No transfer of 'urbani.com' after relationship sours

In Urbani Tartufi sncv v Urbani USA, World Intellectual Property Organization panellist Clive Trotman has refused to transfer the domain name 'urbani.com' to the Italian owner of the URBANI mark after its relationship with a US distributor soured. Trotman found that the respondent had registered the domain name with the approval of the complainant when the two companies were on good terms.

The complainant has been harvesting and selling truffles in Italy for more than a century. In 1989 it entered into a distribution agreement with a company affiliated with the respondent, and from 1989 until 2002 the respondent promoted the complainant's URBANI marked product in the United States and Canada. As part of the distribution arrangement, the respondent was entitled to use the URBANI mark and register the disputed domain name in its own name. When the distribution agreement was terminated in 2002, the respondent continued to use the domain name to redirect online users to its own website. The complainant argued that the respondent (i) was attempting to trade off of its trademark, and (ii) did not have the requisite rights or legitimate interest in the disputed domain name once the distribution agreement was terminated.

While acknowledging the complainant's trademark rights, Trotman did not agree with the assertion that the respondent had no legitimate interest in the domain name. Referring to Paragraph 4(c)(i) of the Uniform Domain Name Dispute Resolution Policy (UDRP), he noted that, before any notice of the dispute, the respondent used the domain name in connection with a bona fide offering of goods. From the time of registration of the domain name to the time of termination of the relationship, the respondent's legitimate interest in the domain name derived from its business relationship with the complainant.

In addition, Trotman was unable to conclude that the respondent had registered and used the domain name in bad faith within the meaning of the UDRP. He emphasized that the registration had been made with the consent of the complainant, and therefore the requirement of registration in bad faith could not be satisfied regardless of whether the current use of the domain name might qualify as bad-faith use. Thus, Trotman declined to order a transfer of the domain name.

In the future, trademark licensors entering into distribution arrangements would be well advised to ensure that all domain names used by the distributor are registered by and in the name of the trademark owner. This may pose some challenges when dealing with country-code domain names where a residency requirement is imposed on registrants. Nonetheless, in the case of generic top-level domain names, the retention of ownership and control should simply be good business practice.

R Scott MacKendrick, Ogilvy Renault, Toronto