Cybersquatting or civil protest?

A World Intellectual Property Organization (WIPO) panel's decision in State of Tasmania v Craven not to order the transfer of 'discover-tasmania.com.au' to the Tasmanian government is a reminder that highly descriptive domain names that are not, or cannot be, registered trademarks are vulnerable to simultaneous use by critics.

The government of Tasmania owns various registered trademarks, such as 'TASMANIA DISCOVER YOUR NATURAL STATE'. Although it did not register 'Discover Tasmania' as a trademark, it did register the domain names 'DiscoverTasmania.com.au' and 'DiscoverTasmania.com', and uses them for a website promoting Tasmanian tourism. In addition, on November 28 2002, the government, trading as Tourism Tasmania, registered the business name 'Discover Tasmania'. On the same day, Gordon Craven registered the domain name 'discover-tasmania.com.au', which he uses for a website dedicated to "assist in the ending of clear-felling of Old Growth Forests in Tasmania". The government submitted a complaint to the WIPO Arbitration and Mediation Centre, requesting that the disputed domain name be transferred.

The three-member panel denied the government's request on the basis that it had failed to prove all three necessary elements under Paragraph 4(a) of Schedule A of the '.au' Dispute Resolution Policy for transfer of a domain name. The panel held that Craven's domain name is identical or confusingly similar to Tourism Tasmania's business name, which satisfies the requirement in Paragraph 4(a)(i) that the "domain name is identical or confusingly similar to a name, trademark or service mark in which the complaint has rights". However, the panel found that pursuant to Paragraph 4(a)(ii), Craven has legitimate interests in the domain name since he uses it for a website to describe his interpretation of discovering Tasmania - even if the government does not like what he has to say. The panel also concluded that the government could not prove that Craven had registered or used the domain name in bad faith, noting that there was no evidence to show that Craven (i) knew that Tourism Tasmania had registered 'Discover Tasmania' as a business name the same day he registered the disputed domain name, or (ii) used the domain name to divert web users from the government's website.

Craven's counterclaim for reverse domain name hijacking was also denied. The panel held that because the government uses the phrase 'Discover Tasmania' in its webpages, in advertisements and as a business name, it had reason to believe that it was justified in bringing the claim.

Julian Gyngell, Clayton Utz, Sydney