Domain name owners may lack protection against non-internet use

International

A dispute between a book publisher and the owner of the domain name 'Katie.com' highlights the difficulties faced by certain domain name registrants in protecting their rights when a third party uses the domain name in the offline world. Such disputes seem to fall outside the scope of the Uniform Domain Name Dispute Resolution Policy (UDRP).

An individual named Katie Jones owns the domain name 'Katie.com'. She complained to Penguin Putnam Publishing about the title of a book called Katie.com several years after it was published and had become successful. Jones stated that the book was interfering with her enjoyment of her website, as people tried to access it thinking it was related to the Katie character in the book. During the dispute, Penguin and representatives of the book's author allegedly attempted to secure the domain name from Jones, without success.

The case did not come to court. Neither could it go through the Internet Corporation for Assigned Names and Numbers' or World Intellectual Property Organization's centres of arbitration as it fell outside the scope of the UDRP because Jones's right to own the domain name was not being challenged. Rather, she was challenging a third-party use of the domain name off the Internet.

As Jones was not using the website in trade (it was for personal use), trademark registration would probably not have been of assistance and, in any event, would have been too slow. Similarly, Jones would have had difficulty in proving passing off (at least in the UK courts) as she had no relevant trade to protect.

The first print run of Katie.com sold out and the matter now appears to have settled following Penguin's announcement that it plans to change the title of the book to A girl's life online for the second print.

What this dispute shows is that there is a gap in the armoury of domain name owners in relation to inexpensive means of resolving third-party, non-internet use of a registered domain name.

Larry Cohen, McDermott Will & Emery, London

Get unlimited access to all WTR content