Trade union secures control of gTLD names
The Spanish trade union Confederación Sindical de Comisiones Obreras (CC.OO) has been awarded the transfer of domain names in the generic top-level domains (gTLDs) '.com' and '.org'. In two decisions (D2003-0099 and D2003-0330) issued by the World Intellectual Property Organization's (WIPO) Arbitration and Mediation Centre, the panellists found that the registered domain names were being used in bad faith.
CC.OO has registered the trademark 'CC.OO' for various products in Spain and is also the registered owner of country-code top-level domain name 'ccoo.es', where it maintains a website. In the case of 'ccoo.com', the respondent used the domain name for a pornographic website. In the case of 'ccoo.org', the respondent had not established a website but was offering the domain name for sale according to the Whois information. In relation to both, CC.OO argued that:
- there was a confusing similarity between its trademark and the domain names;
- neither respondent had any rights or legitimate interest in the names; and
- the respondents had registered and used the domain names in bad faith.
The panellists in both cases came to the same conclusions, agreeing that:
- the domain names were confusingly similar to CC.OO's trademark;
- there was no evidence that either respondent had a business or other relationship to the domain names prior to registration;
- the respondents' failure to reply to the complaints amounted to acknowledgement of their lack of legitimate interest in the names;
- registration of the domain names prevented CC.OO from using them and attracted internet users by creating a likelihood of confusion; and
- the respondents were attempting to force CC.OO to make an offer to purchase the domain names, something the registrant of 'ccoo.org' had already made clear by offering it for sale.
Accordingly, both panellists ordered the domain names to be transferred to CC.OO.
Rosario Jimenez-Batalla, Batalla Abogados, Madrid
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