WIPO panel issues landmark decision in 'InternetNews.info'

International

A World Intellectual Property Organization (WIPO) panel has upheld the right of a Spanish internet entrepreneur, Christian Castresana, to use the domain name 'InternetNews.info'. Castresana's right to use the name was challenged by the INT Media Group, which had previously registered INTERNETNEWS as a trademark. The decision is important because it establishes that the use of combinations of common words in domain names does not automatically constitute a recognizable brand.

The '.info' suffix was one of the seven new top-level domains approved by the Internet Corporation for Assigned Names and Numbers (ICANN) in November 2000. ICANN established distinct periods for the registration of the new '.info' domains, the first of which was called 'the sunrise period'. Although INT had registered INTERNETNEWS as a trademark, it did not take advantage of the sunrise period to register the domain name 'InternetNews.info' and, in the interim, Castresana made his registration of the name. As a consequence of this, INT challenged Castresana's right to use the name before WIPO's commercial arbitration body.

INT blamed its domain registrars for failing to register the domain name during the sunrise period, and it also claimed that Castresana had acted in bad faith and had no legitimate right to use the word combination 'InternetNews'.

In its resolution, the WIPO panel considered significant the fact that the challenge concerned the new '.info' name. It went on to find that the combination of 'Internet' and 'News' was not unusual and did not "require imaginative capacity or a special sophistication". The same combination of words can be used by different owners and domain extensions even where there are pre-existing trademark rights.

Also of significance is the fact that the panel's resolution goes on to say that this decision will influence outcomes of similar domain disputes. It is a reasonable inference, then, that future attempts to register, or challenge, common words may not meet with success, notwithstanding their intellectual property registration - of whatever kind - elsewhere.

Patrick Walshe, Matheson Ormsby Prentice Solicitors, Dublin

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