Nature magazine publisher loses claim for 'nature.biz'

A World Intellectual Property Organization panellist's decision in MacMillan Publishers Limited v Telepathy Inc suggests that trademark owners are unlikely to succeed in a cybersquatting action under the Uniform Domain Name Dispute Resolution Policy (UDRP) if the disputed domain name is a generic word. "This is even more so with '.biz' domain name registrations."

Macmillan produces a magazine called Nature which has been in existence since 1869, and has numerous registered trademarks for NATURE. Telepathy runs a web development company and owns over 2,500 domain names. It uses generic domain names to (i) advertise its web development skills, and (ii) as partial consideration for other domain names, or in return for equity stakes in start-up businesses.

Under Article 4 of the UDRP, the complainant in a cybersquatting action must prove:

• the domain name in question is identical or confusingly similar to a trademark in which the complainant has rights;
  
  
• the respondent has no rights or legitimate interests in the domain name; and
  
  
• the domain name has been registered and is being used in bad faith.

With respect to the second requirement, MacMillan argued that because Telepathy had not used and had no plans to use the disputed domain name, this was evidence that Telepathy had no rights or legitimate interests in the name. The panellist, John Swinson, did not agree, finding that non-use is not conclusive of the lack of legitimate interest. Swinson also referred to the rationale for introducing new generic top-level domains, which was to allow new entrants to acquire a '.biz' domain name where the equivalent '.com' domain name was in use. Accordingly, MacMillan failed to prove one of the three elements and the complaint failed.

It is clear from this decision that even trademark owners with strong rights in generic trademarks may not succeed under the UDRP if the registrant can show that it has some legitimate interest in registering the domain name. The threshold for showing this will not be high where the domain name consists of a generic word.

Kirstin Hadley, Ashurst Morris Crisp, London