The Complainants Common Law Trademark - Essay Example

Before the: Institute of Arbitrators and Mediators Australia Julius Essenge C/o Paraguayan Embassy 344 Kensington Low St, London, UK ) Disputed Domain Name[s]: (Complainant) ) ) V ) ) Quickileaks Plumbing ) 220 Epping Road ) MACQUARIE PARK NSW 2109 ) Quickileaks-sucks.com.au (Respondent) ) _______________________________________ Decision Facts The complainant Julius Essenge claims that the use of the domain name Quickileaks-sucks.com.au by the respondent Quickileaks Plumbing is an infringement of the complainants’ common law trade make in the domain name Quickileaks.org, a journalism website. The complainant’s main argument is that the respondent’s domain name is ‘confusingly similar to the complainant’s common-law trademark’ (Quickileaks) pursuant to the au. Dispute Resolution Policy 2010 (the Policy)1and the Rules for .au Dispute Resolution Policy (the Rules).2 The complainant also argues that the respondent has no right or legitimate interest in the domain name, and that the domain name is used by the respondent in bad faith.3 The complainant is seeking the only remedy available under the Policy, namely transference of the domain name in question. The respondent denies that the complainant has a common law tradename and argues that in the event that the complainant proves otherwise, the complaint is denied in its entirety. Decision The arbitration decisions rests on determining whether or not the complaint substantiates a case of ‘cybersquatting.’4 The term cybersquatting refers to a situation in which a domain name belonging to one party is subsequently used for nefarious purposes by another,5or rather, a case of ‘abusive registration.’6 Essentially, in order to prove cybersquatting, the complainant must satisfy three elements: the domain name used by the respondent is identical or confusingly similar to either a trademark or ‘service’ to which the complainant has an interest or rights; the respondent does not have a legitimate interest or right in the domain name; and the respondent is using the domain name in bad faith.7 The Complainant’s Common Law Trademark Before dealing with the three elements necessary for substantiating the complainant’s case, it is necessary to deal with the trademark issue raised by the respondent. 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’.8 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. Identical or Confusingly Similar When a domain name is identical to the tradename in question, this element of cybersquatting is easier to prove. The difficulty arises with respect to proving confusingly similar. While some cases the use of a qualifying word can do nothing to distinguish the domain name from the trade name. For example, in L’Oreal/L’Oreal Australia Pty v Namewise Pty Ltd /Nicholas Bolton, a domain name L’Oreal Store could not distinguish the domain name from the trade name since adding the word Store to L’Oreal does not account for the fact that L’Oreal products are sold in stores.9 Other qualifying words used in connecting with the trade name will however, serve to qualify distinctions between the domain name and the trade name. Therefore, it is no so much the use of the trade name in any event, but the extent to which the domain name creates confusion in the minds of consumers.10 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.11 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 Quickileaks.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 Quickleaks 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 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.12 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.13Thus, the use of the word ‘sucks’ is interpreted as evidence that the domain name is not an infringement of the trade name.14 The Respondent’s Rights or Legitimate Interest in the Trade/Domain Name The complainant submits that the respondent does not have a right or legitimate interest in the trade name because there are no licenses or agreements between the complainant and the respondent authorizing such use. Moreover, the complainant argues that the respondent does not have legitimate plumbing business and neither does it have a legitimate commercial venture associated with the domain name. The respondent however argues differently, claiming that it does in fact, operate a plumbing business. The burden is on the complainant to prove each of the three elements of the domain dispute under the Policy. In this regard, 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.15 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. 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.16 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.17 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.18 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.19 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. Order It is hereby ordered that the complainant does have a common law trademark in Quickileaks. The complainant has failed to establish that the respondent does not have a legitimate interest or rights in the domain name. The complainant has also failed to demonstrate that the domain name has confusing similarity in relation to the trademark and the complainant has also failed to demonstrate that the respondent is acting in bad faith. It is therefore ordered that the complainant’s request for a domain transfer is denied. Therefore the complainant is ordered to pay the respondent’s costs. Bibliography Textbooks Ng, Jenny. The Domain Name Registration System. (New York, NY: Routledge, 2013). Journal Articles Lipton, J.D. ‘Commerce Versus Commentary: Gripe Sites, Parody, and the First Amendment in Cyberspace.’ (2006) 84(6) Washington University Law Review, 1327-1374. Selby, John. ‘Competitive Justice?: The Role of Dispute Resolution Providers under ICANN’s UDRP.’ (2004)1 Macquarie Journal of Business Law, 23-57. Sharrock, Lisa, M. ‘The Future of Domain Name Dispute Resolution: Crafting Practical International Legal Solutions from within the UDRP Framework.’ (November 2001) 51(2) Duke Law Journal, 817-849. Cases GlobalCenter Pty Ltd v Global Domain Hosting Pty Ltd. WIPO Arbitration and Mediation Center Case No. DAU2002-0001. Hill & Smith Limited v LB International Pty Ltd WIPO Arbitration and Mediation Centre, Case No. DAU2014-0008. http://www.wipo.int/amc/en/domains/search/text.jsp?case=DAU2014-0008 (Retrieved 28 August, 2014). 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 August 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 August, 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 August 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 28 August, 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 August 2014). Statutes au. Dispute Resolution Policy 2010. Read More