AMSTERDAM — The results of a recent cybersquatting case involving LeaseWeb's parent company offer a cautionary tale for online companies that may be neglecting to properly exploit their intellectual property rights.
In a case before WIPO arbitrators, LeaseWeb's parent company, OCOM IP, was seeking to have five domain names — Fibering.com, Fibering.biz, Fibering.info, Fibering.net and Fibering.org — transferred to the web hosting company.
LeaseWeb's parent claimed that the domain names were confusingly similar to trademarks in which it has rights to — specifically its own "FiberRing.com" domain that operates in connection with its FiberRing hosting division. A "fiber ring" is a circuit for telecommunications.
But a three-judge panel ruled for Dialogic Srl of Turin, Italy, which operates as a business-to-business ISP, denied LeaseWeb's parent's complaint despite that Dialogic commenced in 2001 and later changed its name in December 2013 to Fibering SpA while registering the "Fibering" websites.
"No evidence proves that the respondent has set out to block the complainants from registering domain names containing 'Fibering,' which is not the complainants' name," the arbitration panel wrote in its decision. "No evidence proves that the respondent's primary purpose was to disrupt the business of a competitor. No evidence has been produced to show that the respondent has intentionally attempted to divert Internet users by confusion."
The panel, as a result, said it found no evidence of bad faith registration and ruled for Fibering SpA.
Attorney Marc Randazza of Randazza Legal Group, who did not represent any of the parties in the claim, told XBIZ that there's a moral to the story involving LeaseWeb's parent's big loss with WIPO arbitrators — and it's twofold:
"No. 1: If you want to protect your IP rights, you need a full panel of international registrations. If you are just sitting around with one or two registrations until you have a dispute, you're going to lose when it matters.
"No. 2: When you do try and protect your rights, ask yourself if the lawyer you're talking to has international IP experience and training," he said.
Randazza said there were numerous interesting issues in the battle over the "Fibering" domains, highlighting the need for a "360-degree view" of international intellectual property issues.
"The complainant in this case relied on a 2003 Benelux registration," he said. "Some might look at a registration as a strong presumption of rights, and it often is. But, up until 2006, Benelux registrations were granted without review by the Benelux trademark office.
"It was just a matter of filling out a form and paying a fee. Unexamined registrations do not receive the same degree of deference as registrations requiring a full examination by the relevant trademark office."
Randazza noted another interesting element was that LeaseWeb's parent tried to rely on an "OHIM registration," which is an E.U.-wide registration, for "FiberRing."
"But, their attempted word mark did not get registered — it failed upon examination."
The issues in this case, Randazza said, is why he bothered to go back to law school to get a degree in Europe.
"While I had a lot of experience in these matters before, going to get a degree from the law faculty at the Università degli studi di Torino (Italy) was a way to make sure that when we protect our clients, we don't do so without a full view in all directions," Randazza said.
