WIPO's first decision under the Eligibility Requirements Dispute Resolution Policy: salvador.dali.name

By Philippe Rodhain 

On 3 October 2002, the World Intellectual Property Organization Arbitration and Mediation (WIPO Center) released its first decision relating to the new .name generic top level domain (gTLD) given under the Eligibility Requirements Dispute Resolution Policy (ERDRP).

The .name gTLD was created for registration of personal names or names of fictitious characters.  There are three types of registration in the .name gTLD: Personal Name Registrations, SLD e-mail Adresses, and Defensive Registrations. 

The characteristics of each type of .name registration can be briefly summarised as follows:  

 .name Domain Names are registered on the second and third level in the format <first name>.<last name>.name or <last name>.<first name>.name (e.g. john.smith.name or smith.john.name). 

SLD e-mail Addresses are registered in the format <first name>@<last name>.name last name>@<first name>.name (e.g. john@smith.name or smith@john.name) 

Defensive Registrations block the registration of Registered Names containing the reserved string on either the second (second-level Defensive Registrations) or the third (third-level Defensive Registrations), or on both levels (combined second- and third-level Defensive Registrations)

It is important to underline that only the Personal Name Registrations are subject to the Uniform Dispute Resolution Policy (UDRP).  Nevertheless, all Registered Names, (i.e. Personal Name Registrations and SLD E-mail addresses), and Defensive Registrations are subject to the eligibility requirements listed in the .name Registration Restrictions.  

There is however no up-front verification of whether a registrant meets these requirements.  Rather, Registered Names and Defensive Registrations can be challenged through an administrative dispute resolution procedure under the ERDRP.

Furthermore, both the UDRP and the ERDRP are incorporated into all .name registration agreements.  Any person thus can question a Personal Name Registration on the basis that it either does not meet the Eligibility Requirements or breaches the UDRP. 

To succeed under an ERDRP administrative procedure, Complainant must comply with the ERDRP Paragraph 4(b) requirements.  Complainant must prove each of the following elements in order to establish that the Registered Name was registered in violation of the Eligibility Requirements: 

-         (i) the name corresponding to the Registered Name is not the Respondent’s legal name; and 

-         (ii) the name corresponding to the Registered Name is not the name of a fictional character in which the Respondent has trademark or service mark rights; and 

-         (iii) the Respondent (as an individual) has not been commonly known by the name corresponding to the Registered Name. 

To be successful under UDRP administrative procedures, Complainant must fulfil all elements required by UDRP Paragraph 4(a).  Indeed, Complainant must prove each of the subsequent elements in order to demonstrate that the Complainant acts as a cyber squatter: 

-         (i) the disputed domain name is identical with or confusingly similar to a trade mark or service mark in which it has rights; and 

-         (ii) the domain name holder has no right or legitimate interest in respect of the domain name; and 

-         (iii) the domain name was registered and is being used in bad faith. 

There is no connection between the ERDRP and the UDRP.  Consequently, the failure of a complaint under either ERDRP or UDRP does not preclude the same Complainant from submitting a complaint under the other of the two policies, subject to the provisions of each policy. 

In salvador.dali.name, the Complainant, which was the entity exercising the intellectual and industrial property rights of the famous artist Salvador Dalí, decided to bring this matter before the WIPO Center on the basis that the salvador.dali.name registrant did not meet the Eligibility Requirements. 

However, the Complainant contended that the disputed Registered Name registrant (Respondent) did not meet all eligibility requirements established in paragraph 4 (b) of the ERDRP in the following terms: 

-         "Salvador Dali" is not the legal name of the Respondent; secondly that "Salvador Dali" is not the name of a fictional character for which the Respondent has trademark or service mark rights; and thirdly, "Salvador Dali" is not the name by which the Respondent is commonly known. Accordingly, the Respondent does not meet the eligibility requirements established in paragraph 1(b) of Appendix L of the .NAME Accreditation Agreement to obtain registration of the domain <salvador.dali.name> as Personal Name Registration." 

In addition, the Complainant added that it had a legitimate interest and was particularly concerned with the grant of the domain name at issue regarding the fact that: 

-         it is the depositary entity of the exercise of the intellectual and industrial property rights of Mr. Salvador Dalí; (ii) by virtue of the fact that Mr. Dalí established it with its current name, is expressly entitled to use Mr Dalí’s name and surname; and (iii) it is also entitled to seek protection of its trade name on the basis of Article 8 of the Paris Convention for the Protection of Industrial Property, which states that a trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark". 

However, the Panel dismissed these arguments because they could not be taken into account under the ERDRP.  Indeed, unlike a dispute under the UDRP, the Complainant does not have to show legitimate interest relating to the domain name in issue.  Hence, these arguments were disregarded in the decision-making process. 

The Panel in reality excused the Complainant from having to prove all above requirements due to the absence of any response from the Respondent.

With this in mind, the Panel assumed that the Registrant's legal name was that mentioned in the Registrar's database.  Because the Registrant's legal name was given as "Pascal Leemann-Pluot", it was clear that Salvador Dali was not the Respondent's legal name.  Therefore, the first ERDRP Policy Paragraph 4(b)(i) requirement was fully satisfied.

Similar reasoning, with identical issues, was applied for the assessment of whether SALVADOR DALI was the name of a fictional character in which the Respondent had trademark or service mark rights (the second requirement ERDRP Paragraph 4(b)(ii)) and whether the Respondent had been commonly known by the disputed Registered Name (the third requirement ERDRP Paragraph 4(b)(iii)).

As a result, the Panel found that the Complainant had proven each of three elements in paragraph 4(b) of the ERDRP and thus required that the Registrar cancel the disputed Registered Name. 

Notwithstanding that this was WIPO Center's first decision under ERDRP, it is disappointing that the Panel gave its decision without any reference to precedent or comment in particular regarding the burden of the proof. 

However, it appears to confirm the three earlier decisions given under ERDRP adjudicated by the National Arbitration Forum in which the Panels excused the Complainant from demonstrating all ERDRP requirements either due to the absence of response from the Respondent (Donald J. Trump v. Bimal Shah, Claim No FA0203000106102 ; The Estate of Jerome J. Garcia v. Paradigm Solutions aka Charlie White, Claim No FA0207000114756) or because of the respondent's spontaneous admission (America Online Inc. v. AD 2000 D.Com aka Adrian Paul Miles, Claim No: FA0203000108377). 

In the light of the decisions given by the National Arbitration Forum and WIPO Center, it is clear that the Complainant's requirements are lighter under the ERDRP than under the UDRP.  Accordingly, it can reasonably be expected that in the case of .name Registered Name disputes, Complainants will tend to base their complaints on the ERDRP rather than on the UDRP. 

Copyright © 2002
PHILLIPS ORMONDE & FITZPATRICK

Philippe Rodhain
Intellectual Property Lawyer
philippe.rodhain@pof.com.au
 

This article is not intended as a substitute for legal advice.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  You should consult with an attorney specialized in the issue and laws.

 No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.


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