Jeanette Winterson, author of Oranges Are Not the Only Fruit and Sexing the Cherry, brought the action before the WIPO Arbitration and Mediation Centre against Mark Hogarth, a Cambridge academic who registered hundreds of internet domains in the names of more than 130 well-known authors in the hope of selling them back to the writers at a profit.
The domain names at issue before WIPO were jeanettewinterson.com, .org and .net.
Cybersquatters have been ordered by courts or WIPO to transfer domain names many times before now, normally where one party has a registered trade mark in the name at issue. For example, an individual who registered marksandspencer.com was required to transfer the name to the retailer.
In the US, celebrities have been able to rely on legislation which allows individuals without registered trade marks to retrieve their domain names (something which has been done by Brad Pitt, among others).
The significance of this new case is that it was between two UK individuals and that Ms Winterson has no registered trade mark in her name. Instead, she relied on “her common law rights in her real name”. She was required to prove that Mr Hogarth had no rights or legitimate interests in the domain names registered and that they were registered and were being used in bad faith.
More information can be found at www.arbiter.wipo.int and in our guide on Branding and Intellectual Property.
