London-based department store Harrods sued sixty domain names.
Under the US Anticybersquatting Consumer Protection Act of 1999,
trade mark owners are allowed to sue domain names, as opposed to
suing the registered owners of the names.
The registered owner of the names was Harrods (Buenos Aires)
Ltd., which opened a department store in Argentina in 1914. At the
time, it was an affiliate of the more famous English company. The
businesses severed all connections in 1963, although the
Argentinian company still holds valid South American trade mark
registrations.
The UK company owns US-registered trade marks in the Harrods
brand. It accused Harrods BA of infringing and diluting these marks
by its domain registrations which, it argued, were made in bad
faith.
The collection of 60 domain names, registered with
Virginia-based Network Solutions (now VeriSign), included
variations on the brand, such as harrodsshopping.com and
harrodsbank.org. The court overruled a lower court’s finding that
the 1999 law did not allow the UK company to bring trade mark
infringement and dilution claims.
According to The National Law Journal, the 1999 legislation’s
provisions on taking action against a domain name, rather than its
owner, only applied in cases of bad faith registration. The new
decision, passed 23rd August 2002, appears to extend these
provisions to trade mark infringement and dilution claims.
The ruling could be of concern to any business that does not
have a US-registered trade mark for its brand but that uses the
brand in a .com, .net or .org domain name. If a US business has an
identical or confusingly similar mark, it could sue the non-US
business in a Virginia court, arguing that there is infringement of
its US mark, even if the use of the mark outside the US was in good
faith.
The decision backs the long-held perception that US courts
consider .com, .net and .org domain names to be for use by US
businesses only.
According to the decision: “...Virginia’s interest in not
permitting foreign companies to use rights emanating from, and
facilities located in, its territory, to infringe US trade marks,
also supports the exercise of [an action against the domain
names]”.
