Retailers and brands in the retail sector have recently been hit with a string of losses under the Uniform Domain Name Dispute Resolution Procedure ("UDRP"), which was designed to offer brand owners a quick and relatively inexpensive way of resolving domain name disputes.
In the www.raleighbikes.com case1, Swissbikes Vertriebs GmbH (the owner of the "RALEIGH" trade marks for bicycles) was unsuccessful in having the name transferred to it, as although the domain name was held to be confusingly similar to the RALEIGH trade marks, the owner of the name was using it for a non-commercial forum site for fans of Raleigh bikes and therefore there was no proof that the name was registered or was being used in bad faith.
The second case2 brought by Cosmos European Travels AG ("Cosmos"), the operators and promoters of travel tours, involved the domain name www.cosmosholidays.net, which is a Chinese website providing hotel accommodation and travel related services, with more than 600 travel agent users in China.
Again the domain name was held to be confusingly similar to Cosmos' trade mark for "COSMOS" and certain other trade marks, however in this case the Panel declined to transfer the name to Cosmos on the grounds that the name incorporates part of the registrant's corporate name, and Cosmos could not prove that the Chinese owner of the name had Cosmos in mind when it started using the domain name.
This was despite Cosmos providing a decision of the US courts stating that Cosmos had a worldwide reputation in the Cosmos trade mark, and also despite Cosmos providing figures showing that (i) Cosmos tours and holidays have generated annual sales in excess of US$2.6bn and (ii) in the past 4 years Cosmos and its licensees have spent over US$35m on advertising and promoting the Cosmos brand.
Finally, in the case of www.agnesbi.com3, the well known fashion designer and retailer that sells clothing, jewellery and other accessories and cosmetic products under the www.agnesbi.com"Agnès b." name worldwide, failed in having the domain name transferred to her.
Despite the domain name being held to be confusingly similar to her "AGNES B." trade mark, Mrs Agnès B, having failed to provide any evidence that the owner of the domain name (a Polish individual) would be more likely than not to know of Angès B.'s activities, could not prove that the individual registered the domain name with knowledge of her use of the "Agnès B." name. In particular, the Panellist noted that Angès B. does not appear to have a store in Poland.
In addition, the owner of the name claimed that she is known as "Agnes Bi" and had released a number of songs under this name and the name "Agnes". Finally, there was nothing on the website to suggest that she sought to capitalise on the reputation in the fashion world of Agnès B.
These 3 cases highlight the importance to brand owners looking to take action under the UDRP of gathering as much evidence as possible to prove that (a) the owner of the name has no legitimate rights or interests in the name and (b) that the name was registered and is being used in bad faith. If there are any doubts on either of these 2 points then particular care will need to be taken when drafting a complaint under the UDRP, otherwise however well known their brands are, decisions may well end up going against them.
Footnotes
1 WIPO Domain Name Decision D2008-0498: Swissbikes Vertriebs GmbH v. Executive Standard Limited
2 WIPO Domain Name Decision D2008-0762: Cosmos European Travels AG v. United Cosmos Travel Group
3 WIPO Domain Name Decision D2008-0791: Mrs. Agnès Troublé v. Agnieszka Bisikirska
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