Both parties lose in 'nationwide.biz' dispute

International

A World Intellectual Property Organization (WIPO) panellist has denied the claims of both UK complainant Nationwide Technology Recruitment plc (NTR) and US respondent RareNames in a dispute over the domain name 'nationwide.biz'.

RareNames registered 'nationwide.biz' after NTR had let its registration lapse. NTR filed a complaint with WIPO requesting the transfer of the domain name. It claimed that:

  • it was using NATIONWIDE as its trademark and trade name;

  • RareNames had registered the domain name solely for the purpose of selling it; and

  • the fact that the domain name was put up for sale straight after registration was evidence of bad faith.

RareNames contended in turn that:

  • RareNames registered 'nationwide.biz' because it incorporates a common term in which no single party can claim exclusive rights;

  • the business of reselling descriptive domain names to the public is a bona fide offering of services, particularly since RareNames had not had any knowledge of NTR and its claim to the term 'nationwide'; and

  • RareNames also uses 'nationwide.biz' in connection with paid advertising search results that appear on its websites and, thus, the disputed domain name had not been registered merely to be sold.

Sole panellist Mary Padbury considered both the Restrictions Dispute Resolution Policy, which applies to '.biz' domains, and the Uniform Domain Name Dispute Resolution Policy (UDRP). She found that NTR had not established that the disputed domain name was a registered or common law trademark in which it had rights capable of protection under Paragraph 4(a) of the UDRP. She also found that the domain name is descriptive in nature and, accordingly, refused to order the transfer of 'nationwide.biz' to NTR.

Further, Padbury did not find any evidence that RareNames was aware of NTR or its trademark claim in the word 'nationwide'. She concluded that RareNames' bad faith could not be established. However, she did not find any evidence that RareNames:

  • had used the domain name in connection with a bona fide offering of goods or services according to Paragraph 4(c)(i) of the UDRP;

  • is commonly known by the main component of the domain name; or

  • is making a legitimate non-commercial use of the domain name within the terms of Paragraph 4(c)(iii).

Padbury concluded that RareNames lacked rights and legitimate interests in 'nationwide.biz'. Accordingly, she ordered the cancellation of the domain name.

Fredrik Engfeldt, Jonas Gulliksson Advocates Ltd, Malmo

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