Decisions: Trademark Protection Company Can’t Protect Its Own Mark

Dutch company Merk-Echt describes itself as a “trademark agency” committed to protecting its clients’ intellectual property and combating trademark infringement.  You would think that a firm dedicated to trademark matters would have its own trademark and domain portfolio in order, but a recent UDRP filing reveals otherwise.

Merk-Echt filed a complaint with the World Intellectual Property Organization (WIPO) against Tilma Consultants over the domain name MerckEcht.com. In its complaint, the company claims that it holds registrations for both a stylized logo trademark and a word trademark in Benelux (the region comprised of Belgium, the Netherlands and Luxembourg), which were originally filed by the Respondent in 1999 and 2001, respectively but then handed over to Merk-Echt. Why would the Respondent simply hand over the marks? It turns out that Tilma Consultants was one of the founding shareholders of Merk-Echt, and Merk-Echt agreed to purchase Tilma’s shares of the company in 2009.

As of now, the disputed domain name hosts the official page for Merk-Echt, but the company fears that the Respondent will soon take over site content. According to the Complainant, it talked with the Respondent in early summer 2009 about transferring the domain name to the Complainant, but discussions fell apart that July and the domain was never transferred. The Respondent claims that the payment for the shares and domain transfer was never received, so the transfer never occurred.

The Panelist sifted through the arguments and found that although the disputed domain is identical or confusingly similar to the Complainant’s mark, there was no evidence that the Respondent initially registered the domain name in bad faith. Additionally, he suggested that the matter would better be settled in “ordinary court,” before deciding that the domain should remain with the Respondent.

This case should be a lesson to any brand owners regarding trademarks and domain name protection, especially in cases of company division or changes in ownership. When a significant change like this happens, it’s critical for domain names and trademarks to come as a package deal to avoid disputes like this one down the road.