Beyond fair use

Originally posted 2008-11-24 01:12:29. Republished by Blog Post Promoter

We’re a little obsessed here with the rights of “unauthorized” resellers to use the trademarks that describe the stuff they’re reselling.  So this UK domain name decision strikes us as extra-interesting (a link added):

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. . . .

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. . . . 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.” . . .

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.”

Well, of course.

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Author:Ron Coleman

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2 Responses to “Beyond fair use”

  1. November 24, 2008 at 5:09 pm #

    I’m not sure how far you should be able to take “nominative use” arguments when it comes to including a brand name in the domain name (as opposed to using it in the text of your descriptions of what you’re selling). The domain name carries an implication that it identifies the entity that’s running the site you’re accessing. In some contexts, like where the name as a whole is clearly designating a commentary or criticism site, or is based on a generic meaning of a word that’s trademarked in another context, there’s a clear argument for the domain owner, but it’s less clear when somebody is using a trademarked name in their domain where they’re reselling those products; people might be misled into thinking it’s an official site of the manufacturer. Trademark law centers around deceptive indications of origin; usually involving the origin of the products being sold, but in the case of the domain name, the origin of the site being accessed may be more relevant.

  2. December 5, 2008 at 5:57 pm #

    It was not easy taking on a Giant of a Company such as ITT. They have alot of paper. However, we have always felt we were serving a necessary market in our industry. I am glad to have possibly given hope to other small companies legitimately doing business to protect their rights to properly use trademarks in E Commerce. I thank my Attorney Kristan Burch, for Her hard work and the WIPO Panelists for for making this decision. To us, it was the only outcome possible, but you never know. In addition, the summary available online is just that, a summary. The Panel had at their disposal, the entire case to evaluate. ITT had over a year to prepare a case the size of a phone book, and we had 20 days to respond to it. So we must have had some pretty convincing arguments to present. Furthermore, the internet is ever increasing and evolving. WIPO made the right decision in this case. Not all will agree, but thats OK too.

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