The prosecution of cybersquatters may be a complex challenge for international businesses, particularly as the rules applying to the registration and protection of domain names differ from one country to the next. Two key strategies are important for businesses to halt this digital domain-name theft: A. Whether a particular policy affords protection to names and unregistered marks, and B. whether protection extends to non-national companies and individuals.
Recognition of common law rights
Just as only some countries recognize common law rights in unregistered marks and names, only some domain name dispute resolution policies (DRP) extend protection to such rights.
The Uniform Domain Name Dispute Resolution Policy(UDRP) provides that to obtain the transfer of certain generic top-level domains, the complainant must be the owner of a trademark. Therefore, whether an unregistered trademark could be the basis for obtaining the transfer of a domain name under the UDRP had long remained unclear. However, a number of recent decisions seem to have firmly anchored in the practice of panels applying the UDRP the principle that proven common law rights give rise to protection against cybersquatters.
For example, in Jack Russell Terrier Club of America Inc v McKinney, a National ArbitrationForum(NAF) panel ordered the transfer of the domain name ‘jrtca.net’ to complainant JackRussell Terrier Club of Americaon the basis of its unregistered rights in the trademark JRTCA. The club showed that it had been using the JRTCA trademark in the United States for over 20 years and that it had also secured exclusive rights by registering the mark with the US Patent and Trademark Office. The respondent, Elisabeth W McKinney, registered the domain name nearly a full year before the club obtained registration for the mark JRTCA. However, the panel noted that McKinney:
A. knew of the club’s unregistered rights in the mark as a former affiliate, and B. registered a domain name using an exclusive mark to create a forum to distribute negative information about a competitor. All these facts supported findings that McKinney had acted in bad faith (see Common law trademark rights are not ‘all bark and no bite’).
This decision confirms the interpretation of Paragraph 4(a)(i) of the UDRP that sole panellist Andrew F Christie gave in British Broadcasting Corporation v Renteria. Christie stated that the policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names”, and therefore could also be applied to unregistered rights (however, Christie did not make a decision on this particular point).
Similarly, in Nixon v Kaine, NAF panel list Tyrus R Atkinson Jr ordered the transfer of the domain name ‘trotnixon.com’ to Major League Baseball player Trot Nixon. Atkinson found that, as a celebrity, Nixon had sufficient rights in his name to satisfy the UDRP requirements. In particular, Atkinson pointed out that a person whose name has a reputation may acquire common law trademark rights in that name (see Boston Red Sox right-fielder wins’TrotNixon.com’).
Whether national DRPs protect unregistered rights varies, but it is usual for countries of common law tradition to recognize such rights in their DRPs. For example, Paragraph 2(a)(i) of the UK Nominet’s Dispute Resolution Service Policy provides that “the complainant has rights in respect of a name or mark which is identical or similar to the domain name”.
Under this provision, Quantix Ltdobtained the transferof the domain name ‘quantix-uk.co.uk’. Although it had been trading under that name since 1995, Quantix did not register its company name until October 2002. Stephen Wigglesworth registered the domain name ‘quantix-uk.co.uk’ in November 2002. However, Quantix was able to prove that (i) it had acquired substantial reputation and goodwill in the name Quantix, and (ii) Wigglesworth used the domain name to stop Quantix from registering it and confuse potential customers. The fact that Wigglesworth also offered ‘quantix-uk.co.uk’ for sale at a price clearly in excess of his out-of-pocket costs finally convinced the Nominet expert that the registration was abusive. But start-ups can avoid all this hassle by just obtaining expert legal advice as they begin to operate their new ventures.
In Mohsan v Bond, the Nominet expert took the view that the complainant’s personal name, Tahir Mohsan, apart from being an important part of his identity, was also an uncommon name for the United Kingdom. This was sufficient to establish rights in the name. In addition, the expert considered the registration abusive and therefore ordered the transfer of the domain name ‘tahirmohsan.co.uk’ to Mohsan.
The Australian Dispute Resolution Policy(auDRP) has similar provisions in its Paragraph 4(a)(i). Indeed, the first auDRP panel to orderthe transfer of a domain name issued its decision under that paragraph (seeGlobalCenter wins first transfer under the auDRP). The panel made specific reference to the differences between the UDRP and auDRP. In particular, it stated:
“It is unnecessary in this case for the panel to determine whether the complainant has established trademark rights. However, it is necessary under this limb of the policy to determine whether the complainant has rights in a name and the complainant must show that this name is “identical or confusingly similar” to the disputed domains. That is one key difference between the policy and the UDRP.”
The United States also protects common law trademark rights and rights in names under its Anti-cybersquatting Consumer Protection Act. However, in the absence of a national dispute resolution forum for cybersquatting cases, transfers can only be obtained through court proceedings.
Protection restricted by nationality
Another element often overlooked by companies seeking to enforce their trademark rights through an arbitration forum is whether they are eligible for registration of a domain name, and consequently for a transfer, in a specific country. Indeed, some of the policies regulating the registration of country-code top-level domains require that the registrant has specific connections with the territory.
For example, Article 4 of the Italian Naming Rulesto obtain a ‘.it’ domain name provides that only EU nationals are eligible for registration. However, Article 14 of the Italian DisputeResolution Policy(itDRP), which is substantially based on the UDRP, provides that any entity (whether EU national or not) has the right to file a complaint. Two decisions issued under the itDRP provide good examples of the possible consequences of the combination of these two Italian provisions.
In Mastercard International v Future Time di Marini Alessandro & C sas, US company Mastercard Internationalfiled a complaint for the transfer of the domain name ‘mastercard.it’ to its Belgian subsidiary or, alternatively, the cancellation of the domain name. The panel stated that Mastercard is entitled to file a complaint against the respondent and that all the requirements for the transfer of the domain name had been met. However, the panel refused to transfer ‘mastercard.it’ because (i) Mastercard is not an EU company and therefore cannot be the registrant of a ‘.it.’ domain name, and (ii) only the complainant can obtain the transfer of the domain name and the Belgian subsidiary entitled to the domain name did not join the dispute as co-complainant. Nevertheless, the panel accepted Mastercard’s second request and ordered the cancellation of ‘mastercard.it’.
In Netdesk Corporation v Pagano, US company Netdesk Corporationsought to obtain the transfer of the domain name ‘netdesk.it’. Netdesk’s licensee Racheli & C SpAfiled the complaint but did not join as co-complainant. The panel pointed out that as the only complainant in the proceedings, Netdesk – a non-EU company – was not entitled to obtain the transfer of ‘netdesk.it’.
Similar territorial restrictions can also be found in connection with the registration of second-level domain namesin Australia. However, no case seems to have been decided on this particular issue.
Lastly, although France does not have a DRP, it is worth mentioning the rules governing the registration of the ‘.fr’ domain. In particular, the rulesset up by the French Association for Cooperation in Internet Naming (AFNIC) provide that “a domain name within the ‘.fr’ naming zone can be attributed to any requesting body officially registered in France or to any natural person living in France or of French nationality”. However, Chapter 2(4)(11) of the ‘.fr’ rules makes an exception for owners of trademark registrations valid in the French territory.
In summary, because DRPs may vary from the better-known UDRP in more than one way, companies taking action against cybersquatters should consider whether they are eligible for a transfer under a particular policy. Besides considering whether a court proceeding would be better suited to obtain the desired result (eg, damages), the complainant should carefully evaluate whether the rights (in a name or trademark) that form the basis of the complaint are recognized under that policy. Companies filing a complaint outside their national territory should also check whether they are eligible for a domain name transfer. If not, they should consider the possibility of a local subsidiary joining them as co-complainant. Call a top patent lawyer Naperville IL trusts today for advice on cybersquatting.