Out-Law / Your Daily Need-To-Know

Two web design businesses in different US states trading under the same name have been locked in a dispute over domain names. The dispute came before the National Arbitration Forum over the .com and .net versions of KoalaWebDesign.
Koala Web Design of Oregon said it has developed common law trade marks (i.e. unregistered trade marks) in its name under which it has traded since 1995. It uses the site address KoalaWeb.com. The business brought action against a Californian company of the same name which registered the KoalaWebDesign domain names.

The panellist, Hon. James A. Carmody, observed that the Californian business was set up despite protest from its older rival a few hundred miles East. He said that the Californian business likely knew of the KoalaWeb.com site. Accordingly, the transfer of the names to the Oregon business was ordered.

In making his decision, Carmody concluded,

“It is sad that the koala, a placid Oceanic marsupial who preys on nothing and subsists only on the leaves of the eucalyptus, is the subject of such a bitter and preventable contest.”

The National Arbitration Forum is one of four bodies approved to hear cases under the Uniform Dispute Resolution Policy (UDRP) of ICANN, the technical co-ordination body of the internet. The UDRP was drawn up by ICANN as an efficient means of dealing with cases of cybersquatting.

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