WIPO orders transfer of domain names including energy company's name

International
In Areva v Industrial Tests Inc (Case D2009-1686, February 22 2010), a World Intellectual Property Organization (WIPO) panel has ordered that 17 domain names including the term 'areva' be transferred to Areva, one of the world's best-known energy providers.
 
Areva discovered that Industrial Tests Inc, a US company specialized in electrical testing, inspection and maintenance, as well as the provision of aftermarket services and the sale of replacement parts for electrical equipment and systems, had registered 17 domain names incorporating the term 'areva', such as 'arevaelectrical.com' and 'arevasonline.com'.
 
Being the owner of several AREVA marks and the registrant of domain names such as 'areva.org' and 'arevapower.com', Areva believed that these registrations infringed its IP rights and decided to launch a pre-emptive strike against Industrial Tests.
 
Areva thus filed a complaint before WIPO in order to obtain the transfer of the domain names under the Uniform Domain Name Dispute Resolution Policy (UDRP).
 
In order to be successful in a UDRP procedure, a complainant needs to establish that:
  • the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
  • the respondent has no rights or legitimate interests in respect of the domain name; and
  • the domain name has been registered and is being  used in bad faith.
Industrial Tests almost immediately agreed to surrender 15 of the domain names, but expressed its intention to keep the domain names 'arevaservice.com' and 'arevaservices.com'.
 
The three-member WIPO panel first considered the issue of Industrial Tests' consent to transfer 15 of the domain names. The panel noted that previous UDRP decisions relating to 'unilateral consent to transfer' have handled the issue in a variety of ways. In some cases, the only point taken into consideration was the respondent's expressed consent to transfer the domain name. This prompted panellists to consider that they did not have to apply the UDRP in such cases, as the transfer of the domain name was sufficient relief for the complainant and no further action was required on the part of the panel.
 
In a similar vein, other panellists found that, by consenting to the transfer of the domain name, the respondent had admitted that the three requirements of the UDRP had indeed been established. On this basis, they ordered the transfer of the domain name. A third and final approach is to consider that, regardless of the respondent's consent to the transfer, panellists still have to apply the UDRP rules.
 
In the present case, all of the panellists followed the first approach and considered that the registrant's consent to the transfer of the domain names was "sufficient by itself to grant relief and that no examination into the three elements of the [UDRP was] required".
 
However, such an examination was still required for the two remaining domain names. Addressing the first limb of the UDRP, the majority of the panel took the view that Industrial Tests had not attempted to demonstrate that the domain names were not confusingly similar to the AREVA mark, which they fully incorporated. Furthermore, the majority of the panel found that the addition of a generic term such as 'service' was insufficient to create a distinction between Areva's trademark rights and the domain names. On this basis, the majority of the panel found that the first limb of the UDRP was satisfied.
 
The dissenting panellist did not, as such, contest this finding, but insisted on the fact that Industrial Tests had acknowledged the confusingly similar nature of the domain names "without prejudice or admission of liability or wrongdoing".
 
Turning to the second limb of the UDRP, the panel considered the issue of Industrial Tests' rights and legitimate interest in the domain names. This was the subject of some significant scrutiny and debate, and certainly appears to be the most significant area of dissent.
 
Industrial Tests argued that it had legitimate interests in the domain names 'arevaservice.com' and 'arevaservices.com' based on the fact that it was a genuine reseller and provider of services in relation to Areva products. To support this claim, Industrial Tests relied on previous UDRP decisions which it considered to be precedents applicable to its case - namely, Oki Data Americas Inc v ASD Inc and DaimlerChrysler AG v Drummonds. In Oki Data, it was decided that authorized resellers or service agents could exploit a domain name including the trademark of their principal. In DaimlerChrysler, the panel found that a shop owner selling parts and accessories exclusively for one car manufacturer could use a domain name incorporating the trademark of that car manufacturer. Industrial Tests thus sought to expand the scope of these two decisions to its situation.
 
The panel decided to consider these arguments in the context of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. In this respect, the overview underlined that two positions could be adopted when dealing with resellers or service agents registering domain names comprising the trademark of their products.
 
The majority position acknowledges the possibility for a reseller to be making a good-faith offering of goods and services, and thus have a legitimate interest in a domain name if the use fits certain requirements. The overview defines these requirements as including:
 
"the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant's relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark".
 
The minority view, on the other hand, considers that, without the express permission of the trademark holder, the right to resell the trademark holder's products does not create a right to use the mark in a domain name.
 
In the present case, the majority of the panel decided to follow the majority view, as described in the overview. However, it still considered that Industrial Tests had failed to meet the criteria imposed on resellers to justify their registration of domain names comprising trademarks of the products or services which they provide.
 
First, the majority of the panel noted that the website associated with the domain names did not offer only Areva products or services, but also those of competitors. Clearly, Industrial Tests was not using the domain names to sell only Areva's trademarked goods. The majority of the panel also noted that Industrial Tests had not attempted to refute Areva's assertion that Industrial Tests had registered over 2,100 domain names, the majority of which included the trademarks of other companies that it was also providing services for. Quoting from Oki Data, the majority of the panel noted that:
 
"there is a clear danger that [Industrial Tests] is 'using the trademark to bait internet users and then switch them to other goods'. Such bait and switch practice is not a legitimate domain name use."
 
Second, Industrial Tests' website did not disclose the true nature of the relationship between it and Areva.
 
Finally, Industrial Tests' actions were perceived as a risk that it was trying to corner the market at the expense of Areva by registering so many forms of domain names incorporating the term 'Areva'. In summary, the majority of the panel felt that Industrial Tests could not rely on Oki Data or DaimlerChrysler, as the facts of the matter at hand were very different. On these grounds, the majority of the panel found that the second limb of the UDRP had been satisfied.
 
The dissenting panellist found to the contrary and felt that Industrial Tests had sufficiently established a legitimate interest in retaining the domain names. He first argued that the DaimlerChrysler decision should apply to the case. Just as the word 'shop' had been allowed to establish a sufficient distinction between the registrant of 'mercedesshop.com' and the holder of the MERCEDES mark, the terms 'services' or 'service' associated to the trademark AREVA in the domain names made it clear to customers and internet users that the website was related to an aftermarket service business.
 
In addition, he believed that it was not necessary to take into account Industrial Tests' status as an authorized agent or dealer for AREVA goods and services, since it was not contested that it was entitled to provide services for those goods and services.
 
Further, he noted that the terms of the WIPO overview should not be regarded as "the limit of the law governing the UDRP questions", but rather as guidance. He underlined that the elements set out in Oki Data to legitimate a domain name registration:
 
"[should not] necessarily be required to be the limits of the decision, or the limits of the criteria for the application of a finding that a reseller can be making a bona fide offering of goods and services, and thus have a legitimate interest in a domain name."
 
He went on to explain that the requirement that the domain name should point to a website which offered only goods and services corresponding to the trademark incorporated in the domain name should be disregarded in instances where, by itself, the website in question makes it clear that the registrant acts as a services company for several other well-known trademarked goods or services.
 
In this respect, he dismissed the alleged risk of a 'bait and switch' of internet customers, which had been retained as an argument the majority of the panel, as:
 
"[it] can perhaps apply to the sale of goods, where a respondent's domain name will switch the user customer into buying other goods, this is hardly the case for repair services."
 
Considering the third limb of the UDRP, the majority of the panel assumed that Industrial Tests had knowledge of Areva's mark when registering the domain names. This was also supported by the fact that Industrial Tests had admitted to having registered the domain names to attract consumers.
 
Such admissions were sufficient to convince the majority of the panel that Industrial Tests had the intention to attract commercial gain by creating a likelihood of confusion, matching the terms of Section 4(b)(iv) of the UDRP rules as one of the evidences of bad faith in registration and use of a domain name.
 
The majority of the panel concluded that, as Industrial Tests had registered a significant number of domain names comprising not only the AREVA mark, but also other famous trademarks, this was clear evidence of a pattern of bad faith.
 
However, the dissenting panellist did not share this view, finding that the admission by Industrial Tests that it had registered the domain names to attract customers could not be construed as evidence of bad faith. The dissenting panellist felt that, given the fact that Industrial Tests' business was the repair and servicing of electrical equipment, this admission did not necessarily mean that it intended to cause confusion with Areva's trademark.
 
Notwithstanding these divergences, the panel ordered the transfer of the 17 domain names to Areva.
 
This decision is a good example of the difficulties faced by panels when assessing the use of trademarks in domain names by companies which have a legitimate business relating to the trademark owners, without being legally connected to them. If the aftermarket service is a legal service, there is no clear relationship or affiliation between the parties. Therefore, this remains an area of ongoing debate, which could well result in cases with similar fact patterns being resolved differently under the UDRP.
 
David Taylor, Hogan Lovells (Paris) LLP, Paris

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