The Economist fails to obtain transfer of 'theeconomist.com'

In The Economist Newspaper Limited v TE Internet Services (Case D2007-1652, February 5 2008), the weekly magazine The Economist has experienced the true meaning of the term 'false economist' when a World Intellectual Property Organization (WIPO) panel refused to order the transfer of the domain name 'theeconomist.com'.

The Economist is owned by The Economist Newspaper Limited, a company registered in the United Kingdom, and has been in continuous publication since its establishment in 1843. The magazine covers areas such as business, politics, finance, economics, science, technology, books and arts. In 1985 The Economist registered the trademark THE ECONOMIST in the United States; the mark was registered in the United Kingdom in 1992.

An American citizen, Jason Rose, registered the domain name 'theeconomist.com' in November 1996. Rose claimed to be an admirer of Alan Greenspan, a famous American economist with an impressive record of achievement. The website attached to 'theeconomist.com' was a basic single page consisting mainly of a large picture of Alan Greenspan followed by the words:

"Alan Greenspan, ex-chairman of the Federal Reserve Board, is the economist of the century. President Reagan called Alan Greenspan 'the most powerful man in the world'."

In 2007 The Economist became aware of the substantial internet traffic generated by the website and made an offer through an intermediary to purchase the domain name. The offer was unsuccessful. The Economist filed a complaint with WIPO on November 9 2007. The complaint was brought under the Uniform Domain Name Dispute Resolution Policy (UDRP) Rules.

In order to succeed under the three-limb test of Paragraph 4(a) of the UDRP, The Economist had to prove that:

• the disputed domain name was identical or confusingly similar to its trademark;
  
  
• Rose had no rights or legitimate interests in the domain name; and
  
  
• the domain name had been registered and was being used in bad faith.

After reviewing the record of the case, the panel found that the first limb of Paragraph 4(a) had been established.

However, the panel issued an order to both parties pursuant to Paragraph 12 of the UDRP, which allows the panel to request additional information in order to reach a final determination. The panel sought clarifications as to why The Economist had waited 11 years since the registration of the domain name before filing a complaint. The panel also wished to be informed about the further particulars of Rose's stated interest in economics and economists, and the reasons for the minimal use of the domain name.

In response to the panel's request, The Economist stated that it did not become aware of the domain name until 2001, at which stage it wrote to Rose seeking transfer of the domain name. At that time The Economist was unsure whether a complaint under the UDRP would succeed, as it believed that Rose's website might have been genuine.

In response to the panel's order, Rose stated that from the registration of the domain name in 1996 onwards, there had been a picture of Alan Greenspan on the website attached to the domain name. A subsequent interruption of the website for a period of two years was due to hosting issues. Rose indicated that he was unable to show what the website had previously looked like due to frequent changes of computers. He also declared that his purpose in registering the website was his fascination with Alan Greenspan and that he had no particular interest in economics.

Despite being "highly sceptical and almost incredulous" about Rose's alleged purpose for registering the disputed domain name, the panel considered that The Economist had failed to prove bad-faith registration and thus denied the complaint. According to Rose's unwitnessed declarations, he did not know of The Economist and its magazine. Although the panel pointed out that the validity of such declarations was questionable because they were unwitnessed and did not refer to the law under which they had been made, the declarations seem to have influenced the panel in finding that bad-faith registration had not been proven in the circumstances of this case.

However, the determining factor for the decision is likely to have been the long delay between the registration of 'theeconomist.com' and the filing of the UDRP complaint. The panel stated that the case was a "vivid example of the difficulties faced by a complainant who brings proceedings under the policy many years after a disputed domain name has been registered" and that the 11-year delay was the longest it had ever encountered. A delay in bringing proceedings may in some instances be an additional reason for a panel to deny a complaint. For example, in Chivas USA Enterprises LLC v Carbajal (WIPO Case D2006-0551), the panel stated that "while not itself determinative, this lengthy and unexplained delay is further reason to deny the complaint".

The panel also indicated that court litigation may be a more appropriate forum for determining such a belated issue of fact. In the panel's view, the complainant would need to resort to court litigation if it believed that cross-examination of Rose's evidence would successfully prove bad-faith registration and use. Once again, this illustrates the need to assess carefully the facts and strategy before filing a UDRP complaint.

David Taylor and Brechtje Lindeboom, Lovells LLP, Paris