UUNET, an Internet service provider, or ISP, that provides networking and Web hosting services. "But they didn't necessarily know how they would want to run their Internet businesses in the future."
An institution may find that it purchased less than appropriate domain names or developed products that call for domain names that have long since been registered.
Nor can a company buy oodles of Web-site addresses simply to ward off potential cybersquatters, such as one who recently was the scourge of Time Warner for registering 108 variations of Harry Potter, says Francis Gurry, assistant director general of WIPO. There are simply too many imaginable variations.
"The best policy for a bank is to register its own name and then to be vigilant about cybersquatters that register close variations of their name," says Gurry.
Then again, a bank might want to still buy more sites... if it's not too late. "No, it's not too late," says Gurry. "But there are 12 million domain names registered now so that is quite a lot."
Banks would do well to defend themselves in the court of public opinion as well as in the courthouse, Woods says. "If you are under attack from someone else, you must ensure that your customers understand the realities; and if this is happening in the online world, you must use the online world as effectively as you can to tell your story."
Indeed, the name game will continue on the Internet front and a bank must take an active approach. The number of Internet domain names will double in the next two years and companies need protection, according to LegalName.com, a division of Scottsdale, AZ-based Trademark Connection LLC, which does name searches for trademark conflicts in the U.S., Canada and Europe and also registers domain names for clients.
"Before the Internet you had to have your storefront-your golden arches-so people could visit it," says Jerry Hunt, chief executive of LegalName.com. "On the Internet, the name is all important. The key thing is your domain name and having it trademarked so that people can find you. How it looks-its style and design in terms of logos-isn't as important when dealing with the Internet as is the name," Hunt adds, "because the computer can't see the logo (in a search). It's only what you put in your browser."
Daniel Joelson is a freelance writer based in Santiago, Chile.
