E-Business: Domain Names - Bad Faith

Ian McMillan registered the internet domain name TrivialPursuits.net and won the right to continue using it, after a challenge from Horn Abbot, the makers of the board game, failed to stop him using the domain name. The makers of the Trivial Pursuits board game failed to obtain the TrivialPursuits.net domain name from the person who said he registered the name to lament life's loss of individual creativity.

This decision has gone against the long established principle that once a brand is "well known", the Uniform Dispute Resolution Policy (UDRP)1 part of the World Intellectual Property Organisation (WIPO), would be able to effect the transfer of the name. However, in this case, the panel was unclear about the intentions of the respondent, and his motive for registering the domain name. The panel did not believe that there was enough evidence to support an application for bad faith activity on behalf of the respondent.

Respondent Ian McMillan informed the WIPO panellist that he bought the name with with the intention of creating a website dealing with "the 21st Century's unique trivial pursuits, specifically the fact that most aspects of life now involve a commodity as opposed to individual creativity, from sex to salvation via surgery and sweeteners". Currently, the site is only one page long, and refers to the WIPO case as "a fine example of a quite unnecessary and utterly trivial pursuit," adding that more content will be added, "but at the convenience of my lazy nature."

There was little evidence of bad faith found by the panel, although McMillan does not appear to have intention of using the website.

Comment: Usually in cybersquatting cases where there "is no use of a sign in the course of trade" plus difficulty in establishing trade mark infringement or passing off, the UDRP approach is the recommended recourse as it is far cheaper and sometimes quicker.

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© RT COOPERS, 2005. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.

Rosanna Cooper is a partner in RT Coopers Solicitors. The firm is a full service commercial law firm covering areas such as E-Business, Education Law, Commercial Litigation, Data Protection, Intellectual Property, Corporate Finance and Commercial Contracts.

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