WIPO have made an interesting decision regarding the use of a trade mark as a domain name even where the rights owner has not authorised the use.
ITT a pressure gauge manufacturer claimed for the 'ITTbarton.com' and other domain names featuring 'ITT'. The owner of the domain's is Douglas Nicoll, his company buys unused pressure gauges from the US government and sells them on.
ITT claimed that the use of their marks as domain names was an infringement of their trade marks (they have over 700 registered marks across the globe) and argued the Mr Nicoll has no rights or legitimate interests in the domain names. But applying the Oki Data Americas case (2001) the panel stated:
"The Panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by a dealer or reseller should be regarded as a 'bona fide offering of goods or services' … if the following conditions are satisfied:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner;
- and the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of reflecting its own mark in a domain name."
ITT argued that this test should be limited to authorised resellers only (which of course Mr Nicoll is not). But the panel said: "The issues of legitimate reseller interests in accurately describing a lawful business, on the one hand, and of potential abuses of trademark, on the other, are similar whether or not there is a contractual relationship between the parties." Concluding that: "the Oki Data criteria are appropriate here to assess the rights or legitimate interests of the unauthorized reseller for purposes of this element of the Policy."
Finally the panel ruled that Mr Nicoll had a legitimate interest in using the ITT mark (using the Oki Data rules) and as such bad faith was not shown.
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It was not easy taking on a Giant of a Company such as ITT. They have alot of paper. However, we have always felt we were serving a necessary market in our industry. I am glad to have possibly given hope to other small companies legitimately doing business to protect their rights to properly use trademarks in E Commerce. I thank my Attorney Kristan Burch, for Her hard work and the WIPO Panelists for making this decision. To us, it was the only outcome possible, but you never know.
ReplyDeleteHi Doug,
ReplyDeleteMy sincere apologies I have only just noticed your comment.
Congratulations on the victory, as you say it really was the only possible outcome but it takes balls to carry it though!