Stanley wins dispute with unauthorized reseller of BOSTITCH tools

International

Stanley, the maker of BOSTITCH power tools, has won an important victory under the
Uniform Domain Name Dispute Resolution Policy (UDRP) concerning the rights of a domain name registrant to profit from the sale of trademarked products. World Intellectual Property Organization panellist Irving H Perluss ordered the transfer of 'bostitch.com' to Stanley, finding that the registrant, Motherboards.com, was not an authorized reseller of BOSTITCH tools but profited from redirecting traffic to Amazon.com, where the tools could be purchased.

Motherboards was using the BOSTITCH trademark to put itself in a superior position to authorized sellers of BOSTITCH products. In fact, it was earning $300 per month on referral fees from Amazon because of the redirection of visitors to the Amazon site.

Perluss determined that Motherboards' use of the domain name was not a bona fide offering of goods and services, and that the domain name was registered intentionally to attract for commercial gain internet visitors to the 'bostitch.com' site, creating a likelihood of confusion with Stanley's BOSTITCH mark. Perluss therefore ordered the domain name to be transferred to Stanley.

Based on Motherboards' use of the domain name to profit from Stanley's mark, if this case had been brought in a federal court under the Anti-cybersquatting Consumer Protection Act (ACPA), it is likely that Stanley could have:

  • obtained statutory damages;

  • recovered Motherboards' profits from the sale of BOSTITCH products; and

  • recovered costs and attorneys fees.

In choosing between the ACPA and UDRP, US trademark owners should determine whether they are satisfied with the transfer or cancellation of the disputed domain name, or whether they want to recover damages, attorney fees and costs.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff LLP

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