Copy or Similarity
We initially point out that the UDRP was established to permit the expedited disposition
of clear abuses. A clear abuse is certainly not present in the instant case. In
the case of America Online, Inc. v John Deep d/b/a Buddy USA Inc., National
Arbitration Forum, FA0103000096795, a panelist, G. Gervaise Davis III, Esq.,
stated that:
- "the purpose of the ICANN UDRP is to deal with simple, clear, abusive registrations
of domain names, and not complex trademark disputes or to inject the Panel’s views
that someone should not be doing this since it might be wrong or unfair."
Furthermore, in the case of J. Crew v. Crew.com, D2000-0054 (WIPO Apr. 20, 2000),
a similar statement appears with a quotation from a Congressional staff report which
was prepared to explain the purpose and rationale behind the UDRP.
The case states as follows:
- "The ICANN policy is very narrow in scope; covers only clear cases of "cybersquatting"
and "cyber piracy," and does not cover every dispute that might rise over domain names.
See, for example, Second Staff Report on Implementation Documents for the Uniform Dispute
Resolution Policy (October 24th, 1999),
http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm 4.1(c) which states:
- Except in cases involving "abusive registrations" made with bad-faith intent to
profit commercially from others' trademarks (e.g., cybersquatting and
cyberpiracy), the adopted policy leaves the resolution of disputes to the courts
(or arbitrators where agreed by the parties) and calls for registrars not to disturb
a registration until those courts decide. The adopted policy establishes a
streamlined, inexpensive administrative dispute-resolution procedure intended
only for the relatively narrow class of cases of "abusive registrations." Thus,
the fact that the policy's administrative dispute-resolution procedure does not
extend to cases where a registered domain name is subject to a legitimate dispute
(and may ultimately be found to violate the challenger's trademark) is a feature
of the policy, not a flaw."
We suggest that the instant case is not a clear case of “cybersquatting” and “cyber
piracy”. Accordingly, we request that the Panel not grant the Complainant’s request
to have the Respondent’s domain name taken away.
Whether the domain names are identical or confusingly similar to a trademark or
service mark in which the complainant has rights
With respect to Complainant’s allegations that the domain name is identical or
confusingly similar to a trademark or service mark in which the complainant has
rights, we note that the only allegations contained in the Complaint with respect
to the ownership of trademarks are in Section B. The only statement of the
Complainant on this issue is as follows:
- "Dorset Police is a properly constituted Police Service in England, UK."
Complainant makes this unsupported allegation with respect to trademark rights without
providing any proof of any registration or any other basis for trademark rights (and
without any information with respect to the effective date of any alleged trademark
rights). We emphasize that NO PROOF WHATSOEVER is provided to prove that
Complainant has any legal rights in the trademark. Respondent has searched the UK
trademark registry and can find no trace of a registered trademark in the name of
"Dorset Police". Exhibit A
(http://www.dorset-police.com/internet-tribunal/1st-EXHIBIT-A.pdf) contains a
printout of the portion of the UK trademark registry which would contain the information
if it did, in fact, exist.
We conclude therefore that there is not any registration of the words "Dorset Police".
Furthermore, there is no proof that the term “Dorset Police” refers to any specifically
identifiable governmental entity. The two words are generic in nature and do not,
therefore, lend themselves to ownership rights. There may, in fact, be more than
one policing authority for the geographic region known as “Dorset”. It would be
a truly unfortunate precedent if it were decided that a governmental entity could
be considered to have trademark rights in a general, generic term to describe a
governmental entity.
An unfortunate precedent of this nature would permit governments to use the UDRP
process to preclude individuals from using generic descriptive words in valid
criticisms of the government. For example, an unfortunate precedent of this nature
could be used by the Chinese government to seize domain names such as
“chinesepolicepractices.com”. The UDRP principles protecting freedom
of speech are discussed more thoroughly below in Section II hereof.
The absence of definitive proof of a trademark has been held to be fatal to a complainant’s
request for the transfer of a domain name. In the case of Primo Incense v. Spring.net,
Claim Number FA0101000096565 the complainant did not present as evidence a
trademark certificate from the US Office of Patents and Trademarks. In holding that
the complainant “wholly failed to demonstrate that it has trademark rights”
the decision states as follows:
- Complainant has wholly failed to demonstrate that it has trademark rights
in the phrase “primo incense” in the form of a registered trademark or a common law
trademark. That Complainant allegedly has a trademark in the word “primo” is not
sufficient (further, the evidence of the existence of the trademark, “Primo”, is
not in the form of any evidence of registration with the U.S. Patent and Trademark
Office but rather in the form of a bill of sale.) There is no competent evidence
presented that Complainant actually has any registered interest in the word “Primo.”
The Panel in that case further states that:
- "The Complainant must demonstrate the factual existence of its rights
in a trademark or service mark. Complainant has failed to do so"
In the instant case the Complainant fails to present competent evidence that it has
legal rights in the trademark.
Furthermore, the Complainant did not have any common law rights to any trademark.
Complainant has failed to provide any proof of any common law trademark rights of
any entity. Complainant has not established recognition of the words as being associated
with any services or products that Complainant may market or provide.
Since Complainant has not provided any proof of trademark rights, the Complaint fails
to prove the first element that is required to obtain the transfer of a domain name.
