The first ruling under the new Uniform Domain Name Dispute Resolution Policy (“the Policy”) was issued on January 14 by the World Intellectual Property Organization Arbitration and Mediation Center (“WIPO”). In its published decision, the arbitrator in World Wrestling Federation Entertainment, Inc. v. Michael Bosman, ordered that the disputed domain name registration be transferred to the complainant. The decision was based upon a finding that the complainant had proven the three elements required under the Policy: (1) The domain name was confusingly similar to the complainant’s mark, (2) The respondent did not have a legitimate interest in the domain name, and (3) The respondent registered and used the domain name in bad faith.
In World Wrestling Federation, the WIPO arbitrator quickly dispensed of the first two elements of the complaint by acknowledging that the domain name was confusingly similar to the complainant’s mark and that the respondent had no legitimate interest in respect of the domain name. The arbitrator also found that, because the respondent offered to sell the domain name to the complainant three days after registration, the domain name was registered in bad faith. The critical issue, therefore, was whether the respondent had used the domain name. The arbitrator ultimately found that the respondent had used the domain name when he offered to sell it to the complainant for $1,000.00. Absent this offer to sell the domain name, it is unlikely that the complainant would have prevailed under the Policy.
This inaugural decision highlights one of the critical differences between the Policy and the other new weapon against cybersquatters: The Federal Anticybersquatting Consumer Protection Act (“the Act”). Under the Act, a plaintiff trademark owner must show only that the defendant registrant “has a bad faith intent to profit from that mark” and that the defendant “registers, traffics in, OR uses” a domain name that is confusingly similar or dilutive of the mark; actual use is not required under the Act. The Act lists several considerations for determining whether a defendant that has not used a domain name has, nonetheless, violated the plaintiff’s rights. These non-use violations include providing false contact information when registering a domain name or the knowing registration of multiple domain names that infringe upon another’s mark.
As a result, trademark owners should consider filing suit under the Anticybersquatting Consumer Protection Act, rather than the Policy, if there is a question as to whether a cybersquatter has “used” the infringing domain name.