Misuse of Your Domain Name

A German man who gained control of over 1,519 domain names was ordered to release them to a hotel chain by the World Intellectual Property Organisation (WIPO). internet lawyers bains cohen

The InterContinental Hotels Group (IHG) brought the action after it discovered that domain names which corresponded with their Brand were being used by Daniel Kirchhof to generate cash for his internet hotel booking business by offering customers to the opportunity to book rooms in hotels which were not even connected to the IHG group.

IHG argued that using their intellectual property, Mr Kirchhof was promoting their competitors The case also confirmed 2 important issues; namely that it is acceptable to bundle together more than one dispute against a single person and deal with the lot in one single case, and also that it was acceptable to bring a joint claim by more than one company, provided there is a ‘common grievance’.

The ruling stated that "the inclusion of multiple complainants in this case is acceptable," and that "there is clearly a common grievance on the part of both [companies], and despite the extremely large and unprecedented number of disputed domain names, it would be procedurally efficient to deal with all matters in the one proceeding given the almost identical facts among them."

The WIPO has the power to order the transfer of a domain if the owner is able to show that:

1. The name is identical or confusingly similar to terms that it has rights to;

2. That the person who owns it has no rights to the domain name; and

3. That it was registered and is being used in bad faith.

If you are aware of a third party passing off your trade mark by attempting to attract internet users through misuse of your trade mark to promote goods and services competitive to yours, then you might be able to stop them from doing so by asking the WIPO for an appropriate ruling. In the InterContinental Hotels case Mr Kirchhof had engaged in a pattern of registering domain names in order to prevent a trade mark owner from reflecting their mark in a corresponding domain name. The WIPO has confirmed the position that this was not acceptable. This was an example of a case of bulk registration strategy to which the WIPO found to be unacceptable.