Another person's trademark as a domain name: can you do that...?

You sell products of someone else's brand. You would like a web shop that is easy to find for customers interested in that brand. Therefore, you use a domain name that includes that brand. Is that allowed...? The plaintiff in the Elisabetta Franchi case is.

Betty Blue sells clothing under its registered trademark Elisabetta Franchi. The plaintiff sells Elisbetta Franchi clothing through its VLVT store and webshop www.elisabetta-franchi.nl, among others. In a domain name dispute, WIPO ruled that the domain name should be transferred to Betty Blue. However, that was not the end of it: the plaintiff commences legal proceedings and seeks a "declaratory judgment" that it is not infringing the Elisabetta Franchi trademarks by using the domain name.

The plaintiff posted the following "disclaimer" on its website:

“VLVT Cornelis Schuyt

This webshop belongs to VLVT (a trade name of CS 24 B.V.). VLVT/CS 24 B.V. has no commercial relationship with the company Betty Blue S.p.a. (trademark owner of ELISABETTA FRANCHI), does not belong to the distribution network of Betty Blue S.p.a. and has no special relationship with Betty Blue S.p.a.

VLVT only supplies original products of the "ELISABETTA FRANCHI" trademark which have been put on the market in the European Union legitimately.”

And at the top of each web page the following banner:

“VLVT - independent reseller of Elisabetta Franchi branded clothing. Located at Cornelis Schuytstraat 22-24 in Amsterdam.”

Betty Blue's trademark is exhausted, as the clothing was marketed in the EEA with its consent. According to the court, Betty Blue has no legitimate reason to oppose use of her trademark. The website makes it sufficiently clear that there is no commercial connection between VLVT and Betty Blue. There is also insufficient evidence to believe that the trademark's reputation will be seriously damaged.

The court further decides that the domain name as part of www.elisabetta-franchi.nl is not used as a trade name: The reason: on the website, the company is referred to exclusively under the name VLVT. This is striking - this visible use of the domain name could also have been considered the company's second trade name. Additionally, there are no additional circumstances that make the use of the domain name unlawful. Www.elisabetta-franchi.nl thus remains online.

Lisa Peek