Trademark owner loses domain name claim against unauthorised reseller

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the issue is that in this way... #

Posted Thursday 20th November 2008 14:16 GMT

Trademarks are useless, because i only need to buy stuff from a trademark, and offering them to sell them, effectivelly diluting the trademark.

After several years of this, i can go to court and have the trademark repealed on the base of failure to protection it from the rightful owners...

IANAL but i think this is a can of worms just opened...

Kevin Fields

Wow, a common sense ruling! #

Posted Thursday 20th November 2008 14:16 GMT

At first I thought that WIPO had once again made a very stupid and erroneous ruling, but after reading this article and reading up on the case itself, this was a very wise decision. The trademark holder is not losing their trademark here, nor are they losing a domain that they were using. I would have to agree that this is a legitimate and non-infringing usage of a trademark name.

Miguel Farah

Wow, seems to be a fair veredict. #

Posted Thursday 20th November 2008 15:20 GMT

I expected this to be another "big company screws little guy" veredict, like the ones WIPO has pulled in the past, but seems to be fair.

Doug Glass

Morons #

Posted Thursday 20th November 2008 16:19 GMT

I guess it never occurred to ITT that the sites in question were helping to line their pockets. Morons, just morons. The Peter Principle in full force

Chris C

Bad decision, not the same #

Posted Thursday 20th November 2008 20:48 GMT

This is a very bad decision. In the case of "okidataparts.com", the trademark name was used in conjunction with a generic term, the end result being a generic term -- "Oki Data Parts". The name does not imply that Oki Data operates or authorizes the site in question. In this case, however, "ITT Barton" was the name of the company making the products (the name of the company was then changed to "Barton Instrument Systems LLC", and they've since been acquired by another company). They may have had a trademark on "ITT" only, but "ITT Barton" was the name of the company. As such, this reseller's domain "ittbarton.com" is very likely to be assumed by purchasers to be the official and/or authorized domain for the company's products.

If the reseller had called his domain "ittsurplus.com", "ittbartonsurplus.com", or something similar, then it would be acceptable. But to use the defunct company's name as your domain name is not something that should be allowed.

Here's a question for the "good decision / common sense" commenters -- do you think it would be acceptable for a person to purchase surplus Digital Equipment Corp (DEC) computers, then register the dec.com domain name to resell those DEC computers (yes, I know HP controls the domain name, but assume for the purpose of this hypothetical question that they didn't)?

Mark

re: the issue is that in this way... #

Posted Friday 21st November 2008 17:05 GMT

But if you're selling their products, how are you misleading the customer? That, after all, is the REASON for trademarks: so that you don't buy a Sorny PS3 by mistake, not so that Sony can make more money from the trademark.

Anonymous Coward

Try registering the domain www.sonydvds.com #

Posted Saturday 22nd November 2008 02:35 GMT

OK, try registering the domain www.sonydvds.com to sell second hand DVDs and see how many milli seconds it takes to receive a nastygram from Sony!!!

Try www.levijeansforsale.com Bet that gets a response!!! Levi sued Tesco (or was it Asda, can't remember now) a while back for selling imported Levi jeans. The used trade mark law to stop it.

If they used the name ITT and were selling ITT products then they are obviously passing off as.

One person said "I guess it never occurred to ITT that the sites in question were helping to line their pockets. Morons, just morons. The Peter Principle in full force"

I think you need to re-read the article. The web site was selling surplus product, so was definately taking away from sales. Additionally, it would also generate an abundance of support and warranty issues. This is one big reason why many manufacturers have authorized dealers.

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