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When domain name conflicts between manufacturers and distributors rest on contractual disputes over the use of the trademark owners' marks, ICANN UDRP panels have frequently denied relief. 

See generally the cases cited and discussed in Western Holdings, LLC v. JPC Enterprise, LLC d/b/a Cutting Edge Fitness and d/b/a Strivectin SD Sales & Distribution, D2004-0426 (WIPO August 5, 2004) by Mark Partridge as sole panelist.

The decision summarizes other ICANN UDRP decisions involving contractual disputes. For instance, in Celebrity Signatures International, Inc. v. Hera's Incorporated Iris Linder, WIPO Case No. D2002-0936, the Panel explained the difficulty of finding a violation of the Policy when there is no specific prohibition on a dealer's registration of domain names incorporating the mark of the products it is allowed to sell:

"Complainant is correct in noting that a distributor's use of a manufacturer's mark as a domain name may constitute an infringement of trademark rights. However, such use may be permissible if there is license or consent. Here, Respondent was not prohibited by contract from using the Complainant's mark as her domain names, and in fact it appears that Complainant's representatives encouraged such use on at least two occasions....

Applying those principles here, I recognize without deciding the issue the possibility that Respondent's current use after objection might be an infringement of Complainant's rights and that Respondent may no longer be justified in believing its use is permitted after receiving Complainant's objections. Nevertheless, that possibility involves a dispute that is beyond the scope of this proceeding. Here, the Policy requires proof of bad faith registration and use. Based on the record presented, I find at the time of registration that Complainant had no distribution agreement or policy in place to prevent Respondent from registering and using the domain name. Further, Complainant's representatives appear to have known of Respondent's conduct and encouraged her in her use. She intended to use the domain name for a website selling Complainant's products, she was encouraged to do so by Complainant's representatives, she did so for over a year without objection. These facts have not been rebutted by Complainant. It does not appear that she did so with the intent to be a cybersquatter or to unfairly trade on Complainant's good will. To a significant degree, Complainant's own actions created the circumstances in which Respondent could reasonably concluded that her conduct was permitted. Thus, I conclude within the circumstances of this record that Complainant has not met its burden of proving that Respondent registered the domain name in bad faith."

The Complainant tends to prevail if there is a clear contractual prohibition against the use of the mark as a domain name. But that is not typically so if the contractual prohibition is unclear, for reasons more fully explained in the Western Holdings decision. 

Written by Mark Partridge, Attorney & Author. Visit the blog maintained by Mark Partridge here.

Related topics: Cybercrime, Cybersquatting, DNS, Domain Names, Law