In Office Holdings Ltd v Hocu To d.o.o. and Office Shoes d.o.o.  D2009-1277 WIPO, it was concluded that a proprietor of trade marks in central and eastern Europe had a legitimate interest in a corresponding domain name even though it was apparent that the trade marks and domain name had been chosen in order to mimic an earlier trade mark registered elsewhere in Europe.
Office Holdings has operated shops under the name OFFICE LONDON since 1981 and operates an online business via the website www.office.co.uk. It is also the proprietor of three Community trade marks (CTMs) in respect of OFFICE LONDON and OFFICE for clothing, footwear and retail services.
Office Shoes d.o.o. is a Serbian company. It has been operating retail shops under that name since 1999. It also has trade mark protection in several European countries in respect of OFFICE SHOES.
The dispute arises over Office Shoes’ registration of the domain name officeshoesonline.com. The website provided locations and contact details for Office Shoes’ locations throughout central and Eastern Europe, where it operated over 100 shops.
Office London contended 1. officeshoesonline.com was confusingly similar to its trade marks.
2. Office Shoes had no legitimate interest in the name. The sole purpose of the website was to reference the Complainant’s shops.
3. Office Shoes’ use of the domain name was in bad faith as Office Shoes had actual knowledge of Office London’s trade.
Office Shoes defended its position:
1. The OFFICE trade mark was too generic to be confused with the domain name.
2. Office Shoes was the lawful owner of OFFICE SHOES marks in jurisdictions in which Office London did not have earlier rights, and Office London had no registrations in several of the jurisdictions in which Office Shoes operated.
3. There was no bad faith because there was no likelihood of confusion.
It was held that Office London had discharged the burden of proof with regard to confusing similarity between the marks, since the argument that OFFICE was generic was frivolous and without merit.
It was found that the use by Office Shoes of the mark OFFICE SHOES was a blatant effort to mimic Office London’s mark, but this was not enough.
Office Shoes had given evidence of its own registrations of OFFICE SHOES in a number of countries and its use in connection with over 100 retail locations. BECA Inc v CanAm Health Source Inc 2004-0298 WIPO shows that trade mark rights are territorial in nature and national trade mark laws may permit the registration of a mark in that jurisdiction even where it was clear that the party had deliberately chosen the mark to mimic its use by a third party in another jurisdiction. Since Office London had not taken steps to secure trade mark rights in certain countries and its rights were not sufficient to benefit from Article 2 bis of the Paris Convention, it could not complain that Office Shoes had established rights in these territories.
As Office London had failed to establish that Office Shoes lacked rights or legitimate interest in the domain name, the panel found that it was not necessary to consider bad faith.
This decision highlights once the dissonance between the territorial nature of a trade mark against the international nature of a domain name. In this case it seems that Office London has been unlucky as it is well known enough to be mimicked, but not to the degree that benefits from Paris Convention protection.