Two rival Minneapolis publishers took a dispute over the domain name tctaste.com before a panel of the National Arbitration Forum, a body authorised to resolve domain name disputes under the rules of ICANN, the internet's technical co-ordination body.
Minnesota Monthly Publications (MMP) took action against Key Enterprises. MMP owned a registered trade mark for the phrase TC TASTE, which it used for a supplement to its food and drink magazine. Rival publisher Key Enterprises registered the domain name tctaste.com in 1998, more than one year after MMP’s first use of the mark.
No use was made of the domain name; attempting to visit the site gave a page-not-found error. Lawyers for MMP wrote to the rival company and demanded transfer of the name, but received no response.
The arbitration panellist, James P. Buchele, found that Key Enterprises had no rights or legitimate interests in the domain name, taking its non-use as proof of that fact.
On the question of whether non-use could amount to bad faith use of the domain name, Buchele said: “The passive holding of the domain name by a competitor of [MMP] is a strong indication of bad faith.”
Accordingly, the domain name was transferred to MMP.
Buchele based his finding on two similar decisions made before panels of the World Intellectual Property Organisation (WIPO), also an authorised domain dispute arbitration forum under ICANN’s rules.
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