Recent Case Notes & Commentary

A Clash of Registered Marks: Who Wins?

Jeffrey Kaplan v. Societe des Produits Nestle S.A.

Claim Number: FA1606001680748

Disputed Domain Name: <chipwich.com>


In today’s globalised economy, it is not unusual for the same trademark to be used by different companies all over the world.


As a society we’ve never been more inter-connected than we are today. While there are undoubted benefits in being only a few clicks away from just about anything, it may create situations where a registered trademark from one continent is accused of infringing a registered trademark from another. Who prevails in this scenario? Whose trademark prevails and is granted the disputed domain name?


Once again we see the inherent value of registering a trademark for proceedings under the Policy. Being able to present evidence of a registered trademark, no matter where that may be, will assist in establishing rights or legitimate interests in a disputed domain name.


The Parties:

Complainant

The Complainant is a business competitor of the Respondent. The Complainant registered the CHIPWICH mark with the United States Patent and Trademark Office (“USPTO”) in November 2011.


Respondent

Operating out of its Swiss base, the Respondent’s line of business includes manufacturing chocolate and cocoa products. It is a subsidiary of Nestle S.A, one of the world’s largest food companies. 

The Respondent previously held the USPTO registration of the CHIPWICH mark, but voluntarily renounced rights to it in the United States in 2011.


The Respondent acquired both the registered CHIPWICH mark and accompanying domain name by written assignment from another corporation in 2007.


Paragraph 4(a)(i) – Identical and/or Confusingly Similar

The Panelist made a relatively straightforward decision, in favour of the Complainant, that it had satisfied the first element of the Policy.


Paragraph 4(a)(ii) – Rights or Legitimate Interest

The next hurdle a Complainant must surmount is making a prima facie case the Respondent lacks rights or legitimate interests in the domain name; upon which the burden shifts to the Respondent to prove they do possess rights or legitimate interests.


The Complainant asserted, and the Panelist agreed, that the surrendering of its USPTO trademark registration indicated the Respondent lacked any rights or legitimate interests in the <chipwich.com> domain name.


Despite this, the Respondent still had an ace up its sleeve, or in this case, a valid overseas trademark registration. Although not possessing the CHIPWICH registered trademark in the United States, the Respondent still held trademarks in all European Union countries, as well as both Norway and Portugal.


The Respondent also submitted evidence showing it had engaged in commerce using the <chipwich.com> domain name following acquisition of the registered right in 2007. This easily pre-dated the Complainant registering the CHIPWICH mark with the USPTO in 2011.


The Respondent’s continued possession of valid trademark registrations in Europe combined with its use of the <chipwich.com> website, at least three years prior to the Complainant’s USPTO registration, led the Panelist finding the Respondent did have rights or legitimate interests in the domain name.


Paragraph 4(a)(iii) – Registration and Use in Bad Faith

In light of the Complainant’s failure to discharge the second element of the Policy, the Panelist chose not to discuss this issue.


Clash of Registered Trademarks

It is not necessary for a complainant to prove it has a trademark in the country where the Respondent lives or works; the trademark may be registered in any country. That has often been stated as a matter of theory; but the present case puts that theory into practice. The Respondent won because it had held onto its European trademarks. Had it surrendered them as it had its US trademark it would probably have lost, as it had nothing to give it a right or legitimate interest in the domain name.