Passive holding of domain name does not amount to Telstra bad faith

International

In Alberto-Culver Company v Pritpal Singh Channa, World Intellectual Property Organization panellist Dan Hunter has refused to transfer the domain names 'staticguard.com' and 'staticguards.com', finding that, although not actively used by the registrant, they had not been registered and used in bad faith. This decision serves as a reminder that the finding in Telstra Corporation Limited v Nuclear Marshmallows (ie, bad faith can be established on evidence of passive holding of a domain name) was made on the particular facts of that case.

Alberto-Culver, the registered owner of the STATIC GUARD trademark in many countries and classes, argued that the disputed domain names are confusingly similar to its mark and that Channa had registered them in bad faith, evidenced by the fact that he had not used them since registration.

Hunter agreed that the domain names are confusingly similar to the trademark and had little trouble in finding that Channa has no rights or legitimate interest in the domain names. However, he held that Alberto-Culver had failed to provide sufficient evidence under the Uniform Domain Name Dispute Resolution Policy to back up any claims that Channa had registered and is using the domain names in bad faith. He distinguished the Telstra Case on the basis that Alberto-Culver had failed to provide evidence of any surrounding circumstances which could lead to a conclusion that Channa had acted in bad faith. In Telstra such circumstances included the following:

  • The complainant's trademark was an invented word with a strong reputation and was widely known;

  • The respondent had provided no evidence of any actual or contemplated good-faith use for the domain name; and

  • The respondent had taken active steps to conceal its true identity and had provided false contact details.

The panellist in Telstra was careful to emphasize that it was in these particular circumstances that the passive holding of the 'telstra.org' domain name amounted to registration and use in bad faith.

In the present case, without further evidence, Hunter could not make such a finding. Consequently, the request for transfer of the domain names was refused.

Stephen Stern and Frances Wheelahan, Corrs Chambers Westgarth, Melbourne

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