The panel's decision is further evidence that, in applying the UDRP, experts increasingly view their role as limited to the assessment of disputes involving cybersquatters and, as such, they will not be drawn on issues of trade mark infringement or matters of litigation.
For analysis and comment on the WIPO decision in WWF-World Wide Fund for Nature v Moniker Online Services LLC and Gregory Ricks.
The Worldwide Fund for Nature (WWF) is a worldwide nature organisation and the owner of numerous trade marks for the letters WWF throughout the world. WWF had commenced a number of legal actions in recent years against the World Wrestling Federation (the Federation) over the use by the Federation of the WWF mark. In 2002, following breach by the Federation of a co-existence agreement, WWF obtained a court order which stated that the Federation should cancel or change its domain name registrations, or alternatively to transfer them to WWF. In relation to the wwf.com domain name, the Federation failed to take any of these steps and instead offered the domain name for sale on an internet discussion forum website. The domain name was purchased by a Mr Ricks who first used the domain for a site containing links to third-party commercial sites and later for a discussion forum known as the "Web Wrestling Forum".
One forum available to hear disputes over generic top-level domain names, such as those ending in .com, .org, and .net, is the Arbitration and Mediation Centre of the World Intellectual Property Organisation (WIPO) under the Uniform Domain Name Dispute Resolution Policy (UDRP).
Under the UDRP, to obtain an order requiring the cancellation or transferral of a domain name, a complainant must prove each of the following three elements:
that it has rights in a trade mark which is identical or confusingly similar to the domain name; that the owner of the domain name has no rights or legitimate interests in it; and that the domain name has been registered, and is being used, in bad faith.
A respondent can demonstrate the existence of rights or legitimate interests in the disputed domain name where, among other things, the use of the domain name is in connection with an offering of goods or services in good faith, or where he is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark.
WWF filed a UDRP complaint against Mr Ricks (the Respondent), claiming, among other things, that his registration and ongoing use of a domain name corresponding to a well-known mark was made in bad faith and that he had no legitimate interests in the domain name.
The WIPO panel rejected the complaint on the basis that there was insufficient evidence to establish that the Respondent was acting in bad faith when he registered the wwf.com domain name, particularly given the length of time between the date of registration and the filing of the complaint by WWF and the fact that it was one party's word against the other. The fact that in 2002 the disputed domain name was on the market for sale and was not transferred to WWF, was an indication to the Respondent (and the public at large) that it had not been part of any court order made in the litigation. The WIPO panel also considered that the Respondent had shown "demonstrable preparations" to use the domain name for a legitimate purpose (the Web Wrestling Forum) before receiving notice of the WWF complaint.
The decision in this case illustrates that, in applying the UDRP, WIPO experts wish to make it clear that they will not rule on issues of trade mark infringement or matters of litigation. This approach was also shown in the recent WIPO decision in Geoffrey Inc. v Not The Usual of 18 October 2006, in which a WIPO panel rejected a complaint by TOYS "R" US against the owner of the domain names pensareus.com and pensrus.com. The panel affirmed that UDRP proceedings are for clear cases of cybersquatting and that the proper forum for resolving trade mark infringement or trade mark dilution disputes was the courts.
WWF's delay in filing a complaint under the UDRP meant that the respondent was able to acquire legitimate rights in the wwf.com domain name through his continued use of the site for what the panel viewed as a legitimate purpose. Even if the respondent's registration of the domain name was in bad faith, his subsequent use was not. This result should, therefore, serve as a warning to trade mark owners that they should file any complaint under the UDRP as soon as possible after learning of the registration or use of the domain name in question.