Bata Limited is a large Canadian manufacturer that operates in
70 countries and has a total of 423 trade mark registrations in the
word “power” which it uses in its sports shoe and clothing
products. It took action against a company called Virtuality LLC
that had registered the domain names powershoes.com, powershoes.net
and powershoes.org and won a transfer of the names.
The action was taken before eResolution, an ICANN approved
dispute resolution provider that operates under the same rules as
the better known World Intellectual Property Organisation
(WIPO).
An eResolution panellist took the view that the names were
confusingly similar to Bata’s trade marks. Also, at the time,
Virtuality was not using the names and claimed to be a company
focused on internet/web development and marketing, television
production and virtual reality technology.
However, in its business plan Virtuality had stated that it had
acquired “a large amount of internet real estate [top level
domains]” and that “these sites would be leased to our customers,
in part or in whole, and would only be sold under extreme
circumstances.” Also, Bata said it had been asked for money by
Virtuality to make use of the domain names. This satisfied the
eResolution panellist that there was bad faith registration and use
of the domain names in question and he ordered that they be
transferred to Bata on 20th September 2000.
However, Virtuality is now appealing the decision in a Maryland
district court. It says that the central issue in dispute is
whether the holder of a registered trademark has the right to
prevent third parties from making use of that trade mark in
connection with one or more other words.
The lawsuit alleges that Bata Limited is attempting to reverse
hijack the domain names from Virtuality. Virtuality claims that it
began preliminary work in 1999 on a search engine business. The
lawsuit also alleges that the use of ICANN's dispute policy was an
attempt by Bata to convert the domain names by fraud and unfair
competition. Virtuality seeks to recover damages as well as to
reverse the panellist's decision.
There is now a powershoes.com web site which looks like
a search engine. However, the site is a single page and only offers
links to a number of third party web sites. While there is a box
for entering search text, the “search” button does not actually do
anything.
