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The Internet Corporation for Assigned Names and Numbers, ICANN, was created in October 1998 to assume responsibility for domain name system management, including dispute resolution under the Uniform Domain-Name Dispute Resolution Policy (UDRP). The following five cases are of particular interest because they discuss some novel issues of first impression. In Christies Inc. v. Ola Ljungberg, No. DNU2000-0002, decided Aug. 6 by The World Intellectual Property Association (WIPO), the panel ordered the transfer of the domain name www.christies.nu to the complainant, the auction house Christie’s. The case is the first decision transferring a ccTLD. The panel determined that the domain name was confusingly similar to complainant’s trademark “Christie’s.” Complainant demonstrated that the respondent did not have a legitimate interest in the domain name. The panel was persuaded by the fact that respondent did not use “Christie’s” as a trade name and that the domain name linked to “artauction.nu,” a business operated by the respondent in connection with the auction of art, antiques and collectibles. The panel found that complainant proved that the domain name was registered in bad faith. The panel held that the only basis for creating the link from “christies.nu” was to establish a connection between the entities and exploit the goodwill of the “Christie’s” mark. Also, the respondent had registered other domain names that incorporated the trademarks of other well know auction houses and the domain names all linked to “artauction.nu.” Finally, the respondent offered to sell complainant his on-line auction business and a number of domain names, including “christies.nu,” for US $120,000. THE BARCELONA CASE In Excelentisimo Ayunatamiento de Barcelona v. Barcelona.com Inc., No. D2000-0505, issued Aug. 4 by WIPO, the panel ordered the transfer of the domain name www. barcelona.com to the complainant, the City of Barcelona. The case is the first instance of a UDRP decision ordering the transfer of a www.[cityname].com to the municipality of interest. The panel determined that the domain name was confusingly similar to the complainant’s “Barcelona” formative Spanish trademark registrations and the city name. Respondent apparently claimed its legitimate interest in the domain name derived solely from the fact that it registered the domain before the complainant had done so. Registrant’s related predecessor in interest purchased the domain name in February 1996 and respondent claimed that its “main purpose” for registration was to “develop links between the different cities having the name of Barcelona . . . and between the United States of America and Europe.” The panel found that complainant proved that the domain name was registered in bad faith. The panel found that respondent used the site to “commercially exploit” information about Barcelona, Spain, and used information provided by complainant as a free public service on respondent’s site. The panel held that anybody seeking information about the City of Barcelona via the Internet would start the search through “Barcelona.” Therefore, respondent was “taking advantage of the normal confusion” by using a “Barcelona route” and that Internet users would “normally expect to reach some official body . . . for providing the information.” The panel also found evidence of bad faith caused by respondent’s offer to complainant to invest in respondent’s company and purchase 20 percent of its stock to develop the domain name. THE MICHIGAN ECONOMIC DEVELOPMENT CASE In Michigan Economic Development Corp. v. Paul W. Steinorth Construction, Inc., No. AF-0262, issued Aug. 10 by the Disputes.org/eResolution Consortium, the panel denied the transfer of the domain name www. travelmichigan.com to the complainant, a Michigan public body corporation. Decided less than one week after the barcelona.comcase, the panel determined that the state entity could not prove the elements needed to order the transfer of the domain name under the UDRP. In particular, complainant failed to prove the respondent’s lack of legitimate rights to the domain name and bad faith in respondent’s registration and use of the domain name. Registrant used the domain name in connection with travel agency services and recreational activities in Michigan. Respondent claimed that it purchased and used the domain name in good faith, citing its consultation with an intellectual property attorney regarding the appropriate procedure for acquiring domain names and conducting a trademark search for “Travel Michigan.” Respondent also claimed no knowledge that any entity was using the phrase “Travel Michigan” at the time it purchased the domain name. Respondent also claimed that the Michigan Travel Bureau was not renamed “Travel Michigan” until 1997, one year after respondent registered its domain name. Complainant claimed use of the mark since 1990. The panel determined that the complainant, at most, met only met the first of the three elements needed to satisfy the burden of proof. In particular, the panel held that if the complainant owned rights to “Travel Michigan,” the domain name and mark were confusingly similar. However, the panel also held that registrant had a legitimate interest in the domain name. It concluded that complainant failed to prove bad faith by respondent’s use and registration of the domain name. In particular, the complainant’s only claim of bad faith by respondent was its argument that “[r]espondent knows or should have known that the State of Michigan owns the mark �Travel Michigan.’” The complainant provided no evidence of bad faith, such as that respondent sought to sell the domain name or trade on the state’s goodwill. The panel concluded that complainant’s broad claim of rights in the mark “Travel Michigan” did not automatically give it rights to the corresponding domain name THE STANDARD CHARTERED AND NATWEST CASES In Standard Chartered PLC v. Purge I.T.and National Westminster Bank PLC v. Purge I.T., No. D2000-0681, issued Aug. 13 by WIPO, the panel ordered the transfer of the domain names www.standardcharteredsucks.com and www.natwestsucks.com to the complainants, who owned the respective trademarks without the suffix “sucks.” The panel held that the domain names were confusingly similar to the complainants’ marks, “Standard Chartered” and “NatWest.” The panel acknowledged that some people would understand that the word “sucks” in the domain names indicated a grievance site not associated with the complainants. The panel found, however, that “equally others” would be confused regarding the potential association with the complainants. In contrast, although a different fact pattern, the district court in Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161 (C.D. Ca. 1998), found no likelihood of confusion or dilution by defendant’s use of the phrase “ballys sucks” as part of a domain name and on a grievance site against plaintiff. The respondent in the Standard Charteredand National Westminstercases claimed that they purchased the domain names to prevent disparaging comments about the complainants and that respondent had a legitimate interest in purchasing domain names that “might embarrass” entities if the domain names were allowed “to fall into the hands of critics.” The panel found no justification for respondent’s role as “officious interferer.” The panel concluded that respondent registered and used the domain names in bad faith because respondent registered the domain names with the purpose of transferring the domain names to the complainants for more than the registration costs. The panel accepted evidence that respondent’s attempt to sell similar type of domain names to third parties demonstrated respondent’s general course of conduct. Also, respondent admitted that it registered the domain names to make them available to the complainants and that, after initiation of the arbitration proceedings, it approached the complainants offering to sell the domain names for a “modest return for their initiative.” The panel found such actions by respondent constituted bad faith in the use and registration of the domain names. Monica B. Richman is an attorney with the e-commerce group Brown Raysman Millstein Felder & Steiner LLP, in New York. She can be reached by e-mail at Monica B. Richman. This article was originally published online at the CorporateIntelligence. com web site. Reprinted with permission.

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