News & Publications

Publications

31 August 2005

Registration of 'three.ie' struck out

In Palmerston Limited v Mahon, a World Intellectual Property Organization (WIPO) panellist has ordered the transfer of 'three.ie' to the complainants, a group of companies that own the trademark THREE. This is only the second time a dispute involving a domain name in the '.ie' country-code top-level domain has been adjudicated on by a WIPO panel.

The complainants were four companies, one of which owns the third generation telecoms licence for both the United Kingdom and Ireland. UK and Irish newspapers carried articles from July 4 2002 indicating that the complainants' services would be branded '3'. Just over two weeks later the registrant, an individual named Alan Mahon, registered the disputed domain name. No use was made of this domain name by the time the complainants contacted Mahon offering to buy it. A temporary website was however shown to be in existence very shortly after this initial offer had been made and prior to the offer there had been correspondence between Mahon and his web designer.

In examining whether the complainants had met the requirements for transfer of the domain name under the Uniform Domain Name Dispute Resolution Policy (UDRP), WIPO panellist Adam Taylor made the following findings:

  • The domain name was misleadingly similar to the complainants' international registration (designating Ireland) for the word mark THREE in combination with a "three lozenge" device, dated October 15 2002.
  • Mahon was found to have no legitimate interest in the domain name. Registration of the business name three.ie was solely to facilitate registration of the domain name. Taylor held that Mahon did not "demonstrate good faith preparations to use domain name in connection with a good faith offering of goods or services or operation of a business".
  • Mahon had registered and used the domain name in bad faith because:
  • the domain name registration was applied for so soon after the publicity regarding the new '3' branding;
  • a logo used on the website hosted at the domain name was "remarkably similar" to the complainants' international registration; and
  • there was virtually no evidence of actual or intended use.

Taylor qualified his decision by stating that each of the three factors relied on to find bad faith, would not in themselves be capable of supporting such a finding. He reasoned that it was therefore important to appreciate the cumulative effect such factors can have.

The main reason behind the finding of bad faith appears to have been the timing of the domain name registration. It is interesting to note that Taylor came to this conclusion even though Mahon registered the domain name prior to the complainants' registration of their mark. This goes against the standard views set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions and does not fit neatly into the exceptions given in that overview.

Bronwyn O'Hagan, FRKelly

First published in World Trademark Law Report August 31, 2005

© Copyright 2002 - 2005
Globe Business Publishing Ltd

Back to Publications