Cyberflying Denied Permission for Take-off
Failure to register a domain name has proved expensive for a number of internationally recognised brands and superstars. Quick thinking entrepreneurs registered leading names and then sold the domain names at exorbitant prices.
One of the aims of the Uniform Dispute Resolution Policy (UDRP) was to reduce the friction between domain names and intellectual property rights. Under the UDRP owners of trade marks can challenge a domain if:
- it is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
- the registered owner of the domain name has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
If successful, an order may be made for the transfer of the disputed domain name.
The initiation of a complaint under the UDRP is a three stage process:
- a copy of the complaint must be sent to the registered owner of the disputed domain name;
- a copy of the complaint must then be sent to any ICANN (Internet Corporation for Assigned Names and Numbers) approved provider; and
- lastly, the ICANN provider must forward a copy of the complaint to the registered owner.
Once the third stage of the process is complete the complaint proceeding is deemed to have been commenced and the registered owner may not transfer the domain name.
There is a brief window of opportunity, between being first notified of the complaint and the proceeding’s commencement date, during which a domain name owner could transfer the disputed domain name. The transfer of a disputed domain name is known as "cyberflying".
A recent ruling by a WIPO (World Intellectual Property Organisation) Administrative Panel concerning the domain name gloria.com made it clear that any attempt at cyberflying would be strongly condemned and would not exclude the jurisdiction of the UDRP.
This article was written by Andrew Jessop, formerly of Burness Solicitors.
It is reproduced here with permission.
Please read our disclaimer.