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Steinway domain name cases

Steinway & Sons v Westminster Pianos (06/02/2006)

Steinway & Sons (‘the Complainant’) describes itself as the world’s leading manufacturer of quality pianos. It has been trading for over 150 years and has built up substantial international reputation and goodwill in the names under which it trades, which include STEINWAY and STEINWAY & SONS.

The Complainant sells its products worldwide through a system of authorised dealers which are required to meet specific selection criteria and which are licensed to use the Complainant’s trade marks.

The Complainant is the proprietor of a number of trade marks registered throughout the world which are, or include, the words STEINWAY and STEINWAY & SONS and are registered in a number of classes, including the word mark STEINWAY as UK trade marks and in all EU countries through Community trade marks.

The Complainant operates websites at domain names registered by the Complainant, or a member of the Complainant’s corporate group, which incorporate the word STEINWAY including steinway.co.uk and steinway.com, among others.

Westminster Pianos (‘the Respondent’) registered Steinways.org.uk (‘the Domain Name’) on 12 June 2004. The Respondent was not an authorised dealer. As of August 2005, the URL of the Domain Name directed users to a website which advertised the goods and services of the Respondent. At that time, the Respondent’s website advertised the sale, servicing and restoration of a range of musical instruments including pianos.

The Complainant filed a complaint against Westminster Pianos via the Nominet Dispute Resolution Service, alleging that the Complainant owned has Rights (as defined in the Nominet Dispute Resolution Policy), and that the Domain Name, in the hands of the Respondent, was an Abusive Registration.

The Expert appointed by Nominet to determine the complaint ruled that the Complainant had proved on the balance of probabilities that it owned Rights in respect of names or marks which are identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent was an Abusive Registration.

Accordingly the Expert directed that the Domain Name be transferred to the Complainant.

[Copyright of Nominet UK in the original text of the above report is acknowledged. Legaleze is solely responsible for the above summary.]

Steinway, Inc. v. Carey Simon (02/06/2010)

Steinway, Inc  (‘Complainant’) is the proprietor of the STEINWAY mark registered with the United States Patent and Trademark Office in 1921

Carey Simon (‘Respondent’) Friedman partnered with Robert Friedman in 2009 to use the american-steinway.com domain name to resolve to a website through which Friedman’s business services would be identified and offered. Robert Friedman had been in the business of buying, restoring and reselling Steinway pianos for more than 35 years.  The domain name was used in connection with a legitimate business in which only Steinway pianos are refurbished and resold. Friedman in the past even sold restored pianos to Complainant.  Neither Friedman nor Respondent has ever had any affiliation with Complainant.  Respondent on the website identifies the business he operates with Friedman as the “World’s Largest Used Steinway Piano Wholesaler” and expressly disclaims any affiliation with Complainant.

Complainant filed a complaint under the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) contending that the domain name american-steinway.com registered and used by Respondent was confusingly similar to Complainant’s STEINWAY name and mark. Complainant also contended that Respondent had no rights or legitimate interests in the american-steinway.com domain name and that Respondent registered and was using the domain name in bad faith.

The Panel appointed to determine the complaint found that the disputed domain name was indeed confusingly similar to Complainant’s STEINWAY mark. However, having regard to the Respondent’s rights and legitimate interests in the disputed domain name, the Panel determined that Respondent did not register or use the domain name in bad faith within the meaning of the Rules. The Panel further found that Complainant has failed to prove that Respondent lacked rights or legitimate interests in the domain name and that Respondent registered and was using the domain name in bad faith.

[Copyright of National Arbitration Forum in the original text of the above report is acknowledged. Legaleze is solely responsible for the above summary.]

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