Decisions: The “Fine” Print
February 19, 2013
By slevy
The term “fine tubes” generally refers to a variety of metal precision tubes used in construction and manufacturing. Fine Tubes Ltd. is a UK-based manufacturer of these tubes that ships its products around the world. Fine Tubes Ltd. is also the Complainant in a UDRP complaint with the World Intellectual Property Organization (WIPO) for the domain name fine-tubes.com against Ethen Rohre, a German company that makes the same type of tubes.
Follow all of that? The crux of the issue is Fine Tubes Ltd. claiming rights to a term that is both its company name and a generic term used to describe the type of tubes that both companies manufacture. Fine Tubes already owns FineTubes.com, which redirects to its homepage, FineTubes.co.uk, so this seems like a case of attempting to stop a competitor from using a domain name that could be potentially confusing.
The major issue in the complaint is that Fine Tubes Ltd.’s attempt to trademark the term FINE TUBES was rejected by the Office of Harmonization for the Internal Market (OHIM), which registers the Community Trade Mark in the European Union. The Complainant failed to disclose this rejection, which essentially consisted of OHIM saying that the term was too generic to claim rights to, and the Respondent made note of it in its submission.
WIPO explained that it could not refute OHIM and say that Fine Tubes Ltd. has rights to such a generic term, thus the domain name, so it rejected the complaint and ordered the domain name to remain with the Respondent. This case should be a lesson to all brand owners not to rely on UDRP arbitration to decide differently from previous trademark rulings, because the body will most likely agree with precedent.
