Open World wins back '2e.com' from ID thief
In Open World Inc v Domains BVI, World Intellectual Property Organization (WIPO) panellist Henry Olsson has ordered the transfer of '2e.com' back to Open World. Olsson held that, among other things, BVI's use of an email address that had previously belonged to Open World to request the transfer of the domain name from that company to BVI was ample evidence of bad-faith registration and use.
Open World Inc, a business communications provider, is the successor to a company called Pipe 9 Corporation, which was formerly known as CommerceInc. Following the takeover, Open World acquired the domain names 'commerceinc.net' and '2e.com'. It also gained common law trademark rights in the term '2e.com'. When Pipe 9 originally registered the '2e.com' domain name, under its previous guise of CommerceInc, it specified to the registrar that its administrative and technical contact email address was '[email protected]'. Open World later decided that it no longer needed the 'commerceinc.net' domain name and allowed the registration to lapse.
Domains BVI, a company located in the British Virgin Islands, acquired the 'commerceinc.net' registration and control over the related '[email protected]' email address. Using this email address, BVI contacted the relevant registrar and successfully requested the transfer of '2e.com' from Open World. BVI put the domain name up for sale and subsequently sold it to two different entities, although in both cases BVI refused to sign the necessary transfer documents. When Open World attempted to contact BVI to complain about its actions, it discovered that BVI had provided false contact information to the registrar and consequently could not be reached.
Open World filed a complaint with WIPO under the Uniform Domain Name Dispute Resolution Policy (UDRP) requesting the return of the disputed domain name. It argued that BVI had no right to '2e.com' and had used the '[email protected]' email address to falsely represent to the registrar that it was Open World's authorized contact for the domain name.
Olsson noted that Open World had established rights in the term '2e.com' and that UDRP complaints can be filed on the basis of an infringement of an unregistered trademark. He ordered the transfer of the domain name back to Open World, holding that pursuant to Paragraph 4 of the UDRP:
- the domain name is identical to Open World's trademark;
- BVI has no rights or legitimate interest in '2e.com'; and
- the domain name had been registered and was being used in bad faith.
With regard to the bad-faith requirement, Olsson said that BVI's use of false names, addresses and telephone numbers to conceal its true identity, and its offers to sell the domain name at an inflated price was ample evidence of bad-faith registration and use.
Susan Progoff, Fish & Neave, New York
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