Under the ICANN Policy and Rules for resolution of domain name disputes, a complainant must prove three things in order to succeed in a complaint and win back a domain name:

1 that the respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
2 that the respondent has no rights or ~ legitimate interests in respect of the domain name; and
3 that the domain name has been registered and is being used in bad faith.

Victories against cybersquatters

Having obtained a third generation mobile phone licence during the recent UK government auction, One2One has now also won the domain name 'one2one3g.com' following a legal battle with an individual who registered the domain and tried to sell it back to them.

A decision in the case, under the ICANN arbitration procedure administered by World Intellectual Property Organisation (WIPO), was notified to One2One on June 21 2000. The decision recognised that "3g" was an acronym for "third generation" mobile telephone licences. The panel found that the use of the One2One brand together with "3g" suggested that the domain name emanated from One2One, which was very well known throughout the UK in the field of mobile telephones.

This decision comes less than a month after the decision in Jeanette Winterson v Mark Hogarth, which also went through the WIPO ICANN arbitration procedure. The significance of this case is that Jeanette Winterson, a well-known author, did not have a trade mark registration for JEANETTE WINTERSON, and instead relied upon common law rights in the name. After reviewing a number of US and UK court decisions on passing-off, the panel concluded that a registration is not necessary. Where the ICANN Policy and Rules talk about a "trade mark", this need not be a registered trade mark providing trade mark rights can be established (i.e. common law rights).

Jeanette Winterson is referred to in the case of Julia Fiona Roberts v Russell Boyd. The same issue arises (i.e. common law rights in the name JULIA ROBERTS rather than a registration) and the result is the same, in spite of the respondent's submission that: "I still think julia is nifty crazy wacko cool."

There are currently four organisations that have won accreditation as centres for the administration of the ICANN arbitration procedure. WIPO has decided the largest number of cases, with 235 decisions having been issued by the end of June 2000.

Authors

Laight-Matthew

Matthew Laight

Partner
China and Hong Kong

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