In a significant ruling , in regards an internet domain name dispute under the UDRP, the WIPO Arbitration Panel held that even an unauthorized re-seller had the right to use the manufacturer’s trademark, not owned by the re-seller, as a domain name, provided that the re-seller in question had a legitimate business interest. In an earlier 2001 case of Okhri Americas the Panel had ruled similarly but with respect to the rights of an authorized re-seller.
The facts of this case are as follows: The complainant ITT Corporation has been using the ‘ITT’ trademark since the 1920s and it has registered the trademark in several jurisdictions, worldwide. The Respondent had registered a series of domain names bearing the ‘ITT’ trademark in combination with the names of the different models of machines manufactured by ITT. Through these websites the Respondent was re-selling genuine ITT products which the U.S. Govt. had resold to him since it had procured exccess stock in this regard. The products sold by the Respondent bore the genuine seal of the ITT Corporation. The Respondents website also bore a disclaimer stating that there were no proffesional affiliation to the ITT Corporation.
The main line of arguments pursued by the ITT Corporation was that the domain name was causing confusion amongst the public and also that the the Okri dicta could not apply in this case because the respondent in this case was not an authorized re-seller. The complainants implicitly based these arguments on Para 4(b) of the UDRP which states the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Panel however approvingly cited Okhri as a precedent by extracting the following portion of the Okhri decision:
“bona fide offering of goods or services” within the meaning of paragraph 4(c)(iii) of the Policy if the following conditions are satisfied:
– the respondent must actually be offering the goods or services at issue;
– the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
– the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
– the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of reflecting its own mark in a domain name
In this case the Respondent was selling only genuine ITT products through the particular websites and had put up an accurate disclaimer in regards the professional affiliations with the trademark owner. The fact that the Respondent had placed links on those websites to his other websites, selling similar products of different companies, was disregarded by the Panel since the Complainant failed to prove that these other companies posed serious competition to itself. Since the Respondents use of the domain name met all of the above criteria the Panel held that he did indeed have a legitimate business interest in using the trademark of the manufacturer-complainant.
All in all it is a very fair decision and hopefully such decisions will assuage the fears of those conspiracy theorists who are convinced that the internet will be taken over by the big corporations.
True, though DPI won the WIPO case, unknown to the public, ITT still hounds them racking up Legal bills for their small company. They are proving to be sore losers of the WIPO decision and their part in making the landmark precedent. ITT was proven wrong, and they don’t like it. And the threatening letters keep coming. It may be personal on the part of ITT’s attorney, as he was the attorney employed by ITT as their intellectual property representative, when the sites were registered, and He did not catch it on his watch. Now retained outside the firm, he is trying to restrict DPI’s legal use of the Domains. DPI is considering creating a website to disclose all correspondence related to the entire action between the companies in order to inform the public of the intensity of the pursuit being experienced by DPI. It will also give other victims of this type of action an unprecedented look inside the entire experience. The WIPO summary is just that, a summary. The entire complaint filed by ITT was the size of a phonebook and was thought to take a year to prepare by ITT’s legal counsel. And that did not include the unsolicited response to DPI’s response. The secondary response was not allowed in the case, nor was DPI’s response to it. Though DPI paid to have their attorneys prepare a defense to it. DPI had 20 days to respond to the WIPO complaint, which it did in that 20 day period, DPI not only had to respond in 20 days, but they had to also educate themselves on what a WIPO case was all about. That meant many sleepless nights reviewing hundreds of previous cases and reading the UDRP. Then, refute every ridiculous claim ITT made in their complaint. This case will probably end with another landmark decision, but that decision will probably be handed down by the Federal court system this time. If ITT won’t accept WIPO’s decision as a resolution, maybe they will accept the Courts decision.