Panel confirms you can register a domain name just to sell it

WIPO is the most popular of four approved providers for the Uniform Domain Name Dispute Resolution Policy created by the Internet Corporation for Assigned Names and Numbers (ICANN), the technical co-ordination body for the internet.

A case was brought by a company that publishes “The Australian Financial Review” and owns Australian trade marks for “The Financial Review” disputing ownership of the domain name "financialreview.com" by a US company, Domain Names 4U, and an individual, Fred Gray.

John Fairfax Publications Pty Ltd. complained to a three-member WIPO panel that the domain name was being advertised for sale on the internet and that it should be transferred to the company.

The publisher had to prove that the name was identical or confusingly similar to its trade marks, that the owners had no legitimate rights or interest in the name and that it was registered and used in bad faith.

The WIPO panel agreed that the domain name was confusingly similar to the publisher’s trade marks. However, they did not agree that Domain Names 4U and Fred Gray had no legitimate interest in the domain name and found no evidence that they knew or should have known about a financial newspaper in Australia.

The panel quoted from an earlier WIPO case that disputed ownership of manchesterairport.com:

“Selling a domain name is not per se prohibited by the ICANN Policy (nor is it illegal or even, in a capitalist system, ethically reprehensible). Selling of domain names is prohibited by the ICANN Policy only if the other elements of the ICANN Policy are also violated, namely trademark infringement and lack of legitimate interest."

The panel in the present case added:

“Since registering generic names, even with the intent to resell them, is a legitimate business activity, a majority of the Panel holds that [the sellers] have a legitimate interest in the contested domain name.”

Crucially, the panel found that the Australian publishers had failed to show that the sellers had registered the name specifically to sell it to them or one of their competitors.

Although the case is not the first of its kind, it helps reinforce an interpretation of the ICANN policy that has been inconsistent. In a dispute over the domain name crew.com, a WIPO panel took an opposite position in April 2000, finding that speculative registration of a domain name with a view to sale constituted evidence of bad faith.

In the case of crew.com, the panel ruled that,

“Registration of domain names for speculative purposes constitutes an abusive registration when

(1) the [owner] has no demonstrable plan to use the domain name for a bona fide purpose prior to registration or acquisition of the domain name;

(2) the [owner] had constructive or actual notice of another's rights in a trademark corresponding to the domain name prior to registration or acquisition of the domain name;

(3) the [owner] engages in a pattern of conduct involving speculative registration of domain names; and

(4) the domain name registration prevents the trademark holder from having a domain name that corresponds to its registered mark.”