• E-TRADE MARKS

    Decisions Under the Uniform Policy

    IS A TRADE MARK REGISTRATION NECESSARY?

    Jeanette Winterson is a well known British author, whose book Oranges Are Not The Only Fruit won the Whitbread prize in 1985 and was subsequently serialised on British television.

    Ms Winterson’s fame meant that she was one of over 130 authors’ names that were registered as domain names by Mark Hogarth, a Cambridge academic. Having discovered Dr Hogarth’s ownership of her Internet name, Ms Winterson moved, via the WIPO run dispute procedure, to regain ownership of the domain name. Interestingly, however, she based her case on the alleged common law rights in her name, since she did not own any relevant trade mark registrations.

    The WIPO arbitrator found that Dr Hogarth had no rights in the author’s name and had registered it in bad faith. He therefore ordered the transfer of the domain name to Ms Winterson. According to the arbitrator it was not necessary for Ms Winterson to establish whether passing off had occurred, it was enough for the author to show that she owned unregistered trade mark rights in her name.

     

    Comment

    This was apparently the first domain name dispute resolved under the uniform procedure that did not involve a registered trade mark. It might be argued that the particular facts of this case, involving a living and famous author with a somewhat unusual name, contributed to the outcome.

    However, the later decision to require a US resident, Russell Boyd, to transfer the domain name juliaroberts.com to the well known Hollywood actress on the same common law basis, suggests that in certain cases at least, the fame of the individual may be enough to achieve a successful outcome. After all, Julia Roberts is hardly an unusual name.

    The important factors in domain name disputes involving personal names are therefore the distinctiveness of the name (inherent or acquired through use) and the legitimacy of the interest of the registrant in the name. In the above cases, for example, if a Jeanette Winterson and a Julia Roberts had registered the domain names for reasons unrelated to the author or the actress, it is doubtful that WIPO would have ordered the transfers requested.

    Stop Press:

    It is reported (The Guardian, 9 August 2000) that a WIPO complaint against the domain name barcelona.com has led to the transfer of this geographical name from a US company Barcelona.com, Inc. to Barcelona city council.

     

    WHAT IS NOT BAD FAITH?

    In many cases brought under the uniform dispute resolution procedure, the existence of bad faith on the part of the domain name owner is clear. In some disputes, however, the situation is not so straightforward.

    In one reported case, for example, the authorised distributor of Militec lubricants had registered the domain name, militec.com. The distributor used his website to promote the lubricants. He even took the step of informing the trade mark owner (Adaptive Molecular Technologies) of his Internet activities and initially received no adverse reaction to the militec.com website. Having changed its view on the ownership of the domain name, the trade mark owner sought the transfer of militec.com from the distributor. The arbitrator refused to order the transfer because, on the evidence before him, he was unable to conclude that either the domain name was registered in bad faith or that the distributor had no legitimate interest in the name.

    In another case, the complainant, Vanguard Medica, owned a UK trade mark registration and a US trade mark application for Miguard for a pharmaceutical preparation. They planned to sell Miguard as a migraine treatment and released details of those plans to the public on 1 February 1999. On 7 February 1999, Theo McCormick, the respondent, registered miguard.com as a domain name. A year later Vanguard, having already succeeded in putting the domain name on hold, filed their complaint with WIPO.

    In their submissions, Vanguard pointed to the coined nature of the trade mark Miguard and to their earlier trade mark rights. They also drew the arbitrator’s attention to the timing of Mr McCormick’s application to register miguard.com and to the fact that he owned the domain names planRx.com and agendaRx.com and that, since Rx had a well known meaning in the pharmaceutical business, he was not entirely unfamiliar with the industry and its products. Finally, they noted that a person with the same name as the respondent and living in the same state had worked for a pharmaceutical company. (This was information gleaned from the Internet). Mr McCormick responded by noting that Vanguard’s US trade mark rights consisted of only an application and that the US Office had already allowed an even earlier US trade mark application for Miguard owned by a third party. He also claimed that the website referred to his household pet, a dog that had earned the title "Miguard". Finally, he pointed out that he had no intention of selling the domain name, having already turned down a $1000 offer from Vanguard, and that the Rx domain names were for web based calendars rather than potential sites for the direct sale of pharmaceuticals.

    The arbitrator refused to cancel or transfer the domain name. Vanguard had not provided the necessary level of proof to establish either Mr McCormick’s bad faith or his lack of a legitimate interest. There were indeed suspicions about the respondent’s true motives in registering miguard.com, but this was not enough. The burden of proof lay with Vanguard and they had failed to meet that burden.

    In a third case, the domain name at issue was avnet.org. This had been registered in February 1995 by AV-Network, Inc., a non-profit organisation that, from 1996 onwards, offered Internet services to its members at the avnet.org website. The complaint was made by Avnet, Inc. an electronics company who owned numerous trade mark registrations for the mark Avnet and who also owned the domain name avnet.com. All of the rights owned by Avnet, Inc. were established prior to February 1995.

    In October 1998, Avnet, Inc. first became aware of the avnet.org website and wrote to AV-Network demanding that it should be closed down. Following extensive negotiations, AV-Network offered to sell avnet.org for an amount in excess of the actual cost of registering and maintaining the domain name. Instead, Avnet, Inc. managed to get the avnet.org website suspended under the NSI domain name policy. Once the ICANN uniform procedure was adopted, however, all domain names that had previously been on hold were reactivated. Avnet, Inc. became aware of the reactivation of AV-Network’s website and therefore issued a complaint under the uniform procedure at WIPO.

    The arbitration panel ruled in favour of AV-Network, since the complainant had failed to establish that the respondent had no rights or legitimate interests in avnet.org. A respondent may be able to resist a complaint if it can show that

    • It has used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

    • It has been commonly known by the domain name even if it has acquired no trade mark rights;

    • It has made legitimate non-commercial fair use of the domain name without intent to divert customers or to tarnish the trade mark.

    ince AV-Network’s activities met the first and third of these criteria, there could be no justification for allowing Avnet, Inc’s complaint.

     

    Comment

    These three cases show that, at least under the ICANN procedure, the original owner of the domain name is not entirely powerless to resist a complaint made by a trade mark owner. If the domain name registrant can establish a legitimate interest in the name as a distributor of trade marked goods (or the like), through honest prior use of the domain name as a website or by offering a convincing explanation for their choice of domain name, they may well be able to resist an ICANN type complaint. In such cases, a trade mark owner may well have to seek redress in the Court, where the discovery of documents may well improve their chances of successfully gaining control of a conflicting domain name.

     

    WHEN MUST BAD FAITH BE SHOWN?

    Under the uniform procedure, the bad faith of a domain name registrant must be shown both at the date of registration and subsequent to that date. This requirement was confirmed in a case involving the name telaxis.com.

    In this case, the registrant (William Minkle) had the domain name and had announced the intended launch of a real estate service at the site before the complainant (Telaxis Communications) had either filed any trade mark applications for the Telaxis mark or had begun using Telaxis in their company name.

    After Telaxis Communications had filed their trade mark applications, they entered into negotiations with Mr Minkle aimed at the transfer of the domain name. These negotiations appeared to be progressing satisfactorily until, in December 1999, visitors to telaxis.com began to be transferred to either the websites of Telaxis Communications’ competitors or to a pornographic website. At this point, Telaxis Communications issued a complaint to WIPO under the ICANN procedure,

    The WIPO arbitrator refused to order the transfer. Although Mr Minkle’s subsequent activities (from December 1999 onwards) were acts of bad faith, his original registration was made in good faith. Since, under the uniform procedure it was necessary to show that the domain name "has been registered and is being used in bad faith", the complaint failed.