Baker & McKenzie Advises Sportingbet On Major Domain Name Dispute

27 Sep, 2012

Leading global law firm Baker & McKenzie has successfully defended Sportingbet (and its subsidiary Internet Opportunity Entertainment (Sports) Limited) from an attack on the ownership of its domain name <wallstreet.com> before the World Intellectual Property Office (“WIPO”) domain name disputes panel. The decision is good news for companies that have invested in desirable and high value domain names and demonstrates that the WIPO domain name dispute process (“UDRP Process”) cannot be used as a means to circumvent those legitimate rights in sought-after domain names. 

The purchase of the domain name in 2001 was well-publicised and was the first to break the US$1 million barrier. It was used as part of Sportingbet’s US online business until 2007 and since then has been held by the Sportingbet group of companies. The US company Wall-Street.com unsuccessfully attempted to challenge the ownership of the domain name using the WIPO UDRP Process, which is designed to prevent unlawful “hijacking” of well-known company names, brands and businesses. The WIPO panel found that Wall-Street.com had no legitimate basis for attacking the ownership of the domain name and found the complainant engaged in Reverse Domain Name Hijacking over the domain name WallStreet.com.

Sportingbet legal counsel Kristian Gutteridge noted, “The decision gives comfort to companies such as ourselves who have invested in intellectual property, that the UDRP process will provide protection against those parties who attempt, without due legal justification, to hijack our valuable domain name rights.” 

The three-person WIPO panel definitively concluded that the <wallstreet.com> domain name has been legitimately held by the Sportingbet group since 2001 and the Sportingbet group was commonly known by that name as shown by its registered Community and US trade mark rights. The panel accepted the strong evidence of Sportingbet’s longstanding legitimate interests in the domain name and found that there was no basis at all to show that the domain name had been registered in bad faith. In fact, the panel found that Wall-Street.com’s apparent omission of key trade mark rights held by Sportingbet and the “admitted corollary purpose of using [the] Policy proceeding to force a settlement” and sale of the domain name to Wall-Street.com without any legitimate basis constituted a “Reverse Domain Name Hijacking”, further demonstrating the illegitimate basis for bringing the complaint. 

The Baker & McKenzie team was led by London-based IP Partner Paul Rawlinson and assisted by Associate James Whymark. 

Whymark commented, “This decision represents common sense and ensures the protection of the legitimate domain name market. Domain Names can often be highly valuable assets and owners should not be afraid to defend such baseless challenges. SportingBet’s success shows the value of protecting domain name rights and demonstrates that formal domain name recovery processes cannot be used to circumvent the legitimate ownership of high-value rights.”

Baker & McKenzie’s London IP Team acts for a number of the world’s best known IP owners in a variety of industry areas. The team is made up of more than 30 lawyers and was recently ranked in top tier for brand management by leading legal directory, Legal 500 UK. 

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