Ireland's ESB loses 'shopelectric.ie' to UK retailer

International

In Electricity Supply Board v Lislyn Retail Ltd, a World Intellectual Property Organization (WIPO) panel has refused to order the transfer of the domain name 'shopelectric.ie' to the Irish complainant. The panel found that the respondents had a legitimate interest in the domain name as they had used the trade name Shop Electric in Northern Ireland for 30 years.

The Electricity Supply Board (ESB) is an electricity utility operating internationally, but principally in Ireland. ESB's retail branch sells electrical appliances in 81 shops throughout Ireland. It has traded under the Shop Electric brand name since around 1968. It has also registered SHOP ELECTRIC as a trademark in Ireland.

Lislyn Retail Limited was incorporated in 1997 following a management buyout of Northern Ireland Electricity Retail Limited, which had provided electrical retail services under the name Shop Electric for about 30 years. As part of the buyout, Lislyn Retail acquired the rights to the name Shop Electric. By January 2003 Lislyn Retail had a network of 29 high-street Shop Electric stores and six superstores across Northern Ireland. In May 2003 Shop Electric Group plc acquired the business and assets of Lislyn Retail - namely the Shop Electric stores in Northern Ireland. The respondents registered the domain name 'shopelectric.ie' to redirect visitors to Northern Retail Limited's online store at 'pluggedin.co.uk'.

ESB objected to the registration and use of the domain name. It alleged in its complaint to WIPO that:

  • the respondents, Lislyn Retail and Northern Retail, have no physical presence in Ireland, and no real or substantive connection with Ireland;

  • no website has ever been directly connected to the disputed domain name;

  • the domain name would attract Irish users to the website and thus cause confusion with ESB's registered trademark; and

  • the domain name's use was likely to dilute the reputation of ESB's rights in its trademark in that members of the public would reasonably infer from the automatic link from the domain name to Northern Retail's website that no website for Irish Shop Electric shops existed.

In their counterclaim, the respondents:

  • denied that the domain name is identical to ESB's trademark, which is registered in a stylized form;

  • alleged that they had rights in the trademark SHOP ELECTRIC in Northern Ireland and they or their predecessor had been trading under the Shop Electric name in Northern Ireland for over 30 years;

  • stated that they were the registered proprietors of several trademarks in the United Kingdom for SHOP ELECTRIC in various classes; and

  • alleged that they have built up substantial goodwill and reputation in the name Shop Electric.

The panel rejected ESB's claim to the domain name, despite finding that the disputed domain name was identical to ESB's trademark. The panel held that, even though the respondents had not demonstrated good-faith preparations to use the domain name, they have legitimate rights to the Shop Electric name due to the existence and undisputed long use of trademarks in Northern Ireland. Accordingly, the panel refused to transfer 'shopelectric.ie'.

Patricia McGovern, LK Shields Solicitors, Dublin

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