OLYMP mark owner loses race for 'olymp.com'
In Olymp Bezner GmbH & Co KG v Olympus Access Service, a three-member World Intellectual Property Organization (WIPO) panel has refused to transfer the domain name 'olymp.com' to the owner of the OLYMP trademark. The panel found, among other things, that non-use does not in itself preclude the registrant from having rights or legitimate interests in the domain name.
Olympus Access Service, which is part of the Olympus Managed Health Care Inc group operating in the United States, South America and the Caribbean, registered 'olymp.com' in 1996 but has never made use of it. Olymp Bezner GmbH, a German clothing partnership that holds 18 registrations for the mark OLYMP in a number of countries, brought a complaint to WIPO against Olympus's domain name registration, claiming that:
- the domain name is confusingly similar to its OLYMP marks;
- Olympus registered the domain name in bad faith as it must have had "constructive notice" of Olymp Bezner's rights in the OLYMP trademarks, which Olymp Bezner claimed are famous worldwide; and
- Olympus had not made a bona fide use of the domain name since it was registered.
The panel denied the complaint even though it found 'olymp.com' identical to Olymp Bezner's trademarks. The panel considered that the concept of constructive notice had been applied in very limited, controversial circumstances (eg, Red Nacional de los Ferrocarriles Espanoles v Ox90). In the case at hand, Olymp Bezner's evidence did not fall within the scope of those particular decisions.
Further, it accepted Olymp Bezner's argument that inactivity may suggest bad faith. However, it found that this finding must be supported by further evidence. Here, it held that several years of inactivity since the domain name was registered did not prevent Olympus from having a legitimate interest in the name Olymp as an abbreviation of its own name.
Accordingly, it refused to order the transfer of 'olymp.com'.
James Hennigan, Hammonds, London
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