Daily Domainer

Richard Starkey, the artist known as Ringo Starr, won control of the domain RingoStarr.mobi in a highly interesting arbitration case that illustrates the apparent differences between the UK and US legal apprach towards domains that consist solely of a trademark plus a domain extension (trademark.tld).

To obtain the rights to a domain name under ICANN's Uniform Dispute Resolution Policy (UDRP), the complainant must prove the following three elements:

1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
2. The respondent has no right or legitimate interest in respect of the disputed domain name.
3. The disputed domain name was registered and is being used in bad faith.

In the RingoStarr.mobi case, the first element was not disputed by the Respondent (Mr. Barkey), who acknowledged Richard Starkey's rights to the Ringo Starr trademark.

As for the second element, Mr. Barkey, asserted that he was in the process of developing a non-commercial fan site about Ringo Starr. However:

Respondent has given no evidence to show what were the “demonstrable preparations” taken between September 25, 2006, when the disputed domain name was registered, and December 21, 2006, the date the proceedings were filed. No business plan was produced. No documentary evidence was submitted showing efforts by Respondent to create a fan site. No affidavit nor declaration under penalty in support of his contentions was provided, as is common. Such would have made his assertions more credible.

In the eyes of the Panel the first two elements had been proven. The decision therefore hinged on the third provision: Had Mr. Barkey registered the domain in bad faith?

Yes, says the Panel, because the Respondent's admitted knowledge of

[...] the worldwide fame of Ringo Starr and the fact that he registered this name so soon after .mobi registrations were permitted.

Additionally, since both the Respondent and Complainant are located in the UK, the Panel justified its decision with the "legal approach" apparently common in the United Kingdom, establishing that

[...] the registration of a trademark as a domain name without further adornment is likely to cause confusion to internet users and therefore bad faith is shown.

One of the panelists, David H. Bernstein, disagreed:

In this case, though, it is not appropriate to look to British legal principles. That is because Complainant has provided a United States address and has selected as the location of mutual jurisdiction for any legal challenge to the transfer of the domain name the location of the Registrar, which, in this case, is in Scottsdale, Arizona, United States of America.

As the Respondent could challenge the decision in a US court, Mr. Bernstein believes that US legal principles should apply:

[...] even though Respondent has not shown demonstrable preparations towards his fan site, he appears to have the right to lawfully launch a noncommercial fan site at the domain name ringostarr.mobi in the future, and thus the mere registration of that domain name is not bad faith.

The Panel resolved to transfer RingoStarr.mobi to Richard Starkey. Mr. Berkey could challenge the decision in a US court and there is a possibility that he would prevail. But for a non-commercial fan site it probably isn't worth the trouble and expense.