For many readers, the words ‘bladeless fan’ will conjure an image of one particular product: Dyson’s elegant Air Multiplier (right). And this is, no doubt, what Richard Delas of Longjumeau, France was counting on when he registered the domain name bladelessfanonline.com, which is currently being used to sell fans looking remarkably similar to Dyson’s, from a website also remarkably similar to Dyson’s, also under the ‘air multiplier’ name.
The bladelessfanonline website, and the products sold from it, potentially infringe a variety of Dyson’s intellectual property rights. The name AIR MULTIPLIER is a registered trade mark in many jurisdictions, Dyson holds patents and registered designs on the fans themselves, and the overall appearance of the website is clearly designed as an imitation of a genuine Dyson site.
However, for Dyson to take action against the operator of the site for patent, trademark, copyright or trade dress infringement, or for deceptive, misleading or otherwise unfair conduct, presents various difficulties, not least among which are identifying an appropriate jurisdiction in which to commence proceedings, the time required for litigation, and cost.
It would be far quicker and simpler if Dyson were able to deprive M. Delas of his internet domain, at least pending a more permanent solution through the national courts.
Unfortunately, however, Dyson has failed in its complaint at the World Intellectual Property Organization (WIPO) under the arbitration process known as the Uniform Domain Name Dispute-Resolution Policy (UDRP). The case is an object lesson in the difficulties associated with descriptive trade marks, and the limitations of relying upon unregistered intellectual property rights.
Requirements under the UDRP
The URDP is used to resolve clashes between trade mark owners and website registrants. The general requirements for successfully challenging a domain name registration under the URDP are:
- the complainant must be able to show that it has rights in a trade mark which is either identical with, or confusingly similar to, the offending domain name;
- at the same time, the registered holder of the domain name must not themselves have any legitimate rights or interests in the domain name; and
- the domain name must be registered and used by the holder in bad faith.
The ‘rights’ in the asserted trade mark do not need to be registered. For a company such as Dyson, which is domiciled in the UK, and sells products in numerous common-law jurisdictions (including Australia and New Zealand) which recognise unregistered rights, it may be possible to prove that a trade mark has a sufficient reputation that its use by the domain name holder amounts to ‘passing off’.
In this case, Dyson was forced to rely upon asserted rights in the term BLADELESS FAN. Due to its descriptive nature (i.e. of a fan without visible blades) Dyson has been unable to obtain a registration of this term as a trade mark. And while it was able to establish that the term ‘bladeless fan’ is commonly used in relation to its Air Multiplier products, the WIPO Panel (Australia’s Professor Staniforth ‘Sam’ Ricketson) found that Dyson’s evidence fell short of establishing that the term functions as a trade mark uniquely identified with its own goods.
Professor Ricketson clearly felt that, had Dyson been able to establish the requisite trade mark rights in BLADELESS FAN, it would have had good prospects of succeeding on the second and third requirements for a successful challenge to the domain name registration. Considering the brazenness of the bladlessfanonline website’s use of Dyson trade marks and get-up, the decision notes that the Panel reached its decision with ‘considerable regret’.
The value of registration in domain name disputes
In jurisdictions which recognise unregistered trade mark rights, it is generally possible to obtain registration of an otherwise somewhat descriptive term if the user of the trade mark is able to establish, by evidence, that the term has in fact acquired a secondary meaning as a signifier of trade origin of goods.
Had Dyson been able to secure registration of BLADELESS FAN as a trade mark in just one jurisdiction, then it would have been able to use the registered right as the basis for its UDRP complaint, making the first requirement for success the easiest to establish.
In this particular case, it seems likely that Dyson remains unable to secure a trade mark registration because it has not, in fact, used the term ‘bladeless fan’ in such a manner that it has become strongly associated with its particular products. The result at WIPO is therefore very much the same as would be expected in any national trade mark office, where a similarly high standard of evidence of reputation would be required.
However, there is a general lesson for all brand owners in Dyson’s unsuccessful complaint. Establishment of a trade mark right is a threshold requirement for success under the UDRP procedure. Ownership of a registered trade mark, rather than reliance of evidence of reputation, should ensure that a complaint does not fail at the first hurdle. It is therefore good strategy, where possible, to secure a registered right before proceeding with a complaint under the UDRP.
The Administrative Panel Decision is Dyson Limited v Richard Delas, Case No. D2012-0701.