The first problem Arthur has encountered is that his company, 'yorkshire woodcraft', is wishing to set up a website under the domain name yorkshirewoodcraft. co. uk. However this domain name has already been taken and is owned by a different party.
It is likely to have been acquired under the first come first served rule, but before even enquiring into who the owner is (this is covered later in compulsory arbitration), Arthur must inform us of whether or not he has 'yorkshire woodcraft' as a registered trademark, however it could be found through the patent office database where many word marks of the national and community trademarks can be found. This is extremely important as it shows rights over the name. It also gives us greater options on the action Arthur wishes to take.
If Arthur does posses 'yorkshire woodcraft' as a registered trademark it would be possible to bring action through the county court on the infringment of a registered trademark. This was set up under the trad marks act 1994. If it does apply then, the trademark will have been infringed upon if it satisfies three questions. Firstly is the trademark identical or similsr to that of 'yorkshire woodcraft'. That is obviously correct as the names are the same. Secondly, is it being used without permission? , again the complaint would not have arisen if it wasn't.
Finally, the goods being sold must be similar. It would seem likely to fail on this as arthur's company deal in furniture, while the other company seems to deal in outdoor pursuits according to the website. The second action that can be taken through the courts can even be applied if the company isn't a registered trademark.. This is the law of passing off. Again there are three requirements that must be fulfilled. The case of Reckit ]1 highlights the following three aspects, here they are in relation to arthur's case.
Firstly Arthur's 'Yorkshire woodcreft' would have to show that there company has a 'reputation attached to the goods' that when the consumer is buying the goods under the certain brand that they specifically recognise it as Arthurs companies goods. Secondly, it must be shown that there is misrepresentation or deception on the part of the defendant, in that the goods or services they are suppling would in some way lead the public into believing they are purchasing the goods of arthur's company.
Finally the likely damage Arthur is going to suffer as a direct result of the consumers beliefs that they are buying goods from Arthur when it is in fact the other company. Again this is likely to fail due to the complete differences in businesses. It should be noted that if Arthur wanted to take either of the routes mentioned above which are through the courts it is likely to incur him or his company large costs and it may take a long time to be resolved. However, recently, compulsory arbitration has been introduced.
The domain name mentioned at the beginning of this report is a ccTDL or 'country code top level domain'this is shown by the suffix of . uk(united kingdom, there are others for other countries), the other type of TDL is the generic or gTDL, an example of this is . com. The registrar for most of the uk cctdl's is nominet and details of the owner of the domain name can be found here, on2. This will at least tell us who any complaint will be against. This power was given to Nominet by the ICANN, a united states company that is non-profit making.
This information is important as compulsory arbitration has two differing procedures for the differing TDL's. The procedure for gTDL's is called the Uniform Domain Name Dispute Resolution Policy (UDRP) and is governed by ICANN. This is important later with the second problem Arthur has. The procedure for . uk or united kingdom ccTDL`s is the dispute resolution service introduced as recently as 2001. This is the one that concerns us here. Under section 2a of DRS Arthur would first have to prove he had some claim or rights over the name or mark.
This is judged in the same way as the courts would, either with Arthur having 'yorkshire woodcraft' as his trademark or under the laws of passing off (both as mentioned above). Also the mark must be similar or identical to that of the domain name. Which it clearly is. This is known as typosquatting and the case of Cheltenham and Gloucester (2002)3 shows that slight differences are seen as similar and as the only difference is the space, that must be removed in a domain name anyway, they are identical
.Under section 2aii it must be proved that the registration of the domain name was an 'abusive' one. Factors indicating this are under paragrath 3, e. g for selling back (doesn`t seem so) for blocking registration to which he has rights (this certainly applies to Arthur) but finally under this paragraph it does say any failure for no site information is not itself an abusive registration (para. 3 b) Here the respondant must show that he comes within the rights to enable him to keep the domain name. These are covered under the DRS paragraph 4.
The respondant to arthurs claim will come within this paragraph if he satifies one of a non- exhaustive list, they include such things as the genuine use of the domain name by the respondant to sell or offer the goods he is trying to supply, if the respondant is commonly kinown by the name also in the field or buissness he is in it would also be valid. Thirdly it seems obvious it's a commercial use but it may be a fair use. Finally if the domain name descriptive and being made fair use of. This final fact is very relevant as the words Yorkshire woodcraft could be seen as descriptive.
A case highlighting this was that of weir valves (2003)4. Here a very similar case was seen as descriptive but not fair, however if the buissness are different the outcome could be different also. If athur was going to take this action it would be a fraction of the court costs at i?? 750 per complaint. It is also a lot quicker than the court and will be judged by a Nominet panel of experts and shown on the website. In all Arthur has a very good case. The second problem Arthur has concerns another website domain name he has.
This time however the problem and procedure are slightly different yet extremely similar to those mentioned before. The problem has arisen that a disgruntled customer of arthur's business (easterncarpets. com) has set up another domain name and website called easterncarpetsarecrap.. com. These are gTDL`s and therefore aswell as the trademark infringment law (if eastern carpets is a trademark), and the law of passing off, which are both court processes, they would also have the right to compulsory arbitration under the Uniform Domain Name Dispute Resolution Policy or UDRP.
This is different to the DNS in that it deals with gTDL`s. The same court procedures would be open and the same differences in cost and time would apply. Howevr there are some certain differences between the procedure of the DNS and UDRP and these will be outlined. Anyone who registers a domain name must do so under the rules of ICANN (gTDL`s) and as such when registering they agree to be held liable for any legitimate complaints against them. This is under the UDRP paragraph 4a.
It goes on to say the applicable disputes that can be resolved this way, are those where trademark rights are infringed (4ai)because there confusingly similar or identical, it is obvious prefixes and suffixes still mean similarity, as shown in Dixons case (2001)5. Again the UDRP is slightly different to the DNS in words really only using rights and legitimate interests compared to abusive registaration. Under (4aii) the respondant has to prove his rights. And finally is it being used in bad faith. This question is obviously yes.
The term though for this is 'cybergripping' and a perfect example for Arthur is that of Philips (2002)6. In this case the site inserted the word fu#k before Philips the company. They found in this and others that they were similar and the respondant had no interests. All of these must be accepted. again there can be no damages awarded but the domain name may be cancelled or given to the other party. The panels that are in charge of proceedings under ICANN and the UDRP, and also give descisions are the WIPO Arbitration and mediation centre and also the national arbitration foundation, one situated in Europe the other in the U. S.