A panel of the World Intellectual Property Organisation (WIPO) has
ruled that registering a domain name for the sole purpose of
selling it does not necessarily constitute bad faith under the
rules it uses for resolving domain name disputes.
WIPO is the most popular of four approved providers for the
Uniform Domain Name Dispute Resolution Policy created by the
Internet Corporation for Assigned Names and Numbers (ICANN), the
technical co-ordination body for the internet.
A case was brought by a company that publishes “The Australian
Financial Review” and owns Australian trade marks for “The
Financial Review” disputing ownership of the domain name
"financialreview.com" by a US company, Domain Names 4U, and an
individual, Fred Gray.
John Fairfax Publications Pty Ltd. complained to a three-member
WIPO panel that the domain name was being advertised for sale on
the internet and that it should be transferred to the company.
The publisher had to prove that the name was identical or
confusingly similar to its trade marks, that the owners had no
legitimate rights or interest in the name and that it was
registered and used in bad faith.
The WIPO panel agreed that the domain name was confusingly
similar to the publisher’s trade marks. However, they did not agree
that Domain Names 4U and Fred Gray had no legitimate interest in
the domain name and found no evidence that they knew or should have
known about a financial newspaper in Australia.
The panel quoted from an earlier WIPO case that disputed
ownership of manchesterairport.com:
“Selling a domain name is not per
se prohibited by the ICANN Policy (nor is it illegal or even,
in a capitalist system, ethically reprehensible). Selling of domain
names is prohibited by the ICANN Policy only if the other elements
of the ICANN Policy are also violated, namely trademark
infringement and lack of legitimate interest."
The panel in the present case added:
“Since registering generic names, even with
the intent to resell them, is a legitimate business activity, a
majority of the Panel holds that [the sellers] have a legitimate
interest in the contested domain name.”
Crucially, the panel found that the Australian publishers had
failed to show that the sellers had registered the name
specifically to sell it to them or one of their competitors.
Although the case is not the first of its kind, it helps
reinforce an interpretation of the ICANN policy that has been
inconsistent. In a dispute over the domain name crew.com, a WIPO
panel took an opposite position in April 2000, finding that
speculative registration of a domain name with a view to sale
constituted evidence of bad faith.
In the case of crew.com, the panel ruled that,
“Registration of domain names for
speculative purposes constitutes an abusive registration when
(1) the [owner] has no demonstrable plan to
use the domain name for a bona fide purpose prior to registration
or acquisition of the domain name;
(2) the [owner] had constructive or actual
notice of another's rights in a trademark corresponding to the
domain name prior to registration or acquisition of the domain
name;
(3) the [owner] engages in a pattern of
conduct involving speculative registration of domain names; and
(4) the domain name registration prevents
the trademark holder from having a domain name that corresponds to
its registered mark.”
