Mark owner's rights found insufficient to invoke Paris Convention protection

International

In Office Holdings Ltd v Hocu To doo (Case D2009-1277, November 26 2009), a World Intellectual Property Organization panel has concluded that a proprietor of trademarks had a legitimate interest in a corresponding domain name, even where the marks had been chosen in order to mimic an earlier mark in another jurisdiction.

Office Holdings Ltd has operated retail shops under the name Office London since 1981 and operates an online business via the website 'office.co.uk'. It is also the proprietor of three Community trademarks in respect of the terms 'Office' and 'Office London' for clothing, footwear and retail services.

Office Shoes doo, a Serbian company, registered the name Office Shoes as a company name in Serbia in 1999 and operates retail shops under that name. It benefits from international trademark protection in several European countries in respect of OFFICE SHOES, although it had been the subject of successful oppositions by Office London in others. It registered the domain name 'officeshoesonline.com' through its administrative contact Hocu To doo. The website provided locations and contact details for Office Shoes' locations throughout central and Eastern Europe, where it operated over 100 shops.

Office London contended that the domain name 'officeshoesonline.com' was confusingly similar to its trademarks, based on the dominant word 'office' and the generic terms 'shoes' and 'online'. It argued that Office Shoes had no legitimate interest in the name because the sole purpose of the website was to reference Office Shoes' shops (rather than sell shoes online), and this did not itself constitute a good-faith sale of goods or services. Office London further alleged that Office Shoes used the domain name in bad faith because it had:

  • actual knowledge of Office London's trademarks as a result of Office London's oppositions; and
  • constructive knowledge based on Office London's reputation throughout Europe.

Office Shoes defended its position, stating that:

  • the OFFICE mark was too generic to be confused with Office Shoes' domain name; and
  • it was the lawful owner of OFFICE SHOES marks in jurisdictions in which Office London did not have earlier rights.

It argued that there was no bad faith because there was no likelihood of confusion, based on its argument that Office London's mark was not distinctive.

As the domain name included Office London's mark in its entirety, this alone was sufficient for the panel to find confusing similarity. The argument that the OFFICE mark was generic was considered frivolous and without merit. Following Orbital Sciences Corporation v Finseth International (Case D2007-1482), the addition of dictionary terms describing aspects of a business - in this case, 'shoes' denoting the goods and 'online' denoting a method of sale - would not detract from the dominant portion of the domain name, nor would it vitiate the confusing similarity between the domain name and a complainant's mark.

However, the panel found that Office Shoes had given evidence of its own registrations for OFFICE SHOES in a number of countries and its use in connection with over 100 retail locations. While the panel acknowledged Office London's argument that the use by Office Shoes of the mark OFFICE SHOES was a blatant effort to mimic Office London's mark, it was clear from BECA Inc v CanAm Health Source Inc (Case D2004-0298) that:

  • trademark rights are territorial in nature; and
  • national trademark laws may permit the registration of a mark in that jurisdiction even where it is clear that the party has deliberately chosen the mark to mimic its use by a third-party in another jurisdiction.

Office London had not taken steps to secure trademark rights in certain countries and its trademark rights were not considered to be sufficient to benefit from the wider protection afforded to well-known marks under Article 6bis of the Paris Convention for the Protection of Industrial Property.

Having concluded that Office London had failed to establish that Office Shoes lacked rights or legitimate interest in the domain name, it was not necessary to consider bad faith.

It seems that Office London has found itself in an unfortunate position. It is large enough to be copied, yet insufficiently well known to benefit from the wider protection of the Paris Convention. The decision highlights once again the dissonance between the territorial nature of a trademark and the international nature of a domain name.

Leigh Smith, McDermott Will & Emery UK LLP, London

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