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:-
- that the Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
- that the Respondent has no rights or legitimate interests in respect of the domain name; and
- 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 have 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 21 June 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 United Kingdom 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, inspite of the Respondent's submission that "I still think Julia is nifty crazy wacko cool".
There are currently four organisations which 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.
Full reports of the cases mentioned above and other WIPO ICANN decisions can be found at www.wipo.org
HKIAC Bids for ICANN Accreditation
The Hong Kong International Arbitration Centre is in the process of bidding to become a recognised arbitration centre for the resolution of disputes using the ICANN arbitration procedure. If successful, HKIAC will be the first such organisation in Asia that can administer the procedure. A decision on this is expected next month.
HK Government Issues Consultation Paper on Domain names
In June the Information Technology and Broadcasting Bureau of the Hong Kong Government issued a consultation paper inviting the public to comment on the future arrangements for the administration and assignment of Internet domain names and IP addresses in Hong Kong. Currently Hong Kong c.c.TLD's (i.e. ".hk") are administered by the Hong Kong Network Information Centre (HKNIC) under the Joint Universities Computer Centre (JUCC). IP addresses are allocated by the Hong Kong members of the Asia Pacific Network Information Centre (APNIC), who are generally the larger ISPs in Hong Kong. These larger ISPs distribute the IP addresses to smaller ISP's and end users.
The consultation paper puts forward, for public comment, a number of recommendations of the taskforce set up to consider the issues. Some of the recommendations of particular interest are highlighted below.
- A non-profit making organisation should be spun-off from JUCC to handle the administration of domain names in the future;
- Fees should be imposed for the renewal of domain names;
- Organisations should be permitted to register more than one domain name under ".hk";
- Individuals residing in Hong Kong should be allowed to register one domain name in a new second-level category under ".hk";
- Second-level domain categories for a particular domain name application should correspond to the applicant s nature of business (i.e. ".net" for network providers);
- Domain names should be transferable based on valid grounds;
- Domain names of famous international trade marks, service marks and brand names to be included in a reserved list . The reserved list to be drawn up by reference to reserved lists prepared by other ccTLD registration authorities;
- Upon making an application for a domain name, the applicant should declare that to the best of its knowledge the domain name applied for does not infringe upon third party intellectual property rights;
An alternative dispute resolution mechanism for ".hk" domain name disputes should be developed with unsuccessful registrants having the right to appeal against the decision to the Hong Kong courts within a specified time.
First published in E-lawasi@ in July 2000.