Mr A.R. Mani recently scored a victory over the fashion house Armani under the dispute resolution procedure set up by the Internet Corporation for Assigned Names and Numbers (ICANN). The panel dismissed Armani’s complaint that Mr Mani had cybersquatted the address Armani.com.
Under the terms of the ICANN Policy (para 4a), Armani had to prove three distinct elements in order to establish a claim to Armani.com:
- The domain name was identical or confusingly similar to a trade mark in which Armani had rights.
- Mr Mani had no legitimate interest in the domain name.
- The domain name had been registered and was being used in bad faith.
There was no dispute that Armani owned trade mark rights in the Armani name to which the domain name was identical. With regard to the second and third elements, Mr Mani was able to show that Anand Ramnath Mani was his real name and that he had been legitimately operating his graphic design/illustrator business under the name A.R. Mani since 1981. The case was not one of the many in which respondents adopt a name with an opportunistic motive to provide legitimacy to a domain name registration. The panel therefore ruled that Mr A.R. Mani was not using the name in bad faith.
The success or failure of most ICANN cases is based upon establishing bad faith. The ICANN procedure has proved to be particularly effective in clear cut cases where bad faith can be established and the applicant does not have a registered trade mark in the name in question. (See our early warnings on the Jeanette Winterson and Sting cases.)
Although cases resolved through the ICANN procedure are economical ($1,500 to file a case against a respondent for up to 5 domain names with a 1 member panel) and fast (estimate of 45 days from notification of dispute to resolution), the outcome is somewhat limited. The panel can only order that the domain name be cancelled or transferred. There is no appeal mechanism and parties are not always given an opportunity to answer matters of fact or allegations put in issue. Further, unlike litigation, no injunctive remedies or awards of damages are available. Therefore, where the applicant has a registered trade mark it may be preferable to issue legal proceedings for trade mark infringement as this may provide a more certain and effective remedy for successful claims.
This Armani decision is available at: http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0537.html.