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Legitimate Interest Despite Interim Parking

Parking is not prima facie illegitimate, but it may require plausible explanation where the respondent has knowledge of the complainant’s trademark and has incorporated it into the domain name. Authorized dealers, resellers, distributors, consultants and, in Alstom v. Industrial Tests, Inc., D2009-1702 (WIPO February 6, 2010), companies in the business of testing equipment manufactured by the Complainant may legitimately incorporate the trademark in advertising its services – <alstomservice.com>. The Respondent contended that it “only ever intended to use the domain name descriptively; that is, to describe its services in relation to the Complainant’s products.” It parked the domain name as “a consequence of the dispute.”

Alstom is unusual in that the Respondent is offering services related to the Complainant’s goods, “but not the good themselves.” Ordinarily, a respondent establishes legitimacy by demonstrating that its offering is limited to the complainant’s goods. “It may not assist the Respondent’s case that it may also be offering services related to other goods.” This principle is traceable to Oki Data Americas, D2001-0903 (WIPO November 6, 2001); see, also, Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1969) concerning defendant’s right to incorporate plaintiff’s trademark into the phrase “Independent Volkswagen Porsche Service.” The defendant’s “prominent use of the word ‘Independent’ whenever the terms ‘Volkswagen’ or ‘VW’ appeared in his advertising was sufficient to distinguish his business to the eye of the customer.” The incorporation of the trademark simply describes the services offered. It does not pretend to be associated with the trademark holder.

Nevertheless, in Alstom the domain name resolved to a website offering testing services for goods manufactured by other brands. This would appear to violate one of the Oki Data tests, namely that the “respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.” While “application of these considerations to this case is finely balanced” it is not fatal to the respondent because “the Panel considers it likely that Internet users who find themselves directed to the Respondent’s site may well be uninterested in the servicing of any brand of equipment except that which they already own…. Indeed, the history and nature of the Respondent’s business is made clear on the site.”

The Panel did, however, implant a note of caution to the Respondent in Alstom; a note incidentally that holds true in many cases in which a legitimate interest of good faith registration of the domain name is found based on the record as it presently exists. “On balance, the Panel accepts the claim of the Respondent that the parking site has been developed merely for the purpose of holding the disputed domain name while this dispute is resolved” but “obviously, if the use of the disputed domain name was to become subsequently abusive, that may well be a highly relevant consideration in any future proceeding that may be brought by the Complainant.”

Gerald M. Levine <udrpcommentaries.com>

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