Retailers Beware - Recent Losses In Domain Name Decisions

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...