Toma’s brought its claim before eResolution in Canada, one of four bodies authorised to decide domain name disputes according to the Uniform Dispute Resolution Policy, a set of rules prepared by ICANN, the internet’s domain naming authority.
Toma’s argued that visitors to FakeBake.com would think that Florida Hi-Performance Tanning was being sponsored by the Oklahoma manufacturer and that it was infringing its trade mark rights.
Toma’s applied for a registered trade mark for “Fake Bake” in 1996 and was awarded it in 1999. Florida Hi-Performance Tanning, which sells Toma’s and other manufacturers’ fake tan products, registered FakeBake.com in 1998.
Mark Lemley, the eResolution panellist, said:
"Whether a bona fide reseller of trade marked goods is always entitled to use a domain name incorporating the trademark is an unsettled legal question. It depends in part on the detailed factual circumstances of the case - how the name is being used, what evidence of confusion there is, whether there is an agreement between the parties, and so on. None of that evidence has been presented to me in this case, other than Toma's allegation (unsupported by evidence) that consumers are being confused."
Lemley concluded that, since Toma’s had failed to show abusive registration of the domain name, it could not claim the name from Florida Hi-Performance Tanning. He added, “The difficult and uncertain allocation of rights in this case should be decided by a court, not by a UDRP panel”.