Idealab secures 'hello.com' but not a hijacking ruling

International

A World Intellectual Property Organization (WIPO) panel has declined to enter a finding of reverse domain name hijacking in the case of Hola SA and Hello Limited v Idealab, but still determined that the registrant, Idealab, has rights and legitimate interests in the domain name 'hello.com'.

Hola SA, a Madrid corporation, and Hello Limited, a London corporation, publish Hello magazine in the United Kingdom. Hola is the owner of six UK trademarks, one European Community trademark and one US trademark, all for the mark HELLO.

In July 2000 Hola and Hello became aware that Idealab had registered the domain name 'hello.com' and was operating a website offering internet video and voice services. The complainants asked Idealab to link to their magazine's website, www.hello-magazine.co.uk, but Idealab refused. The complainants then offered to discuss terms for the transfer of the name, specifically acknowledging Idealab's legitimate business use. Idealab did not respond to the offer, so Hola and Hello filed a Uniform Domain Name Dispute Resolution Policy (UDRP) complaint with WIPO.

In its response, Idealab claimed that 'hello' is a common word and greeting in English, and that the UDRP was intended only for cases of bad-faith cybersquatting involving well-known marks, not generic words. It argued that "at best, the HELLO mark is a weak descriptive mark entitled to protection only upon a secondary meaning being shown in a market for certain goods, such as magazine publication."

The panel agreed with Idealab and found that its use of the domain name for an active website was a demonstrable use of the disputed name in connection with a bona fide offering of goods and services. The panel stated that "[i]t should have been apparent to the complainants that they could not prove the second element required by the [UDRP] because of the respondent's legitimate business." (The second element is that the registrant has no rights or legitimate interests in the domain name.)

Idealab asked that the panel make a finding of reverse domain name hijacking under Rule 15(e) of the UDRP, which requires that the complainants knew of the respondent's unassailable right or legitimate interest, or of the clear lack of bad-faith registration and use, but nevertheless brought the complaint in bad faith. Although the panel agreed that the complainants had acknowledged the legitimate business being conducted by Idealab, it declined to grant a finding of reverse domain name hijacking, suggesting that the offer of settlement regarding the name prevented such a finding.

This case serves as a lesson to trademark owners to carefully research a registrant's use of a domain name before filing a UDRP complaint, and to challenge only those domain names that involve clear violations of the UDRP.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, LLP

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