Alcoholics Anonymous World Services, Inc. v. Friends of Bill W and Jimmy K
Some surprise has been expressed in the media at the decision of a panel of the WIPO Arbitration and Mediation Center on 28th December 2001 to deny the claim brought by AA for the transfer of the domain name alcoholicsanonymous.org under the ICANN Uniform Domain Name Dispute Resolution Policy. The panel came to this decision in spite of the offer by the Respondent to sell the domain name via the third party (www.greatdomains.com) website and evidence to the effect that the Respondent was attempting to hide his true identity. However, a reading of the decision reveals the particular (and peculiar) facts of the case that led the panel to its surprising conclusion.
In order to succeed under the UDRP procedure, a Complainant must show that (a) the domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; (b) the Respondent has no right or legitimate interest in the domain name; and (c) the domain name has been registered and is being used in bad faith. A Complainant cannot succeed under the ICANN procedure unless it meets the burden of proof in relation to each of these three elements.
Whilst the panel had no difficulty finding that the domain name was confusingly similar to AA's trade marks, it found that the Respondent did have a legitimate right to use the domain name. In so doing it relied upon a guidance booklet entitled ìTen Frequently Asked Questions About AA Websitesî issued by AA. According to the panel, this booklet clearly indicated the authority of local organisations to set up local Alcoholics Anonymous websites and that Alcoholics Anonymous is a decentralised organisation.
The panel next addressed the bad faith requirement. On the question of bad faith registration, AA pointed to the anonymity of the Respondent. However, the anonymity of the Respondent was not a significant issue here given that anonymity was an important part of the Respondent's organisation and process. On the question of bad faith use, the panel found that the offer by the Respondent to sell the domain name via the third party (www.greatdomains.com) website constituted bad faith use of the domain name. However, given the failure to show bad faith registration, this was not sufficient. Further the bad faith use was mitigated by...