Tuesday, 7 February 2017

Disputed Domain Names

There is a well-established body of decisions about the conflict between owners of trade marks and the use of a domain name which appears to conflict with the trademark. The ICANN UDRP system enables trademark owners to make a claim through dispute resolution providers such as the World Intellectual Property Organisation (WIPO) to make a claim that the owner of the domain name must transfer the name to the trademark owner.

On the face of it, you would think that once you establish the trademark, that the domain name should be transferred. In a recent decision CIA. Industrial H. Carlos Schneider v. WHOIS Privacy Service Pty Ltd. / Domain Admin, Ashantiplc Limited which can be found here http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-2167  there was a majority decision refusing to transfer the name.

The majority decision was not as strongly in support of refusing transfer as the third member of the panel. They went through the usual exercise of establishing that the trademark owner/applicant did have a legitimate interest in the domain name, but found that the respondent had not registered in bad faith and that the name was not being used in bad faith (See, e.g., Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

Interestingly, there was a minority decision from a very senior arbitrator Hon Neil Brown QC who
the trademark owner has neglected to renew the name, and only made the application to have the name transferred, almost a decade later. There is a line of authority which considers that the equitable doctrine of laches applies to such applications, which is that if you sit on your remedies, then you are likely to be rejected. The panellist delivered a strong decision about delay, emphasising the failure to renew for a very substantial period of time. The lawyer for the respondent, John Berryhill PhD will no doubt be carving another notch in his belt, but the decision was in reality fairly predictable.

For those who want a detailed analysis, I would always recommend the text on Domain Name Arbitration by Gerald M Levine, which interestingly has a foreword by the Hon Neil Brown QC,

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