Respondent Comes Out Smelling Like a Rose

In some cases, UDRP complaints are filed when an unauthorized distributor of branded product is using a trademark in a domain name to conduct business. It was interesting, therefore, to read a recent panel decision resulting from a UDRP complaint over the domain name electroluxmallorca.com.

The complaint was filed by Aktiebolaget Electrolux against Pablo Rodriguez Guirao but was was denied, effectively allowing the Respondent, an unauthorized distributor/repair service, to use the domain name, which contains the ELECTROLUX trademark.

The complainant is a producer of appliances and equipment for kitchen and cleaning. It alleges that the respondent is trying to “sponge off” the trademark by using the domain name for a website offering repair services for Electrolux products, thereby misleading Internet users and tarnishing the Electrolux brand.

What is most interesting, is that the Panelist decided this case based on the third element of the UDRP (bad faith) rather than the second element (legitimate interest) as is most commonly used in unauthorized distributor/repair service cases.  Despite conceding that there is considerable doubt as to whether the respondent has a right or legitimate interest in the domain name, the Panelist said he does not find it necessary to probe this issue further given that he did not find the domain name was registered or is being used in bad faith.

The Panelist correctly referenced the decision in OKI Data Americas, Inc. v. ASD, Inc WIPO Case D2001-0903, which is often used as a standard for determining whether unauthorized distributor or repair services are bona fide or not.  In applying the Oki Data test, the panel states that it appears that the respondent is an independent repairer of domestic electrical appliances, it does not mention competing products on its site, and has made it reasonably clear on its website that it is independent of the complainant. Further, the panel found no evidence that the respondent is taking business from the complainant.

The Panelist then went on to consider the bad faith element of the UDRP and, citing some of the same factors as those used in the Oki Data test, found that using the ELECTROLUX trademark merely to identify the type of products it repairs and services (“nominative fair use”) the Respondent showed no bad faith when it registered the accused domain.  Although it didn’t specifically reference the bad faith factors listed in par. 4(b) of the UDRP, the Panelist seems to have decided the matter based on its statement that “there appears to be no detriment suffered by the Complainant.

So, although the decision in this case is unusual in that the focus was not on the issue of rights or legitimate interest, as highlighted in the Oki Data case,  but rather was on the lack of Respondent’s bad faith one could argue that the same result was achieved even if the Panelist had followed the more traditional path.