Posted Sunday, November 21, 2004
.COM companies are all the rage with the stock market riding high and falling as the mood shifts. Everybody it appears is going on-line and there has been a massive rush to register all manner of domain names. In February 2000 there were over 200,000 .co.uk domains registered compared to just under 15,000 at the same time last year and there were just under 9,500,000 .com domains registered by 1st March 2000! The domain name is seen as central to any marketing strategy as it is the "sign post" to the web site hopefully worth millions!
However, due to the simple fact that the internet is global, there are not enough domain names to go round and problems arise when there are competing businesses with the same name. To address this problem the World Intellectual Property Organisation (WIPO) through their Arbitration and Mediation Centre established a dispute resolution service to allow a cheap and effective means of resolving disputes without going to court. It follows the Internet Corporation for Assigned Names and Numbers (ICANN) dispute resolution policy which deals with disputes concerning .com, .net, and .org domain names.
The ICANN procedure is only available for disputes concerning allegedly "abusive" registration of the domain name. There are three criteria that have to be met.
1.The domain name is identical or confusingly similar to a trademark or servicemark in which the complainer has rights;
2.The domain name holder has no rights or legitimate interests in the domain name; and
3.The domain name has been registered and is being used in bad faith.
A series of examples of bad faith are given in the ICANN policy document.
A recent case heard by the WIPO arbitration and mediation centre demonstrates the effectiveness of the procedures. In Digitronics Inventioneering Corporation -v- @Six.Net Registered the two domain names in question were "sixnet.com" and "six.net". The complaint was submitted electronically to the WIPO Centre on 17th January 2000 and a Panel appointed. The claimant alleged that the domain name holder had no rights or legitimate interests in respect of the domain name and that the domain name had been registered in bad faith.
The Panel decided that the respondent had been known by the domain name "Sixnet" even though it had acquired no trademark or servicemark rights. As the complainer had failed to establish that @Six.Net had no rights or legitimate interests in the domain name the application was refused. Of particular interest is the fact that the respondents were a Canadian company and the claimants were registered in New York. Using the WIPO Panel complex jurisdictional problems were avoided. The decision was issued on 1st March 2000 only six weeks after the claim was raised.
Using the WIPO arbitration and mediation centre the parties were able to come to a cost effective resolution to an International dispute within the specified timescale of between 45 and 50 days.
About the Author
John MacKenzie is a Solicitor Advocate and Associate with Masons in Glasgow. He advises IT companies on Internet, intellectual property and data protection issues. If you would like more information on the domain name dispute resolution process, or have problems with domain names then please contact John MacKenzie on +(44) 141 248 4858. You can e-mail him at firstname.lastname@example.org.