A recent WIPO decision denying VISA Europe control of the premiercard.net domain brings to the fore some nuances and limitations in the ability of trademark owners, regardless of their size and fame, to control all uses of wording they may consider proprietary.
Last September, Visa Europe Limited (“VISA”) filed a WIPO Arbitration and Mediation Center complaint in an effort to obtain the “premiercard.net” domain name from BVI-based Name Administration, Inc.
VISA is well known for providing credit cards for customers of over 200 banks in Europe. It is the owner of trade mark registrations in France for the PREMIER word trade mark and the PREMIER and global map device trade mark, and the owner of European Community mark (CTM) registrations for two PREMIER and global map device trademarks and is also the owner of the domain name <premier.tel>.
Name Administration is a privacy service located in the Cayman Islands. The disputed “premiercard.net” domain was first registered on December 19, 2005, and again in 2008 when the initial registration expired. Not surprisingly, the disputed domain points to a pay-per-click website that hosts links to Visa’s competitors, among others. According to the WIPO administrative panel decision, “The Respondent is using the disputed the domain name as a parking website for products and services linked to banking cards. This is not a bona fide commercial use and is depreciating the value of the Trade Marks.”
In its response, Name Administration states that the word “premier” is commonly used by a variety of parties, including other parties in France, in connection with premium credit card services and is not exclusively or distinctively associated with VISA in connection with such services. There are numerous third party trade mark registrations in Europe and France comprising the word “premier” relating to banking and credit card services. Furthermore, Internet users in France would be unlikely to use the word “premier” in conjunction with the word “card” when conducting Internet searches for credit cards. They would be more likely to use the French word “carte” than the English word “card”. They argue, therefore, that the disputed domain name is not confusingly similar to the VISA trademarks.
Considering the facts and policy, the WIPO panel determined that the crucial issue in respect of this proceeding was whether Name Administration was aware of the VISA trade marks at the time it registered the disputed domain name. The lack of distinctiveness of the wording component of the trade marks, “premier” (or “first” in French) lends weight to the Respondent’s arguments, as do the facts VISA has used the trade marks primarily – if not solely– in the French market, whereas the disputed website operates entirely in the English language.
In conclusion, it was singularly important to the panel denying VISA’s complain that the use of the word “premier” in connection with the marketing and promotion of premium banking and credit services (and, indeed, in respect of a wide range of goods and services in numerous industries), both in France and worldwide, is widespread. In addition, the website using the disputed domain is not a direct competitor of VISA in respect of the supply of credit card services and is not seeking to disrupt the Complainant’s business, but is simply operating a pay-per-click website providing links to third party websites (albeit third party websites of entities operating in the same industry as the Complainant). Many of such entities also make use of the word “premier” as trade marks in respect of the marketing and promotion of their banking and credit card products and services.
Nate Harris, in The Domain Blog, keenly sees that the Panel’s emphasis on the “wording component” of Visa’s marks suggests “…that Visa was trying to prove rights in the word portion of the marks through evidence of its design marks. In other words, while Visa may (or may not) have proven that Respondent was likely familiar with its marks as a whole, it did not show that Respondent would have recognized that the words appearing in those marks functioned as a mark in isolation…”