An arbitration panel has ruled that the passive holding of a domain
name by a company (i.e. where the name has no web site) in the
knowledge that its competitor has legitimate interests in the name,
is strong evidence of bad faith. It follows similar decisions by
another panel.
Two rival Minneapolis publishers took a dispute over the domain
name tctaste.com before a panel of the National Arbitration Forum,
a body authorised to resolve domain name disputes under the rules
of ICANN, the internet's technical co-ordination body.
Minnesota Monthly Publications (MMP) took action against Key
Enterprises. MMP owned a registered trade mark for the phrase TC
TASTE, which it used for a supplement to its food and drink
magazine. Rival publisher Key Enterprises registered the domain
name tctaste.com in 1998, more than one year after MMP’s first use
of the mark.
No use was made of the domain name; attempting to visit the site
gave a page-not-found error. Lawyers for MMP wrote to the rival
company and demanded transfer of the name, but received no
response.
The arbitration panellist, James P. Buchele, found that Key
Enterprises had no rights or legitimate interests in the domain
name, taking its non-use as proof of that fact.
On the question of whether non-use could amount to bad faith use
of the domain name, Buchele said: “The passive holding of the
domain name by a competitor of [MMP] is a strong indication of bad
faith.”
Accordingly, the domain name was transferred to MMP.
Buchele based his finding on two similar decisions made before
panels of the World Intellectual Property Organisation (WIPO), also
an authorised domain dispute arbitration forum under ICANN’s
rules.
Full
text of the decision.
The two similar WIPO cases
DCI S.A. of Switzerland took action against Link Commercial
Group, a company based in the Bahamas, over the domain name
5asec.com, used for a dry cleaning business.
The decision.
Clerical Medical Investment Group Limited took action against
another Bahamas-based company over the domain name
Clericalmedical.com.
The decision.
