Misuse of Your Domain Name
- Hits: 5777
A German man who gained control over 1,519 domain names was ordered by the World Intellectual Property Organisation (WIPO) to release them to a hotel chain. The InterContinental Hotels Group (IHG) brought the action after it discovered that domain names which corresponded with its brand were being used by Daniel Kirchhof to generate cash for his internet hotel booking business by offering customers the opportunity to book rooms in hotels that were not even connected to the IHG group.
IHG argued that by using its intellectual property, Mr Kirchhof was promoting its competitors. The case confirmed two important issues: 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 that it is 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 the owner has rights to; 2) The person who owns it has no rights to the domain name; and 3) The name was registered and is being used in bad faith.
If you are aware of a third party misusing your trademark by attempting to attract internet users 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 engaged in a pattern of registering domain names in order to prevent a trademark owner from reflecting his mark in a corresponding domain name.
The WIPO has confirmed its position. This was an example of a case of bulk registration strategy which the WIPO found to be unacceptable.