Introduction
Under the Domain name dispute resolution policy, the dispute regarding a domain name is compulsorily submitted to the administrative authority or panel where the complainant alleges that (a) the impugned domain name is identical or confusingly similar to the trademark or service mark in which the complainant has the rights; or (b) the proprietor has no right or legitimate interest in respect of the domain name; or (c) the domain name was registered and being used in bad faith.
Thus three main components that the complainant is required to establish are ‘deceptive similarity’, ‘lack of rights or legitimate interests’ and ‘bad faith’. For ascertaining ‘deceptive similarity’ an objective analysis of the disputed domain name is needed. The rules for judging deceptive similarity would apply to the domain names to a great extent.
For determining whether the proprietor of the domain name has any ‘right or legitimate interest’ in the domain name, the pertinent consideration are (a) whether before any notice of the dispute the proprietor of the domain name has used or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bonafide offering of goods or services; or (b) Whether the proprietor as an individual business or organization has been commonly known by the domain name, even if he/she has acquired no trademark or service mark rights; or (c) The proprietor is making a legitimate non-commercial or fair use of the domain name without the intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service at issue.
The policy also specifies the manner in which ‘bad faith’ can be proved by the complainant. Four circumstances reflecting bad faith are enumerated in the policy itself. First, where acquisition of the domain name is done for the purposes of remitting or transferring the domain name to the complainant or to the competitor of the complainant for valuable consideration. In this case the consideration must be in excess of documentation out- of- pocket costs relating to the domain name. Second, the domain name was registered in order to prevent the proprietor of the trademark or the service mark from reflecting the mark in the corresponding domain name. However the conduct of the proprietor must indicate the same.
Third circumstance indicating malafide would be where the domain name was registered primarily for the purposes of disrupting the business of a competitor. Fourth, the proprietor must have intentionally attempted to attract for commercial gain, the internet users to his/her website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of his/ her website or location or a product or service on his/her location.
The relief that the complainant is entitled to receive in such proceedings is limited to cancellation of the domain name or the transfer of registration of the domain name to the complainant.
Generally, whenever a complaint is filed before the WIPO Arbitration and Mediation Centre it transmits the request for verification of registration of the domain name, to the Registrar. The Registrar then sends a report containing the identity of the proprietor of the domain name and the contact details for administrative, billing, and technical contact. Thereafter the Centre examines the complaint to see as to whether is fulfills the formal requirements of the Domain Name Dispute Resolution policy and the rules made there under. Once satisfied that the complaint is in order, the Centre notifies the respondent of the complaint. Thereafter a panel is appointed for deciding the matter. The panel may consist of a single person as well.
Case study
The case of Red Bull GmbH V. Unasi Management Inc. 2005 (31) PTC 90 (WIPO) shall be discussed here to provide a better understanding of the intricacies involved in dispute resolution under the policy. The concepts like ‘deceptive similarity’, ‘legitimate interests’ and bad faith’ involved in domain name disputed are also examined in this case.
Redbull is the proprietor of several generic as well as country Top Level Domains. The principle website of Redbull is www.redbull.com which hosts information about Redbull products and other activities of the company and also provides links to its various websites. The Trademark RED BULL is registered in 199 countries in name of Red Bull Company or its subsidiaries. Unasi is the proprietor of the domain name www.redbull.com where the links to websites relating to the rival energy drinks are posted. When a person visits this website a pop up window appears on the screen. Aggrieved by this Redbull filed a complaint before the Wipo Arbitration and Mediation Centre against Unasi, praying for the transfer of the impugned domain name to Red bull.
Red bull averred that its energy drinks under the trademark RED BULL are sold in many countries and million of euros have been spent in advertising the drink. As a result of massive publicity campaigns, the energy drink under the trademark REDBULL has acquired global reputation. Red Bull Company has been involved in organizing Formula One Racing that has given it worldwide media coverage. Redbull contended that the impugned domain name integrated the trademark RED BULL in its entirety The disputed domain name is identical or confusingly similar to its trademark REDBULL and was designed to mislead the Internet users who often make the typographical mistake by omitting the period after "www" when intending to actually visit Redbull website. Unasi did not refute the allegations made by Red Bull company against it.
In order to arrive at the decision, the panel considered the three ingredients namely ‘deceptive similarity’, ‘legitimate interests’ and ‘bad faith’. The panel ruled that disputed domain name was deceptively similar to the trademark RED BULL. The only difference between the domain name and the trademark was the prefix ‘www’. As www (world wide web) is a generic term and a common prefix to domain names in Urls, it is not capable of distinguishing the domain name from the trademark REDBULL. The panel reiterating the earlier rulings stated that ‘the domain names that consist of trademark with prefix www are confusingly or deceptively similar to the trademark’.
The panel then considered whether Unasi had any ‘rights or legitimate interest’ in the domain name wwwredbull.com. Unasi had been using the domain name by posting links to the competing energy drinks, which shows that it was aware of Red bull’s product and was free riding on the good will and reputation of the trademark REDBULL. As Unasi has made no rebuttal, it proves the disputed domain name was adopted solely for the purpose of diverting the customer of red bull. There are no circumstances that demonstrate any right or legitimate interest of Unasi in the domain name.
For deciding upon whether there was bad faith on part of Unasi in adopting the domain name, the panel considered the factors that indicate bad faith. The panel was of the opinion that since the RED BULL is a world famous trademark it is unlikely that Unasi was not aware of its existence. When an Internet user accesses the website under the disputed domain name a pop up window appears which indicates that Unasi is benefiting through the advertisement. Even if the viewers can eventually know that this is not the site they are looking for, the initial diversion of the customers is caused. As the website contains numerous links to competing drinks, it establishes an intention to disrupt the business of Redbull company. The foregoing facts prove that the Unasi has bad intention in adopting the domain name wwwredbull.com
The panel ruled that since redbull has established all the three elements –‘deceptive similarity’, ‘lack of rights or legitimate interests’ and ‘ bad faith’, the disputed domain name is transferred to red bull.
Comments and Conclusion
The domain name dispute resolution policy does not provide for the grant of damages to the proprietor of the trademark who has suffered injury due to usurpation of his/her trademark in the cyber world. The jurisdiction of the Courts is not ousted and the aggrieved party can move the Court before or after the institution of the administrative proceedings. It is more likely that the Court would take into account the principles of the policy when a domain name dispute is presented before. Would the Courts be granting relief other than those mentioned in the policy? The inherent jurisdiction of the Courts empowers it to pass any order that is necessary to do justice between the parties. Even though the policy does not provide for damages, the Court may grant damages in certain cases.
© Lex Orbis 2005
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