Here is a WIPO decision of wide ranging impact, the first one deciding that a dealer or reseller can use the trademark of a manufacturer even if not authorized by the manufacturer to reseller it products and without the trademark holder permission.

In what i consider to be an important WIPO ruling, pressure gauge maker ITT sought to get the domain name ITTbarton.com, itt-barton.com and 11 other domain names, owned by a seller of ITT pressure gauges, a company called Differential Pressure Instruments.

ITT argued trademark infringement before an arbitration panel of the World Intellectual Property Organisation (WIPO). The US company holds over 700 registered marks incorporating the ITT mark, in more than 100 countries.

Nicoll, based in Norfolk, Virginia, sells products that were made by ITT and purchased by the US Government but never used. The Government sold off its surplus stock to Nicoll and others who bought them for resale.

ITT argued that Nicoll had no rights or legitimate interests in the domain names.

The three-member WIPO panel applied a test laid down in a 2001 case.  In that case, a computer accessories maker, Oki Data Americas, took action over another company’s use of the domain name Okidataparts.com. The panel in the ITT case wrote:

“The Panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by a dealer or reseller (an authorized dealer in that case) should be regarded as a ‘bona fide offering of goods or services’ […] 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.”

ITT argued that the Oki Data test should be limited to authorized resellers only.

The WIPO panel disagreed.

“The Complainants argue that the Oki Data rationale should not apply to an unauthorized reseller,” said the ruling. “The Panel concludes, however, that the issues of legitimate reseller interests in accurately describing a lawful business, on the one hand, and of potential abuses of trademark, on the other, are similar whether or not there is a contractual relationship between the parties.”

The Panel noted that:

“”””Respondents unquestionably offer devices that were originally sold and labeled as ITT or ITT Barton products. The record indicates that they have done so since 2000, before the Domain Names were registered. The Respondents’ website accurately discloses in its heading the name of the company offering those products (DPI) and includes a home-page disclaimer of affiliation with the Complainants. The website also includes a more detailed explanation, on a page linked from the home page, of how the Respondents have purchased and stocked “new surplus” ITT Barton devices for resale. The Respondents have not attempted to “corner the market” in relevant domain names.””””

It concluded that “the Oki Data criteria are appropriate here to assess the rights or legitimate interests of the unauthorized reseller for purposes of this element of the Policy.”

The panel said that Nicoll had “a legitimate interest in making nominative use of the ITT mark consistent with the Oki Data requirements; consequently this does not reflect bad faith.”

However it should also  be noted that if the domain were “parked” the results would have been different as one of the domain was “parked” by the domain registrar (Tucows) for some time:

“”””The Domain Name <itt-barton.com> resolved at times to parking websites with nothing but third-party advertising links. The Respondents assert that the Registrar parked the inactive Domain Names in this fashion without agreement or payment to the Respondents. This assertion is plausible. There is no indication on the archived pages themselves that they were parked under the Registrar’s advertising revenue-sharing program, and it is a common practice for many registrars automatically to park idle domain names for their own benefit until the registrant makes other use of them.

This use does not appear to have been part of a deliberate “bait and switch” scheme, although at least one advertising link was associated with a competitor of the Complainants.

Nevertheless, the Respondents allowed some of the Domain Names to be used by the Registrar in this manner for at least a year at a time, in connection with the offering of goods other than those associated with the ITT mark. This is not a legitimate reseller use of those Domain Names under the Oki Data test.””””

However since the parking was done by the registrar, not by the domain holder, and the registrar did not share the revenue with the domain holder, again in this case Tucows, the panel disregarded the short time the domain was parked and found for the domain holder.

You can read the full decision here