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Trade mark use in domain names

A recent domain name dispute has clarified the extent to which a distributor or reseller of goods or services can incorporate the trade marks of the originator of those goods or services into its domain name.

In the November 2008 case of ITT v Nicoll, the World Intellectual Property Organisation (WIPO) domain name dispute resolution panel had to consider a case where Nicoll was selling ITT's goods, having bought them from an independent source. ITT owns registered trade marks in respect of its name in numerous jurisdictions. Nicoll registered 13 domain names incorporating the ITT name for a website selling the ITT products.

ITT complained that Nicoll had no right or legitimate interest in using those domains, and that the domain names had been registered in a bad-faith attempt to attract internet users for commercial gain. Nicoll ignored ITT's cease and desist letters.

Referring to the earlier domain name case of Oki Data Americas, the panel decided that a reseller would not register the trade mark of the originator of the goods or services provided that:

the reseller is actually offering the goods or services from that website;
the reseller only uses the site to offer the trade marked goods and no other goods, in other words, it must not use the mark to bait customers in and then switch them to other goods;
the site must accurately disclose the reseller's relationship with the owner of the trade mark (eg whether it is an authorised reseller or not); and
the reseller must not try to "corner the market" in all relevant domain names, thereby depriving the owner of the mark to reflect its mark in its own domain name.

The panel found that Nicoll's site satisfied all the requirements, so the claim was denied. It did not matter that Nicoll was not an authorised reseller.

Suppliers to resellers have the opportunity to restrict use of their name in domain names by including an appropriate clause in the reseller agreement. However, this is only contractual protection, so cannot help against an unauthorised reseller. It is important for suppliers to include appropriate restrictions in their agreements with resellers, which we can assist with.