Smartnumber owner has no right in a 'name', says WIPO

In Multi-National Concepts Pty Ltd v 1300 Directory Pty Ltd (Case DAU2009-0002, June 7 2009), a World Intellectual Property Organization panellist has taken a strict view as to the rights that an owner has in its 'smartnumber'.
 

A smartnumber is either a freephone number or a local rate (or toll-free) phone number. A freephone phone number is a 10-digit number beginning with 1800. A local rate/toll-free phone number is either a 10-digit number beginning with 1300, or a six-digit number beginning with 13. Desirable smartnumbers are either those that are highly memorable (eg, 1800 222 222) or those that translate to a 'phoneword' (eg, 13 2287 translates to '13 CATS' when the suffix numbers are mapped to the letters on a telephone keypad).

The present case involved nine generic and descriptive domain names (eg, '1300accountant.com.au' and '1300electrical.com.au'). Multi-National Concepts Pty Ltd argued that it owned 'rights' in the phonewords which corresponded to the disputed domain names on the basis that “phonewords are types of names which are sufficient to show rights”.

1300 Directory Pty Ltd made two key - and ultimately successful - submissions. First, it argued that a 'name' must necessarily include letters or words, whereas a telephone number (albeit a smartnumber which is a phoneword) is composed of numbers only. Therefore, a telephone number is not a 'name' for the purposes of the '.au' Dispute Resolution Policy (auDRP).

This submission must be right on the facts in the particular case, although it must be possible, in theory, for a number to be a name. For example, the panellist noted that '911' is the name of a car and that '747' is the name of a plane. However, these are quite different examples to the one under consideration, in which the panellist noted that Multi-National Concepts “ha[d] not put forward any evidence that its phonewords are recognized as a name (or other identifier or label) for a legal entity or any other thing, or as a trademark for any goods or services”.

1300 Directory's second submission was that even if a smartnumber or a phoneword is a name, Multi-National Concepts was not the owner of the phoneword itself, but a mere licensee of the smartnumber. By entering into Australian Communications and Media Authority (ACMA) auctions, Multi-National Concepts has won the right to use (or sublicense to another person) the relevant smartnumber. However, it has not become the owner of any rights in the phoneword.
 

This submission must be right in principle and ACMA’s terms and conditions of use make it clear that no IP rights are granted as a result of obtaining a smartnumber. The issue was whether under the auDRP, it should be necessary for a complainant to have to establish rights in the nature of IP or other proprietary rights. That said, the inherent problem for the owner of a smartnumber is that whatever the true nature of its rights derived from ACMA, these vest in the smartnumber and not in the phoneword. If it were otherwise, every person would in theory have 'rights' to any words that can be spelled from their ordinary telephone number or mobile number, which (1300 Directory submitted) would be “absurd”.
 

The panellist in this case agreed with 1300 Directory's submissions and denied the complaint. In doing so, he distinguished the earlier 1300HOMELOAN Case, in which the complainant submitted evidence that he had purchased the relevant smartnumber with a plan to use the phoneword 1300HOMELOAN in connection with a business run under a name corresponding to the phoneword. This evidence contributed to persuading the panellist to agree that the complainant had 'rights' in a 'name'. This was not the situation for Multi-National Concepts, which operates a phoneword registry and sublicenses its smartnumbers to third parties. While those third parties may subsequently commence a business under the phoneword, Multi-National Concepts did not do so and the panellist accordingly held that it had no rights in any relevant name.