WIPO-decision: Dealers are allowed to use registered trademark of others in their domain name

The recent ruling by WIPO in the ITT-Barton case might be an important precedent for future cases between holders of a registered trade mark and online companies selling their goods. In this case, it was deemed that a company selling ITT-Barton goods, has legitimate interests in holding domain names containing the words “ITT Barton” even if the holder of the trade mark doesn’t acknowledge them as an official reseller.

The domain names concerned in this case where ittbarton.com, itt-barton.com and 11 other domain names all containing the word “iitbarton”. The holder of the domain names is a company called DPI which sells and repairs second hand ITT Barton products. DPI isn’t an authorised reseller of ITT-products.

As with any domain name dispute, the complainant (in this case ITT) has to proof that the holder of the domain name violates 3 rules:

  1. The domain names are confusingly similar to the registered trade mark
  2. The domain name holder has no right or legitimate interest in the domain names
  3. The domain name has been registered in bad faith

WIPO accepted that the domain names are confusingly similar to the trade mark “ITT”.

On point 2) and 3) WIPO however decided in favour of the domain name holder. This was mainly   based on an earlier ruling from 2001. The interpretation of that ruling has however been broadened by this one. While the 2001-ruling regarding the domain name okidataparts.com, only talked about an authorised reseller being allowed to hold a domain name containing the name of the goods they sell (even though this contains a registered trade mark). The decision in the recent ruling now also applies this to any company genuinely offering those goods.

We see a reasonably large amount of trade mark holders forcing genuine resellers of there goods to surrender the domain names they hold which contain the trade marked product name. Most of these transactions occur after applying some pressure on the reseller. Without the need to go through dispute resolution. But in the future, they might proof to show more resistance in handing over their domain name in light of this ruling.

This certainly is a lesson for holders of a registered trade mark. It is sometimes assumed that having the trade mark means that you don’t have to defensively register domain names containing that mark. But this ruling proofs that simply haing the trade mark doesn’t protect you and registering  your trade mark as a domain name still is important.

While there is this lesson for trade mark holders, this ruling certainly isn’t an open door for cyber squaters. WIPO does put forward strict conditions under which the domain name holder can be expected to have legitimate interests in such a domain name.
It is for example not allowed to “corner the market”. Which means that it’s not allowed to registered domain names in so many varieties that there’s no good name for the trade mark holder left.
The domain name holder must also actually use the domain name to sell the trade marked goods and only those goods may be offered on that website. The website must also clearly show that it’s not the official website of the trade mark holder.

On top of that, in this case the domain name holder had already been offering ITT Barton goods and services before they actually bought the domain names. So if you’re first squatting a domain name and thinking you’ll be sure not to lose it just by setting up an online store on it, then the future might proof you wrong.

In this case WIPO might also have been persuaded to rule in favour of the domain name holder because the trade mark holder actually hasn’t been using the “barton” name since a couple of years. Production of those parts has stopped. Which is basically also why DPI only sells second hand ITT-barton parts…

You can find the full WIPO report on
http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-0936.html
The Oki data part-ruling can be found on
http://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0903.html

Posted under Uncategorized

This post was written by Bart on November 24, 2008

1 Comment so far

  1. trademark November 25, 2008 3:24 am

    This is a landmark decision. But I think it was rightly decided, since the domain holder was using the name descriptively.

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