Mallesons Stephen Jaques
Confidential communication
 

Doug Robb wrote:


>The WIPO has been making some alarming decisions and what
>started out as a good idea is turning into a bit of a
>nightmare on inconsistant, arbitary and plain wrong
>decisions especially on the spelling front. And the
>cost (to defendants) can be very high ....

>eg How Madonna.com was awarded to one Madonna Ciccone is
>probably the worst but others like yawho.com transferred to
>yahoo, altavisga.com to altavista, 10-10-811.com transfer
>(to some telco)  buyasyouview.com - transfer, icqwap.com and
>wapicq.net transfer to aol, bigpons.com transfer to telstra
>- what a ridiculous decision that is!, blackboad.com to a
>company called 'Blackboard', .....

As the person who signed the complaint against bigpons.com, I guess I
wouldn't agree with you about that one.  To quote from the decision,
however:

"On the disputed website operated by the Respondent can be found the
statement:  "No! we are not the big Australian but by God you were close!".
The Respondent also has offered the disputed domain name for sale on
"www.greatdomains.com" which says:  "Huge potential with this name - Only on
[sic] key separates this name from the biggest website in Australia
"BigPond.com""."

Our courts regularly apply the rule that he who intends to deceive or cause
confusion will be taken to have succeeded: see for example: Full Federal
Court in ConAgra v McCain (1992) 23 IPR 193.  So, while you might find the
decision by an eminent New Zealand jurist "alarming", I hope Doug would be
in the minority on that point.

Moving on from those specific cases and speaking more generally, I guess I
would also go further.  We as a country should stop treating cybersquatting
as a joke or just boys having fun (yes, the male gender is appropriate - in
the roughly 100 or so cybersquatting matters I have had to deal with in the
past year, only one has involved a female registrant).  Just because it is
possible to register a domain name for free (or nearly free) does not mean
that a person is entitled to register any old domain name regardless of
other people's rights and, if someone does register someone else's trade
mark as a domain name and try to use it for financial gain, there should be
consequences just as, if I try to sell my own brand of cola under the name
Coca Cola, I should expect trouble.  Perhaps, we won't put an end to
cybersquatting until we get our own anti-cybersquatting legislation.  

Kind regards

-Warwick A Rothnie
Partner
Mallesons Stephen Jaques Melbourne
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