WIPO Domain Name Dispute: Winterson v Hogarth

June 30, 2000

James Philip Hutchinson is a graduate who is about to commence the Legal Practice Course at the College of Law. He is the editor of the student legal site: LawStudent.co.uk (http://www.lawstudent.co.uk). He can be contacted on 07712 581 117 or at jph@jameshutchinson.com (http://www.jameshutchinson.com).

On 22 May 2000, the World Intellectual Property Organisation’s Arbitration and Mediation Center, decided that it is not a requirement to have a registered trade mark in order to use their Uniform Dispute Resolution Policy. Jeanette Winterson, the Whitbread Prize winning author of Oranges Are Not the Only Fruit, succeeded in recovering the domain names jeanettewinterson.com, jeanettewinterson.net and jeanettewinter-son.org.



In Jeanette Winterson v Mark Hogarth, the Complainant did not rely on any registered trade mark but on her common-law rights in her real name. She claimed that under that mark she had achieved international recognition and critical acclaim and that use of the mark had come to be recognised by the general public as indicating an association with words written and produced exclusively by the Complainant. The Respondent operated a Web site entitled writersdomains.com, devoted to over 130 of the world’s most popular authors. He had registered a similar number of writers’ names as domain names, and planned to sell a small number of these to provide venture capital for his Web site.
The Complainant contended that the Respondent had registered domain names identical to the mark ‘Jeanette Winterson’, that the Respondent had no rights or legitimate interests in respect of the domain name and that the domain name had been registered and used in bad faith. In defence, the Respondent claimed that he had registered the domain names in the belief that they were not a trade mark.

The Panel found that the Rules for Uniform Domain Name Dispute Resolution Policy (the Policy) do not require a trade mark to be registered. As both parties were domiciled in the United Kingdom, the Panel based its decision on applicable decisions of the English courts.
The Panel decided that Complainant had shown that the domain name was identical to an established trade mark. It found that there was no evidence that the Respondent had rights to or legitimate interest in the respect of the domain name. The Respondent registered the domain name in bad faith, as he must have realised that the registration of a third-party’s name could not be bona fide. Paragraph 4 of the Policy requires that the domain name not only be registered in bad faith but also used in bad faith. While the domain names were not used in relation to active Web sites, the Respondent had offered to sell the domain name to the Complainant or ‘pass it on to somebody else to set up’. The Panel found that the Respondent failed to demonstrate use in good faith.

The WIPO’s decision has made it clear that a Complainant can seek recovery through the dispute resolution service without a registered trademark. This can only be seen as bolstering personality rights on the Internet, and further eroding the benefits of cybersquatting. As the complaint was filed only on 10 April 2000, with a decision being made just over a month later, it also highlights the efficiency of this form of alternative dispute resolution. The full text of the decision can be viewed at http://arbiter.wipo.int/domains/decisions/html/d2000-0235.html.