UK: Alcoholics Anonymous ("AA") Loses its ICANN UDRP Claim for the Domain Name alcoholicsanonymous.org

Last Updated: 15 February 2002
Alcoholics Anonymous World Services, Inc. v. Friends of Bill W and Jimmy K

Some surprise has been expressed in the media at the decision of a panel of the WIPO Arbitration and Mediation Center on 28th December 2001 to deny the claim brought by AA for the transfer of the domain name alcoholicsanonymous.org under the ICANN Uniform Domain Name Dispute Resolution Policy. The panel came to this decision in spite of the offer by the Respondent to sell the domain name via the third party (www.greatdomains.com) website and evidence to the effect that the Respondent was attempting to hide his true identity. However, a reading of the decision reveals the particular (and peculiar) facts of the case that led the panel to its surprising conclusion.

The Decision

In order to succeed under the UDRP procedure, a Complainant must show that (a) the domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; (b) the Respondent has no right or legitimate interest in the domain name; and (c) the domain name has been registered and is being used in bad faith. A Complainant cannot succeed under the ICANN procedure unless it meets the burden of proof in relation to each of these three elements.

Whilst the panel had no difficulty finding that the domain name was confusingly similar to AA’s trade marks, it found that the Respondent did have a legitimate right to use the domain name. In so doing it relied upon a guidance booklet entitled “Ten Frequently Asked Questions About AA Websites” issued by AA. According to the panel, this booklet clearly indicated the authority of local organisations to set up local Alcoholics Anonymous websites and that Alcoholics Anonymous is a decentralised organisation.

The panel next addressed the bad faith requirement. On the question of bad faith registration, AA pointed to the anonymity of the Respondent. However, the anonymity of the Respondent was not a significant issue here given that anonymity was an important part of the Respondent’s organisation and process. On the question of bad faith use, the panel found that the offer by the Respondent to sell the domain name via the third party (www.greatdomains.com) website constituted bad faith use of the domain name. However, given the failure to show bad faith registration, this was not sufficient. Further the bad faith use was mitigated by disclaimers on the Respondent’s website. The panel suggested that a Respondent has “a defence”, even where bad faith is proven, where it is carrying out a legitimate business activity in which the domain name plays an integral part and which business is not in competition with Complainant’s business. The panel mentioned the UDRP decision in America Online, Inc. v. Frank Albanese (aoltrader.com) as an example of a case where such circumstances were found to exist.

Comments

The overall decision is not as surprising as it might look at first sight. Given the decentralised and anonymous nature of Alcoholics Anonymous as an organisation the Complainant was unable to displace its burden of showing that the Respondent’s activities were illegitimate. Anonymous registration, which might otherwise be good evidence of bad faith registration, was not relevant in these unusual circumstances.

However, the wording adopted by the panel regarding bad faith use is open to criticism. The sale of a domain name at a price greater than the cost and expense of registration is evidence of bad faith but no more. It can be rebutted by evidence to the contrary. In such a case it is perhaps better to say that bad faith use is not established rather than to say (as the panel suggested here) that where bad faith is established there exists a “defence”. No such “defence” is provided for in the UDRP Rules nor do we consider that the aoltrader.com decision stated that such a defence exists.

"© Herbert Smith 2002

The content of this article does not constitute legal advice and should not be relied on as such. Specific advice should be sought about your specific circumstances.

For more information on this or other Herbert Smith publications, please email us."

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