Pressure gauge maker ITT failed in its claim for the domain name
ITTbarton.com and 12 other domain names owned by a seller of ITT
pressure gauges, Douglas Nicoll, and his company Differential
Pressure Instruments.
ITT argued trade mark infringement before an arbitration panel
of the World Intellectual Property Organisation (WIPO). The US
company holds over 700 registered marks incorporating the ITT mark,
in more than 100 countries.
Nicoll, based in Norfolk, Virginia, sells products that were
made by ITT and purchased by the US Government but never used. The
Government sold off its surplus stock to Nicoll and others who
bought them for resale.
ITT argued that Nicoll had no rights or legitimate interests in
the domain names. The three-member WIPO panel applied a test laid
down in a 2001 case. In that case, a computer accessories
maker, Oki Data Americas, took action over another company's use of
the domain name Okidataparts.com. The panel in the ITT case
wrote:
"The Panel in Oki Data concluded that the use of a
manufacturer’s trademark as a domain name by a dealer or reseller
(an authorized dealer in that case) should be regarded as a 'bona
fide offering of goods or services' […] if the following conditions
are satisfied:
- the respondent must actually be offering the goods or services
at issue;
- the respondent must use the site to sell only the trademarked
goods (otherwise, there is the possibility that the respondent is
using the trademark in a domain name to bait consumers and then
switch them to other goods);
- the site itself must accurately disclose the respondent’s
relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all
relevant domain names, thus depriving the trademark owner of
reflecting its own mark in a domain name."
ITT argued that the Oki Data test should be limited to
authorised resellers only. The WIPO panel disagreed.
"The Complainants argue that the Oki Data rationale should not
apply to an unauthorized reseller," said the ruling. "The Panel
concludes, however, that the issues of legitimate reseller
interests in accurately describing a lawful business, on the one
hand, and of potential abuses of trademark, on the other, are
similar whether or not there is a contractual relationship between
the parties."
It concluded that "the Oki Data criteria are appropriate here to
assess the rights or legitimate interests of the unauthorized
reseller for purposes of this element of the Policy."
The panel said that Nicoll had "a legitimate interest in making
nominative use of the ITT mark consistent with the Oki Data
requirements; consequently this does not reflect bad faith."
ITT's complaint was dismissed.
