.svg){kind=icon}
Tomáš Klinka - lincolnelectric
Z rozhodnutí Centra ADR: lincolnelectric.sk
Issues from Decisions of the Domain Name ADR Center: lincolnelectric.sk
Duševné vlastníctvo, Volume 26, Number 1-2/2022, pages 80 – 82
FULL ARTICLE AVAILABLE (PDF, 2,5 MB)
Recommended form for quotation of the article:
KLINKA, T. 2022. Z rozhodnutí Centra ADR: Z rozhodnutí Centra ADR: lincolnelectric.sk. In Duševné vlastníctvo [online]. Vol. 26 No. 1-2, 2022. ISSN 1335-2881, pp. 80 – 82. Available at: https://www.indprop.gov.sk/dv/casopis-dusevne-vlastnictvo/archiv/2022-1/1-2-2022/tomas-klinka-lincolnelectric
Abstract:
The Complainant requested that a domain name lincolnelectric.sk be transferred from its current domain name holder to the Complaint’s representative on the basis of an infringement of its right to the EU trademarks „LINCOLN“ and „LINCOLN ELECTRIC“, the Complaint’s trade name with its distinctive part „Lincoln“, as well as in relation to Complainant’s foreign trade marks used in trade since 1915 in the USA. At the time of submission and decision about the complaint by the Expert, the domain name lincolnelectric.sk was not publicly used. It was proven that from 2001 to 2005 the domain name holder was a distributor of the Complainant’s goods or the goods of the Complainant’s subsidiary LINCOLN ELECTRIC EUROPE B.V., Netherlands. The domain name holder stated that the domain lincolnelectric.sk was registered upon verbal consent of the president of the LINCOLN ELECTRIC EUROPE B.V. that was granted when a distributor agreement was signed; however this statement was not proven. Even if such content was indeed granted, considering the absence of exit conditions regarding the domain name applying for the time after the termination of the distribution agreement, the domain name holder was obliged to transfer the domain to the Complainant or to the person designated by the Complainant. The Expert highlighted that a distributor with its business and marketing activities does not build his own brand, but the brand of distributor’s foreign partner. The Expert accepted analogical application of the trade mark institute “disloyal agent” in the meaning of the Article 6septies of the Paris Convention, which is not limited in time according to Slovak law. The Expert concluded that the trademark „LINCOLN ELECTRIC “ and the domain name lincolnelectric.sk are identical and that a likelihood of confusion exists between the two. The domain name holder did not prove any right or legitimate interest concerning the domain name. The Complainant proved the domain name holder’s lack of good faith in holding of the domain name after the termination of the distribution agreement because the holder has not publically used the domain name for a long time and asked unreasonably high amount (39,000 EUR) as a compensation of time barred alleged claims related to certain problems in distribution relationship from 2001 to 2005 that even did not relate to the domain name. The Expert thus concluded that all necessary conditions required by the Rules of ADR were met and therefore ordered the transfer of the domain to the Complainant’s representative.
Key words:
identity of signs, likelihood of confusion, trademark, bad faith, burden of proof, lack of right or legitimate interest, distributor and its duty of loyalty, analogy with Article 6 septies of the Paris Convention, protected signs under ADR; geographical scope; ADR claims (un)limited in time