Licensee Gets to Keep Licensor's Domain Name After License Termination

On April 7, 2003, a sole panelist of the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center issued his decision in Urbani Tartufi s.n.c. v. Urbani U.S.A., a dispute involving the domain name "urbani.com". The Complainant, Urbani Tartufi s.n.c., is a world leader in the harvesting and sales of truffles and owns the registered trademark word "URBANI" in the U.S.A. and Italy. In 1989, the Complainant signed a distributorship agreement with Urbani Truffles U.S.A. By its terms, this agreement also applied to the Respondent, Urbani U.S.A., a related company of Urbani Truffles U.S.A. Part of the agreement was for the Respondent to promote the Urbani product in the U.S.A. and Canada and permitted the use of the "Urbani" trademark for this purpose. In 1997, the Respondent registered the domain name "urbani.com". On November 25, 2002, the Complainant revoked the distributorship agreement with the Respondent. The Complainant then sought the transfer of the domain name "urbani.com" to itself under the Uniform Domain Name Dispute Resolution Policy (the "UDRP"), alleging that the continued use of the domain name by the Respondent would dilute its trademark and damage its image. The panelist decided that the disputed domain name "urbani.com" was identical to the Complainant's "URBANI" trademark. However, he found that between the time that the domain name had been registered and until the termination of the distributor agreement, the Respondent had a legitimate right to use "urbani.com" because of its business relationship with the Complainant. As a result, the Complainant failed to show that the Respondent had no rights or legitimate interests in the disputed domain name as required by the UDRP. Further, given that "urbani.com" was registered with the consent of the Complainant during the existence of the business relationship, the domain name could not be seen as being registered or used in bad faith within the meaning of the UDRP. On the basis of these findings, the panelist concluded that the Complainant's application to transfer the domain name should be denied. The panellist concluded that the dispute was about a business relationship that had gone wrong and was not an abusive registration within the ambit of the UDRP. He further cautioned that "the URDP is not the basis on which the Parties may argue the ownership or usage rights of a business asset." For a copy of the decision, visit: http://arbiter.wipo.int/domains/decisions/html/2003/d2003-0090.html Summary by: Nick Wong