The pop star Sting has failed to get the domain name sting.com transferred to him under the dispute resolution procedure set up by the Internet Corporation for Assigned Names and Numbers (ICANN).
The domain name had been registered in 1995 by Michael Urvan, a US citizen who stated that he had been using the nickname Sting publicly on the internet for around eight years.
Sting alleged that Mr Urvan had offered the domain name to him for $25,000 and had allowed a link from his web site to a web site facilitating the sale of guns.
Sting filed a complaint under the ICANN Dispute Resolution Policy and had to prove the following:
- the domain name was identical or confusingly similar to a trade mark in which Sting had rights;
- Mr Urvan had no rights or legitimate interests in the domain name; and
- the domain name had been registered and was being used in bad faith.
Recent ICANN rulings have favoured individuals whose names have been hijacked by cybersquatters (for example, the novelist Jean Winterson and the actress Julia Roberts both had domain names incorporating their real names returned to them – see our May 2000 early warning).
Sting had not registered his name as a trade mark, although in both the Winterson and Roberts cases the panellists decided that individuals’ names could still constitute unregistered trade marks. Despite his overwhelming success and popularity Sting failed to convince the panellists that the word “Sting” is capable of trade mark protection because it is a common word in the English language with a number of meanings. The panel was unwilling to extend protection for names beyond trade marks (whether registered or unregistered), at least initially.
The panel found that Mr Urvan did not have any rights or legitimate interests in the domain name, despite the length of time that he had been using it. But they also found that there was no evidence that the domain name had been used in bad faith since it accepted that the link to the web site connected with gun sales was due to an error by Mr Urvan’s service provider and there was no proof that the offer to sell had not been initiated by Sting’s lawyers.
It remains to be seen whether ICANN will extend protection in the future to names which they do not consider capable of trade mark protection.