When the word "Aljazeera" is mentioned what do you think of? That is exactly the dispute that was recently argued and settled before the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center, in Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing in Case No. D2005-0309.
Jazeera Space Channel TV Station (Aljazeera TV) based in Doha, Qatar, filed a complaint against AJ Publishing aka Aljazeera Publishing (Aljazeera Publishing) having an office in Dubai, United Arab Emirates. The complaint before this international body filed by Aljazeera TV had raised many issues, but the focus of the dispute was the domain name "aljazeera.com" which is owned and operated by Aljazeera Publishing.
Aljazeera TV also has a presence on the Internet but they operated the "Aljazeera.net" website, and as I always tell my clients that "dotcom always trumps every other dotsomething!" Thus the need by Aljazeera TV to acquire the domain name "Aljazeera.com." Aljazeera TV had very skillful lawyers but so did Aljazeera Publishing. The issues raised by the lawyers for Aljazeera TV were very creative and fascinating. They were crafted to extend the application of established policies and rules of the WIPO.
Aljazeera Publishing on the other hand did not fold but countered with even more convincing arguments and counter-complaints. The panel hearing the dispute had strong evidence from both sides and thus in one sense it was easier to solve the dispute and on the other hand it was difficult. It was like Solomon being asked to settle the baby dispute between two mothers! In the end only one could have the baby or the domain name!
Aljazeera TV chose to bring their dispute before the WIPO Arbitration and Mediation Center under the Uniform Domain Name Dispute Resolution Policy (UDRP) which was adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999. The UDRP primarily focuses on the problems caused by the conflict between trademarks/service marks and domain names. Under the standard dispute clause of the Terms and Conditions for the registration of a gTLD domain name, the registrant must submit to such proceedings.
WIPO Arbitration Process
WIPO Arbitration and Mediation Center received its first case under the UDRP in December 1999 and on October 4, 2005, the Center received its 8,000th case. Basically, if a Trademark or a Service Mark holder considers that a domain name registration infringes on its mark then it can initiate a proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP). The complainant must file a case with a resolution service provider, specifying, mainly, the domain name in question, the respondent or holder of the domain name, the registrar with whom the domain name was registered and the grounds for the complaint.
Some of the grounds, include, the way in which the registered domain name is identical or similar to a trademark to which the complainant has rights; why the respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the complaint; and why the domain name should be considered as having been registered and used in bad faith.
From a historical perspective domain name dispute resolution at WIPO is much faster than normal litigation in the courts. A domain name dispute case filed with WIPO normally can be concluded within two months, using on-line procedures, whereas litigation can take much longer. Also, fees are much lower than normal litigation. There are no in-person hearings, except in extraordinary cases, and minimal filing requirements also help reduce costs. However, the authority of the panel is limited in that it can only have the domain name in dispute either transferred to the complainant or the complaint be denied and the respondent gets to keep the domain name.
It is also possible to seek cancellation of the domain name, but there are no monetary damages currently available in UDRP domain name disputes, and also no injunctive relief is currently available. However, under the UDRP after the decision has been rendered either party always retains the rights to take the dispute to a court of competent jurisdiction for further resolution to their domain name and other related disputes. After a complaint has been filed and has met the basic requirements of the UDRP, the respondent is then offered the opportunity to defend itself against the allegations.
The provider (e.g.: the WIPO Arbitration and Mediation Center) then appoints a panel from among a list of experts who decide whether or not the domain(s) should be transferred to the complainant based on the written and oral arguments presented by both sides. The parties have a right to chose either a single panelist or a panel comprising three members.
The Arguments
Mr. Warwick Smith was chosen as the Presiding Panelist, while Mr. Mohamed-Hossam Loutfi and Mr. John Lambert were the other two Panelist, and both Aljazeera TV and Aljazeera Publishing agreed with the composition of the panel. The panel gave each side enough time and extensions to be able to fully and clearly present their evidence and arguments.
Aljazeera TV argued that it is one of the most recognizable Arabic name and brand in the Arab, European, African and American markets and that they have registered trademarks in a number of countries and in various International classes for goods and services. Aljazeera Publishing responded that its website "aljazeera.com" ranked amongst the top 7,000 websites globally, and that the E-edition of their publication has a circulation of over 8,000 subscribers.
Aljazeera Publishing also argued that the trademarks registered by Aljazeera TV consist only of a logo formed from a stylized Arabic-language script and that there is no registration of the _expression "Aljazeera" written in the English language. Thus Aljazeera TV only has rights to the graphical logo and not to any English-language word mark, and therefore the registered trademarks of Aljazeera TV are not identical to the domain name. And, furthermore that the stylized logo is formed from complex, non-standard Arabic characters, moving the Aljazeera TV's mark further away from any possibility of being identical to their (English-language) domain name.
Aljazeera TV countered that the existence of the domain name was confusing to the Internet users who wish to access and review the website of their television channel, and in support Aljazeera TV provided the panelist copies of numerous written communications as evidence of substantial confusion amongst the Internet users as to who is the true operator of the website at the domain name "aljazeera.com." Aljazeera TV also introduced into evidence a news article published on the BBC website which stated that the BBC believed that the website at the domain name "aljazeera.com" was Aljazeera TV's English-language website, and information from "www.brandchannel.com" website which had also published information stating that Al Jazeera is offering news in English at "www.aljazeera.net" and "www.aljazeera.com".
Thus Aljazeera TV provided several examples of confusion where people are led to the mistaken belief that the website at the domain name in dispute belonged to Aljazeera TV.
Aljazeera Publishing countered with the theory of "Reverse Domain Name Hijacking" and introduced into evidence the fact that on many occasions Aljazeera TV falsely claimed that its reporters' email addresses was "@aljazeera.com", thus creating confusion for the Aljazeera TV's website visitors. And, despite regular attempts by Aljazeera Publishing requesting Aljazeera TV to stop this practice, it has persisted.
Aljazeera Publishing also argued that Aljazeera TV never contacted BBC to correct the incorrect reference to the "aljazeera.com" website. This and other facts in evidence clearly demonstrated Aljazeera TV's willingness to permit any instance of confusion to continue, in order to expand its efforts to conduct reverse domain name hijacking.
The Winning Arguments
In the end the panelist agreed with the arguments presented by Aljazeera Publishing and were not persuaded by any of the evidence presented by Aljazeera TV. The Panel held the view that Aljazeera TV was not able to provide any evidence that Aljazeera Publishing registered the domain name "aljazeera.com" in bad faith.
A majority of the Panel also concluded that the Complaint by Aljazeera TV was brought in bad faith and constituted an abuse of the Administrative Proceeding. For these and other similar reasons the Complaint by Aljazeera TV was denied, and Aljazeera Publishing retained all rights to the domain name "aljazeera.com."
Lessons Learned
Thus, in this global market it is very important for any business, small or large, to secure its Intellectual Property rights. These Intellectual Property rights could be in the form of a trade name, a trademark, a service mark, a domain name, to name a few.
As the Internet trade is expanding the various countries are now willing to accept jurisdiction of international bodies, such as, WIPO, ICANN, over disputes, resolutions, registration, etc. And, as I tell my clients that the costs of obtaining a domain name or registering a trademark or a service mark is miniscule compared to the aggravation and cost arising due to any dispute and thus it is very important for any entity in commerce to secure its rights immediately.
* Author: Aziz M. Ahsan, Esq., is a Patent, Trademark & Intellectual Property Law Attorney with over 20 years of experience and is available via telephone 845-790-0198 or his website www.azizlaw.com
Aziz M. Ahsan, Esq.*
© Dinar Standard 2006
