WIPO D2002-0774 · decided 26 October 2002
Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store
The parties
- Complainant
- Milwaukee Electric Tool Corporation
- Respondent
- Bay Verte Machinery, Inc. d/b/a The Power Tool Store
What did the panel find on each element?
| Policy paragraph | Finding |
|---|---|
| 4(a)(i) Identical or confusingly similar | The panel found milwaukeetool.com confusingly similar to the stylized MILWAUKEE trademark, and the respondent accepted both the complainant's rights and the confusing similarity. |
| 4(a)(ii) No rights or legitimate interests | The panel found a legitimate interest: the respondent, an authorized distributor, registered and used milwaukeetool.com before Milwaukee adopted its Internet policy barring distributors from using its trademark in domain names. |
| 4(a)(iii) Registered and used in bad faith | The panel did not analyse bad faith separately. Based on its legitimate interest finding, it determined that the respondent did not register and use milwaukeetool.com in bad faith. |
Why does Milwaukee Tool matter for a complaint today?
In Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774, the panel refused to transfer milwaukeetool.com. The respondent was an authorized Milwaukee distributor. It registered the domain name on 14 April 2000 and pointed it at its own store, which listed 30 tool producers, Milwaukee among them. Milwaukee sent distributors a written policy against using its trademark in domain names no earlier than December 2001, and said it had told the respondent orally in July 2001. The panel held that the respondent acted reasonably before then, since Milwaukee had partly paid for its newspaper advertising on pages naming 25 power tool producers. The panel said it was not setting a general rule for distributors. Two limits matter for a manufacturer today. First, the result turned on timing, so put a domain name clause in your distribution terms early. Second, section 2.8.1 of the WIPO Overview 3.1 sets out the Oki Data test, which requires a reseller to sell only the trademarked goods and to disclose its relationship with the trademark owner. That test does not apply where a prior agreement expressly prohibits or allows domain names containing the trademark.
What does the WIPO Overview 3.1 say?
The WIPO Overview 3.1 summarises how WIPO panels decide each issue. These sections cover the same point of law.
- Section 2.8: How do panels assess claims of nominative (fair) use by resellers or distributors? The Overview cites this decision here.
Who decided the case?
A single panelist, Frederick M. Abbott, decided the case on 26 October 2002.
Read the decision
The full text is published by the WIPO Arbitration and Mediation Center. We summarise it here; the decision itself is the authority.
Summarised by Gergana Dimitrova. Checked against the published decision on 23 October 2026.
Someone has taken a domain that uses your brand?
The first assessment is free and comes back within 24 hours. If the case is weak we say so rather than take the fee.