'applegate.com' remains closed to Applegate Directory

International

In Applegate Directory Ltd v Interlution, a three-member World Intellectual Property Organization (WIPO) panel has refused to order the transfer of 'applegate.com' to the complainant on the grounds that it had failed to prove that it owns the rights to the registered APPLEGATE mark.

Applegate Directory Ltd (ADL) was formed in 2000 following the incorporation of the Applegate partnership. The partnership started trading in 1996, providing web design and internet directory services. On July 15 1996 it registered the domain name 'apgate.com' and then on February 6 1998, 'applegate.co.uk'. Interlution is a trade name used by an individual named Matthew Bessette. Bessette registered 'applegate.com' in 1996 and started using it in 1999 for a website featuring links to pornographic sites. ADL filed a complaint with WIPO seeking the transfer of 'applegate.com'.

ADL contended that by 1999, it had become widely known on the Internet and its website received 650,000 hits per month, and, by the time of the complaint, its website received in excess of 5,000,000 hits per month while Bessette's site received around 100,000, the majority of which were in error by internet users looking for ADL's website. It contended that Bessette's website had caused it lost orders and recruitment problems. It also maintained that the website (i) had a negative effect on its business image, and (ii) seriously impeded ADL's plans to expand its services and marketing to the North American market.

The WIPO panel refused to order the transfer of 'applegate.com' to ADL on the basis that it had failed to prove any of the three requirements for transfer in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (UDRP).

The panel held that the disputed domain name was not identical or confusingly similar to a trademark or service mark in which ADL has rights. It noted that ADL and another company, Applegate Media Ltd (AML), were formed when the Applegate partnership incorporated. ADL is a separate legal entity to AML and both companies trade independently. The trademark registration certificate for APPLEGATE in the United Kingdom lists AML as the registered proprietor not ADL. Thus, ADL had failed to provide evidence that it owns any relevant registered trademarks. In addition, although ADL contended that the Applegate partnership was formed in 1996 and then incorporated as ADL in the United Kingdom in 2000, it had not demonstrated that it had established common law rights in the APPLEGATE trademark during that time.

The panel next held that ADL had no rights or legitimate interests in the disputed domain name. It found that there was no evidence to back up ADL's claim that it contacted Bessette in 1996 requesting the transfer of the domain name. It also noted that despite Bessette starting up an active website towards the end of 1999, ADL had failed to make any further contact with him on the issue until the filing of the complaint in 2004 - eight years after the domain name was first registered and over four and a half years since Bessette had actively used it.

Lastly, the panel held that 'applegate.com' had not been registered or used in bad faith. It noted that Bessette appeared to have registered the disputed domain name a few months after the Applegate partnership was formed and no evidence had been produced to suggest that he had even constructive knowledge of the partnership at the time of registration. In addition, there was no evidence that the partnership had established any trademark rights in the APPLEGATE mark at the time, which may have alerted Bessette to the existence of ADL's predecessor. Finally, the panel stated that the fact that a domain name resolves to a pornographic website was not in and of itself bad faith.

Ian Starr and Georgia Warren, Ashurst, London

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