e-Trade Marks

Practice Developing under the ICANN Dispute Procedure

As discussed in the last edition of Make Your Mark (Autumn 2000), the ICANN domain name dispute resolution policy requires three criteria to be met if a complaint is to succeed. These are

• The domain name must be identical or confusingly similar to a trade mark (or service mark) in which the complainant has rights,

• The registrant (respondent) has no rights or legitimate interests in respect of the domain name, and

• The domain name has been registered and is being used in bad faith.

The writer has analysed a number of the decisions recently published at the WIPO Arbitration and Mediation Centre website (arbiter.wipo.int/domains/) in order to try to discern any general rules of practice that are developing in this area. Points of particular interest that were identified are set out below:

• An ICANN Panel is not a general domain name Court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. The Policy is narrowly crafted to apply to a particular type of abusive cybersquatting. An attempt to shoehorn what is essentially a business dispute between former partners into an ICANN proceeding is misguided, if not a misuse of the Policy (thethread.com, D2000-1470). Similarly, a trade mark infringement, passing off or unfair competition dispute, involving in part a domain name, should be settled by a Court rather than through the Policy (palmax.com, D2000-1492; parmaham.com, D2000-0629).

• The evidentiary standard for a complainant under the ICANN Policy should be akin to that required for a summary judgement before the US (or UK) Courts. The Complainant has the burden of showing that there are no disputes as to material facts. If there are disputes as to such facts, the request should be denied and the case should be decided by a full action before the Court (madonna.com, D2000-0847).

• The ICANN Policy and trade mark law are not coextensive. The fact that a Respondent may maintain a domain name registration (after an ICANN dispute) does not suggest or imply that it may use the disputed name in a manner that would infringe a Complainant’s trade mark rights (capeharbour.com, D2000-1435).

• Selling a domain name is not in itself prohibited by the ICANN Policy. Such an action is only prohibited if the other elements of the Policy are also violated. Registering generic names, even with the intent to resell them, is a legitimate business activity (financialreview.com, D2000-1403).

• It is possible either to close down or to obtain the transfer of derogatory websites incorporating the trade mark of the object of those derogatory comments. See, for example, guinness-sucks.com, D2000-0996; natwestsucks.com, D2000-0636; wal-martsucks.com, D2000-0662 and directlinesucks.com, D2000-0583. Decisions in this area do tend to depend on the specific facts of the case, however. Some ICANN panellists, at least, are conscious of the tension that can exist between IP rights and free speech and it should therefore not be assumed that all such cases will succeed. For example, an individual with a serious and legitimate complaint against a company might be able to sustain a site such as, ihatecompany.com.

• It may be possible for a city, through its government or similar, to obtain the transfer of a domain name containing the city name from a third party. See, for example, barcelona.com, D2000-0505. This (Barcelona) decision should be contrasted, however, with another ruling (made by eResolution, see www.disputes.org/decisions/0202.htm) that the Chinese region of Huangshan did not have the right to the domain name huangshan.com (AF-0202), owned by a private Hong Kong company. It should also be compared with the stmoritz.com (D2000-0617) decision where the Swiss ski resort was unable to prove that they owned exclusive rights in the geographical name.

If the barcelona.com decision is eventually treated as a valid precedent, does this mean that domain registrations for boston.com, owned by the Boston Globe newspaper, amazon.com, owned by the well known on-line book retailer, and barcelonadesign.com, owned by a legitimate US based design company, are in danger from city or regional governments in the US, Brazil and Spain respectively? Further, is it a legitimate commercial activity for a private enterprise to register the word Barcelona as a trade mark at OHIM, if it is not legitimate to register it as a domain name?

• Whilst, in many cases, a famous personality or their estate should be in a position to complain successfully about the registration of their name in a domain name, even if they only own unregistered trade mark rights in their name, (see madonna.com; juliaroberts.com, D2000-0210; jeannettewinterson.com, D2000-235; danmarino.com, D2000-0598; and alaindelon.com, D2000-0989), it may not be so straightforward to win back a nickname, particularly if this nickname is an ordinary dictionary word (sting.com, D2000-0596).

• The owners of well-known buildings should be in a position to prove that third parties have no rights or legitimate interests in the name of the building. See sydneyoperahouse.net, D2000-1224 and wembleystadium.net, D2000-1233. In the latter case, an argument that the domain name holder was known for many years by the nickname wembleystadium.net failed.

• A Complainant must provide sufficient evidence of his rights in the trade mark. If the mark is used under exclusive licence from the trade mark owner, then, if the licensee is the Complainant, he must provide details of both the trade mark rights and the licence (usatodaysports.com, D2000-1205 and knicks.com, D2000-1211). Similar comments apply to a Complainant who is an assignee.

• In the absence of registered trade mark rights, the Complainant must provide adequate evidence to show acquired distinctiveness or secondary meaning for a descriptive term (americanhomeproducts.com, D2000-1239).

• ICANN Panels often take a fairly liberal approach to the question of confusingly similar trade marks, particularly if it is thought that the Respondent’s website could be accessed by mistyping the legitimate trade mark. See, for example, homail.com and otmail.com, both found to be similar to Hotmail (D2000-554) and ayhoo.com and yafoo.com, both found to be similar to Yahoo (D2000-587).

• Registrations for and use of a stylised form of a descriptive phrase may not be adequate to prevent the use of that phrase as a domain name. Further, any constructive knowledge of such a mark that the Respondent may be deemed to have had under US trade mark law is limited to the stylised form registered and to the type of goods and services protected by the registration (lovelygirls.com, D2000-1270).

• Adding a suffix (e.g. map) to an inherently non-distinctive mark (Digital City) may, even if the mark is registered in the UK and US, avoid a finding of likelihood of confusion (digitalcitymap.com, D2000-1283). Compare this with the Hotmail and Yahoo cases discussed above.

• In the case of an internationally known trade mark (such as Nokia), it cannot reasonably be argued by the Respondent that he was unaware of the trade mark rights associated with such a mark when he registered a domain name containing the mark (nokia.com, D2000-0102).

• The Complainant has the burden of proving that the Respondent has no rights or legitimate interests in the domain name (digitalcitymap.com). If a prima facie case is established, the burden shifts to the Respondent to rebut that finding and to provide convincing evidence to the contrary (alaindelon.com).

• If a Respondent can show a legitimate interest in the domain name, albeit tenuous, the complaint may fail. If, however, the Respondent dilutes this tenuous interest by, for example, offering to sell the domain name to the Complainant at a profit or by being shown to be a hoarder of domain names containing third party trade marks, then the complaint may succeed. See

axachinaregion.com (D2000-1377), where the Chinese subsidiary of the AXA insurance group, known as AXA China Region Ltd, failed to succeed because the Respondent claimed his domain name was for use by a Buddhist group in the Ancient Xizang (Tibet) Autonomous China Region. Also compare casino-monaco.com (D2000-1318) where the Complainant’s case failed, with casino-montecarlo.com (D2000-1320), casino-monte-carlo.net (D2000-1321) and monacogambling.com (D2000-1332), where the same Complainant’s cases succeeded. Finally, see easy-jet.com (D2000-0465) where the Respondent’s claim that he was establishing a business providing refills for Ink-Jet printer cartridges was accepted.

• If a fan has a genuine desire to develop a site dedicated to the object of their interest, the registration of the personality’s name as a domain name may be legitimate and not in bad faith (edwardvanhalen.com, D2000-1313). However, if the Respondent delays preparations to start an online fan club and offers to sell the domain name to the Complainant for an excessive amount, this is likely to be viewed as a bad faith registration and use (bridgetjones.com, D2000-1000 and jordanf1.com, D2000-0233).

• If the Respondent owns a trade mark registration (in this case Tunisian) for the trade mark incorporated into the domain name under dispute, this does not necessarily mean that he has established legitimate rights. To succeed on this basis, the overall circumstances should demonstrate that the registration was obtained in good faith (madonna.com).

• If the Respondent fails to file a response, the Panel is entitled to draw an adverse inference in relation to legitimate interest and bad faith. Further, inaction (that is, the passive holding) of a domain name can amount to bad faith use. In the case of a third party registering a famous name such as Alain Delon, it is not possible to conceive of any plausible use the Respondent of the domain name could make of that name which would not be illegitimate (alaindelon.com). This should be compared to the comments and decision made in the edwardvanhalen.com case.

• Absence of use of a domain name is not conclusive evidence that the Respondent has no rights or legitimate interest in a domain name. However, absence of use, coupled with the fact that, at the time of registration, the domain name was registered with the address "Domain for Sale" may be prima facie evidence of such a lack of rights or legitimate interest

 

Comment

Although certain rules of practice appear to be generally accepted by ICANN panellists, it is clear that the diversity in both the nationality and the legal background of the panellists is leading to some inconsistencies of approach. This, of course, is inevitable given the international nature of the ICANN procedure. Having said that, it is also clear that the ICANN dispute procedure is proving to be a popular and effective way of dealing with cybersquatters. In such situations, it is already the legal action of choice for trade mark owners. However, if such an owner wishes to enforce his rights against a domain name holder who is not an obvious cybersquatter, he would, in many cases, still find it more effective to bring his case before a national Court, where strict rules of evidence will apply, rather than before an ICANN panellist operating the less rigorous dispute procedure.