I contemplated posting on the increasing chaos in Southern Iraq, but thought better of it. I mean, really, Iraq is sooo November 2003. Onward to the things that really matter: From Slashdot (which cites Reuters): “the estate of J.R.R. Tolkien won a cybersquatting case against Alberta Hot Rods, a Canadian-based operator which registered jrrtolkien.com and linked it to its commercial celebrity Web site[,] before an ICANN arbitration panel.”
The Slashdotters, of course, don’t link to the panel’s actual decision. We Obwingers, however, revel in pointless detail. So here it is, in all its ICANNy goodness.
Now, for the meaningless digression: The Tolkein arbitration was handled under the auspices of the World Intellectual Property Organization, which has quasi-sorta-jurisdiction over many domain name disputes. WIPO’s rules allow the holder of a valid trademark to seek relief against a cybersquatter through a quick-and-dirty arbitration proceeding.*
Doesn’t always work as planned, though. Because WIPO is an international organization, an arbitration panel can consist of people from around the world. Many of these people don’t speak English as a first language (shocking!). This can lead to some, well, unusual decisions. Such as: Tata Sons Limited v. D&V Enterprises.
Tata Sons, Ltd. is a large Indian utility company. D&V Enterprises owned a website named “bodacious-tatas.com,” which provided (one presumes) all manner of bodacious tatas for one’s viewing enjoyment. Tata Sons, Ltd. claimed that a person seeking out its utility may confuse D&V’s bodacious tatas with its utilities. It sought to take control of D&V’s “bodacious tatas.com” domain name.
At this point, you may be thinking that one would have to be pretty damn drunk to confuse a utility with a purveyor of bodacious tatas. That thought, however, did not enter the mind of the WIPO arbitration panel. Its ruling reads, in part:
TATA, without any vestige of doubt, constitutes a famous (or, in international parlance, well known) mark . . . . As to goodwill, the Panel accepts the Complainant’s submission to the effect that the name “TATA” has consistently been associated with the goods and services of, the “House of Tata”. . . . the name “TATA” has acquired considerable goodwill.
. . . .
The Complainant contended that the use by the Respondent of the impugned Domain Name is aimed at taking a ‘cash-ride’ on the Complainant’s image and status. Thus, the unauthorized adoption of the Domain Name has resulted in the Respondent deriving, or attempting to derive, monetary benefit by trading on the reputation and goodwill held by the Complainant. The Panel accepts this contention . . . . [and awarded the domain name to the House of Tatas]
Erm, yes: when I think of Tatas, I think of the “House of Tatas,” an Indian utility company.
You can’t make this stuff up.
*You may ask, “who are these Black-helicopter WIPO types, and what makes them think that they can force me to do anything regarding my domain name?” Well, folks, here’s the rub: If you refuse to participate in a proper arbitration, your domain name can be summarily taken from you. It’s a vestige of the old internic rules. Sorry.
This is somewhat amusing in the larger context when one considers the long history of WIPO. What I find interesting is that ICANN’s functions still haven’t been folded into the TRIPS sections of the GATT (ie. the WTO’s TRIPS agreement requires compliance with the Paris/Berne treaties that make up the core of WIPO). Given that part of the original aim of TRIPS was to wrest IP ddecision making control away from the developing countries, I’m surprised that nobody has tried to argue a case like this via the WTO Disputes Settlement Board.
I’ll have to go back to reading Paris/Berne again again to see. In all honesty, I’m mildly amused that WIPO still has any teeth.
I’m surprised that nobody has tried to argue a case like this via the WTO Disputes Settlement Board.
The Tatas case made quite a splash in IP circles when it came out — it was one of those cases that got passed around. It’s been a couple years, however, since I even attempted to understand the ICANN arbitration rules and/or WIPO’s role in administering the same. I know there have been some efforts to change the arbitration procedures, and people constantly float ideas to change/eliminate/expand/dominate WIPO.
Dang. I was so hoping I could find someone infringeing on this company‘s IP.
As you say, English is not the language of a lot of WIPO members, and even more of people that may access the internet. It is unusual only in the mesure that up till now English language was the norm, but it is now reducing its preeminence as more countries get the needed infrastructure. To the billion of Indians, asking a searcher for TATA is more likely implying the Indian company, and the alternative is akin to spam.
http://www.glreach.com/globstats/
DSW
Mr. Jaume, you make a good point. Because the internet is an international environment, there are going to be more opportunities for comedic misadventures like the Tatas case.
Serious questions, however, need to be settled: If a domain name is confusing in one language but not another, is that sufficient? And who’s the standard for the likelihood of confusion? The native speaker of English? Someone who knows only a little English? The former may have no trouble seeing the difference between the domain names Tatas and Bodacious-tatas; the latter may not.
Tata in India stands for more than just a “utility.” It’s the country’s largest corporation. Every third vehicle or so on the roads has “Tata” prominently written across the grille, the way “Ford” would be here. Most high-speed internet there is Tata. So is most tea. To hundreds of millions of English speakers, myself included, my first association of the word would, in fact, be the company, and I’ve only spent some weeks in the country.
There’s a lot more “native speakers of English” in South Asia than there are in the United States, my friend. The WIPO decision seems have to have gone with what the largest number of anglophones worldwide would agree with. If that leaves Americans out for a change, well, tough.
To hundreds of millions of English speakers, myself included, my first association of the word would, in fact, be the company, and I’ve only spent some weeks in the country.
Bruce R, are you seriously suggesting that you would be confused into believing that a website named “bodacious-tatas.com” would be confused with the Tatas company?
As for the rest of the world: Tatas is a very large Indian company, but it’s not at all well known outside the subcontinent.
There’s a lot more “native speakers of English” in South Asia than there are in the United States, my friend.
Friend, re-read that sentence and tell me if you truly believe it.