Daily Domain Name Registration Blog

The Bahamas a tropical paradise in the Caribbean destination of the stars and those with more money than sense (so i have heard). Also a resident there is Indigo Networks a telecommunications company who is at the center of a row over the domain name OnePhone.com.

The other side of the ring is a Swedish Stockholm telecommunications company called yes you guessed it OnePhone. Now i am no expert but i can see the problem there, so as predicted OnePhone (lets call the Bahamas based Onephone Indigo from now on) made a complaint to the World Intellectual Property Organization (WIPO) as you would.

They claimed a clear breach of copyright and trademark on the OnePhone name for which is the name of the company and had the European rights to , pending in other countries too (but not the Bahamas).

Now the story started in 1999 when Patrick Low registered the domain name Onephone.com, in 2005 OnePhone made an offer for the domain name for $1,800 this offer was rejected. Amusingly (in my view at least) Low sold the domain OnePhone.com to Indigo in 2007 for $10,000 (well played Mr Low).

Indigo itself didn’t trade or even use the name OnePhone prior to the registration of the domain OnePhone.com. Indigo asked for a three man panel to hear the case at the WIPO and claimed that onephone.com was used to advertise their voice over ip services since 2006.

In order to prove that Indigo was cybersquatting OnePhone had to convince the three man panel that Onephone.com was confusingly similar to its own trademark (which it is in my view). OnePhone also had to show that Indigo didn’t have the rightful interest in the name and the Bahamas based company acted in bad faith when registering the name.

On the 22nd December the panel concluded that Indigo had a legitimate reason for using Onephone.com and added it was reasonable to believe the company did not know about OnePhones rights to the name in other countries (even the panelist that Onephone chose ruled against them). Dismissed outright was the argument that Indigo was not an international company and therefore shouldn’t be allowed a .com domain put forward by OnePhone. The claim that the name was registered in bad faith was also dismissed as there was no reason to claim that Indigo had registered the name for anything other than valid reasons. The Swedish company had shown reckless disregard in failing to research whether Indigo had a valid claim to the domain name.

This is a very rare event in the world of domain names (and so called “cybersquatting”) . Of the 1,430 such disputes WIPO arbitrated last year, 1,219 ended with the domains being transferred to the firm or person who filed the complaint. Those accused of “cybersquatting” prevailed in just 190 instances

one of the biggest factors behind his company’s success was its decision to go with a three-person panel”. Though it cost the company more to defend itself, “having the case heard by multiple panellists was crucial”, he said.

Jesper Sellin, an attorney at Bergenstrahle & Lindvall AB, the Stockholm-based law firm that represented OnePhone in the dispute, expressed disappointment with the outcome. “We strongly oppose the finding that the complaint was brought in bad faith,” Sellin said via e-mail. “In our opinion, it is far from clear that a holder of worldwide trademark rights should find it obvious that a company operating in a small territory like the Bahamas should have legitimate rights in a .com domain name,” he said. He also argued that it was Indigo’s correspondence with the original domain-name holder that led OnePhone to believe the Bahamian company had acquired the domain name in bad faith.

I think that in the free world of international business that all is fair (to a degree) in the world of domain names. Also that the domain name was used for a legitimate purpose (Voice Over IP Services merits the name in my opinion).