Technology company Dyson has lost a dispute over a website that allegedly infringed one of its trademarks, despite the panellist making his decision with “considerable regret”.
Dyson filed a complaint at the World Intellectual Property Organization (WIPO) under the arbitration process known as the Uniform Domain Name Dispute-Resolution Policy (UDRP). It is used to resolve clashes between trademark owners and website registrants.
For a website to be transferred the domain must be identical or confusingly similar to the complainant’s trademark; the registrant must have no rights or legitimate interests in the domain; and it must have been registered and used in bad faith.
The disputed domain name, 'bladelessfanonline.com’, had been registered by a French citizen to sell products in Dyson’s Air Multiplier range. These fans, which do not have spinning blades like many other domestic fans, became known as ‘bladeless fans’.
Dyson does not own a trademark for ‘bladeless fan’, but the UDRP accepts trademarks rights in a descriptive name if it has acquired secondary meaning. Dyson submitted two lots of evidence and testimonies from two witnesses to argue that, in effect, it owns the trademark for ‘bladeless fan’.
In his judgment on July 6, 2012, the panellist Staniforth Ricketson said he could not award Dyson the website because it was unclear what the term ‘people’ referred to in the context of whether people associated bladeless fans with Dyson. He added that Dyson should have provided stronger evidence over how its products actually entered the marketplace, and how they were advertised and promoted.
Although Ricketson did not need to analyse the second two limbs, he said there appeared to be “cogent evidence” that the respondent was “engaging in a course of conduct that may well be confusing and an infringement of copyright to boot”. “The panel reaches this conclusion with considerable regret,” he said.
His ruling is in contrast with a decision from November 2011, when a panellist awarded Dyson the site ‘air-multiplier.org’. Dyson owns the trademark for ‘air multiplier’. While Ricketson was reluctant to allow the registrant to continue selling Dyson’s products,the company could yet take its case to court.
This article was first published on 18 July 2012 in World IP Review
Dyson, cybersquatting, domain names, WIPO, UDRP
