Lack of evidence blocks government agency's domain name claim

In Department of Arts, Sport and Tourism v Odyssey Internet Portal Limited, a World Intellectual Property Organization (WIPO) panel has refused to order the transfer of the domain name 'cultureireland.ie' to the complainant.

The complainant, a department of the government of Ireland, was the owner of the disputed domain name between October 4 2002 and January 30 2004. In February 2005 the complainant set up a national agency called Culture Ireland to promote Irish arts and artists. It had intended to operate a website at the disputed domain name for the new agency. The internet address 'www.cultureireland.ie' had been printed on the agency's stationery.

On April 15 2005 Odyssey Internet Portal Limited registered the disputed domain name based on rights in a registered business name for Culture Ireland. It did not operate a website at the disputed domain name. From the nature of its business it was inferred that it acquired the domain name in order to encourage the government agency to avail of its services, namely managing and developing websites.

Although Odyssey did not submit any reply to the complaint, the WIPO panel held that the complainant needed to prove its case in order to succeed in a Uniform Domain Name Dispute Resolution Policy proceeding. As the complainant based its case upon unregistered trademark rights it had to show that the name Culture Ireland, which was noted to be of a highly descriptive nature, had become a distinctive identifier associated with its goods and services. Although the complainant stated that it used the name Culture Ireland before the establishment of the government agency, it did not produce any actual evidence to support its assertions. The complainant merely alleged "longstanding use" of the name and that it had formerly used a website at the disputed domain name.

In order to substantiate unregistered rights, the panel stated that it would have expected the complainant to provide evidence in the form of website printouts, advertisements or other marketing material, website visitor statistics, evidence of marketing spend and samples of press coverage. In light of the lack of evidence concerning the period, nature, and extent of the complainant's use of the name Culture Ireland, and the highly descriptive nature of the name, the panel concluded that it did not have sufficient information to conclude that the name Culture Ireland was distinctive of the complainant and/or its goods and services. In light of this finding, the panel was not required to consider the remaining factors of the '.IE' Dispute Resolution Policy, which the complainant would need to establish in order to succeed.

Gavan Ferguson, FR Kelly & Co, Dublin