Disputed Registrations in .BIZ:
A Case Study of Domain Registrations by Swarthmore Associates and John Kirkland

[ Overview - Specific Domains - Policy Implications - Motivation ]

Overview

The ICANN New TLD Program included as one of its primary goals the protection of legitimate intellectual property interests. Selected registries employed a variety of methods to attempt to protect such interests, but in some instances substantial disputes remain. This research investigates one particular individual, the disputes faced by the domain names that list him as a contact, and possible notable patterns in these domain registrations.

Mr. John C. Kirkland is a Shareholder and attorney at Greenberg Traurig LLP, a major law firm with offices across the United States. Neulevel .BIZ Whois reports that Kirkland is the administrative, technical, and billing contact for at least 66 .BIZ domains.

Certain of these .BIZ registrations have been challenged by firms that accuse him of lacking a legitimate interest in the respective registration strings and of violating Neulevel registration policies. MDU Resources Group successfully challenged the registration of MDU.BIZ; the National Arbitration Forum found that Mr. Kirkland and Swarthmore Associates had no rights or legitimate rights in the MDU.BIZ domain name, and NAF therefore ordered the transfer of that domain to MDU Resources. Disputes are pending for at least eight of these domains, including ATT.BIZ, CDW.BIZ, and CSX.BIZ.

These domains are registered to what Infospace.com reports to be his home address and home telephone number. However, these domains use an email address provided by his employer, Greenberg Traurig LLP.

Mr. Kirkland lists himself as the contact for registrations in the name of "Swarthmore Associates, LLC." However, a National Arbitration Forum decision concludes that "from all of the submissions that Swarthmore Associates, LLC is in fact synonymous with John C. Kirkland," noting among other fact that Swarthmore Associates lacks any known office or telephone number.

Specific Domain Registrations

In recent data collection, I have prepared a list of 66 domains that are registered to Swarthmore Associates and that list Mr. Kirkland as their administrative, technical, and billing contacts. An asterisk designates a domain currently being challenged, and two asterisks designate a domain for which a successful challenge is already complete.

As of May 15, 2002, these 66 domains bear identical WHOIS information. Registrant contact data is precisely as listed below, while Administrative, Billing, and Technical contacts in each instance list "John Kirkland" as the Contact Name of record.

Registrant Name:                SWARTHMORE ASSOCIATES, LLC 
Registrant Address 1:           754 SWATHMORE AVENUE 
Registrant Address 2: 
Registrant Address 3: 
Registrant City:                PACIFIC PALISADES 
Registrant State/Province:      CA 
Registrant Postal Code:         90272 
Registrant Country:             UNITED STATES 
Registrant Phone Number:        +1.3105731554 
Registrant Facsimile Number: 
Registrant Email:               KIRKLANDJ@GTLAW.COM 

Infospace.com confirms that this address and phone number are both associated with Mr. Kirkland's residence.

In testing of May 16, 2002, 29 of the specified domains displayed an identical "under construction" page, while the remainder did not respond to requests for their default web pages. As of May 16, 2002, none of these domains is listed in web directory Yahoo, and Alexa reports that there are no inbound links to any of these domains.

Update (May 16): Mr. Kirkland has commented in ICANNwatch that "The domains were registered by clients of the firm for their own business purposes."

Update (May 20): The revised ICANNwatch story reflects additional responses from Mr. Kirkland. According to the ICANNwatch posting, the address of record is in fact not Mr. Kirkland's personal residence (notwithstanding that Infospace lists it as such), and Mr. Kirkland reports that a transfer is in progress of at least some of the domains listed above to one or several of his clients.

Update (May 21): Mr. Kirkland sent a letter to staff of the Berkman Center for Internet & Society accusing me of on this page "falsely asserting that the referenced domains are 'Mr. Kirkland's domains' or 'his domains,'" and claiming that these words are libelous. On May 16, I had revised this page to repeatedly state that Mr. Kirkland is listed as the Contact of record for each domain but that the domains are registered to Swarthmore Associates; notwithstanding this change, I today made the further change of replacing all instances of "Mr. Kirkland's domains" and "his domains" with other words.

Update (August 26): A National Arbitration Forum (NAF) Start-up Trademark Opposition Policy (STOP) decision cites this report and finds that "Respondent’s action in registering “.biz” names on a wholesale basis demonstrates bad faith where the name and mark are identical, and the mark is a famous, well-known mark."

Future Work, Discussion, and Policy Implications

This work focuses on the actions of only a single registrant. The records of the National Arbitration Forum and World Intellectual Property Organization reflect that hundreds of other domain names are currently being challenged. Future work by this author or others should investigate broader trends in the STOP and other sunrise challenges so as to identify strengths, weaknesses, and possible specific improvements in case of future TLD rollouts.

The records of dispute providers report a large number of allegations of bad-faith registrations. These challenges suggest that existing protections for intellectual property may have proven inadequate in the context of the recent rollout of new TLDs. However, the widespread use of the STOP dispute resolution system suggests at least that complainants consider a STOP proceeding preferable to other ways of resolving a dispute, i.e. national courts.

While many domains have previously been challenged under the UDRP, and at least some of those domains have no doubt been registered by lawyers, the registrations listed above are notable because the administrative, technical, and billing contact practices intellectual property law.

Motivation

The purpose of this work is primarily academic -- to document the activity at issue for the benefit of those who seek to make policy decisions on related matters. In the context of ICANN's continuing evaluation of new TLDs, the availability of this data and analysis is intended to be helpful to policy-makers and other interested parties.

This page is made available to inform discussion about the registration and use of Internet domain names. The data contained here is not intended for use for other purposes, and it should not be used for other purposes without first contacting the author.

In order to confirm the results of my testing and to attempt to obtain certain other information, I sent an email inquiry to Mr. Kirkland. I have to date received no reply to the substantive questions posed. However, Mr. Kirkland has commented in ICANNwatch that "The domains were registered by clients of the firm for their own business purposes." Further substantive comments from Mr. Kirkland remain welcome, as are comments from others interested; with the permission of the author, comments may be posted or linked from this page as appropriate.