Panel laments inability to impose sanctions in domain name case
The reprehensible behaviour of the respondent in the case of Raine & Horne (Holdings) Pty Ltd v Waldron (ADNDRC HK-0200010) has prompted an outspoken comment from the presiding World Intellectual Property Organization panel, which regretted its inability to award costs or impose sanctions on Waldron.
The complainant is a member of the Raine & Horne Group, which operates franchise real estate businesses throughout Australia and overseas. The group has been trading since 1883, and owns the trademark RAINE & HORNE and the domain name 'raineandhornecommercial.com.au'.
Waldron's website 'raineandhornecommercial.com' contained pornographic advertising. When the complainant first contacted him about the domain name, Waldron offered to sell it for over 10 times the amount of his costs. He also requested compensation for expenses associated with the dispute. Further, Waldron claimed that:
- the word 'and' as used in the domain name differs from the symbol '&' in the complainant's trademark;
- the disputed domain name and the complainant's trademark and domain name are neither identical nor confusingly similar; and
- the complainant has no legitimate rights in the phrase 'Raine and Horne Commercial'.
The panel had no difficulty finding in favour of the complainant, ordering the transfer of the domain name and refusing Waldron's request for compensation. The panel noted that using the domain name as a vehicle for pornographic material is prohibited under both the rules of the German registrar and applicable German laws.
The panel concluded by commenting that it regretted that its jurisdiction did not extend to the award of costs to the complainant or the imposition of any other sanctions on Waldron, and suggested that the registrar take action in respect of the violation of both its rules and the relevant provisions of German law.It remains to be seen whether such comments from a WIPO panel will be taken up in future amendments to ICANN's Uniform Domain Name Dispute Resolution Policy.
Martin O'Connor, Coudert Brothers, Sydney
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