Gary Kremen finally got his www.sex.com domain name back, at least according to a US district court judge who ruled last month that Stephen Cohen had fradulently transferred the lucrative name over to him in 1995. The decision is under appeal, but more importantly it raises the issue of the whole assignment and control of domain names.

The www.sex.com case is just one example of how confusing and inconsistent the registration and ownership process can become. In the www.sex.com case Network Solutions Inc., the original domain name registrar before the process was turned over to the Internet Corporation for Assigned Names and Numbers (Icann), doesn't come off well.

The judge found that Mr. Cohen had forged Mr. Kremen's signature on a fraudulent letter to Network Solutions, which then transferred ownership of the domain to Mr. Cohen. Network Solutions refused to return the name back to Mr. Kremen when he complained, even though the forged letter included a misspelled signature. Mr. Cohen has reportedly made about $100 million in revenues a year from the www.sex.com site during the period.

The sex.com case is unusual -- it got resolved in the courts and not through the messy and I believe sometimes wrongheaded resolution system created by Icann to sort out disputes. Icann created a new fast-track process to resolve Internet domain name disputes, which went into effect in January of this year.

Icann processes the disputes under the Uniform Domain Name Dispute Resolution Policy, sending cases to arbitrators who issue decisions within a few weeks.

The process offers a speedy resolution at a fraction of the cost of a copyright challenge in court. Since January Icann now has had hundreds of disputes on its books, either resolved or pending. You can see the names under disputes and read the decisions at http://www.icann.org/udrp/proceedings-list.htm.

Most of the disputes are clear examples of attempted copyright infringement through cybersquatting -- the name given to people who register hundreds of well-known domain names in the hopes of eventually making a profit by selling them to established copyright holders. Thus Delta Airlines would seem to have a clear case, in which a decision is currently pending, to ownership of www.deltaairlines.com. Marriott's also won the transfer of marriott-hotel.com.

But to me it's less clear that those who register ordinary names in the dictionary should have to turn those names over to corporations or movie stars who claim them.

One of the most prominent cases occurred on October 12 when arbitrators ruled that Don Parisi had to turn over the domain name www.madonna.com to the singer Madonna Ciccone. Mr. Parisi had bought the disputed domain name from Pro Domains for $20,000 and began operating an adult web site featuring sexually explicit photographs and text. The site also contained a notice stating "Madonna.com is not affiliated or endorsed by the Catholic Church, Ma$ogna College, Madonna Hospital or Madonna the singer.'' Under the dispute policy a complainant must prove that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights, that the respondent has no legitimate interests in respect of the domain name; and that the domain name has been registered and used in bad faith.

In a bizarre decision the arbitrators ruled that under the "preponderance of the evidence'' Madonna had presented evidence tending to show that Parisi lacked any rights or legitimate interest in the domain name. They agreed that he had used the name commercially but had "failed to provide a reasonable explanation for the selection of Madonna as a domain name''.

And they stated that: "Although the word `Madonna' has an ordinary dictionary meaning not associated with complainant, nothing in the record supports a conclusion that Respondent adopted and used the term `Madonna' in good faith based on its ordinary dictionary meaning. We find instead that name was selected and used by respondent with the intent to attract for commercial gain Internet users to respondent's web site by trading on the fame of complainant's mark.'' Here I believe the arbitrators were attempting to second guess a commercial decision as to why someone chose a particular name for their business, a sex site, by claiming that he could have chosen another! If Parisi didn't have the right to a name found in the dictionary, then who did? There are any number of claimants, including quite a few hospitals, who could have a supposedly legitimate claim to the Madonna name. Imagine the dilemma for the panel if three or four claimants that used or had the word "Madonna'' in their names had lodged a complaint against Mr. Parisi.

Another wrongheaded decision was the transfer of www.crew.com to J. Crew International in April. An arbitration panel ruled that the original owner of the domain name was essentially a cybersquatter who had registered the name in the hope of making a profit by selling it. But I side with the dissenting panellist on the arbitration board who argued that the majority had the "mistaken view that it is up to the panel to enforce a non-existent policy of Icann to prevent people from registering domain names for resale to others than the trademark owner. Whether such activity is proper or improper is not before us under the Icann Policy and we do not, in any event, have the authority to so decide under the Icann rules...Furthermore, 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.'' Those statements seem to me to describe the mess that Icann is getting into in deciding whether someone is cybersquatting or not. This is an unfortunate penalty against people who are speculators and who got there first. It's a penalty against entrepreneurship. Icann should not be deciding whether someone "intended" to use a domain name or not.

The domain dispute issue is particularly important for businesses as it highlights that executives must move fast to secure their names on the Internet, especially since Icann has approved new high-level domains .biz, .info, .name, .co-op, .pro, .museum, and .aero. The Gartner Group estimates that the average Global 2000 organisation will be forced to register at least 300 name variants, including misspellings, so as to secure their plot in cyberspace. Gartner estimated the up-front cost of such a strategy at US$75,000.

Tech Tattle deals with topics relating to technology. Contact Ahmed at editor yoffshoreon.com or (33) 467901474.