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.