A recent decision of a panel made up of three panellists under the Uniform Domain Name Dispute Resolution Policy ("UDRP") deals with interesting issues concerning the use of a manufacturer's trade mark by a dealer or reseller.
The complainant, ITT Corporation, is a Delaware corporation with shares publicly traded on the New York Stock Exchange. ITT Corporation and its related subsidiaries operate in more than 100 countries and maintain several websites. ITT and its subsidiaries also own more than 180 domain names which incorporate the ITT mark.
The complainant has used its ITT mark since the 1920s, originally as an abbreviation of International Telephone and Telegraph Corporation. It owns numerous trade mark registrations for its mark.
The complainant formerly operated a division under the name Barton Instrument that produced instruments, including flow switches, tank level indicators and differential pressure sensors and transmitters. The complainant sold this division in 1998 to Barton Instrument Systems LLC.
The respondent is an individual who was employed as a sales representative to sell new, surplus ITT Barton instruments. These devices were manufactured by the complainant's former Barton Instrument division and were sold to the government of the United States but never put in service. The government sold off its surplus stock. The ITT mark is stamped on some or all of the ITT Barton instruments.
The respondent started his own business in 2000 and established a website at ittbarton.com. The respondent's website featured photographs of instruments and included a disclaimer indicating that the operator of the website was not associated with the manufacturer of the instruments.
ITT commenced proceedings under the UDRP to have ittbarton.com transferred to it. In order to succeed, a complainant must show:
- the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
- the respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
The panel was satisfied that the domain name was confusingly similar to trade marks in which the complainant had rights.
In determining whether the complainant had shown that the respondent had no legitimate interest in the domain name, the panel applied the test from the WIPO Overview on Selected UDRP Questions which represents the prevailing view of panellists.
Under the test, the use of a manufacturer's trade mark as a domain name by a dealer or reseller should be regarded as a bona fide offering of goods or services (which is a demonstration of rights or legitimate interest in the domain name) 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 trade marked goods (otherwise, there is the possibility that the respondent is using the trade mark 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 trade mark owner; and
- the respondent must not try to "corner the market" in all relevant domain names, thus depriving the trade mark owner of reflecting its own mark in a domain name.
Applying these factors, the panel concluded that to the extent that the domain name had been used in association with the respondent's website selling surplus ITT Barton instruments, the respondent had shown a legitimate interest in the domain name. In addition, the panel concluded that the complainant had failed to show bad faith.
There are a multitude of decisions under the UDRP and it can be difficult to determine how influential a specific decision is. The WIPO Overview is particularly helpful in attempting to determine how specific issues will be resolved by panellists.