The WIPO Arbitration and Mediation Centre has recently delivered an important decision under the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy") in favour of the English author Jeanette Winterson. The Administrative Panel found that not only had one Dr Hogarth, a Cambridge academic, registered and used the domain names jeanettewinterson.com, jeanettewinterson.net and jeanettewinterson.org in bad faith, but that Jeanette Winterson was entitled to rely on common law (as opposed to registered) trade mark rights in her name to succeed in her Complaint. The decision was the first to be rendered in such proceedings in which a Complainant has succeeded in forcing the return of a domain name by relying on such unregistered trade mark rights in their own name.
At the end of March 2000, the English author Jeanette Winterson became aware that the domain names jeanettewinterson.com, jeanettewinterson.net and jeanettewinterson.org had been registered by a certain Dr. Hogarth who was completely unknown to her. It also transpired that the same Dr. Hogarth had registered the names of about 130 authors as domain names and was operating a website where these domain names were being offered for sale. Accordingly, a Complaint was immediately filed against Dr. Hogarth under the ICANN Policy, which was established at the end of 1999 in order to provide a more effective, quicker and cheaper procedure for the resolution of disputes relating to generic top level domain names (.com, .net and .org).
Under the ICANN Policy and Rules, a Complainant must prove three things in order to succeed in a Complaint:-
- That the Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
In this case, Jeanette Winterson did not have any registered trade marks to rely on. Accordingly, she relied on the common law trade mark rights, which she had established in her own name through extensive use of this name to indicate an association with works written and produced exclusively by her. It was also contended that the Respondent had no legitimate interests in respect of the domain names in question and that by registering them with the primary intention of selling them to make a profit, such registration and use of the domain names was in bad faith.
In particular, whilst the Respondent had not specifically attempted to sell the domain names in question to the Complainant, she relied on the fact that Dr Hogarth had written to a number of the other authors, whose names he had registered requesting 3% of their 1999 gross book sales to return the domain names. He also threatened that the timetable would be a bit tight for such authors to accept his offer, since, as he stated in his letter to them, "I am keen to return to my day job of teaching philosophy and ... when the story breaks I want to auction the names as a bundle while the public interest is still high".
The panellist appointed to adjudicate the dispute, Mr David Perkins, delivered a thorough and well reasoned decision based on the facts of this case. In particular, he reviewed relevant current English law (on the basis that both the Complainant and the Respondent were domiciled in the United Kingdom) and distinguished the criteria for establishing trade mark rights under the ICANN Policy from those that applied in the Elvis Presley case [reference] which related specifically to the registration of, inter alia, the word marks Elvis and Elvis Presley under the 1938 UK Trade Marks Act. Mr Perkins considered that the question to be decided here was not whether a trade mark was capable of registration, but whether a Complainant had sufficient rights in a particular mark (which would include a name) to constitute a trade mark.
Accordingly, Mr Perkins decided that, in the circumstances of this case, the Complaint succeeded since the Complainant would have had a cause of action to prevent unauthorised use of the mark, Jeanette Winterson, under the law of passing off in the UK.
Additionally, he decided that it must have been abundantly clear to the Respondent that registration of the domain names in issue could not be bona fide, particularly in the light of the decision in the One in a Million case [reference] which had been widely reported in the British Press. The Respondent's lack of bona fides was also evidenced by his intention to auction the domain names.
It was therefore held that the Complainant had proved all the necessary elements and that transfer of the disputed domain names into the Complainant's name would be ordered.
The decision confirms that individuals who have established a sufficient trading reputation in relation to the use of their own name will be able to rely on unregistered trade mark rights under the ICANN Policy and Rules. Indeed, the case has already been cited with approval in the decision relating to the domain name juliaroberts.com delivered last week and is likely to be relied on in many pending and future Complaints filed under the ICANN procedure.
First published in WIPR in July 2000.