Motor oil company slips up in domain name dispute

International

In SLI Société des Lubrifiants IPONE v CLIX International LLC, a World Intellectual Property Organization (WIPO) panellist has refused to order the transfer of the domain names 'iponeusa.com', 'ipone.com' and 'iponeusa.net' to the complainant - the owner of an IPONE mark. The panellist held that the existence of a distribution agreement between the parties suggested that the domain names had been registered in good faith.

SLI Société des Lubrifiants IPONE, a French company that manufactures motor oils and lubricants, entered into a distribution agreement with CLIX International LLC on May 3 2001 for the distribution of SLI's products in the United States. CLIX registered the disputed domain names on December 18 2000, November 8 2001 and September 9 2003 respectively. Following a dispute, SLI sent a termination letter to CLIX on September 17 2003 and it then filed a complaint with WIPO requesting the transfer of the disputed domain names under the Uniform Domain Name Dispute Resolution Policy (UDRP). In response, CLIX sent SLI a demand for arbitration under a clause in the agreement and issued a motion to dismiss the UDRP proceeding on the grounds that this clause required the parties to enter into binding arbitration of any controversy arising under the agreement.

WIPO panellist Tony Willoughby noted that the arbitration clause did not preclude the application of the UDRP and he applied Paragraph 4(a) of the UDRP to the complaint. He held that the disputed domain names were identical or confusingly similar to SLI's IPONE mark but he did not determine whether CLIX had a legitimate interest in the domain names, instead he focused on the issues regarding registration and use in bad faith.

He stated that, pursuant to the UDRP, only CLIX's intentions at the time of registration were relevant and any subsequent actions did not render a good faith registration abusive. Willoughby found it likely that the first registration was made in anticipation of the distribution agreement and that insufficient evidence of bad faith had been offered by SLI to satisfy its burden of proof. The fact that the second domain name had been registered during the early days of the agreement led to the same conclusion.

As to the third registration, shortly before termination of the agreement and after tensions had surfaced, the timing was said to be "arguably indicative of an abusive intent" but Willoughby declined to engage in speculation in this respect. He concluded that SLI had failed to prove that any of the domain names were registered in bad faith but volunteered the opinion that this decision cannot "fetter the arbitration in any way".

Thomas M Small, Birch Stewart Kolasch & Birch LLP, Los Angeles

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