The Arbitration Court at the Polish Chamber of Information Technology and Telecommunication (PCITT) has ruled in favor of Google in a dispute over the gmail.com.pl domain name. (The PCITT is the Polish entity responsible for arbitration of .pl domain name disputes).
The respondent argued that he made no commercial use of the domain, using it solely for a single email address, and that he had rights to the name because it was merely a combination of a generic term, “mail” with the letter “G,” which he argued stood for “fat” (in Polish, “gruby” = “fat”). The PCITT didn’t buy it though.
The PCITT ordered the domain registration canceled. (Apparently .pl registration rules do not provide for the transfer of a domain name as a remedy in .pl arbitration proceedings). However, the PCITT does have the power to award attorneys’ fees and costs to the prevailing party, and the Panel in this proceeding saw fit to grant Google this remedy.
Here is what one commentator had to say about the case: (the author’s first language is Polish, so it may seem slightly grammatically off).
In our opinion this case is ground – breaking and opens door to the wider legal protection of well know brands, due to the fact that up to date arbitrators dismissed claims if complainant failed to prove that respondent offered domain for sale or infringed complainant’s trademark by acting actively on the market (eg. running on-line store with products of competitor). This view in my opinion was no longer to be acceptable due to the massive scale of cybersquatting activities. Every “domainer” knows that active use of [a] domain which is [a] well – known trademark is risky and keeping the same registration without any activity is safer than running [a] business under [the] domain. We hope that other arbitrators will follow this way of thinking, which brings law closer to the realms of the business activity. It must be pointed out that this tendency is also well established in the European law regarding .eu domains. According to the EC Regulation and the judiciary of the Court attached to the Economic Chamber in Prague if the respondent cannot show the lack of legitimate interest in domain name it is enough to transfer the domain to the Complainant. (source)
I would have to concur.
I wish that the UDRP provided remedies similar to the PCITT. The cost of losing a domain name proceeding under the UDRP is far too low (mere transfer or cancellation of the domain name). If fees and costs were hanging over both parties’ heads, less abusive domain name proceedings would be brought, and the cybersquatting industry would begin to dry up.
Hat tip to Poland – IP law news and resources blawg – an excellent resource for Anglophones who may be stymied when trying to research Polish domain name and intellectual property issues.
