Most UDRP cases turn on one major issue – maybe the domain was registered before the complainant acquired trademark rights or the website for the domain is an example of fair-use, such as a fan page. Perhaps the domain just isn’t confusingly similar to the complainant’s brand.
Here, there were at least three major issues for the Panelist to contend with and decide on.
Since at least 1988, the joint Complainants have owned the trademark ZIPP for bicycle components, including wheels. The Respondent, a former distributor for the complainant, registered the domain zippwheels.com in 2001 and initially redirected it to the Complainant’s own website. More recently, however, the domain has redirected to a website controlled by the Respondent on which at least one legitimate ZIPP product is sold amongst others shown on the site.
Finding that the domain is confusingly similar to the ZIPP trademark (not a stretch by any means), the Panelist went on to consider whether the Respondent was making a bona fide use of the domain for a legitimate business purpose. Addressing the first major issue of the case, he cited one of my personal favorite UDRP cases, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 which says that even unauthorized dealers and distributors may use a trademark in their domain if they meet certain criteria, two of which being that they use their website to sell only the trademarked goods and that they clearly disclose their relationship (or lack thereof) with the trademark owner.
Here, although one legitimate ZIPP product was sold on the Respondent’s current website, other products of a competing manufacturer were also shown. Further, there was no mention of the Respondent’s former or current lack of a relationship with the Complainants. So the Panel decided that the Oki Data case was of no help to the Respondent.
Second, the long delay in bringing this action (13 years) was examined and the Panelist noted that delay (often called “laches”) is typically not a defense to UDRP complaints but may be considered under some circumstances.
And this ties into the third major issue of the case: Whether the Respondent both registered and used the domain in bad faith. The Panel went into a discussion of the two views of this UDRP language with the majority considering the requirement conjunctive (the clear meaning of the word “and”) and a minority view that use and registration are actually a unified concept and so bad faith in either one of them may support a decision to transfer a domain.
Noting that Respondent was, in fact, an authorized distributor of the Complainant’s products back in 2001 and that archival screenshots of Respondent’s website show that the domain was used only to promote the Complainant’s products, the Panel found that whatever the current use, the domain was not registered in bad faith 13 years ago and the first notice the Respondent received of the Complainant’s concern was when it received a demand letter in January of 2014.
So, in the end, does this former distributor get to keep his domain and continue using it to sell both ZIPP and other products? Since the UDRP is a limited-use tool intended only to address cases of cybersquatting and not contractual or more subtle infringement disputes, the answer to this question will depend on whether the Complainants pursue the matter in a courtroom – the proper venue for such disputes.
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