The case was brought by DomainRegistry.com, which claimed that
"domainregistry.biz" was identical to its service mark, and that
Internetters has no legitimate interests to the domain and
registered it in bad faith.
Internetters denied the allegations. It claimed that it
registered the domain because it was descriptive of the services
offered by the company, and it has been using it since 1996. The
company argued that, although DomainRegistry.com has applied for
the "domainregistry" trade mark, the application is still pending
in the US Patent and Trademark Office.
It also said that the domain in question was highly descriptive,
if not generic, and therefore the dispute procedure for .biz names
should not apply (a complaint may be filed under this procedure,
called STOP, only if the domain in dispute is identical to a trade
mark or service mark for which a party has registered an
intellectual property claim).
Paul Dorf, the NAF panelist rejected Internetters' arguments and
reasoned that the company did not provide "any evidence that it has
been commonly known, either past or present, by the domain name at
issue."
Moreover, he found that Internetters has not used, or made any
preparations to use the domain "in connection with a bona fide
offering of goods or services."
He also commented that "[DomainRegistry.com’s] rights in the
mark exist independent of any procedural benefit given by the US
Patent and Trademark Office". Finally, he said that the existence
of the .biz generic top-level domain could not determine that the
disputed domain was not identical to the mark in which
[DomainRegistry.com] asserts rights.
The decision will now be challenged in the UK High Court.
According to media reports, the UK registrar has claimed that the
rules for domain disputes are “US-biased.”
