What everyone secretly wants for Christmas, a Marvel vertical band saw.In Marvel Manufacturing Company Inc. v. Koba Internet Sales, LP, WIPO Case No. D2008-0265 (Peter L. Michaelson, May 5, 2008), the Panel refused to transfer marvelsawparts.com to the Complainant owner of the MARVEL trademark for sawing machines and blades. The Respondent was an unauthorized seller of aftermarket Marvel brand saw replacement parts.
The Panel first concluded that marvelsawparts.com was confusingly similar to the Complainant's MARVEL mark. In so doing, the Panel rejected the Respondent's argument that the existence of other MARVEL trademarks owned by third-parties diluted the Complainant's mark such that confusing similarity should not be found. According to the Panel:
"Under UDRP precedent, a very simple test is used to assess whether a domain name is confusingly similar to a mark: compare the domain with the mark to assess differences there between and then determine whether those differences are sufficient in and of themselves to impart requisite distinctiveness to the name that would reasonably preclude Internet users from becoming confused when faced with concurrent use of both the name and the mark. This does not involve ascertaining whether any third-party rights exist, and assessing both the extent of those rights and any dilution of the mark arising there from. Though the Respondent would like this Panel to conclude otherwise, all those factors are simply immaterial." (Emphasis added.)
The Panel then dedicated the majority of its decision to discussing whether the Respondent had rights or legitimate interests in the disputed domain. The Panel succinctly identified the issue: "[the] question is whether the Respondent’s use of the name, which incorporates the Complainant’s trademark, in connection with its web site offerings was bona fide and specifically in light of the fact that the Respondent had no contractual or other relationship with the Complainant authorizing the Respondent’s use of the mark." (Emphasis added.)
While the Panel appeared to make issue of the fact that the Respondent was not authorized to resell the Complainant's products or use its mark, the Panel then concluded that such distinction was immaterial in determining the test to apply in resolving whether the Respondent's use of the mark was bona fide. And thus, the Panel quoted a case involving an authorized reseller, the oft-cited Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (David H. Bernstein, November 6, 2001), in which the Panel held that a Respondent's use is bona fide if the following four conditions are met:
(a) the respondent must actually be offering the goods or services at issue;
(b) the respondent must use the site to sell only the trademarked goods; otherwise it could be using the trademark to bait Internet users and then switch them to other goods;
(c) the respondent’s site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; and
(d) the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Using this test, the Panel concluded that (a) the Respondent sold the Complainant's goods, (b) the Respondent was only selling the Complainant's goods and not those of third parties (Respondents often fail the test on this point), (c) the Respondent included a disclaimer, the language of which the Complainant's lawyer agreed to, thereby alleviating any false suggestion, and (d) nothing in the record supported any claim that the Respondent attempted to corner the market of MARVEL-formative domain names. Accordingly, the Respondent was making a bona fide use of the disputed domain, thereby rendering an analysis of bad faith unnecessary.
The Panel's decision must have been a tough one for the Complainant to swallow. Instinctively, the fact that the Respondent's sale activities and trademark use were not authorized makes one want to have this case go for the Complainant. While the Complainant does not sell replacement parts for its machines (according to the Respondent), it seems pretty clear from the Complainant's website that it is at least selling parts. An argument could have been made (and perhaps was) that by registering marvelsawparts.com, the Respondent prevented the Complainant trademark owner from providing its customers with the "user-friendly" means to locate the authorized source for "Marvel" "saw" "parts." A similar argument was successful in a decision published just three days ago, FD Management, Inc. v. Telecom Tech Corp., WIPO Case No. D2008-0235 (J. Christopher Thomas, May 5, 2008) (in requiring transfer of shopelizabetharden.com to the Complainant owner of the ELIZABETH ARDEN trademark, Panel emphasized that "[Respondent's] registration of the disputed domain name has precluded the Complainant from making use of the name and has obliged it to use the 'less-than-user friendly' [shop.elizabetharden.com] domain name requiring the insertion of a period between 'shop' and 'elizabetharden'").
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