September 28,
2001 17:47
****Domain-Name Police Say Fakebake.com Web Site Is No
Fake
Jump
to first matched term
MONTREAL, QUEBEC, CANADA, 2001 SEP 28 (NB) -- By Steven
Bonisteel, Newsbytes. A company that sells tanning products
online will be allowed to keep an address that reads just like
the name of one of the products it sells, even though the
manufacturer of a lotion called Fake Bake figures it should be
the company behind FakeBake.com.
A ruling that Florida Hi Performance in Orlando could keep
the address over the protestations of Oklahoma City's Toma's
LLC came this month under an arbitration process established
for such disputes by the Internet Corporation for Assigned
Names and Numbers (ICANN).
Mark Lemley, an arbitrator assigned by Canadian
dispute-settling firm eResolution, noted that ICANN's Uniform
Resolution Policy (UDRP) has so far
provided a mixed bag of opinions on whether a distributor of a
trademark owner's products can use that trademark for its own
Web site.
Lemley said that he found at least three other UDRP cases
where arbitrators "concluded that a distributor has no right
to use the trademark of the distributed goods as a domain
name." Those cases included that of Benton, Ill-based Mariah
Boats Inc., which successfully wrested the domain
MariahBoats.net from one of its resellers, a marina in Moneta,
Va.
But he also cited five cases where domain-name holders were
allowed to keep their famous-sounding addresses, including a
dispute between Hewlett-Packard Co. and one of its authorized
integrators over the domain Openview.org.
Toma's, which makes the self-tanning lotion called Fake
Bake, argued that Florida Hi Performance sells a variety of
competing products on its Web site, but that the address
FakeBake.com suggests that the entire enterprise is somehow
sponsored by the Oklahoma company.
Toma's said that it had filed to trademark the name Fake
Bake, though Florida Hi Performance pointed out that it had
registered the domain name before Toma's sought the more
formal protection.
But arbitrator Lemley said it might be more important that
"as a matter of trademark law ... the purchaser of bona fide
goods is entitled to resell those goods, and to truthfully
advertise the goods bearing the trademark."
"Were it not so, distributors could not advertise their
goods, car owners could not advertise their used cars, and so
on," he said.
"This is clearly not a traditional cybersquatting case,"
Lemley wrote. "There is no evidence that Florida registered
the domain name in order to sell it to Toma's or anyone else
... There is no evidence that Florida has engaged in a pattern
of abusive registrations designed to deny mark owners access
to domain names ... There is no evidence that Florida
registered the domain name in order to disrupt Toma's
business..."
Lemley pointed to a dispute launched by Netherlands-based
electronics giant Philips over the domain
Philips-Indonesia.com. In that case, an electronics reseller
in Jakarta was allowed to keep the address in a decision from
the World Intellectual Property Organization (WIPO), which -
like eResolution - is accredited to resolve UDRP complaints.
In his Philips ruling, WIPO arbitrator Jonathan Turner
wrote that "it is possible for a trader in branded goods to
advertise and sell goods under the brand without using a
domain name incorporating the brand ... Nevertheless such a
domain name is of considerable assistance to a business
selling the branded goods."
Turner ruled that a person could have "a legitimate
interest in using a particular domain name even if it is not
an essential requirement for him to do so."
The Florida Hi Performance site is at http://www.fakebake.com/ .
Toma's is at http://www.fakebake.net/ .
Reported by Newsbytes.com, http://www.newsbytes.com/
.
16:42 CST
(20010928/WIRES ONLINE, LEGAL, BUSINESS/CYBERSQUAT/PHOTO)