Amy Winehouse, I believe most of us know, was a world renowned British singer known for her eclectic music, including “Rehab”. She recently died at a tender 27 years of age.
Shortly after her death, Amy’s father, Mitch Winehouse, announced that he would launch a foundation in his daughter’s name. The aim would be to raise funds to assist those struggling with alcohol and drug abuse – a noble and apt tribute to his daughter, considering her own battle with substance abuse.
“However,” reveals Alicia Louw, and associate at corporate law firm Bowman Gilfillan, “some others, acutely aware of the advertising power of the internet, saw dollar signs. Shortly after Mitch’s announcement, they registered the domain names amywinehousefoundation.org and amywinehousefoundation.uk.org.”
It is a context that prompts Louw to draw attention to the speed and simplicity attaching to the registration of a domain name.
“There are no checks and balances to ensure that the registrant has any right to the name, and that registration of the name will not infringe any third party’s rights.”
She says that in order to register a domain name one simply checks its availability, completes a form, and pays a relatively small sum of money. “That’s all you need to do to ensure that the domain name is yours.”
The process, Louw points out, is clearly open to abuse, with trade mark owners and celebrities often the victims of unscrupulous “entrepreneurs”.
The Internet Corporation for Assigned Names and Numbers (ICANN) is the organisation responsible for, among other things, management of the generic top level domains such as .com, .net and .org. In order to combat the problem of domain names infringing third party rights, ICANN adopted the Uniform Domain Name Dispute Resolution Policy (UDR Policy) in December 1999.
“Wow! That is a mouthful, about which you are probably wondering – what is its relevance to the Amy Winehouse domain name issue?”
Louw explains that in terms of the UDR Policy, it is possible to file a complaint to get a domain name back if you believe you have better rights to the name. To do so, you must demonstrate:
(i) the domain name is identical or confusingly similar your trade mark; and
(ii) the Registrant has no rights or legitimate interests to the name; and
(iii) the domain name has been registered and is being used in bad faith
“The magic word is ‘and’, as a failure to show all of these elements will lead to your complaint being unsuccessful. This would mean that you then have to negotiate a fee with the Registrant to get the domain name back.”
She says that complainants usually encounter difficulty with criterion (iii) in particular.
“Thankfully, the UDR Policy sets out a list of circumstances that are indicative of use and registration of a domain name in bad faith.”
Louw cites the example of a registrant having acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration for a price more than his documented “out-of-pocket costs” for it (extortion).
“I therefore suspect that the registrants of the Amy Winehouse Foundation domain names are unlikely to have much luck in selling the domain names for millions and will, in the end, probably be obliged to transfer the domain names to Mitch Winehouse and his foundation.
“Unfortunately, however, Mitch Winehouse will have to spend some money in fighting to get the domain names back.”
The lesson, Louw advises, is to register the domain name for a new brand you intend using before making any announcements.
“If possible, you should also register simple variations of it, as someone is likely to register <amywhinehouse.com> or <amy-winehouse.com> and then attempt to sell it to you later.
“Instructively, the policy governing .co.za domain name dispute matters is similar but, in my view, a little less stringent.”