A positive ruling from the Arbitration Tribunal declares the BLUEHOST trade mark well-known

Published Date: March 2, 2021

Recently, the Arbitration Tribunal (“the Tribunal”) in Kenya adjudicated a dispute concerning the domain name bluehost.co.ke. The dispute was initiated in terms of the    Alternative Dispute Resolution Policy (“the Policy”) of the Kenya Network Information Center (“KENIC”) read together with the Trade Marks Act and the Arbitration Act.

The claimant, Bluehost Incorporated, is the owner of the BLUEHOST trade mark which is registered in various countries, including the United States of America, Russia, China, Hong Kong, India and Mexico. The BLUEHOST trade mark was first registered in 2008 but has been used in relation to web hosting services, worldwide, since 2003. In Kenya, the claimant is the registered owner of the BLUEHOST trade mark as registered in October 2010. These trade mark registrations cover class 36 (financial services) and class 38 (telecommunications). It also has pending trade mark applications for BLUEHOST in respect of classes 38, 42 and 45, which were filed on 2 September 2019. The claimant is also the owner of the domain name www.bluehost.com.

The respondent, Bluehost Cloud Hosting, registered the domain name in dispute, bluehost.co.ke, in December 2018. When the claimant became aware of this, it addressed correspondence to the respondent, to transfer the domain name to it, and to KENIC, requesting that the domain name be suspended. In response, the respondent offered to sell the disputed domain name to the claimant.

In terms of the Policy, KENIC invited both parties to a compulsory mediation, however, the respondent failed to engage in these proceedings. In the circumstances, the matter proceeded to arbitration in terms of Article 7(1) of the Policy.

The arbitration proceeded on the papers or pleadings filed by the claimant and the respondent declined to participate in the proceedings.

The claimant sought the transfer of the disputed domain name to it, alternatively, that it be allowed to register the domain name bluehost.co.ke on the basis that, inter alia,  the disputed domain name amounted to an abusive registration as defined in the Policy.

In assessing the matter, the Tribunal considered whether the claimant had trade mark rights to the trade mark BLUEHOST. In so doing, the Tribunal made specific reference to section 15A of the Trade Marks Act and WIPO’s Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks. It specifically took cognisance of the claimant’s registered BLUEHOST trade mark in several jurisdictions and recognition of the mark across the globe. The arbitrator was, therefore, satisfied that the claimant’s BLUEHOST trade mark qualifies as a well-known trade mark, which, it noted, shall also be demonstrated by the arbitral award.

In its ruling, the Tribunal held that the respondent did not have the authority to use the claimant’s trade mark, therefore, the respondent’s use of the BLUEHOST trade mark constituted trade mark infringement in terms of section 7 of the Trade Marks Act. It was found that the respondent was effectively hoarding the domain name, which in and of itself constitutes bad faith. Such use would easily confuse unknowing persons to believe that the domain name is connected with the claimant and therefore constitutes an abusive registration.  In addition, the Tribunal held that the domain name also constitutes an abusive registration for the following reasons: the respondent’s domain name wholly incorporates a registered trade mark and was thus registered in bad faith, it is used in the same business as the claimant, and that the respondent has no rights or legitimate interests in the trade mark and thus in the domain name. It was therefore ordered that the domain name be transferred to the claimant.

The decision by the Tribunal, specifically that portion declaring the trade mark BLUEHOST as well-known on the basis of global recognition of the mark, is a departure from the usual stringent interpretation of section 15A of the Trade Marks Act and WIPO’s Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks by the Registrar of Trade Marks. Seasoned litigators in Kenya will know that the provisions in the context of trade mark proceedings are strictly interpreted to mean that a mark must be shown to be well-known in Kenya amongst the relevant public. Be that as it may, this is a welcome decision which correctly upholds and protects the trade mark rights of the claimant.

It also signifies the importance of brand owners registering trade marks and domain names as part of a unified brand protection strategy in Kenya.

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