Asset manager denied domain name in ‘contractual’ dispute


Asset manager Aurelius Group has failed to secure the transfer of a domain name featuring a trademark for ‘Viking’, despite acquiring the respondent’s European business. 

In November last year, an Aurelius Group subsidiary filed a complaint with the World Intellectual Property Organization’s (WIPO) Arbitration and Mediation Center over the domain

The respondent, Office Depot, had merged with Viking Office Products to form a provider of office supplies and business products in 1998. In 2016, the company had annual sales of about $11 billion.

In December 2016, Aurelius Group acquired Office Depot’s European business, separating the Viking business and the related IP rights by territory. The asset manager acquired IP rights for ‘Viking’ and certain domain names in Europe, while Office Depot remained the owner for the rest of the world.

In its complaint, Aurelius Group alleged that the intention of the parties was to transfer all the IP necessary for the continuation of the European business and that the disputed domain was exclusively used for the European business. 

Aurelius also claimed that Office Depot isn’t interested in using the ‘Viking’ mark, as it ceased to use the sign outside of Europe in 2002 and has allowed its trademarks in the US and Canada to expire.

The domain wasn’t listed in the agreement, but the deal does include a  “wrong pockets” clause that requires the IP rights corresponding to the European territory that have not been transferred to be handed to Aurelius Group.

In response, Office Depot stated that Aurelius Group’s “attempt to have its contractual dispute” heard before the panel, instead of the courts, is “misguided”. 

Office Depot added that a letter from November 2017 acknowledges that Aurelius Group had made several offers to purchase the domain and that this is “inconsistent” with the asset manager’s claims that it already owns the domain. 

Assen Alexiev, presiding panellist, denied the complaint. 

Although Alexiev found that the domain name is identical to the ‘Viking’ trademarks owned by Aurelius Group, he found that Office Depot had used the domain in connection with a bona fide offering of goods or services before notice of the dispute, so the company has rights in it. 

“The panel notes that the administrative proceeding under the policy is limited in scope to cases of ‘cybersquatting’ and is not intended to resolve complex commercial or contractual disputes,” said Alexiev, adding that the dispute would be addressed more appropriately by a court. 

The WIPO panel also found a lack of bad faith in the registration of the domain.

Based on the lack of any allegations in the complaint of how Office Depot registered the domain in bad faith, the panel found that Aurelius Group had also engaged in reverse domain name hijacking.

The decision was made on February 23 and published yesterday, March 6.

trademark, WIPO, domain names, Viking, asset manager, Office Depot, Aurelius Group, bad faith, reverse domain name hijacking

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