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Selling a Service Based on Goods Produced by Trademark Holder

A respondent’s choice of a domain name incorporating a trademark for the purpose of identifying its business rather than competing with the holder can be a legitimate use. The general rule is that a respondent may permissibly register and use a domain name that is confusingly similar to the complainant’s trademark if it is descriptive of the business conducted under the domain name. Although no express permission is required it presupposes that the parties are engaged in entirely different enterprises and not competitors for the same consumers. A domain name used in such manner may be confusingly similar to the complainant’s trademark without there being a likelihood of confusion. The general rule is traceable to Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001). D2001-0903 (WIPO November 6, 2001).

One side of the general rule was illustrated in the case of Cisco Technology, Inc. v. Nicholas Strecha, E-Careers LTD, D2010-0391 (WIPO May 7, 2010) (<ciscouk.com>) discussed in the May 24 Note. The other side of the general rule is illustrated in Human Resource Certification Institute v. Tridibesh Satpathy, Edusys, D2010-0291 (WIPO May 7, 2010). The Complainant is described as “an internationally recognized certifying body for the human resources industry.” It does not offer preparatory courses to students seeking to obtain certification from the Complainant. The Respondent in Cisco Technology registered <ciscouk.com>; the Respondent in Human Resource Certification Institute registered <hrcistudy.com>. In the first case, the registration and use is abusive; in the second, it is fair under the nominative fair use principle.

The application of the general rule is “finely balanced” [Alstom v. Industrial Tests, Inc., D2009-1702 (WIPO February 6, 2010)]. It provides space for companies operating in the secondary market to offer goods or services without impinging on the trademark holder’s rights. The examples of bad faith set out in paragraph 4(b) of the Policy “all have in common that the choice of domain name for the ‘use’ in question was governed by a desire on the part of the registrant to cause damage to the complainant or derive an unfair profit.” But, the Panel in Human Resource Certification Institute “venture[d] to suggest that it would only be in the most exceptional of circumstances that a domain name registration would be condemned without a finding of mala fide intent on the part of the registrant.”

There is no dispute that the Respondent Human Resource Certification Institute offered courses designed to prepare students for the certification examination. In Cisco Technologies, the Respondent was in competition with the Complainant for students, thus in violation of one of the tenets of the general rule. In Human Resource Certification Institute the Respondent had a simple explanation. He uses “the Domain Name <hrcistudy.com> … to attract to his website those Internet users looking for study courses for the Complainant’s examinations.” The incorporation of the trademark simply describes the services offered. It does not pretend to be associated with the trademark holder.

The “nominative fair use” test formulated by the U.S. Circuit Court of Appeals for the Ninth Circuit finds a non-infringing, nominative fair use if the following three requirements are met: “[1] the product or services in question must be one not readily identifiable without use of the trademark; [2] only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and [3] the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder,” New Kids on the Block v. New America Pub., 971 F.2d 302, 308 (1992).

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

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