One Domain Lost, The Other Transferred in Translation

This week’s World Intellectual Property Organization decision involves the domain names pronature.ch and 1stchoice.ch.  Even though the Complainant and Respondent had an underlying agreement regarding the use of the domain names, only one of the two was transferred to the Complainant.

The documents submitted by the Complainant, PLB International Inc., included a distribution agreement between the Complainant and Respondent, Bürobedarf Lack AG / Pet Partner GmbH, Peter Wyser, which included language regarding the use of domain names. Specifically, “The Claimant granted the Respondent, as distributor for the Claimant’s products in Switzerland, the right to register the disputed domain names, in the name and on behalf of the Claimant, for the purpose of promoting, distributing and commercializing the products identified with the Claimant’s trademarks. The Respondent expressly recognized in the distribution contract that the Claimant remains the sole owner of the disputed domain names.”

Some of the documents had to be translated from German to English, and others from French to English, based on the assumption that the Respondent understands English. The Respondent appears to be based in Switzerland and did not respond to the Complaint. While the Panelist ordered that pronature.ch be transferred to the Complainant, based upon the Complainant’s trademark for Pronature in Switzerland, the Complainant failed to win the second domain name back because the trademark “1stChoice” was not registered in Switzerland. According to the panelist, “While the Claimant has proven trademark protection in Switzerland for the mark PRONATURE, this does not appear to be the case for the trademark 1ST CHOICE (section 4 above). Switzerland is not a member of the European Community and does not appear in the list of the countries in which the Claimant has trademark rights.”

Of note to parties entering into a distribution agreement involving domain name use is the Panelist’s remark that “In accordance with other expert decisions, mere contractual rights (as those asserted here under the distribution agreement) are not sufficient to this Panel to satisfy the requirements of paragraph 24(c) of the Rules of Procedure ( WIPO Case No. DCH2007-0002, Travel Professionals Association, en abrégé TPA vs. Denis Lambelet).”

In other words, when it comes to domain names, trademarks are the safest way to secure your company’s name – don’t rely on a distribution agreement alone.