2020-10-01:
BRANN has represented PIAB AB at World Intellectual Property Organization (WIPO) Arbitration and Mediation Center in a dispute regarding the domain name piab-france.com, WIPO Case No. D2020-0534 within the frame of the alternative dispute proceeding Uniform Domain Name Dispute Resolution Policy (UDRP). The dispute refers to the question whether a retailer may register a domain name including a trademark of a product it is selling. PIAB AB prevailed showing that in this case the retailer did not have the right to do so.
Background
PIAB AB is a world leading company within vacuum technology and PIAB is its house-mark since decades back.
The dispute refers to the domain name piab-france.com which is registered by a French company BLET. BLET is since the 1960ies a retailer of PIAB measuring instruments. PIAB does not manufacture these any longer but has sold that business unit, with a license for the company Gigasense to use the trademark PIAB for measuring instruments. PIAB owns the trademark PIAB which is registered for measuring instruments, vacuum pumps, and vacuum equipment in larger parts of the world. PIAB also owns a portfolio of domain names with piab as well as several subsidiaries, among those Piab SAS in France. PIAB does not have any business relation with BLET and has not given them permission to register the domain name piab-france.com (the Domain name).
After having tried to have BLET deregister the Domain name voluntarily, PIAB filed on March 4, 2020 an UDRP application. As the Domain name was registered via a French registrar, and the language governing this agreement was French, the application was in French.
The UDRP application
In the application PIAB AB requested that the Domain name shall be transferred to PIAB.
According to the UDRP criteria PIAB claimed:
a) The Domain name is confusingly similar to a trademark in which PIAB AB has rights;
As mentioned PIAB owns a portfolio of trademark registrations for PIAB, among those an EUTM and national registrations in France. The Domain name is introduced by the identical piab and the addition of France is only a generic, geographical indication which does not contribute to distinguish the Domain name from PIAB’s trademark rights.
b) BLET does not have any rights or legitimate interests in respect of the Domain name;
BLET does not have any trademark rights to PIAB. They use the Domain name to redirect traffic to their web site https://www.blet-mesure.fr/ where among others measuring instruments under PIAB are marketed and sold.
c) The Domain name was registered and is being used in bad faith;
As BLET has sold PIAB measuring instruments in France since a long time back they must be aware that PIAB is a registered trademark. They use the Domain name to redirect traffic to its web site where measuring instruments from several other manufacturers and trademarks are sold.
The respondent’s response
BLET denied that the Domain name was registered in bad faith and shall be transferred to PIAB AB. They argued mainly that they had registered the Domain name only to link to its web site, that they have sold PIAB measuring instruments since many years back, that the Domain name is only to protect its market and they have not tried to sell or to get any renumeration for the Domain name. They also argue that the Domain name is not confusingly similar with the trademark PIAB as PIAB AB is not themselves selling measuring instruments.
The decision
The case was decided by a sole panelist, an attorney-at-law from Switzerland. This decided in favour of PIAB and ordered that the Domain name shall be transferred from BLET to PIAB AB.
a) The Domain name is confusingly similar to a trademark in which PIAB AB has rights;
The panelist finds that PIAB has rights to the trademark PIAB for among others measuring instruments and that the Domain name is confusingly similar. The addition of the geographical term in the Domain name is not sufficient to remove a risk of confusion between a Domain name and a trademark if the trademark is prominently in the domain name.
b) BLET does not have any rights or legitimate interests in respect of the Domain name;
BLET uses the Domain name to redirect traffic to its web site where among others PIAB measuring instruments are marketed and sold. Under certain conditions it may be permitted for a retailer to register and own a domain name that includes the applicant’s trademark if there is a legitimate interest and particular requirements may be fulfilled. These requirements are set in an earlier UDRP process, Oki Data Americas Inc. vs. ASD, Inc., WIPO Case No. D2001-0903, in the so-called “Oki Data test”. These requirements are:
1) Respondent must actually be offering the goods or services at issue
2) Respondent must use the site to sell only the trademarked goods
3) The site must accurately disclose the respondent’s relationship with the trademark owner
4) The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
The panelist finds that BLET only fulfilled the first requirement, i.e. that they sell PIAB measuring instruments. However, they also sell other manufacturer’s measuring instruments and they do not accurately disclose its relation to PIAB or its licensee Gigasense. As regards the last requirement, the panelist finds that the fact that they have registered the trademark PIAB with the geographical name “France” is a way of hindering the business activity of PIAB AB in France, in particular for its French subsidiary Piab SAS.
c) The Domain name was registered and is being used in bad faith;
BLET has known of PIAB and its trademark and has not had any authorisation to register the Domain name. This has been used to redirect traffic to its web site where measuring instruments from other manufacturers are offered. There is this a risk that consumers choose to buy products from other manufacturers than PIAB.
Summary and conclusions
The alternative dispute proceedings available for domain names gives the trademark owners a quick and cost- efficient way to get control over non-authorised use of its trademarks in domain names. This application was filed in March and the decision was issued on August 4. Usually the proceedings are much quicker but due to the total lock-down in France during late spring BLET was allowed extension to respond.
Trademark owners should control in agreements with its retailers about their use of the trademark at issue and that it is not allowed to register trademarks, trade names or domain names including the trademark. This is especially the case if you have an exclusive retailer that could pass the “Oki Data test”.
PIAB was represented by Astrid Johnsson and Hanna Thorngren, attorney-at-law, in this matter.
