Acting For Madam Madonna In Intellectual Property Disputes/Domain Names
Date: November 20th, 2010 | Filed under: Mediation News | Tags: mediationThe World Intellectual Property Organisation (WIPO) is an intergovernmental organisation with headquarters in Geneva, Switzerland.The WIPO Arbitration and Mediation Centre in Geneva, Switzerland began administering domain name disputes in December 1999.
The procedure is being used by a variety of sources: large well-known companies, small and medium-sized enterprises, individuals, celebrities and organisers of sporting events. Cases so far involve parties from over 53 countries in all parts of the world, reflecting the international nature of the problem. The largest number of cases involve parties from the United States of America representing over half of all complainants. Most decisions made so far led to the transfer of the domain name to the complainant. A considerable number of disputes were settled before a decision was taken. An increasing number of well-known personalities are using the procedure to wrest back their Internet identity from alleged Internet pirates or cybersquatters. More sports-related cases are also being filed. These included worldcup2002.com and ryder-cup.com.
The internet is regulated by ICANN, the Internet Corporation for Assigned Names and Numbers. The ICANN policy establishes a uniform and mandatory administrative dispute-resolution system to address cases of bad faith, abusive registrations, also known as “cybersquatting. “Using this system, panels of one or three experts appointed by the WIPO Arbitration and Mediation Centre, apply streamlined, quick and cost-effective procedures to review claims and eliminate cases of clear abuse of trademark holders’ rights, leaving the more complex cases to the courts. The procedure requires that each case is resolved within a 45-day period. If the losing party fails to challenge the decision in a competent court within 10 days, the registrar is bound to implement the panel’s decisions after that period. Once a case is filed with the Centre, the domain in dispute is posted on the website as is the decision.
The Uniform Domain Name Dispute Resolution Policy (the ICANN Policy) sets out the legal framework for the resolution of disputes between a domain name registrant and a third party (i.e., a party other than the registrar) over the abusive registration and use of an Internet domain name in the gTLDs (.com, .net and .org), and those ccTLDs that have adopted the Policy on a voluntary basis. Any person or entity wishing to register a domain name in the .com, .net and .org top level domains and ccTLDs in question is required to consent to the terms and conditions of the ICANN Policy.
The ICANN Board adopted a set of Rules for Uniform Domain Name Dispute Resolution Policy (the ICANN Rules) setting out the procedures and other requirements for each stage of the dispute resolution administrative procedure. The procedure is administered by dispute resolution service providers accredited by ICANN. The WIPO Arbitration and Mediation Centre (WIPO Centre) is a dispute resolution service provider.
The WIPO Centre acted as technical advisers to the ICANN drafting committee charged with finalising the ICANN Policy and Rules. It has developed WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy which supplement the ICANN Policy and Rules.
Any person or company in the world can file a domain name complaint concerning a .COM, .NET, .ORG domain name using the ICANN Administrative Procedure.
In case of a dispute involving a domain name registered in a country code top-level domain, the gTLD Procedure can also be used if the domain name registration agreement that covers the domain name in issue specifically incorporates the ICANN Policy (which is the case for certain ccTLDs).
According to Paragraph 4(a) of the ICANN Policy, the ICANN Administrative Procedure is only available for disputes concerning an alleged abusive registration of a domain name; that is, which meet the following criteria:
(i) the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and
(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
(iii) the domain name has been registered and is being used in bad faith
Meaning of Bad Faith:
Paragraph 4(b) of the ICANN Policy sets out the following examples of circumstances that will be considered by an Administrative Panel to be evidence of the bad faith registration and use of a domain name:
(i) Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain name; or
(ii) The domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or
(iii) The domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s web site or location or of a product or service on the registrant’s web site or location.
The above examples are not exclusive and other circumstances may exist that demonstrate the registration and use of a domain name in bad faith.
The main advantage of the Administrative Procedure is that it typically provides a faster and cheaper way to resolve a dispute regarding the registration and use of an Internet domain name than going to court. In addition, the procedures are considerably more informal than litigation and the decision-makers are experts in such areas as international trademark law, domain name issues, electronic commerce, the Internet and dispute resolution. It is also international in scope: it provides a single mechanism for resolving a domain name dispute regardless of where the registrar or the domain name holder or the complainant are located.
Paragraph 4(k) of the ICANN Policy provides that the mandatory administrative proceeding requirement shall not prevent either the domain name registrant (Respondent) or the third party (Complainant) from submitting the dispute to a court of competent jurisdiction for independent resolution. It is possible for a party to start a lawsuit in court before an administrative proceeding is commenced. A party can also commence a lawsuit after the administrative proceeding is concluded if it is not satisfied with the outcome.
Paragraph 18 of the ICANN Rules sets out what action an Administrative Panel may take if court proceedings are initiated prior to or during an administrative proceeding.
The Administrative Procedure:
The five basic stages in an ICANN Administrative Procedure are:
(1) The filing of a Complaint with an ICANN-accredited dispute resolution service provider chosen by the Complainant, such as the WIPO Centre;
(2) The filing of a Response by the person or entity against whom the Complaint was made;
(3) The appointment by the chosen dispute resolution service provider of an Administrative Panel of one or three persons who will decide the dispute;
(4) The issuance of the Administrative Panel’s decision and the notification of all relevant parties; and
(5) The implementation of the Administrative Panel’s decision by the registrar(s) concerned should there be a decision that the domain name(s) in question be cancelled or transferred.
A more detailed description of the ICANN Administrative Procedure is available on the WIPO website at www.wipo.int .
The Administrative Procedure normally should be completed within 45-50 days of the date the WIPO Centre receives the Complaint.
For a case filed with the WIPO Centre involving between 1 and 5 domain names that is to be decided by a single Panelist, the fee is $1500. For a case that is to be decided by 3 Panelists, the fee is $4000.
For a case involving between 6 and 10 domain names that is to be decided by a single Panelist, the fee is $2000 and $5000 for a case that is to be decided by 3 Panelists.
It is the parties that decide whether the case is to proceed before 1 or 3 Panelists.
The Complainant is responsible for paying the total fees. The only time the Respondent has to share in the fees is when the Respondent chooses to have the case decided by 3 Panelists and the Complainant had chosen a single Panelist.
Preparing and Filing a Complaint:
The WIPO Centre has prepared a model Complaint and filing guidelines which parties may wish to consult. This model has been prepared by the WIPO Centre and is intended to serve as a guide for filing a Complaint under the ICANN Policy with the WIPO Centre. Its use as a basis for the preparation of a party’s complaint does not preclude the possibility of that complaint being found deficient following the WIPO Centre’s formalities compliance review. Nor does reliance on the model guarantee a complainant’s success on the merits.
Under the Rules Complaints must be submitted in hardcopy and in electronic format.
The hardcopies (signed original and four copies) including all annexes should be sent by express courier to:
WIPO Arbitration and Mediation Centre
34 chemin des Colombettes
1211 Geneva 20
Switzerland
Tel.: (+41 22) 338 9111
Fax: (+41 22) 740 3700
www.wipo.int
A short headnote on some of the older and more newsworthy decisions from the WIPO Centre are set out here:
DIGIFONE.NET
The Complainant is ESAT Digifone Limited.The Respondent is Michael Fitzgerald.
The domain name in issue is digifone.net.
On June 15, 2000 the Complaint was received by the WIPO Arbitration and Mediation Center. On June 22, 2000 the Center sent an Acknowledgement of Receipt of Complaint to the authorised representative of the Complainant by e-mail.
The Complainant is a provider of mobile telephone services in the Irish market. It started business in March 1997 and now has 38% of the Irish market in mobile telephony services (both analogue and GSM), servicing over 649,500 business and personal users throughout Ireland. Its share of the GSM market is presently 42.4%. The Complainant employs over 650 staff. Its turnover for the year ending 31 December 1998 was IR£222.2 million.
The Complainant has made substantial financial investments in the marketing and promotion of its mobile telephony services, with particular emphasis on the development of the DIGIFONE mark, and has built up a substantial reputation in that mark. The Complainant spends approximately IR£5 million per year on advertising and sponsorship. From its inception to date the Complainant has spent IR£12.5 million on advertising campaigns and a further IR£3.5 million on promotions and sponsorships.
This was an undefended case.
However, the Complainant bears the onus of proving that:-
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the said domain name; and
(iii) the said domain name has been registered and is being used in bad faith.
The Complainant satisfied the Administrative Panel that it has common law rights in the trademark DIGIFONE and further common law and statutory rights certain other trademarks incorporating the word DIGIFONE.
Decision, delivered on 2nd August 2000
The Administrative Panel Decision, delivered on 2nd August 2000
decided that the Respondent has registered the domain name digifone.net identical or confusingly similar to the Complainant’s service mark, that the Respondent has no rights or legitimate interest in respect of that domain name and that the Respondent has registered and used that domain name in bad faith. Accordingly, it was held that said domain name digifone.net should be transferred to the Complainant.
JULIAROBERTS.COM
The Claimant is Julia Fiona and Respondent is Russell Boyd a United States citizen with a mailing address 189 Carter Road, Princeton, New Jersey 08540 USA.
The domain name at issue is juliaroberts.com .
The Complainant, Julia Fiona Roberts, is a famous motion picture actress. She has appeared in such movies as Erin Brockovich, Notting Hill, Runaway Bride, Stepmom, My Best Friend’s Wedding, Conspiracy Theory, Michael Collins, I Love Trouble, The Pelican Brief, The Player, Dying Young, , Sleeping With the Enemy, Flatliners, Pretty Woman, and more. The Complainant is widely featured in celebrity publications, movie reviews, and entertainment publications and television shows, and she has earned two Academy Award nominations. Her latest film, Erin Brockovich ranked number 1 at the box office.
The Respondent registered the subject domain name on November 9, 1998. As of March 24, 2000, the website www.juliaroberts.com featured a photograph of a woman named “Sari Locker”. The Respondent has placed the domain name up for auction on the commercial auction website, “eBay”.
The Respondent has also registered over fifty (50) other domain names, including names incorporating other movie stars names within and and a famous Russian gymnast’s name within . Respondent lists his email address as mickjagger@home.com. Respondent was offered US$2,550 in the eBay auction for the domain name registration.
The Complainant contended that the domain name is identical to and confusingly similar with the name “Julia Roberts” and the common law trademark rights which she asserts in her name.
Decision delivered on 29th May 2000
The Panel concluded (a) that the domain name is identical to Complainant’s common law trademark in her name “Julia Roberts,” (b) that Respondent has no rights or legitimate interest in the domain name and (c) that Respondent registered and used the domain name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel ordered that the domain name be transferred to Complainant Julia Fiona Roberts.
GUINNES.COM
The Complainant is Diageo p.l.c. (formerly known as Guinness, p.l.c.).andt he Respondent is John Zuccarini,
The Complainant stated that it is the proprietor of more than 35 registered trademarks in various countries worldwide, consisting of the mark GUINNESS and numerous other foreign trademark registrations for trademarks that include the term “Guinness” as part of the trademark.
The Complainant submitted a Court decision in Shields v. Zuccarini, 54. U.S.P.Q. 2d 1166 (E.D.Pa. 2000) in which the Court found that the Respondent is a wholesaler of Internet domain names and used confusingly similar domain names with a bad faith intent to profit from the Plaintiff’s marks.
The Complainant has provided evidence of a list of 191 domain names held by the Respondent either individually or by related companies including the domain names “britaneyspears.com”, “britannyspears.com”, “britneyspears.com”, “starwarspictures.com”, “sonycameras.com”, “disneywallpaper.com”, “yahoofinancial.com”, “starwarspg.com”, “rickymartain.com”, “elvispresely.com”, “elvispresly.com”, “jeneferlopez.com”, “backstreetboys.com”, “backstretboys.com”.
The Complainant stated that: (1) The domain name guinnes.com is identical or confusingly similar to the trademark “Guinness” in which the Complainant has world-wide exclusive rights; (2) the Respondent has no rights or legitimate interests with respect to the domain name; and that (3) the domain name was registered and is being used in bad faith.
The Complainant requested that the Administrative Panel issue a decision that the domain name “guinnes.com” be transferred to the Complainant.
The Respondent asserts that: (1) Guinness and “guinnes.com” are not identical or confusingly similar; (2) the Respondent has rights and a legitimate interest in the domain name; and that (3) the domain was not registered and used in bad faith.
The Respondent further alleges that the domain name is not identical to the Complainants trademark since for it be considered identical, the Guinness mark for beer would have to be recognizable as the only famous mark for the word “guinness” by the majority of the population.
The Respondent further alleges he was completely unaware at the time of registration that there was a company called Guinness which sold beer, that his intentions for the web site guinnes.com were for a site about “The Guinness Book Of World Records” and “did not attract business from the Complainant as he did not have the plan on having anything for sale on the website and did not intend to have advertising on the site”.
The Respondent asserted that the mark Guinness is recognized as a famous mark for “The Guinness Book of World Records” and that he registered the domain name “guinnes.com” to discuss “The Guinnes Book of World Records”. The Respondent further admits that he is the owner of 3000 domain names. For example, he has registered obvious misspellings of celebrities names, such as briteneyspears.com, jeneferlopez.com, backstreetboys.com. He has also registered variations of popular products and website names such as sportillustrated.com, mountianbikes.com etc.
This conduct is compelling evidence of the Respondent’s bad faith.
Decision delivered on 22nd August 2000
The Panel thus decided that:
1) the domain name guinnes.com is confusingly similar to the trademark “Guinness”;
2) the Respondent has no rights or legitimate interest with respect to the domain name guinnes.com;
3) the domain name guinnes.com has been used in bad faith by the Respondent.
Pursuant to paragraph 4(i) of the Policy and pursuant to paragraph 15 of the Rules, the Panel requires that the Registrar, Network Solutions, Inc., transfer the disputed domain name “guinnes.com” to the Complainant.
MADONNA.COM
The Complainant is Madonna Ciccone, an individual professionally known as Madonna.
The Respondent is “Madonna.com” the registrant for the disputed domain name, located in New York, New York, U.S.A. or Dan Parisi, the listed contact for the domain name.
The disputed domain name is madonna.com.
Complainant is the well-known entertainer Madonna. She is the owner of U.S. Trademark Registrations for the mark MADONNA for entertainment services and related goods. She has used her name and mark MADONNA professionally for entertainment services since 1979.
The Respondent is in the business of developing web sites. On or about May 29, 1998, Respondent, through its business Whitehouse.com, Inc., purchased the registration for the disputed domain name from Pro Domains for $20,000. On June 4, 1998, Respondent registered MADONNA as a trademark in Tunisia.
On June 9, 1999, Complainant, through her attorneys, objected to Respondent’s use of the Madonna.com domain name.
The Complaint contended that the disputed domain name is identical to the registered and common law trademark MADONNA in which she owns rights. She further contends that Respondent has no legitimate interest or rights in the domain name. Finally, Complainant contends that Respondent obtained and used the disputed domain name with the intent to attract Internet users to a pornographic web site for commercial gain based on confusion with Complainant’s name and mark.
Respondent does not dispute that the disputed domain name is identical or confusingly similar to Complainant’s trademark. Respondent, however, claims that Complainant cannot show a lack of legitimate interest in the domain name because Respondent (a) made demonstrable preparation to use the domain name for a bona fide business purpose; (b) holds a bona fide trademark in the word MADONNA; and (c) has attempted to make bona fide noncommercial use of the name by donating it to the Madonna Rehabilitation Hospital.
Here, Respondent admits that the Tunisia registration was obtained merely to protect his interests in the domain name. Respondent is not located in Tunisia and the registration was not obtained for the purpose of making bona fide use of the mark in commerce in Tunisia. A Tunisian trademark registration is issued upon application without any substantive examination. Although recognized by certain treaties, registration in Tunisia does not prevent a finding of infringement in jurisdictions outside Tunisia. Under the circumstances, some might view Respondent’s Tunisian registration itself as evidence of bad faith because it appears to be a pretense to justify an abusive domain name registration. We find at a minimum that it does not evidence a legitimate interest in the disputed name under the circumstances of this case.
The Panel delivered its decision on 12th October 2000
Held in favor of the Complainant. The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights; Respondent lacks rights or legitimate interests in the domain name; and the domain name has been registered and used in bad faith. Therefore, it was decided that the disputed domain name should be transferred to the Complainant.
WOOLWORTHSDIRECT.COM
The Complainant is Woolworths plc and the Respondent is Mr. David Anderson of 57 Central Avenue, Welling, Kent, DA16 3BQ.The domain name at issue is ‘woolworthsdirect.com’.
The Complaint, pursuant to the rules and supplemental rules, was lodged by email on August 24, 2000, by Woolworths.
Woolworths is one of the best known names in international retailing, with a significant reputation on both sides of the Atlantic. The company has been trading since the beginning of the last century, and the Woolworths mark has been in use since 1909. Woolworths have provided a detailed schedule of trademark registrations and applications, together with copies of the certificates and renewal certificates.
Further, Woolworths has registered a number of gTLD names including Woolworths General Store.com.
The domain name at issue was registered on March 29, 2000, and came to the attention of Woolworths in June 2000.
Woolworths contend that the domain name in question is identical or confusingly similar to its trade mark and trading name; that Mr. Anderson has no right or legitimate interest in respect of the domain name; and that the domain name has been registered and is being used in bad faith.
Woolworths point to the very substantial reputation which they have in their trading name, and consequently in the accompanying registered trade marks. Woolworths also point to the fact that they have made use of the trading style “Woolworthsdirect” since October 1997, and have appended to their Complaint substantial evidence to confirm this fact. Accordingly Woolworths assert that the disputed domain name is confusingly similar to their registered Woolworths mark and identical to the trading style “Woolworthsdirect” which they have adopted but not as yet registered.
The Panel delivered their decision on 10th October 2000 and held that the domain name registered by Mr. Anderson is identical to the common law rights of Woolworths, and confusingly similar to its registered trade mark; that Mr. Anderson has no rights or legitimate interests in respect of this domain name, and that the domain name in the issue has been both registered and used in bad faith.
Accordingly, the Panel requires that the registration of the domain name ‘woolworthsdirect.com’ be transferred to Woolworths.
EASYJET.NET
Complainant is Easyjet Airline Company Ltd. And the Respondent is Andrew Steggles living at 520W 43rd Street, NY 10036, U.S.A. (hereinafter referred to as “Steggles”).
The domain name in issue is “www.easyjet.net”;
The complaint was filed on February 28, 2000.
Easyjet submits that the domain name www.easyjet.net is identical to the trademark EASYJET. Furthermore, it is submitted that Steggles has no rights or legitimate interest in respect of the domain name and finally, the domain name has been registered and is used in bad faith.
Decision delivered on 17th March 2000
The Panel decided that the domain name registered by Steggles is identical to the trademark of Easyjet, that Steggles has no legitimate interests in respect of this domain name, and that the domain name in issue has been registered and is used in bad faith.
Accordingly, the Panel requires that the registration of the domain name www.easyjet.net be transferred to Easyjet.
