Domain names are important assets. A business must make sure that its domain names are managed properly, so that they do not fall into the wrong hands.
Where an individual (or a company) registers a domain name in bad faith with intent to profit from the goodwill of a trade mark belonging to someone else, that person may be deemed a “cyber squatter”. Thankfully, domain names can be retrieved from “cyber squatters”, without the need for court intervention.
The Wrigley Confectionary Company (Wrigley) manufactures confectionary, including its popular rainbow coloured candies, “Skittles”. Wrigley has owned the Australian trade mark for the word “Skittles” since 1964.
Recently, Wrigley applied to the WIPO Arbitration and Mediation Centre to remove a cyber squatter from the domain (the Domain).
Mr David Fry, an individual unrelated to Wrigley, registered the Domain in 2013.
Wrigley viewed Mr Fry’s registration of the Domain as an infringement of its intellectual property rights.
Upon registering the Domain, Mr Fry became bound to the .au Dispute Resolution Policy (the Policy).
Pursuant to the Policy, Wrigley was permitted to apply to the WIPO Arbitration and Mediation Centre (the Centre) for an order that the Domain be transferred from Mr Fry to Wrigley.
To succeed, Wrigley was required to persuade the appointed panellist (the Panellist):
It was uncontroversial that the Domain was identical to the “Skittles” trade mark.
Further, the Panellist found that Mr Fry held no legitimate interest or right in the Domain.
Mr Fry had previously argued that his use of the Domain pertained to the game “skittles”, rather than Wrigley’s Skittles product.
Mr Fry’s argument was rebutted by the evidence. It was only after receiving Wrigley’s initial letter of demand that Mr Fry amended the website located at the Domain to feature content relating to the game “skittles”. Mr Fry copy and pasted information about “skittles” from the corresponding Wikipedia page, and advertised an upcoming online “skittles” game. Previously, the Domain resolved to a parked page, advertising that the Domain was for sale.
Despite Mr Fry’s attempts to prove a legitimate interest in the Domain, the Panellist was unconvinced. If Mr Fry had included content relating to the game of “skittles” when he first registered the Domain in 2013, the result may have been different.
Finally, the Panellist found that Mr Fry had registered the Domain in bad faith, as Mr Fry had prior knowledge of the “Skittles” trade mark, and failed to adduce evidence proving otherwise.
Accordingly, the panel ordered that the Domain be transferred to Wrigley.
Although Wrigley was ultimately successful in obtaining the Domain, it bore the cost (and legal fees) of applying to the Centre. Had Wrigley registered the Domain before Mr Fry did in 2013, the dispute could have been avoided altogether.
If you require assistance with dislodging a cyber squatter, or require advice on how to legitimately speculate on domains, without falling foul of the Policy, do not hesitate to contact Iain Freeman.
