Dawn Osborne is a Partner in Willoughby & Partners. She canbe contacted at Dawn@iprights.com.
The ICANN Dispute Resolution Policy is a policy designed to resolveinternational domain name disputes involving ‘cybersquatting’ or theunauthorised use of a trade mark or a name confusingly similar to a trade markin a domain name with a bad faith intent to profit without just cause. Thepolicy covers .com, .org and .net names. (Country code Domain Name Registrarscan adopt the Policy voluntarily, indeed the Island of Nuie (.NU) has done so.)
This article is the result of reading over 125 ICANNdecisions from three forum providers, the World Intellectual PropertyOrganisation (WIPO), the National Arbitration Forum (NAF) and E-Resolution(although I am only aware of one decided case for the latter). Already we havelearned a tremendous amount about the process.
What Have We Learned?
1. It is working
To have 125 cases decided in a matter of approximately threemonths is a triumph! Whilst there are cases in which the result looks odd fromlooking at the judgment cold and there do seem to be inconsistent decisions, theoverwhelming number of decisions seem to be correct. Wrinkles should be ironedout rapidly given the volume of published decisions.
2. It is speedy
Decisions are being returned on average in about 35 days fromfiling of the complaint.
3. It is cost-effective
Fees of at least $1,000 for one arbitrator must be paid.However, the attorney’s fees for drafting a complaint are piffling compared tothe costs involved in taking a matter to court. In the americanvintage.com casethe complainant was unrepresented and also successful.
4. Cybersquatters get cybersquished
Blatant cases of cybersquatting are dealt with easily by theprocedure.
Here are some examples of cybersquatting cases withsuccessful complainants.
- adobeacrobat.com/acrobatreader.com
The Complainant was the owner of US trade marks for Adobe Acrobat and Acrobatreader for computer goods and services. The Respondent had over 400 domain namesmany of which contained third party trade marks or marks confusingly similar tosuch marks. The domain name was not used. No formal response was filed.
- Christiandiorcosmetics.com/christiandiorfashions.com/diorcosmetics.com/diorfashions.com
The complainant had several US registrations including Christian Dior andDior, had been trading in fashions and cosmetics for several decades and waswell known.
It claimed that the respondent denied it had anything to do with the domainnames. It had applied for the names for a client who had never paid and that NSIshould have cancelled the registrations. However the respondent had 46 otherregistrations including marks such as Gucci, Versace, Giorgio Armani, LouisVuitton, Levis. The domains were never used.
‘By refusing to transfer the domain names while at the same time acknowledging that he has no rights or legitimate interests in them, the respondent knowingly prolongs a situation which is at odds with the legal rights of the parties involved and knowingly obstructs the registration of the domain names in the name of the complainant and their subsequent use by the complainant.’
- bonide.com
The complainant was the owner of the US trade mark for Bonide forfertilizers, first used in 1927.
The respondent had registered 35 domain names most of which were not up andrunning and in doing so had infringed third-party trade mark rights. It hadoffered the mark for sale and offered false contact information in doing so.
5. No secondary meaning – no joy for the complainant
Even dealing in generic domain names is legitimate. Thesecases are examples of how things work.
- concierge.com
The complainant owned the Canadian trade mark Concierge for computer softwarerelated to travel services.
The respondent was using the domain to provide online travel services inconnection with the Conde Naste name. There was no evidence of cybersquatting orconfusion. The fact that the respondent did not use the domain name in itscorporate name was irrelevant.
It was decided that the first registrant should prevail in circumstances suchas these where the word is generic. The mark Concierge was not exclusivelyassociated with the complainant.
- allocation.com
The complainant had a German registered trade mark for Allocation forcomputer goods and services and had registered allocation.net, allocation.organd allocation.de. It had been trading since 1997.
The respondent registered in March 1999. After the complaint was filed therespondent started to use the domain for a portal site giving access to certaincategories of the Yahoo portal site. He operated a Web site selling 400 domains.The price for allocation.com was US $25,000. A number of the domains containedregistered trade marks of different third parties in different countries.
The respondent argued that the allocation mark was not famous and that he hadregistered it as an ordinary word without an attempt to sell to the complainant.The panellist agreed that sale of generic domain names could be bona fide. Therewas no evidence that the respondent was aware of the complainant. He said he hadused a dictionary to select generic names. The fact that some of therespondent’s domains were trade marks in some countries was to be expected dueto the national nature of trade mark rights and different languages. Therespondent’s site was not aimed at Germany and he was not particularly activethere.
‘nothing in the policy can be construed as requiring a person registering a domain name to carry out a prior trade mark search in every country in the world for conflicting trade mark rights’.
- cartoys.net
The complainant had used the mark Car Toys for car-related products since1987 and had a US trade mark. It also had cartoys.org and cartoys.com.
The respondent was a domain name dealer of ‘common words’ and had offeredto sell or lease the name.
The complainant, it was decided, had not shown secondary meaning in its mark.The respondent had shown the name was in use elsewhere. As it was legitimate tosell generic domain names. The offer to sell in these circumstances did not showbad faith.
- craftwork.com
The complainant owned two US registered trade marks for a stylised form ofCraftwork and used the name for hand-tools in the construction industry.
The respondent had registered hundreds of domain names, but of common wordsnot containing other’s trade marks. It had demanded up to $30,000 for thename. The respondent said the complainant was guilty of reverse domain namehijacking.
The complainant was found to have failed to show that the domain name wouldbe associated exclusively with it alone. Offering to sell in these circumstanceswas not bad faith.
6. Legitimate competing rights are not appropriate for the ICANN policy
There are a number of cases where the respondent kept hisname due to legitimate use.
- usource.com/usource.net
The complainant was engaged in consulting and brokering services for energysupplies and had used Usource since March 1999, having spent considerable sumspromoting it.
The respondent registered the domain to sell computer-related goods over theInternet. It had taken steps to incorporate as Usource and had got a toll-freenumber, but had not used the domain due to financial and time constraints.
The respondent’s registration of the domain names in dispute predated thecomplainant’s use and there was no bad faith. The parties were in differentfields of activity. The respondent kept his domain name.
- microinfospace.com
The complainant had US registered trade marks for Infospace for computergoods and services and ran a very well known site at infospace.com. However ithad not led any evidence of recognition of the mark in China.
The respondent used the domain in China in relation to geographical computersoftware. There was no evidence of bad faith.
‘The panellist notes that a different outcome may be reached in a courtroom where the likelihood of confusion can be taken into account, irrespective of the intentions of the respondent in registering the domain name and where evidence can be properly tested. That issue is however outside the scope of this decision.’
- avnet.net
The complainant owned trade marks for distribution services in relation toelectronic and computer equipment.
The respondent had traded as Avnet Inc supplying aircraft engine componentssince 1989. When the dispute arose the respondent suggested it might sell thename if a price could be agreed. However, the name Avnet had been used by therespondent for a bona fide non-competing business. The respondent was notengaged in a business of domain name dealing. Since the respondent haddemonstrated a long-standing interest in the name it was not bad faith for it toseek more than out-of-pocket expenses to relinquish its interest in the name.
It is to be noted that the complainant had previously failed to get backanother domain name containing Avnet in the UK courts because the defendant wasa legitimate user. No doubt the use of the policy was cheaper!
- gigantor.com/gigantor.net
Gigantor was a name conceived in 1964 by the president of the complainantcompany for a giant robot which features in a series of 52 half-hourchildren’s tv programs from Japan. The complainant was the owner of a federaltrade mark for the name.
The respondent was a software consulting business. It said it had never heardof the complainant and was in a completely different field. However thepanellist did find some aspects of the respondent’s case troubling. It hadnever set up a Web site and set up its corporate entity after being notified othe dispute. However, while the panellist thought that the respondent probablyknew of the character Gigantor, this was not enough for transfer to be orderedunder the policy.
- calstore.net
The complainant had a Californian service mark for Calstore for financial,postal and computer software services. It said it had been using it since 1995.
The respondent was involved in setting up an online shopping mall in Calcuttawith 50 or so shops. It gave evidence of a business plan. The complainant saidthe respondent had offered to sell for a very high price, but the respondentvehemently denied this.
Both parties had logical reasons for wanting to use the name. They were aworld apart. There was no evidence that they knew of each other’s activitiesor that the registration was in bad faith.
- telaxis.com/telaxis.net
The respondent registered telaxis.com for use in relation to real estateservices in June 1999. The complainant was a communications company which filedtrade mark applications in the USA and Mexico for Telaxis for telecommunicationservices three months later.
This was a case where negotiations had taken place for the sale of the namefor $44,000 – $60,000. It was really a dispute about legitimate competing rightsnot a cybersquatting case.
7. Excuses for legitimate use which lack any credibility will not passmuster
The following cases demonstrate the point.
- babydior.com/babydior.net
The complainant owned US and French trade marks for Baby Dior.
The respondent contended that it intended to use the domain in relation to ababy dinosaur character for a different product and different venue. However ithad tried to sell the domain names to the complainant several times.
- jpmorgan.org
The complainant had used JP Morgan for 70 years and it was registered in theUS and internationally. It also used jpmorgan.com and jpmorgan.net.
The respondent had also registered firstchicago.net and pncbank.net and saidit intended to use the names to post financial information regarding thecomplainants, but that this would be non-commercial. However, the respondentprovided no documentary evidence to back this up.
- easyjet.net
The complainant owned a number of trade mark rights for Easyjet in severalcountries including the US and the UK and also had a number of other domainnames containing Easyjet.
The respondent had not used the name except to point the name to a competitorof Easyjet, Go-Fly.com, who informed Easyjet that the respondent had tried tosell it to them. The respondent told the complainant that he was not in a hurryto sell, but could be persuaded to for a six-figure sum. The respondent said hehad registered the name to offer a directory of repair services for electricalitems such as jet printers in good faith. He said he knew of the UK airline, buthad checked and there was no registration for easyjet in the US.
The panellist found the the word ‘easyjet’ was not a generic descriptionfor an electrical repair services directory and did not need to be kept free forthose offering such services. It was found there had been no serious attempt totrade using the name in this way. Especially significant was that the sitecontained a link to an offer to buy the site. The link to the competitor siteshowed an intention to disrupt business and the request for a six-figure sumalso showed bad faith.
- steinlager.com
The respondent had applied for registration of Stein Lager in the US for roadpainting and striping machines. It had offered to sell the domain name for$NZ20,000. The complainant found a newspaper article where the respondent saidhe had chosen Stein Lager because it would generate many hits. The respondent orhis affiliates had 61 domain names, a significant number of which included thetrade marks of multinational companies. The panellist also found there wasinsufficient evidence of legitimate use for road marking.
- gilbarcoeclipse.com
The respondent adopted the domain name shortly after the roll out of Eclipsein the respondent’s home town. He had not used and had offered to sell. Healleged non-commercial use related to his son’s birth certificate but hadfurnished no proof.
- stelladoro.com
The complainant was the owner of registrations for Stella D’Oro in the US.
The respondent had offered to sell the domain name for $2,300 and owned 57domain names containing trade marks of third parties such as Nestle and Nabisco.
The respondent said it had a legitimate interest as it intended to use thedomain name (meaning Star of Gold) for a jewellry site in South America. But thepanellist found no evidence of this and the respondent had not used the name.
- finter.com/finter.org
The complainant had an International Trade Mark Registration for Finter BankZuerich and had traded as Finter since 1958. It had the domain name finter.ch.
The respondent claimed his dog was called ‘Ruby der Finter’ and produceda vaccination certificate bearing the name. He said ‘The sharp sound“FIN-ter” was the usual call to the pet.’ However, a company calledKilovar AG had contacted the complainant asking for 25,000 CHF for finter.comand 5,000 CHF for finter.org. The so-called client of Kilovar registered thedomains in question the day after Kilovar was incorporated. The panellist foundthat the Kilovar company had been created to create a vehicle to hide therespondent. No use had been made of the name and it had been offered for sale 12days after registration.
The complainants were successful in al the above cases.However, sometimes respondents will be given the benefit of the doubt as in thecase of miguard.com.
In that case, the complainant had UK trade marks for Miguardand Migard for pharmaceuticals – intended for use for headache relief drugs. Itsaid that the respondent registered miguard immediately after the complainantpublicised its intentions. The complainant also said the respondent owned thepharmaceutically relevant domain names planRx.com and agendaRx.com, which showedhe knew more about the pharmaceutical industry than he was making out.
The respondent said the name ‘Miguard’ was the name ofhis mixed-breed dog and was a derivative of ‘My Guard Dog’. He had refusedto sell the name for £1,000. He said the agendaRx.com and planRx.com names werefor use for Web-based calendars and would not be used in the pharmaceuticalindustry. There had been no use of the domain name as it had been on hold underthe old NSI dispute resolution policy.
There were significant factual issues in dispute: ‘There isindeed reason to be suspicious of respondent’s detailed point by point benignexplanation of his intentions for use of the Miguard.com domain name. Suspicionalone, however, cannot suffice to show that the respondent is acting in badfaith.’
The similarities to the Finter case can be noted. Whilst itis thought that the Finter case was rightly decided, it is thought that thepanellist was in error to start to weigh respective interests in the name in hisdecision.
8. Using your competitor’s name to divert their business or suggest anassociation is not legitimate
In the following cases the complainants were all successful.
- facetime.com
The complainant had been using Facetime since November 1998 in relation tocommunications services. It was the owner of a US-registered trade mark.
The respondent was a competitor and was aware of confusion being caused.
- planetrxx.com
The complainant was a Californian entity called Planet Rx, sellingprescription drugs and remedies over the Internet. The respondent was aLondon-based competitor called World Express Rx. The domain name (which appearsto have been created to take advantage of typographical errors with an extra x)was cancelled.
- fossilwatch.com
The complainant owned US trade marks for Fossil in relation to watches andother goods. It had been used in relation to watches since 1985. The respondentsold watches on the site.
- websterhall.com
The complainant owned a New York nightclub called ‘Webster Hall’ and hada US trade mark. The respondent operated a competing nightclub ‘The Vault’.
- Vybar.com
The complainant used Vybar on polymer products and had a US registration. Therespondent was using the site in relation to polymer products. Therespondent’s site showed awareness of the complainant’s mark.
- plasticdocshop.com/cosmeticdocshop.com
The complainant offered Internet directory services for 22 specialties withinthe medical profession for three years under the name docshop. Two of thespecialties were plastic and cosmetic surgery and it owned the domainsplasticsdocshop.com and cosmeticsdocshop.com. The complainants had a CalifornianState Registration for Doc Shop and had applied for a Federal one.
The complainant advised the respondent about its confidential strategies justbefore the respondents registered the domains. Being a competitor therespondents had registered the name in bad faith.
- SGS.net/SGSgroup.net
The complainant had registration for SGS in 13 countries. The respondent saidthat the domains were registered for use in a non-competing Internet business.However the panellist thought that, having regard to the parties’ fiercecompetition, the names had been registered in bad faith to disrupt thecomplainant’s business.
9. It is not legitimate for licensees of a mark to keep the equivalentdomain in breach of the licence or if the licence does not give it the right todo this
It is not legitimate for domain respondents to set themselvesup as authorised licensees by de facto use of the domain name. Cases where thelicensee/former licensee lost include:
- heelquik.com
The complainant owned the US trade mark for Heel Quik for shoe repair. It hadbeen used since 1983 and was distinctive.
The respondents were licensees operating a Heel Quik Store in Virginia. Thelicence agreement provided that the respondents could not register the Heel Quikmark without the express consent of the complainants. Any violation of thelicence agreement could not be a bona fide use. The doctrines of waiver andestoppel did not prevent the complainant asserting its rights to the domain.
At various times the respondents had offered to sell the domain to thecomplainant for excessive consideration or release from the licence agreement.The respondent’s use would cause confusion.
- Fanuc.com
The complainant had a trade mark for Fanuc which was used for machinery suchas robots.
Until he was put on hold under the old NSI policy the respondent had soldparts for Fanuc machines. He had offered to transfer for an unidentified amountin excess of $500,000.
- obagi.com
The complainant developed and marketed skin health products worldwide and hada USregistration for Obagi.
The respondent through a sub-distribution agreement from an authorised Germandistributor of the complainant’s products had been selling them in Italy untilit terminated in February 1999. The panellist found the agreement did not conferany rights on the respondent. The respondent had demanded up to $300,000 fortransfer.
- cunardcruise.com
The complainant was a cruise ship company which had been in business for over160 years. It had a large number of US registered trade marks including Cunardand Cunard Cruise.
The respondent intended to market the complainant’s services using thedomain. This was not a legitimate interest.
However, there is a fine line and authorised distributors ofgenuine products will be able to keep the name, as in the two cases below.
- militec.com
Although the complainant had registered trade marks for Militec in the US,the respondents were distributors of genuine products. They did not sellanything else on the site. Further there was some evidence of acquiescence bythe complainant in the use of the name by the respondent to sell genuineproducts in this way.
drawtite.com
The complainant was the owner of a US trade mark for Draw Tite for traileraccessories.
The respondent had a Web site promoting the complainant’s products. It saidit was an authorised sales representative and licensed to use the Draw Titemark. It sold only the complainant’s products on its site. The complainantdenied that the respondent was authorised and said the respondent was just apurchaser. The respondent had been using the domain for two years before thecomplainant objected. The panellist found that the respondent was using thedomain in connection with the bona fide offering of the complainant’s servicesand that the complainant had acquiesced in this. It was noted that disputes suchas this are better dealt with in courts used to determining complicated factualissues.
10. Unregistered trade marks can be protected under the policy
In the following cases, complainants with no registrationsnevertheless succeeded.
- the economictimes.com/the times of India.com
The complainant published The Economic Times and The Times of India. Itregistered the marks in India for newspapers in 1973 and 1943 respectively, butthese had apparently lapsed.
The respondent used the domain names to point to the site indiaheadlines.comproviding India-related news. It said the complainant had no trade mark rightsin the US where the respondent was based and that the complainant’s Indiantrade mark registrations had been allowed to lapse since 1980. It also contendedthat the names were descriptive. It said it had built up goodwill itself in thedomain names and had no bad faith.
However, the panellist thought that the complainant’s newspapers were verywell established and had a presence on the Web so they could be read worldwide.He thought that the titles were used to identify the complainant and were notdescriptive. He thought it was highly likely that people visited therespondent’s site due to the complainant’s reputation rather than due to anygoodwill of the respondent.
With regard to the respondent’s challenge of the relevance of the Indianregistrations, the panellist said that the international nature of the Internetmeant that consideration could not be confined to the rights in the countrywhere the domain was hosted. It was also not fatal that the complainant’s markcould not have been registered in any particular country. In India the wrongfuladopting of the titles would lead to passing off. As regards the allegationsthat the complainant’s trade marks had expired, the nub of the complaint wasreputation from actual use not the fact of registration.
The respondent had attempted to attract Internet users for commercial gain bycreating a likelihood of confusion.
- soloinsurance.com
The complainant had operated an insurance business since 1988 and now hadthousands of insurance policy holders in California.
The respondent registered the site as an information site for those shoppingfor insurance, but did not sell insurance. He had created a likelihood ofconfusion as to endorsement of his site for commercial gain.
- southernbank.com
The complainant was a banking association in North Carolina. It had thedomain name registration which lapsed apparently through the fault of thecomplainant’s agent. It claimed common law rights in the marks Southern Bankand Southern Bank.com which it had used since 1997.
The respondent registered the name and asked for a five-figure sum totransfer.
- buypc.com
The complainant had had common-law rights in the mark buypc.com for the saleof personal computers in California since January 1996.
The respondent had put the name up for sale on the Great Domains Web site andhad not used the name.
The respondent was extremely unhappy with the outcome of this case and saidin the press that he was considering starting court proceedings to keep thename.
11. The procedure is designed to be quick
Although panellists have discretion to allow additionalmaterial, often ‘further bites of the cherry’ are refused in the interestsof costs and speed. For example, in the oicq.com/oicq.net case AOL tried to addin two further domain names the respondent had registered since the complaintwas filed. This request was refused.
12. Decisions will not be kept confidential because a party would ratheravoid publicity
Ronson asked for the decision to be kept confidential in theronson.com case, but this request was denied. Such a request from thecomplainant was also denied in the steinlager.com case.
13. It is wise not to make remarks in open correspondence you will live toregret
In the loanmart.com/loanmart.net case it was reported thatthe complainant had e-mailed the respondent telling him to ‘lube up’, ‘athreatening metaphor commonly used to warn one of hardball or unfair tactics’.Also, the complainant’s attorney told the other side to ‘go to hell’ in ane-mail. Such behaviour does not reflect well on complainants.
Matters Still to be Resolved
14. What is bad faith?
It is to be remembered that a respondent’s intentions andconduct have to be viewed in the round – there is no precise definition and whatcould be bad faith in one case may not be in other circumstances. However, thereare inconsistencies. For example in the tvazteca.com, tvazteca.net andtvazteca.org case the panellist said:
‘The respondent has demonstrated a pattern of bad faith bythe registration of at least one other prominent domain name Mundo Latino’.
However, in another case (ingersoll-rand.net,ingersoll-rand.org and ingersollrand.org) the panel was not persuaded thatregistration of three very similar or identical domain names was a ‘pattern ofconduct’ and did not think Internet users would be confused by being directedto a pornographic site.
Bad faith has also been held to be indicated in the followingcases for the following reasons:
- telstra.org
The failure to give correct contact info, failure to use the domain name,awareness of the very famous Telstra mark which could not be used withoutconfusion.
- Worldcup2002.com (and 12 other domain names containing World Cup)
The respondent said he wanted to use the names for fan sites, but indicatedhe was willing to sell to the complainant. The respondent had used three of thedomain names to point to a site which framed the official FIFA site. Thepanellist found this could not be a bona fide use. It was non-commercial but itwas not fair. With regard to the other ten domains containing World Cup, therewas no reason for the respondent to register so many names. He could have set upa fan site without warehousing so many related domain names.
- hewlittpackard.com
The respondent had copied the genuine Hewlett Packard site without permissionwith intent to deceive Internet users that they were on the genuine site.
- philipsindia.com
The respondent was engaged in computer-related services. He had begun work onthe complainant’s Web site, but had wrongly registered the domain name in hisown name. When he was requested to stop working on the project the respondentrefused to transfer the name even though the complainant offered to meet hisexpenses. The respondent agreed to transfer but kept making errors in theprocedure to do so and the complainant alleged deliberate delay and flimsyexcuses.
- benihanaoftokyo.com
The complainant ran a chain of restaurants called Benihana of Tokyo and had aUS registered mark. The complainant said the respondent admitted that he hadregistered it to sell it to the complainant and tried to extort money bythreatening to destroy e-mail messages meant for the complainant.
- Ingersoll-rand.net/Ingersoll-rand.org/Ingersollrand.org
The respondent had pointed the name to a site displaying pornographic contentfor a fee. The respondent refused to transfer back for out-of-pocket expenses.
- zwackunicum.com
The respondent used the domain name to hyperlink automatically to the site ofone of the competitors of the complainant. The panellist found that therespondent must have been aware of the fact that Zwack Unicum was a well knowntrade mark in Hungary with a good reputation. Also that Zwack Unicum was aunique liqueur well known throughout the world. Directing domain name users tothe site of the complainant’s competitor showed bad faith.
- wwwInfospaces.com
The panellist thought the name had been registered to cause confusion. ‘Theaddition of www and s to the complainant’s mark is best explained as adeliberate attempt to exploit users’ typographical mistakes when seeking thecomplainant’s Web site.’ This was bad faith.
- aeroturbine.com
The respondent had not used the name. Passive holding plus bad faithregistration constituted bad faith use.
- saint-gobain.net
The respondent first of all linked the name to a site containing limitedinformation about the complainant and then the history of Saint-Gobain forest.He said the name Saint-Gobain was the name of a saint, a town and a forest andthat whilst he did not have the right to sell merchandise under the name, hisholding it was a ‘symbol of the fight against the oppression of thepowerful’ and that the name belonged to the whole world. The respondent arguedhe was using the site to voice opinions about the complainant. The panellistsaid saying the name belonged to everyone was not the same as showing anindividual legitimate interest in the name. ‘It goes without saying thatshareholders or other interested parties have the right to voice opinions,concerns and criticism with respect to a listed company and that the Internetconstitutes an ideal vehicle for such activities. The issue at hand is howevernot, as the respondent seems to contend, the freedom of speech and expressionbut the mere choice of the domain name used to exercise this inalienable freedomof speech and expression.’ The panellist found that in keeping the domain name‘as a symbol of our freedom and dignity’ the real goal of the respondent wasto prevent the complainant ‘who the respondent does not seem to hold in highesteem from reflecting its trade mark in the Domain Name’.
- worldwrestlingfederation.com
Merely offering to sell could in some circumstances constitute bad faith.
- csa-canada.com/csa-canada.net
The complainant owned trade marks in the USA and Canada for CSA in respect ofdevelopment of standards, product testing and registration of managementsystems. The respondent was a manufacturer of ozone generators. When thecomplainant failed to certify its product, the respondent registered the domainnames and maintained sites criticising the decision by the complainant not tocertify its product. The respondent maintained that the mark was generic, andthat it had a right of non-commercial free speech. However the arbitrator heldthat this right did not necessitate the use of trade marks. Ultimately therespondent had a commercial purpose in publicising the dispute. Domain nameswere a method of identification and Internet users were looking for thecomplainant and not the respondent. The respondent was intentionally attemptingto attract Internet users to its Web site by creating a likelihood of confusionwith a view to commercial gain.
‘The evidence here indicates that the domain names which have been registered and are being used by the respondents are plainly taken from the complainant, are being used to attack the complainant and to promote the commercial and other interests of the respondent without a legitimate non-commercial or fair use excuse. In the opinion of the panel, that in itself amounts to registration and use in bad faith.’
When arbitrators are making statements in particular cases asto what constitutes bad faith, it is to be remembered that each factual matrixis different and that it is not as simple as to say registering three otherdomain names or three other domain names containing third-party registered trademarks constitutes bad faith. The test is and should be flexible.
15. How much detail should published decisions contain
Generally decisions emanating from the WIPO tend to have moredetail and therefore tend to look fairer in general than the NAF decisions.However, this could be a cosmetic problem.
As the NAF panellists are all retired judges, their decisionshave the feel of pronouncements from the bench and therefore their decisionstend to contain less explanation than the WIPO decisions as to why the decisionhas been made. As I think it is important that justice not only be done but beseen to be done under the policy, I hope that the NAF decisions will be asinformative as the WIPO ones in future.
16. More assistance for respondents
Lots of respondents are not filing responses and as a resultthe panellists tend to take the complainant’s submissions at face value insuch cases. It is to be hoped that this is largely because the respondents donot have a defence rather than because they are ill-equipped to defendthemselves. A WIPO model complaint is available to assist complainants. A modelresponse is being introduced to help respondents cope if they wish to defend.
17. Should the policy be extended to cover other names
It has been suggested that the policy should be extended tocover the names of individuals, geographical designations such as champagne,names of international organisations and generic names for drugs. This issue iscurrently being explored by WIPO.
Conclusion
I think the procedure is working very well. Will the policyhave more far-reaching influence? Judge James A Carmody (Retired), who is a NAFpanellist, certainly seems to think so from his comments in the oicq.net/oicq.comcase.
‘The ubiquitous nature of the Internet does not lend itself to the argumentthat domain names and confusingly similar marks may co-exist in differentlanguage or nation markets and the dated case authority cited for thisproposition will no doubt be revised when the court begins to consider theimplications of cyberspace.’
Interesting Times! We shall see!
