NEWS Domain arbitrator lashes brand owner in cybersquatting row


In a ruling that could cause a “tectonic shiſt” in the way domain name arbitrators approach the laches legal doctrine, a panellist refused to transfer a website despite its copying a company’s trademark.


Laches can provide a defence when a brand owner has unreasonably delayed asserting its rights, and the defending party’s reliance on the delay causes it harm. Tis harm can result from its having built a legitimate business around the domain over time.


Te panellist at the World Intellectual Property Organization (WIPO) was ruling in a dispute over victoriassecrets.com.au. Te website wholly incorporated the trademark of Victoria’s Secret, a US lingerie retailer.


Although the site has a .au (Australian)


registration, WIPO panellists can oversee disputes using the .au dispute policy. Te policy is very similar to the UDRP, which is used to resolve most domain disputes.


Te decision hinged on the seven-year delay between Victoria’s


Secret’s demand that the


website be removed and its filing a complaint with WIPO. When such a long delay occurs, panellists consider the laches defence, a legal doctrine that is not actually mentioned in the UDRP.


Panellists have usually asserted that laches doesn’t apply because the domain continues to inflict harm on the brand owner, despite the delay. But


UK man jailed for four years over linking website


A British man has been sentenced to four years in prison for operating a website that indexed links to pirated films and TV shows.


Anthon Vickerman, who owned the site surſthechannel.com, was charged with two counts of conspiracy to defraud—but not copyright infringement. Te site connected users to legal and illegal material across the Internet, but did not host any files.


He is the first British man to be jailed in the UK for a website that linked to illegal copies of films and TV shows.


“Tis case conclusively shows that running a website that deliberately sets out to direct users to illegal copies of films and TV shows will result in a criminal conviction,” said Kieron Sharp, director general at the Federation Against Copyright Teſt (FACT), which instigated the private prosecution of Vickerman.


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But the decision has been labelled “deeply concerning, inappropriate and disproportionate” by Loz Kaye, leader of the Pirate Party UK. “A four- year prison sentence is twice the maximum that could have been handed down if Vickerman had been charged with online copyright infringement.”


Vickerman set up the website in 2007 and, by 2009, it was reportedly receiving 400,000 visitors daily and generating around £300,000 a year. On June 27, 2012, Newcastle Crown Court found him guilty of conspiracy to defraud, which carries a maximum sentence of 10 years in prison. He was sentenced on August 14.


Conspiracy to defraud requires at least two parties to


deprive someone of something


belonging to someone else. Vickerman’s wife had originally been charged alongside him, but the jury found her not guilty.


Trademarks Brands and the Internet Volume 1, Issue 3 www.worldipreview.com


Steve Levy, of domain name consultants Fairwinds, said this could be the first ruling of its kind and could cause a “tectonic” shiſt in the perspective on laches.


in Victoria’s Secret v Linda Cameron Pickard, Andrew Christie denied the complainant the site on July 3, 2012. He said the respondent was entitled to conclude that Victoria’s Secret had stopped pressing its allegations of infringement. From that


time forward, he said,


“While this seems to be a very rare exception to the view that laches doesn’t apply to domain disputes, it leaves the door open just a crack for future panellists to find other circumstances where a long delay might bar an otherwise good claim,” he said.


it became


possible for the respondent to acquire a right or legitimate interest in the domain through subsequent its use of it, only if the subsequent use was bona fide.


He said the continued use of the domain became bona fide because the complainant no longer objected to the respondent’s behaviour. But he said the use could again become illegitimate if the respondent began selling products that competed with Victoria’s Secret’s.


He said brand owners must be prepared for this and aggressively pursue claims against infringing domains or “risk being shut out of the dispute arena some years later”. “While this may not result in great harm to the brand in every case, it should be considered as part of a sound enforcement strategy.”


But Levy said he expects panellists to continue viewing laches as a defence that requires a very high bar, meaning it will be “successfully applied in only the rarest of cases”. “If anything, this decision could embolden a panellist to tip over into applying the defence where he or she may have been on the fence before.” 


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