Domain Name Issues Rare Case
Indigo Networks, a Nassau, Bahamas-based telecommunications company that last November found itself hit with a complaint alleging that it had no legitimate interests or rights to the Onephone.com domain name it owned.
The complaint, filed by OnePhone Holding AB, a Stockholm-based telecommunications investment company, went to the World Intellectual Property Organization (WIPO). The Geneva-based United Nations agency is one of four ICANN-approved domain-name dispute-resolution service providers.
OnePhone asked WIPO to have the Onephone.com domain name transferred because it was the rightful owner of a European registration under the name “ONEPHONE.” The Swedish company also claimed that it had registrations or pending registrations of the name in several other countries — though not in the Bahamas.
The disputed domain name itself had been originally registered by Patrick Low in 1999. OnePhone said that it had tried purchasing the domain name in 2005 from Low for $1,800. Low refused, eventually selling the Onephone.com domain name to Indigo for $10,000 in 2007.
In requesting the transfer, OnePhone said that its registered business name was identical to the domain name used by Indigo.
After OnePhone filed its compliant, Indigo’s domain registrar locked the disputed domain to prevent it from being transferred to another registrar during the arbitration fight. As is customary, Indigo had 20 days to respond.
Indigo said that it had used the “onephone” name since 2006 to describe a voice-over-IP (VoIP) service offering. It claimed to have invested considerable money to promote the offering and had thousands of customers who had signed up for the service. In contrast, Indigo said, OnePhone had not launched any products or services using that specific name. Indigo also said it was unreasonable to expect it to know about OnePhone’s rights to the name in other countries.
Indigo also charged OnePhone with attempted reverse domain-name hijacking. It said that the Swedish company made no efforts to learn whether Indigo had used the domain name legitimately. It also charged OnePhone with not disclosing all of the facts of its own use of the name and for recklessly disregarding the potential disruption to Indigo’s business.
To prove that Indigo was cybersquatting, OnePhone had to convince the panel that Onephone.com was confusingly similar to its own trademark. It also had to show that Indigo did not have a rightful interest in the name and that the Bahamian company acted in bad faith when it registered the name.
In a Dec. 22 decision, the panel agreed that Indigo had a legitimate reason for using Onephone.com and said it was reasonable to believe the company did not know about OnePhone rights to the name in other countries. The panel dismissed outright OnePhone’s arugement that Indigo was not an international company and therefore should not be allowed to use the .com domain. The panelists also disagreed with OnePhone’s bad-faith claim and said that there was nothing to show that Indigo had registered the domain for anything other than valid reasons.
Instead, it was OnePhone that acted in bad faith in an attempt at reverse domain-name hijacking, the panelists ruled. They said the Swedish company had shown reckless disregard in failing to find out whether Indigo had a valid claim to the domain name.
The case is a rare example of a domain-name dispute ending in favor of the respondent.
The biggest factors behind 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 panelists was crucial, he said.
Also important was his Indigo’s quick response to the original complaint. Maintaining up-to-date contact information for the domain name ensured that the complaint was received in a timely manner.
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