WIPO decides first '.ae' dispute
A World Intellectual Property Organization panel has ordered the transfer of the domain name 'sonyericsson.ae' to Sony Ericsson Mobile Communications International AB (Sony Ericsson Mobile) in the first alternative dispute resolution decision relating to the United Arab Emirates' '.ae' country-code top-level domain.
The '.ae' Domain Name Dispute Resolution Policy (aeDRP) closely follows the Uniform Domain Name Dispute Resolution Policy (UDRP) used by many generic top-level domains, although under the aeDRP it is sufficient to prove that either registration or subsequent use of a domain name occurred in bad faith to obtain a transfer (the UDRP requires both elements to be proved). In addition, unless otherwise agreed by the parties or otherwise decided by the panel, the language of the aeDRP procedure shall be English, rather than the language of the registration agreement, as provided for by the UDRP.
In Sony Ericsson Mobile Communications International AB v Ali, the panel ordered the transfer of the domain name 'sonyericsson.ae' to Sony Ericsson Mobile, set up as a joint venture by Telefonaktiebolaget LM Ericsson (Ericsson) and Sony Corporation (Sony), which were co-complainants in the dispute. The panel found that Ericsson holds a registration for the mark ERICSSON and Sony holds a registration for the mark SONY. Although the mark SONYERICSSON is not registered, the panel decided that Sony Ericsson Mobile clearly owns common law rights in it by virtue of its extensive global trading activities and goodwill. The disputed domain name was therefore identical to an unregistered trademark in which one of the complainants had rights.
The panel further found that the complainants had demonstrated a prima facie case that the respondent, Mohamed Ali Aal Ali, had no rights or legitimate interests in the disputed domain name, and Ali had failed to rebut this by not responding. Finally, the panel found that Ali had in all likelihood registered the disputed domain name for the purpose of selling it to the complainants for valuable consideration in excess of his out-of-pocket costs directly related to the domain name (Ali offered to sell the disputed domain name to the complainants for the grossly excessive price of $1 million). This, together with the fact that Ali had provided no explanation whatsoever for the registration of the domain name, led the panel to conclude that he had registered the disputed domain name in bad faith. The disputed domain name had never been used to point to a website, but the panel noted that registration or use in bad faith was sufficient for the purposes of the aeDRP.
Accordingly, the panel ordered the transfer of 'sonyericsson.ae' to Sony Ericsson Mobile.
David Taylor and Jane Seager, Lovells, Paris
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