• e-TRADE MARKS

    Recent ICANN Decisions

    We have noted the following recent decisions made under the ICANN domain name dispute resolution policy:

    • Well known authors, relying on common law trade mark rights in their names established on the back of significant book sales, continue to succeed in obtaining the transfer of domain names containing their names. The most recent examples are Margaret Drabble and Louis de Bernieres, who both successfully complained about the registration of the domain names margaretdrabble.com and louisdebernieres.com. The respondent in both cases was a company that was closely linked to Mark Hogarth, a University lecturer, whose ownership of about 130 domain names based on the names of well known authors was recently widely publicised. These decisions are in line with the jeannettewinterson.com case which Mr Hogarth lost last year.

    • There have been a number of cases in which a trade mark owner has succeeded in closing down or obtaining the transfer of derogatory websites incorporating the trade mark of the object of those derogatory comments.

    • However, the failure of the parent company of the NatWest bank to close down the website natwestfraud.com shows that a domain name, in which the additional word added to the mark is not slang or banter (e.g. "sucks"), but a standard English word like "fraud", may be harder to combat. The site had been established by a relative of a Mr Malhotra who had sued NatWest in the English Court in 1998 and had been unsuccessful in that litigation. Not surprisingly, the natwestfraud.com website contained a substantial amount of material that was unflattering to NatWest bank.

    The Panel denied the Bank's complaint and refused to order the transfer of the domain name because they did not believe that natwestfraud.com was confusingly similar to the trade mark NatWest. The Panel stated that it had no jurisdiction to stop the posting of material that was defamatory to the bank at the website. The presence of such material could lead to a finding that the domain name owner had registered and used the domain name in bad faith. However, it could not affect the decision on similarity (of domain name and trade mark).

    • In the last edition of Make Your Mark, we reported that the city of Barcelona had successfully obtained the transfer of the domain name barcelona.com. By contrast, in a recent decision, the Council of the Australian city of Brisbane failed in their attempt to claim ownership of brisbane.com, which had been filed by an Australian advertising agency. The City Council failed to show that they owned any trade mark rights (registered or common law) in either Brisbane or Brisbane City.

    • 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 or other object of their affection as a domain name may be legitimate and not in bad faith. See, for example, the unsuccessful case brought by the Italian football club Juventus against juventus.net. There was no evidence that the domain name holder had offered to sell the name to the club for gain or that he had filed for other domain names that might conflict with the trade mark rights of third parties. Furthermore, the owner of juventus.net had not used his website to cause confusion with the football club. His site contained a clear disclaimer and stated that it was "only a fan appreciation site".

    • The bad faith registration of domain names that are confusingly similar to the legitimate rights of others are generally treated in the same way as domain names that are identical with such prior rights. See, for example, the recent transfer of plaboy.com, harypotter.com and scobeydoo.com to the rightful owners of the trade marks Playboy, Harry Potter and Scoobey Doo respectively.

    • Before some ICANN Panellists, at least, it may not be possible to obtain the transfer of a term that is a business name that is used by a company's customers to refer to the company, if that term is not also a trade mark owned by the company. It appears that younger customers of the Canadian Tire Corporation refer to the places of business of that esteemed company as Crappy Tire. Perhaps not surprisingly, the company does not own any trade mark rights to that expression. This did not stop them, however, from bringing a complaint about the domain name crappytire.com. The complaint was denied because the tyre company did not have any relevant trade mark rights. The Panellist commented that "trade names, passing off or other areas of unfair competition are not covered by the Policy". (This ruling seems to be at odds with the UK based decisions on author's names.)