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Limits to Unauthorized Resellers, Distributors and Consultants

Two recent decisions have highlighted Respondents’ legitimate interests in domain names that incorporate a holder’s trademark, by happenstance the same Complainant, SAP AG v. SAP User List, D2009-1285 (WIPO November 8, 2009) (November 17, 2009, LegitimateUse) and SAP AG v. UniSAP, Inc., D2009-0297 (WIPO April 28, 2009) (May 29, 2009, Incorporating). That there are limits is discussed in Sony Kabushiki Kaisha (also trading as Sony Corporation), Sony Europe (Belgium) N.V. v. MCS Bulgaria 2003, D2009-1294 November 17, 2009) (<sony-bg.com> and <sonybg.com>).

The Respondent in Sony “acknowledges the similarity between the Complainants’ trade mark SONY and the Domain Names,” but argued that it was “not unlawful in Bulgaria to offer for sale the Complainants products by reference to the Complainants’ trade marks, and the Respondent therefore needs no authorization from it to do so.” The question is not the selling of Sony products and there is nothing unlawful in Respondent’s conduct. However, “the proposition that, because such conduct is not per se unlawful, the Respondent therefore necessarily has a right or legitimate interest in the Domain Names, in the sense meant by paragraph 4(a)(ii) of the Policy, is not correct.”

The proper question, rather, is whether in conducting this lawful business the Respondent is adhering to the guidelines that permit the use of a Complainant’s trademark, as was the result in the SAP decisions. A legitimate interest is earned by meeting the four part criteria, articulated in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001). In Sony, the facts did not support this finding. It would be unobjectionable “[i]f the websites merely included links to other, clearly separate, websites offering other goods, in addition to a certification as a Toshiba dealer (which could serve as nothing more than an assertion of genuineness of the Respondent’s business).” However,

in this case a consideration of the website under the Domain Name <sony-bg.com> today shows that the same website is clearly offering other goods, including those of the competing supplier Toshiba, or, more accurately, that pages from another website of the Respondent are being linked so that they appear on the website under <sony-bg.com>.

As a result, Respondent in Sony fails the second and third prongs of the Oki Data test, namely that (2) it does not use the site to sell only the trademarked goods and (3) the site does not accurately disclose the registrant’s relationship with the trademark owner.

Gerald M. Levine <udrpcommentaries.com>

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