Possible implied authorization precludes bad-faith finding


In Jerome Stevens Pharmaceuticals Inc v Watson Pharmaceuticals, World Intellectual Property Organization (WIPO) panellist Lawrence K Nodine has refused to transfer the domain name 'unithroid.com' to the complainant. Nodine held that Watson Pharmaceuticals' registration of the name without express authorization could not be considered bad faith per se as authorization may have been implied in view of the parties' previous business relationship.

Jerome Stevens Pharmaceuticals Inc owns a US registration for the mark UNITHROID for certain products in Class 5 of the Nice Classification. In October 2000 Jerome Stevens and Watson entered into an agreement under which Jerome Stevens granted Watson the exclusive worldwide right to market UNITHROID-marked products during the seven-year term of the agreement. In November 2000 Watson registered the domain name 'unithroid.com' to host a website selling UNITHROID products. It continued to market the products on the 'unithroid.com' website and its corporate website after the agreement was terminated on December 31 2002. In November 2003 Jerome Stevens requested that Watson stop marketing UNITHROID products.

Watson advised that it had (i) discontinued the 'unithroid.com' website, and (ii) stopped marketing UNITHROID products from its corporate website. However, it pointed out that it had a right to use the mark in connection with its remaining stock. Jerome Stevens filed a complaint with WIPO in the hope of securing the transfer of 'unithroid.com'.

Nodine denied the complaint. He accepted that the disputed domain name is identical to the mark UNITHROID. However, he found that the issue was whether the agreement authorized Watson to register the domain name in the first place. He held that a licensee, dealer, agent or distributor of products of a trademark owner does not per se have a right to a domain name that includes that trademark. However, here there was no evidence that Jerome Stevens contested the registration or use of the domain name until after the agreement had terminated. This seemed to indicate that authorization to register the domain name may have been implied - which precluded a finding of bad-faith registration.

Accordingly, Nodine refused to transfer the domain name 'unithroid.com' to Jerome Stevens, even though he found that Watson did not have current rights to it.

Patricia McGovern, LK Shields Solicitors, Dublin

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