Good-faith registration prevents transfer of 'islandrose.com'
In Philippine Cut Flower Corporation v The EDCOMM Group, World Intellectual Property Organization (WIPO) panellist Alistair Payne has emphasized that, before a transfer is ordered, the disputed domain name must be both registered and used in bad faith.
EDCOMM, which operates a service hosting and maintaining websites, registered the domain name 'islandrose.com' in 1998 to host a website for a client with a coastal real estate business office. In 1998 Philippine Cut Flower Corporation registered the trademark ISLAND ROSE, which it has used since 1988, and launched a website at 'islandrose.net' in 2000. EDCOMM agreed to sell the domain name 'islandrose.com' to Philippine Cut Flower but subsequently backed out. Philippine Cut Flower filed a complaint with WIPO.
Payne had no problem accepting that:
- the domain name was identical to Philippine Cut Flower's ISLAND ROSE trademark;
- EDCOMM had no rights in the domain name as it had stopped representing its client; and
- EDCOMM's behaviour was such that the domain name was being used in bad faith.
However, Payne stated that Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy requires that the complainant prove that the disputed domain name has been registered and is being used in bad faith. Payne ruled that EDCOMM had not registered 'islandrose.com' in bad faith and, thus, denied the complaint.
Shannon Yavorsky, Hammonds, London
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10