Well-contested complaint reaps rewards for respondent

International

The majority of domain name disputes settled under the Uniform Dispute Resolution Policy (UDRP) at the Arbitration and Mediation Centre of the World Intellectual Property Organization (WIPO) have been in favour of the complainant. Many of these are not contested by the respondent, and provided the complainant has made out its case, these decisions are relatively straightforward. But occasionally a complaint arises in which the respondent's submission is significantly weightier than the complainant's. Rogers Cable Inc v Arran Lal is a recent example.

Rogers Cable Inc is the owner of a large video rental chain, operating in Canada since 1998, that heavily promotes its "family-friendly" service. The company had validly registered the 'rogersvideo.ca' domain name.

Arran Raja 'Roger' Lal is a Dutch filmmaker, specializing in private adult erotic videos. Lal's business, known as Roger's Video, has been in operation since 1994 in the Netherlands and other countries, but not in Canada. Lal validly registered 'rogersvideo.com' as a domain name for his business in 1999.

Rogers Cable sought to contest Lal's right to own the licence to 'rogersvideo.com' on the grounds that:

  • his trademark ROGER'S VIDEO was confusingly similar;

  • he was a cybersquatter;

  • his use of the domain name in question was designed to mislead the Canadian company's customers; and

  • he had offered to sell the domain name to the company for a profit.

Lal submitted evidence to show that his business is legal in the Netherlands and that it had produced "over 150 private video productions since 1994 as well as expanding its photography and film processing business". The well-drafted response claimed that the only similarity between the complainant's and the respondent's respective businesses was that each made videos available to clients; Lal assigned all rights in the videos solely to the parties that commissioned them, while Rogers Cable rented videos to the general public. Lal also included a clear notice on his website to indicate the adult nature of the content on the site. On that basis, it was determined that Lal's use of the ROGER'S VIDEO trademark was not confusingly similar to Rogers Cable's usage.

The Canadian company failed to include in its submission any factual evidence to substantiate its claim that Lal was a cybersquatter. In fact, searches of the domain name registrars and WIPO domain name arbitration databases indicated that the domain names that were listed in the complaint had never been disputed and were not registered in Lal's name.

Also, Lal produced server logs which indicated that less than 1% of the visitors to his site came from addresses located in North America. Rogers Cable only cited one letter of complaint from a customer who had mistakenly visited Lal's site instead of the complainant's.

Finally, Lal produced an email trail that showed that the complainant had first approached him seeking to purchase the disputed domain name. Lal had made no independent attempt to sell the name to the complainant.

As a consequence of Lal's strong rebuttal of Rogers Cable's complaint, it was found that he was entitled to retain ownership of 'rogersvideo.com'. Afterward, the parties reached a mutually satisfactory agreement in which Rogers Video acquired the disputed domain name from Lal for an undisclosed amount.

This decision highlights that the UDRP produces fair decisions when both parties vigorously contest their right to own a domain name. Despite statistics to the contrary, the UDRP is balanced and respectful of the interests of individuals when compared to those of large corporations.

John Selby, Mallesons Stephen Jaques, Sydney

Get unlimited access to all WTR content