Jupitermedia loses fight for 'internet.com.au'

International

In Jupitermedia Corporation v Spotpress Pty Ltd, a three-member World Intellectual Property Organization (WIPO) panel has refused to transfer the domain name 'internet.com.au' to the owner of the mark AUSTRALIA.INTERNET.COM.

Spotpress Pty Ltd, which publishes newspapers and magazines under the name Internet Printing, registered the domain name 'internet.com.au' to host a password-protected website on which the names Internet Printing and Internet.com.au appeared. Jupitermedia Corporation, a US provider of real-time online news, and its wholly-owned subsidiary Australia.Internet.com Pty Ltd filed a complaint with WIPO on the basis of:

  • Jupitermedia's Australian trademark AUSTRALIA.INTERNET.COM;

  • its application in Australia to register the mark INTERNET.COM; and

  • Australia.Internet.com's company name pursuant to Paragraph 4(a)(i) of the '.au' Dispute Resolution Policy (auDRP).

Jupitermedia and Australia.Internet.com also asserted that:

  • they had a substantial international reputation in the INTERNET.COM mark;

  • Spotpress was not making legitimate active use of the domain name and it was a sham registration; and

  • Spotpress was not eligible to hold a domain name under the Australian Domain Name Authority (auDA) eligibility rules at the time it acquired 'internet.com.au' during an auction of generic domain names.

Spotpress counterclaimed that:

  • it had registered its business name Internet Printing prior to registering the disputed domain name, thus satisfying the eligibility criteria to register a domain name under the auDA rules;

  • the domain name was not confusingly similar to Jupitermedia's trademarks as both the registration and application were limited to the colours red, black and white;

  • some 3,000 other Australian businesses have the word 'Internet' in their names;

  • it had used the domain name in the course of its business and had an established business plan to expand its internet activities through the use of the domain name; and

  • Jupitermedia had knowledge of Spotpress's legitimate interest and had been selective in its disclosure of information in that respect.

Further, Spotpress asserted that Jupitermedia had used the auDRP in bad faith. Accordingly, Spotpress sought a finding of reverse domain name hijacking.

The panel denied Jupitermedia and Australia.Internet.com's complaint. It found that both Jupitermedia and Australia.Internet.com had rights in their trademarks and company name respectively. However, the panel made no finding as to identity or deceptive similarity between these marks and company name, and the disputed domain name.

The panel found that Spotpress had clearly established a legitimate interest in the domain name. As to bad faith, the panel characterized the complainants' arguments as extremely weak and said that Spotpress had factually disproved the allegation that it had misrepresented its eligibility to participate in the generic name auction.

It also refused to make a finding of reverse domain name hijacking, holding that while Jupitermedia's case was weak, overall it did "not appear to have crossed the thin line between 'forcefully arguing [its] case' and 'bad faith'".

An interesting procedural and jurisdictional point was raised in relation to the remedy claimed - that is, transfer of the domain name "to the complainants". The panel found that such a remedy was impossible to provide, since transfer could only be to one legal person. It distinguished cases where multiple complainants have the same interest in the domain name (eg, Liano v Huynh), from the case at hand where the interests of the complainants were divergent, being based respectively on a trademark registration and a company name. In the panel's view, in such a case it is "impermissible for the panel to choose arbitrarily whose interests are ... relevant".

Desmond J Ryan, Davies Collison Cave Solicitors, Melbourne

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