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World Intellectual Property Organization Administrative Panel Rejects Carbonfootprint.org Domain Name Complaint

Disputes over domain names have received some clarification following a recent decision handed down by WIPO regarding the domain name Carbonfootprint.org.

Under paragraph 4(b) of the Uniform Domain Name Dispute Resolution Policy, circumstances that can constitute bad faith include a party having registered or acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the party’s documented out-of-pocket costs directly related to the domain name.

Resolution of the domain name dispute came about in a recent Administrative Panel decision handed down by the World Intellectual Property Organization Arbitration and Mediation Centre. Arnotts Lawyers of Sydney Australia assisted the registrant of carbonfootprint.org in defeating a complaint filed by a party from the United Kingdom who claimed that the registrant should be pursued under the Uniform Domain Name Dispute Resolution Policy for registering the domain name in bad faith. Finding in favour of the domain name registrant, the Administrative Panel determined that the registration was not carried out with actual or constructive knowledge of the complainant and was therefore not in bad faith for the purposes of the Uniform Domain Name Dispute Resolution Policy. The full text decision of the dispute is available online at www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0642.html.

Arnotts Lawyers assisted the domain name registrant in drawing a response which asserted, amongst other things, that the complainant has no enforceable trademark rights in the phrase “Carbon Footprint”, that the registrant has rights or legitimate interests in the domain name under dispute, that the complainant failed to establish registration or use of the domain name by the registrant in bad faith and further, that the complainant had engaged in reverse domain name hijacking.

The case, determined by the panel on 26 July 2007, is important insofar as it provides a precedent to be followed in respect of domain names comprising generic words and provides some guidance for prospective domain name registrants who are seeking to engage in bidding at auctions for prized domain names or who otherwise register domain names comprising generic terms.

It is generally accepted that a domain name registrant who had no knowledge of a relevant mark owner, its business, or its marks prior to the registration of the domain name under dispute, could not have registered that domain name “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant.” Even an offer to sell upon learning of the mark owner and its interest in the domain name under dispute does not necessarily require a finding of registration in bad faith.

Generally, registration of a domain name will not be in bad faith so long as the registrant has taken reasonable steps to establish that the intellectual property of another party is not being infringed by registering the particular domain name. Conversely, the knowledge of third party rights in a generic domain name could constitute or be used against a domain name registrant to establish that the registrant has registered the domain name in flagrant breach of those rights, and thus, liable to lose the domain name under theh Uniform Domain Name Dispute Resolution Policy.

It is also generally accepted that it is not in itself evidence of bad faith to make use of domain name software or services that identify, reserve, and register domain names that have been available by reason of non-renewal, transfer, or legitimate sale by their owners.

The utilisation of proceedings under the Policy is a cheap and efficient way of presenting a party’s position in relation to a disputed domain name. Only with the proper advice from an experienced technology lawyer is a party likely to succeed in bringing or defending a domain name dispute.

Disclaimer: This column is for general informational purposes only. It is not legal advice nor is it a substitute for legal advice. Readers should seek legal advice on their own particular circumstances. Alan Arnott is a technology & telecommunications lawyer with qualifications in computer science and law with Arnotts Lawyers Jones Bay Wharf in Sydney. For more information, please visit http://www.arnotts.net.au.