barrisol.co.uk (2009): Just because a distributor is allowed to register a domain name, doesn't mean that it gets to keep it
Background
Normalu is a French producer of "Barrisol" stretch ceilings. It is the registrant of the domain name barrisol.com and of the trade mark BARRISOL (for various classes in the UK). At the time the domain name dispute commenced, Normula was the registrant of over 40 other domain names comprising the name Barrisol.
In 1991, Normalu entered into a sole distribution agreement with Tricorn Design Ltd (predecessor of Stretch Ceilings (UK) Ltd) to market and install Normalu's Barrisol products in the UK. In 1999, with Normalu's consent, Tricorn Design Ltd registered the domain name barrisol.co.uk. In 2002, Stretch Ceilings UK took over the distribution agreement and the domain name normalu.co.uk was transferred into its name.
Normalu terminated the distribution agreement in 2008 and requested that Stretch Ceilings UK transfer the domain name to it free of charge. Stretch Ceilings UK declined to transfer the domain name. As an aside, the circumstances surrounding the termination of the distribution agreement were subject to separate legal proceedings in France. This domain name dispute, however, was not an appropriate forum for addressing those matters.
The initial domain name dispute decision
Normalu filed a domain name complaint against Stretch Ceilings UK using Nominet's Dispute Resolution Service. Normalu successfully proved that it had rights in the name Barrisol and that Barrisol was identical or similar to the domain name. Because of Normalu's consent to the initial registration, it could not be an abusive registration as at the date of initial registration by Tricorn or transfer to Stretch Ceilings UK. Therefore, to win the domain name dispute, Normalu had to show that continued use of the domain name, post termination of the distribution agreement, took unfair advantage of or was detrimental to Normalu's rights.
Unfair advantage
Normalu argued that messages which Stretch Ceilings UK posted on the website (i.e. that they had moved and sales enquiries should be directed to Stretch Ceilings UK) were likely to confuse people into thinking that Stretch Ceilings UK were still connected to Barrisol, although they clearly were not. Stretch Ceilings UK sold competing stretch ceiling products and its continued use of the website was unfairly attracting business. In addition, Stretch Ceilings UK renewed the domain name after the distribution agreement had terminated. This meant that Normalu was blocked from registering the domain name and Stretch Ceilings UK could continue to use and profit from the Barrisol name. This, said Normalu, took unfair advantage of its rights in the Barrisol name.
Stretch Ceilings UK on the other hand argued that the domain name renewal was automatic and that the domain name complaint had been made in bad faith. They said they had built up substantial business for Normalu in the UK and given the goodwill they had built up in the Barrisol name, they had a continuing right to use the domain name. Finally, they argued that they were selling Barrisol aftercare services to previous customers and not other products.
The Expert in this domain name dispute found in favour of Normalu.
The domain name dispute appeal
Stretch Ceilings UK appealed the domain name expert's decision. It claimed that it had wanted to sever its connection with Normalu. However, before commencement of domain name dispute proceedings, Stretch Ceilings UK had acknowledged in correspondence that the domain name represented a connection with Normalu. Nor did it help their case that Stretch Ceilings UK's solicitors stated in correspondence with Normalu that they had advised their client to cease using the domain name!
Normalu argued that Stretch Ceilings UK must have been aware of the domain name renewal because payment was involved. Normalu observed that Stretch Ceilings UK did not advertise aftercare services in relation to Normalu's products and that continuing use of the website was likely to confuse people into thinking that Normalu had moved.
The panel observed that the website did not display information regarding aftercare for previous customers and that a substantial amount of visitors to the website would include new customers looking for Normalu's products.
An obvious domain name for Normalu
In addition to this, the panel commented that it was an obvious domain name for Normalu to choose for its UK website and was an obvious point of reference for Normalu's products. The website, therefore, would inevitably attract to Stretch Ceilings UK's goods and services potential customers who has been seeking Barrisol products. Accordingly, the panel saw no justification for the renewal of the domain name. Instead, allowing the domain name to lapse would have been the obvious thing to do. The appeal was dismissed.
"Take home"
Unless there is agreement to the contrary, distributors of third party products should not assume that they are automatically entitled to keep hold of a domain name registration after the contract ends, even if they were previously given permission to do so. This is even despite the fact that the distributor is a sole distributor and has built up substantial goodwill in the name.
For a free initial chat and more information about our domain name legal advice and services, call Adam Taylor of Adlex Solicitors on +44 (0) 207 317 8404 or email.