Billy Connolly didn’t get the joke when he discovered billyconnolly.com, particularly as it was held out to be earmarked for a site offering a Labrador for stud. Did he win the day in the ensuing dispute?
Who: Billy Connolly, Anthony Stewart and Rougemar (Billyconnolly) Pindar
When: February 2001
When Anthony Stewart, a trader in domain names, offered to sell comedian Billy Connolly the domain name billyconnolly.com in return for five years’ supply of Billy’s Tickety-Boo Tea, Billy was not amused. Neither was he much persuaded by Stewart’s story that he took out the domain name in order to offer the stud services of his Labrador Rougemar Billyconnolly.
Being a true Scot, Billy offered Stewart £202.80, being the cost of the Tickety-boo tea in question, to hand over the e-moniker. No deal, and the bargaining finally stopped with Billy offering £750 and Stewart asking for £7500.
Billy then initiated the Uniform Dispute Resolution Procedure ("UDRP") introduced at the end of 1999 by domain name authority ICANN. Most of the UDRP happens on-line and achieves a result within a couple of months. The adjudicating panel rejected Stewart’s Labrador story, especially as the Kennel Club had him down as Rougemar Pindar, with nary a Billy or Connolly in sight. It found Stewart was in bad faith and ordered him to transfer the domain name into the name of the 59 year old comedian.
Why this matters:
Clearly the right result was achieved here, but this was a classic cybersquatter case dealing with a .com (as opposed to a country suffix such as .co.uk), the only scenario where the UDRP can be used. If the situation is not so clear cut and it’s a .co.uk in play, there is for many no contest between paying an asking price of, say, £1000 and litigation.
So far as personality domain names are concerned, commentators have expressed concern at some UDRP decisions. They refer to a Report prepared by the World Intellectual Property Organisation ("WIPO") and submitted to ICANN in mid 1999, which underpinned the creation of the UDRP. This stated that the policy should be limited to bad faith domain names using brands that were already registered trade marks. Limiting the procedure’s ambit in this way should make its operation easier as international rules for the registration of trade marks were relatively homogeneous. When it came to unregistered trade marks and personality rights, however, laws differed so much that a swift, written submissions-based procedure would not be appropriate.
Against this, it is perhaps surprising that the likes of Julia Roberts, Celine Dion and now Billy Connolly have achieved success using the UDRP, without having any trade mark registrations to their name. In contrast consider the Elvis Presley estate, denied the right in the UK to prevent others registering Elvis Presley trade marks, despite the massive allure and value of the dead star’s name.
Which country’s law is being applied in these cases. Is it simply down to which country the chosen panelist happens to hail from? We think we should be told.