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Territorial Limitation of Trademarks

The Panel in BECA Inc. v. CanAm Health Source, Inc., D2004-0298 (WIPO July 23, 2004) points out that “[t]rademark rights are territorial in nature…. National trademark laws often permit a party to obtain registered trademark rights in that jurisdiction even where it is clear that the party has deliberately chosen that trademark having seen the use of that name in another jurisdiction.” This appears to have been the Respondent’s course in Office Holdings Limited v. Hocu To d.o.o. and Office Shoes d.o.o., D2009-1277 (WIPO November 26, 2009). Both parties have trademark registrations in different jurisdictions, the Complainant for OFFICE and the Respondent for OFFICE SHOES. Both are in the retail business selling shoes. The disputed domain name is <officeshoesonline.com>.

For confusing similarity, the fact that a domain name includes a complainant’s trademark in its entirety is sufficient for purposes of the Policy. The inclusion of a descriptive terms such as “shoes” which in Office Holdings describes what both parties sell, and “online,” which describes one of the ways in which the parties sell their wares does not create a distinctive mark. “When dictionary terms that describe an aspect of a complainant’s or respondent’s business or website is added to a mark to form a domain name, that does nothing to detract from the dominant portion of the domain name (here, OFFICE), or to vitiate the confusing similarity between the trademark and the domain name.”

The Panel found the similarities of the parties’ business models “striking.” It appeared “that Respondent’s use of the OFFICE SHOES mark in … countries [in which it operates its stores] reflects little more than a blatant effort by Respondent to mimic Complainant’s trademark. Indeed, the similarity between the parties’ marks and logos is striking, and supports an inference that Respondent copied the mark and the entire business plan from Complainant’s successful UK stores.” However, “if Complainant failed to take appropriate steps to secure trademark rights in certain countries (and if it cannot claim rights under article 2 bis of the Paris Convention), then it cannot in this proceeding complain that Respondent has established such rights.”

Confusing similarity alone does not trump a respondent with a competing right. No abuse can be found where the respondent has registered its “own trademark, duly registered in one county, in a domain name, even if doing so results in a domain name that is identical or confusingly similar to another entity’s trademark that has also been duly registered, but in an other country,” ZPower, Inc. (formerly known as Zinc Matrix Power, Inc.) v. Kissan Battery House c/o Mr. Sachin, FA0903001254829 (Nat. Arb. Forum June 1, 2009).

In Office Holdings, while the Complainant successfully challenged the Respondent’s trademark applications in countries within the European Union in which its priority right was recognized, it had no power to challenge trademark rights granted in Serbia and Montenegro that are not within the European Union. An injunction against Respondent’s use of OFFICE SHOES in Poland does not foreclose the Respondent’s right as a trademark holder to use the disputed domain name. It would only affect the Respondent’s bricks and mortar operations in countries of the European Union if those stores infringed the Complainant’s trademark rights. This though is not a domain name issue.

Gerald M. Levine, <udrpcommentaries.com>

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