Family ties bind 'snr.com' domain name

In SNR Roulements v SNR Semiconductor Inc, World Intellectual Property Organization panellist James Bridgeman has refused to order the transfer of the domain name 'snr.com' to the complainant.

SNR Roulements produces bearings and is a subsidiary of French automobile manufacturer Renault SA. It owns registrations around the world for the trademark SNR. In the United States, its SNR mark is registered for use in association with goods in Class 7 of the Nice Classification.

SNR Semiconductor Inc (SSI) is a US engineering company that also owns a US trademark registration for SNR for use in association with engineering services related to the architecture and design of semiconductors. It registered the domain name 'snr.com' in 1994. From 1994 to 2000, SSI used the website associated with the domain name to offer goods and services to the semiconductor industry. In 2000, SSI merged with a third party and ceased to exist. Thereafter, the website hosted under the domain name was used as a family website by the principals of SSI. Although SSI's assets were purportedly transferred to the third party, neither the US trademark register, nor the records of the domain name registrar, were amended to reflect this change.

In February 2004, SNR Roulements began a proceeding under the Uniform Domain Name Dispute Resolution Policy alleging, among other things, that maintaining a family website under a domain name that has no credible connection with the name of the family in question and which is registered in the name of a non-existent company did not represent a legal interest prevailing over that of SNR Roulements.

Bridgeman found that, by virtue of its ownership and use of the SNR trademark for bona fide commercial purposes, SSI registered the domain name in good faith. Although the disputed domain name was no longer used for a commercial purpose, it was being used for a legitimate family purpose. SSI's present use of the domain name did not infringe SNR Roulements' trademark rights, even though the domain name bore no relation to the name of the family. Accordingly, the complaint was dismissed.

Antonio Turco, Blake Cassels & Graydon LLP, Toronto