Claim Denied in

An NAF Panel recently refused to transfer the domain name on the basis that Complainant failed to meet all three UDRP requirements. The Panel described in detail the Complainant’s deficiencies in all three areas (many panels will simply not address/explain their reasoning if they find that one requirement has not been met).

The Complainant, ALTEC, manufactures and sells “bucket” trucks (just like it sounds, its a big truck with a bucket attached to the end) and the Respondent is in the business of selling ALTEC trucks.  The Respondent argued that it was using the domain to build a website where users could sell or rent ALTEC brand trucks and that the purpose of the website was for Internet users to find and purchase genuine ALTEC bucket trucks, many of which Respondent purchased directly from the Complainant.

The panel found that the Respondent did not intend to register the domain in order to disrupt ALTEC’s business, nor did it do so to create confusion with the Complainant.  Further, although it had taken the Respondent almost two years to develop and launch its website, the panel found that this prep work was legitimate and done in connection with a bona fide offering of goods/services, even though at one point the website was mistakenly launched and included links to some of ALTEC’s competitors’ trucks.

For a bit of perspective we took a look back at other UDRP decisions, like in Haas Automation, Inc. v. Machineworks Inc (NAF Case No. 1305251) where the domain dispute concerned a re-sellers use of a trademark. In that case the Complainant won transfer of domain after the Panel found that the Respondent was using it to market Complainant’s used and pre-owned power tools in competition with the Complainant, and that users could have become confused.  Other panels have also held that using a trademark holder’s name to sell their own used goods is not permissible under the UDRP, however this is not the majority view.  In fact, the majority of panels have found that the sale of legitimate goods/services on a site that an Internet user would not believe is affiliated with the trademark holder will not support transfer of a domain name.  This issue was discussed at length in LEGO Juris A/S v. Stichting RIBW ZWWF (WIPO Case No. DNL2011-0042) where the panel opined that:

“[a]ccording to the majority view, a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use meets certain requirements, also known as the Oki Data criteria (see in this respect Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.”

Here, in the ALTEC case, the panel took a similar view that cuts against an “absolute” view of trademark rights and allows for cases where a domain name can include a trademark, such as in the case of legitimate re-sales of goods/services.  It is also important to remember that Respondent had proof that it had not profited from the prematurely launched website, and perhaps the relationship between the Respondent and Complainant (they were buying ALTEC trucks directly from Complainant) also turned the tide in Respondent’s favor...