Feeds

Trademark owner loses domain name claim against unauthorised reseller

Court rules against ITT

The essential guide to IT transformation

Dealers and resellers can use a manufacturer's trademark as a domain name even when their sales are not authorised by the manufacturer, an arbitration panel has ruled.

Pressure gauge maker ITT failed in its claim for the domain name ITTbarton.com and 12 other domain names owned by a seller of ITT pressure gauges, Douglas Nicoll, and his company Differential Pressure Instruments.

ITT argued trademark infringement before an arbitration panel of the World Intellectual Property Organisation (WIPO). The US company holds over 700 registered marks incorporating the ITT mark in more than 100 countries.

Nicoll, based in Norfolk, Virginia, sells products that were made by ITT and purchased by the US Government but never used. The government sold off its surplus stock to Nicoll and others who bought them for resale.

ITT argued that Nicoll had no rights or legitimate interests in the domain names. The three-member WIPO panel applied a test laid down in a 2001 case. In that case, a computer accessories maker, Oki Data Americas, took action over another company's use of the domain name Okidataparts.com. The panel in the ITT case wrote:

The Panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by a dealer or reseller (an authorized dealer in that case) 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
  • 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 the Oki Data test should be limited to authorised resellers only. The WIPO panel disagreed.

"The Complainants argue that the Oki Data rationale should not apply to an unauthorized reseller," said the ruling. "The Panel concludes, however, that 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."

It concluded 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."

The panel said that Nicoll had "a legitimate interest in making nominative use of the ITT mark consistent with the Oki Data requirements; consequently this does not reflect bad faith."

ITT's complaint was dismissed.

Copyright © 2008, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

The essential guide to IT transformation

More from The Register

next story
6 Obvious Reasons Why Facebook Will Ban This Article (Thank God)
Clampdown on clickbait ... and El Reg is OK with this
Banking apps: Handy, can grab all your money... and RIDDLED with coding flaws
Yep, that one place you'd hoped you wouldn't find 'em
No, thank you. I will not code for the Caliphate
Some assignments, even the Bongster decline must
Caught red-handed: UK cops, PCSOs, specials behaving badly… on social media
No Mr Fuzz, don't ask a crime victim to be your pal on Facebook
Barnes & Noble: Swallow a Samsung Nook tablet, please ... pretty please
Novelslab finally on sale with ($199 - $20) price tag
Ballmer leaves Microsoft board to spend more time with his b-balls
From Clippy to Clippers: Hi, I see you're running an NBA team now ...
Video of US journalist 'beheading' pulled from social media
Yanked footage featured British-accented attacker and US journo James Foley
Call of Duty daddy considers launching own movie studio
Activision Blizzard might like quality control of a CoD film
Primetime precrime? Minority Report TV series 'being developed'
I have to know. I have to find out what happened to my life
prev story

Whitepapers

A new approach to endpoint data protection
What is the best way to ensure comprehensive visibility, management, and control of information on both company-owned and employee-owned devices?
Implementing global e-invoicing with guaranteed legal certainty
Explaining the role local tax compliance plays in successful supply chain management and e-business and how leading global brands are addressing this.
Maximize storage efficiency across the enterprise
The HP StoreOnce backup solution offers highly flexible, centrally managed, and highly efficient data protection for any enterprise.
How modern custom applications can spur business growth
Learn how to create, deploy and manage custom applications without consuming or expanding the need for scarce, expensive IT resources.
Next gen security for virtualised datacentres
Legacy security solutions are inefficient due to the architectural differences between physical and virtual environments.