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Distributor Rights, Registering Variants of Complainant’s Trademarks

A distributor’s right or legitimate interest in a domain name depends upon the circumstances under which it acquired the domain name. In a number of early cases the complainant’s distributor agreement was silent on the issue of domain names. It makes it difficult to find “a violation of the Policy when there is no specific prohibition in a dealer’s registration of domain names incorporating the mark of the products it is allowed to sell,” Hexagon Metrology AB, and Hexagon Metrology, Inc. v. The Morgan Company / H.Morgan, D2009-1319 (WIPO January 6, 2010) self-citing Celebrity Signatures International, Inc. v. Hera’s Incorporated Iris Linder, D2002-0936 (WIPO December 16, 2002). In Western Holdings, LLC v. JPC Enterprise, LLC d/b/a Cutting Edge Fitness and d/b/a Strivectin SD Sales & Distribution, D2004-0426 (WIPO August 5, 2004) the Panel found that the “evidence shows that when Respondent registered the domain names and began initial use, there was no contractual prohibition on Respondent’s conduct…. That fact has not been contradicted by Complainant. Thus, there is no violation of a contract or published guidelines to support a finding of bad faith [registration].”

Either by silence or express authorization a respondent has sufficient interest in the domain name to avoid its forfeiture to the complainant. Urbani Tartufi s.n.c. v. Urbani U.S.A., D2003-0090 (WIPO April 7, 2003) (<urbani.com>) (domain name registered “with the evidence consent of Complainant at a time when Complainant and Respondent were in a business relationship.”) This can be so even after the formal termination of the agreement. Ivanko Barbell Company v. Syclone Corporation c/o Adam Auerbach, FA0805001191122 (Nat. Arb. Forum July 22, 2008) (<ivanko.com).

The facts in the earlier cases, however, are distinguishable from Hexagon Metrology in that the Respondent’s contract with Brown & Sharpe expressly restricted it from representing himself as ‘the Brown & Sharpe Distributor.’ Contrary to the Respondent’s contention

[t]his does not ‘explicitly’ imply that he could register various forms of the company name as his own domain name. Quite the contrary. It implies that unauthorized of the company name or references to the relationship are not permitted.

Other facts both corroborate this reading of the parties’ agreement in Brown & Sharpe and establish the Respondent’s bad faith registration and use. These include registering misspelled domain names that refer to Complainant and in one instance using a misspelled domain name – <brownandsharp.com>, omitting the ‘e’ – to ‘disrupt’ the Complainant by misleading Internet users that the Complainant’s website was ‘Down for Maintenance.’ “Internet users who mistakenly omit the ‘e’ while in search of Complainant’s site are likely to be hindered or deterred from doing business online with Complainant. We can find no good faith justification for this false, misleading and potentially disruptive statement.” Respondent’s attempt at justification which includes an argument for laches is so much mumbo jumbo.

Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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