Domain Name Dispute - Essay Example

Domain Name Dispute 1. Parties Julius Essenge: Complainant of London, England Quickileaks: Respondent of New South Wales, Australia. 2. Disputed Domain Name Quickileaks-sucks.com.au 3. Procedural History The Complainant, as the registrant of the disputed domain names is entitled to seek arbitration of the complaint relative to disputed domain names pursuant to the .au Dispute Resolution Policy 2010 (hereinafter the Policy) the Rules for the Policy and the WIPS’s supplemental Rules for domain disputes resolutions in Australia. 4. Factual Background The Complainant is the owner of the domain name Quickileaks.org and has been using Quickileaks as a common law trade name for five consecutive years. The Respondent registered the disputed domain name in January 2014 and the Complainant objects to the Respondent’s use of the disputed domain name. 5. The Parties Contention A. Complainant Pursuant to Para. 4(a) of the .au Dispute Resolution Policy 2010 (hereinafter the Policy), the Complainant contends that the use of the domain name quickileaks-sucks.org is confusingly similar to its domain name quickileaks.org and that the addition of sucks.org to quickileaks does nothing to distinguish the two domain names. The Complainant further argues that over the last five years its use of quickileaks has earned a common law trade mark. The common law trade mark was acquired by increasing traffic to its site quickileaks.org and publicity in the media over the five year period. The Complainant also maintains that the Respondent does not have a legitimate interest or right in the domain name and is acting in bad faith. These contentions are supported by the assertion that the Respondent does not have a commercial purpose for the use of the domain name and has no connection to the Complainant’s common law trademark and was not authorized to use the trademark. B. Respondent The Respondent denies that the Complainant has a common law trademark in respect of the term quickileaks and denies the Complainant’s assertions in its entirety. 6. Discussion and Findings According to Para. 4(a) of the Policy, the Complainant was required to prove that the domain names and trade name were identical or confusingly similar. The Complainant was also required to prove that the Respondent did not have a right or legitimate interest in the domain names. The Complainant was also required to prove that the Respondent acted in bad faith. Thus the Complainant’s allegations does not mean that the Complainant’s allegations are automatically accepted as true. In addition the Complainant is required to prove that it has a common law trade mark. Each of these issues are considered below. A. Common Law Trademark What distinguishes the Uniform Dispute Resolution Policy (UNDRP) from the au. Policy is that under the au. Policy, it is not necessary for the complainant to have a registered trademark. All that the complainant is required to prove under the au. Policy is that he or she have acquired a common law trademark through ‘sufficient evidence of use or reputation in the trademark to justify reliance on a common law trademark’. The complainant has provided sufficient evidence of its common law trademark through evidence indicating that Quickileaks has been operating as a well-recognised and accessed online media outlet prior to the respondent’s registration of its domain name. It is therefore concluded that the complainant does have a common law trademark in Quickileaks. B. Confusingly Similar The use of extensions on the domain names incorporating the name quickileaks are not identical. However, these extensions are of no real significance in terms of distinguishing the domain names from the Complainant’s trade mark and trade names. Thus the domain names are confusingly similar to the trade names and marks in question. The disputed names do not have to be verbatim as long as there is sufficient repetition in the name to suggest to an objective observer or consumer that the names are related (L’Oreal/L’Oreal Australia Pty v Namewise Pty Ltd /Nicholas Bolton, WIPO Arbitration and Mediation Centre Case No. DAU 2013-0009). An extension to the domain name however may be such that it serves to distinguish the domain name from the trade names or trademarks so that it is clear that the domain name is distinct from the trade name or trademarks and is not affiliated (The Crown in Right of the State of Tasmania trading as “Tourism Tasmania” v Gordan James Craven WIPO, 2003). It should first be noted that although an extension is used with the word Quickileaks so that the domain name is Quickileaks.sucks, the trade name Quickileaks is not a generic term. Had it been a generic term, it would be easier for the respondent to argue that that domain name does not serve to create confusion in the minds of the consumer (Telstra Corporation Limited v Mandino Pty Ltd., 2006). The word Quickileaks is an invention by the complainant and as such can create confusion as to its connection to other sites or services of goods bearing the same name despite qualifying extensions. The respondent argues that its domain name Quickileak-sucks, is a plumbing business and quite different from the complaint’s journalism objectives. Moreover, the respondent argues that a disclaimer on its website avowing that it is not connected with Quickileaks should clarify any confusion as to the linkages between the domain name and the trade name. However, the appropriate test was described in The Crown in Right of the State of Tasmania trading as “Tourism Tasmania” v Gordan James Craven (2003) as follows: …the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the name or trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases. Thus the only question is therefore whether or not the names are confusingly similar and the issue of different marketing structures and objectives or disclaimers will not be taking into account. However, the use of the words ‘sucks’ as an extension of the trade name Quickileaks suggests that the domain name is not affiliated with Quickleaks, but is rather, a ‘parody’ of Quickileaks or a ‘gripe site’ indicating that the domain name is not linked to the trade name.1Thus, the use of the word ‘sucks’ is interpreted as evidence that the domain name is not an infringement of the trade name.2 C. Rights or Legitimate Interest Only after the complainant has shown to the satisfaction of the arbitration adjudicator/s that the respondent has no legitimate interest or right in the domain/trade name, will the respondent have to assume the burden of proving otherwise. The complainant left no doubt as to its objective to the use of its trade name by filing an action in 2014, the year when the respondent began using the domain name. While this proves that the complainant did not authorize the respondent’s use of the trade name, it does not prove that the respondent does not have a legitimate interest in the trade name. The complainant alleges that the respondent is not operating a legitimate plumbing business and relies on tenuous evidence in support of this allegation. The complainant is relying on a telephone call in which a false request for plumbing services was made. The respondent’s reply does not suggest that there was no plumbing business associated with the domain name. As a result, it has not been proven that the respondent does not have a legitimate interest in the domain/trade name. Therefore the respondent is not required to prove that he or she has a legitimate interest in the domain/trade name. In this regard, the complainant has failed to establish the element of rights or legitimate interest on the part of the respondent. D. Bad Faith Bad faith is usually established when a domain user is asked to cease and desist using a domain name and instead, the domain user attempts to sell the domain name to the complainant. Bad faith usually occurs when the domain user is conducting the same trade as the complainant and is aware that the domain name is creating confusion among consumers and refuses to alter the name so as to remove the confusion. This case is different in that the respondent does not operate the same business as the complainant. The respondent is a plumbing business and the complainant is a journalist. However, the respondent has dedicated substantial space to blogs calculated to contradict and discredit the complainant. This perspective on bad faith was dealt with in the case of Wal-Mart Stores, Inc. v UFCW International Union. In the Wal-Mart case, the respondents Wal-Mart50 established a site for sharing criticism of Wal-Mart. The arbitral proceedings however, concluded that there was no bad faith especially since the respondent was not competing with Wal-Mart and was not seeking to obtain a commercial gain. Thus maintaining a site for criticizing Wal-Mart was not sufficient to establish bad faith. The Wal-Mart case however, can be distinguished from the current case. Although, the respondents in the current case are not in competition with the complainant, the respondent is seeking to obtain commercial gain. By its own admission, the respondent is operating a plumbing business. However, what is confusing is that the site of the plumbing business is covered with criticism of Quickileaks. Therefore the connection between the domain name and its business is unclear. The respondent said one thing about its business and its domain name and has demonstrated another. The respondent claims that the domain name Quickileaks is a good fit with its plumbing services. At the same time, the respondent admits that it is committed to pointing out the flaws in Quickileaks (the complainant’s) journalism. This has been made clear by the respondent’s blogging on its websites. In other words, it appears as though the respondent is not being honest about its use of the domain name. There is some doubt as to whether or not the respondent’s use of the extended version of Quickileaks is really for the purpose of promoting its plumbing business. It appears more likely to be intended to criticise the complainant’s journalism. It can therefore be concluded that the respondent is both a plumbing business and a journalism venue and as such, is in competition with the complainant. The respondent has admitted that its website has been visited by significantly more viewers than the number claimed by the complainant. Therefore, the respondent’s site and its blogs are widely viewed and this can be harmful competition to the complainant. However, according to the ruling in the Wal-Mart case, competition is only significant for the purposes of identifying bad faith when the respondent is seeking a commercial gain. Since neither the respondent nor the complainant are seeking commercial gain, it is concluded that the respondent is not acting in bad faith. It is unfortunate from the perspective of the complainant that the respondent uses its website as a gripe site of sorts. However, the absence of commercial gain in relation to the anti-Quickileaks blogging does not rise to the level of bad faith contemplated by the au. Policy. As the respondent argued, the complainant frequently criticizes business owners and professionals. The respondent, like the respondents in the Wal-Mart case are merely providing a venue for criticizing the complainant. If the complainant is not acting in bad faith, then neither is the respondent. Certainly the respondent is using an extended version of the complainant’s trade name, but the criticism of the complainant’s journalism together with a disclaimer and the absence of commercial gain indicates that the respondent is not attempting to obtain commercial gains out of the complainant’s losses. 7. Decision Although the Complainant proved that it has a common law trademark in the name quickileaks, it has failed to prove that quickileaks.org and quickileaks-sucks.org are confusingly similar. Moreover, the Complainant has failed to prove that the Respondent acted in bad faith or does not have a right or legitimate interest in the domain name. Therefore, the Complainant’s request for transference of the domain name used by the Respondent is denied. Bibliography .au Dispute Resolution Policy No. 2010-05. Lipton, J.D. ‘Commerce Versus Commentary: Gripe Sites, Parody, and the First Amendment in Cyberspace.’ (2006) 84(6) Washington University Law Review, 1327-1374. L’Oreal/L’Oreal Australia Pty v Namewise Pty Ltd /Nicholas Bolton, WIPO Arbitration and Mediation Centre Case No. DAU 2013-0009 http://www.wipo.int/amc/en/domains/search/text.jsp?case=DAU2013-0009 (Retrieved 28 September 2014). Telstra Corporation Limited v Mandino Pty Ltd. WIPO Arbitration and Mediation Centre, Case No. DAU2006-0006. http://www.wipo.int/amc/en/domains/decisions/html/2006/dau2006-0006.html (Retrieved 28 September, 2014). The Avenue, Inc. and the United Retail Incorporated v Chris Guirguis Doing Business as Lighthouse Web Design and/or Cannibal, and Sam Guirguis, WIPO Arbitration and Mediation Centre, Case No. D2000-0013. http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0013.html (Retrieved 28 September 2014). The Crown in Right of the State of Tasmania trading as “Tourism Tasmania” v Gordan James Craven WIPO Case No. DAU2003-0001 http://www.wipo.int/amc/en/domains/decisions/html/2006/dau2006-0006.html (Retrieved 4 October, 2014). Wal-Mart Stores, Inc. v UFCW International Union WIPO Arbitration and Mediation Center Case No. D2012-1541 http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2012-1541 (Retrieved 28 September 2014). Read More