UDRP does not apply to disputes involving trade names

International

In Enmersan Granit Mermer ve Insaat Taahhut Sanayi ve Ticaret AS v Sahin, a World Intellectual Property Organization (WIPO) panel has ruled that the Uniform Domain Name Dispute Resolution Policy (UDRP) does not apply to disputes involving domain names that allegedly infringe trade names or company names.

Enmersan Granit Mermer ve Insaat Taahhut Sanayi ve Ticaret AS is a Turkish company that trades in marble under the trade names Enmersan and Enmersan Granit. It filed a complaint with WIPO against an individual named Ibrahim Sahin following his registration of the domain name 'enmersan.com'. After registration, Sahin sent a message to Enmersan threatening to display the following message on the website at 'enmersan.com' if it did not agree to send him money: "We have suspended our activities due to the severe economic crisis we have experienced". Enmersan refused and Sahin carried out his threat. Enmersan asked WIPO to transfer the domain name pursuant to the UDRP.

A WIPO panel denied the complaint, finding that the UDRP does not apply to domain names that allegedly infringe trade names or company names. The panel noted that the Internet Corporation for Assigned Names and Numbers (ICANN) based the UDRP largely on the Report on the First WIPO Internet Domain Name Process of 1999, which indicated that "it was premature to extend the notion of abusive registration beyond the violation of trademarks and service marks…" The Second WIPO Internet Domain Name Process of 2001 recommended no action in the area of trade names and ICANN has made no changes to the UDRP in this respect.

The panel then looked to the explicit wording of Paragraph 4(a) of the UDRP and Paragraphs 3(viii) and 3(ix) of the UDRP Rules, which require a complainant to have rights in a trademark to which the domain name is identical or confusingly similar. The panel concluded that in light of the UDRP's history, there was no room for extending 'trademarks' in Paragraph 4(a) of the UDRP and Paragraphs 3(viii) and 3(ix) of the rules to include trade names. Because Enmersan had made no claim of use of an ENMERSAN mark the complaint was denied.

The panel noted that if the UDRP had incorporated trade name infringement as a cause of action, the registration and use of the disputed domain name by Sahin would probably have resulted in the panel directing the transfer of 'enmersan.com' as:

  • Enmersan had rights in the trade name;

  • Sahin had no legitimate right to the name; and

  • he had registered the domain name in bad faith.

William D Jackson, Brinks Hofer Gilson & Lione, Chicago

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