In what is arguably a landmark case in local cyberspace history, a world body has rejected a complaint by Sulit.com.ph against another website which carries the domain name Sulit.ph, saying the term ?sulit” is generic in nature and cannot be registered as a trademark.
The World Intellectual Property Organization (WIPO), a specialized agency under the United Nations, issued its decision last August 19, 2011. It was picked up by a couple of blog sites but escaped the attention of the mainstream media.
The seminal case is the first domain name dispute between two local contending parties that was resolved with finality. It can be recalled that in the late 1990s, dominant carrier PLDT sued cyber-activist Gerry Kaimo for using the domain pldt.com.ph. Though filed in the local courts, the issue was never resolved with Kaimo eventually settling the case with the telco giant.
In the Sulit.com.ph case, the parties agreed to have the complaint resolved by the WIPO?s Arbitration and Mediation Center, under the Philippine Uniform Domain Name Dispute Resolution Policy (PDHRP).
The UN body designated an arbitrator, Francine Tan, as the sole panelist in the matter. By submitting to the WIPO?s jurisdiction, the litigants were required to abide by the judgment and were also barred from appealing the suit elsewhere.
Sulit.com.ph filed the action after Sulit.ph, owned by Anton Sheker of Seo.com.ph, refused a purchase offer of $2,000 for the domain name. The complainant paid $1,500 as filing fee at the WIPO.
Sulit.com.ph also rued the fact that when users click on Sulit.ph, they are redirected to a similar online classified advertising listing called ?classifiedads.ph”.
In its decision, the WIPO said Sulit.com.ph failed to prove ?all three elements” required to establish a domain name infringement on the part of Sulit.ph.
The resolution noted that while the complainant has registered trademark rights in the combination ?Sulit.com.ph”, there was ?no evidence that it had trademark rights in the word ?sulit? on its own.”
?[T]aking into account the meaning and/or generic nature of the word ?sulit?, and the fact that the Complainant has not shown it has trademark rights in the word ?sulit? as a stand alone term, the Panel is of the view that the Complainant?s case is marginal,” the decision said.
Rod Vera, an IP lawyer who handled the case for the defendant Sulit.ph, stressed that the case was decided on the merits of the case and not merely on a technicality as claimed in a technology blog.
?The WIPO clearly ruled that you cannot prevent someone from using a domain name if it?s based on a generic term. That?s the reason why we won the case,” Vera, who also teaches IP law at the Polytechnic University of the Philippines, said in an interview.
The resolution also ruled that even if ?www.sulit.ph” is linked to the website at ?www.classifiedads.ph”, it ?does not, in itself, constitute conclusive evidence of a lack of rights or legitimate interests (especially as the Panel finds that the use is consistent with the descriptive nature of the term ?sulit?).”
Sulit.com.ph created a quite stir last year when its founder, Pinoy developer RJ David, sold the majority shares of the company for ?millions of pesos” to Netrepreneur Connections Enterprises Inc., whose principals are based in South Africa.
The online firm counts social networking site Multiply.com as a sister company since both sites are now majority owned by Netrepreneur Connections. The two companies also share the same lawyer, Ray Gilberto J. Espinosa, who represented Sulit.com.ph in the case before the WIPO.