The majority of the panel got it right.
The majority of a World Intellectual Property Organization panel has ruled that the registrations of patek-maison .com and patekmaison .com should not be transferred in a UDRP case. One panelist disagreed.
The Complainants, Patek Philippe SA and Henri Stern Watch Agency, Inc., are luxury watchmakers. The Respondents sell perfume under the brand Patek Maison.
Undoubtedly, the Complainants have been around for much longer than the Respondents. Nearly two centuries!
But the Respondents appear to have a legitimate business. They have an online storefront where they sell perfumes. They have trademarks in the U.S., EU, and other countries.
To take the domains away from an operating business that appears to be legitimate would be wrong. And the majority of the panel realized that.
There may well be a trademark dispute for the courts. But it’s not a cybersquatting dispute under UDRP, which is designed for clearcut cases of cybersquatting. The majority of the panel noted:
The Panel accepts that a trademark registration could be invalidated by a showing of conflict with prior registered rights or, for example, being obtained in bad faith. The facts and circumstances resulting in such revocations are typically subject to careful consideration on the merits by the appropriate authorities in the jurisdiction or jurisdictions concerned. Especially having regard to the limitations of proceedings under the Policy, therefore, the Panel considers it should be cautious to go behind the registrations of the trademarks relied on by the Respondent except in the clearest of cases. The jurisdictions in which Mr. Bhatia has registered the PATEK MAISON trademark are readily accessible to the Complainants and have agencies (including the Courts) with powers and procedures more appropriate for the issues arising in this proceeding.
A third panelist disagreed. Panelist Isabelle Leroux starts her dissent with the bizarre statement:
Panelist Leroux respectfully considers that the use of a domain name in connection with a bona fide business of trading in domain names may, in appropriate circumstances, confer rights or legitimate interests under the Policy.
That’s weird. That’s a statement someone uses when the domain owner is a domain investor. That’s not the case here; the domain owner uses the domain for an e-commerce business.
She then explains that the Complainants have been using the name for a long time, and the Respondents “cannot credibly claim to have been unaware of the Complainants’ trademark.” She determined that the Respondents have no rights or legitimate interests in the domains.
Cabinet Vidon Marques & Juridique PI in France represented the Complainants. Leroux works as an IP lawyer for Dentons in France. The Concept Law Group, P.A. represented the Respondents.
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