Business Irish

Tuesday 18 December 2018

Office Depot domain name row erupts

'The watchdog ruled that Aurelius made unlawful cybersquatting claims in order to coerce Florida-based Office Depot into handing over the domain when it had no legal entitlement to begin with.' (stock image)
'The watchdog ruled that Aurelius made unlawful cybersquatting claims in order to coerce Florida-based Office Depot into handing over the domain when it had no legal entitlement to begin with.' (stock image)

Simon Rowe

A 'cybersquatting' lawsuit taken by the Dublin-registered arm of Office Depot Europe against the US arm of Office Depot over the use of the popular domain name viking.com has backfired after the complaint was thrown out and Office Depot Europe's private equity owner was found to have engaged in "reverse domain name hijacking".

The ruling was made public in recent days by the Geneva-based global intellectual property watchdog WIPO.

The dispute arose after Aurelius RHO GTO Development Ltd - registered in Rosemount Business Park, Ballycoolin, Dublin 11 - completed the acquisition of Office Depot Europe in January 2017. Although the deal included Office Depot's B2B delivery business Viking, it failed to check if the Viking.com domain name was part of the deal.

While the dot.co.uk domain name was included in the deal, the dot.com version was absent from the list of intellectual property handed over with the sale. Office Depot US insists it was never part of the initial transaction.

When private equity firm Aurelius discovered this, it tried to buy the domain from Office Depot but was unsuccessful, according to an article on

Office Products International (opi.net).

In November last year, the firm's Dublin-registered company then filed a complaint with the World Intellectual Property Organisation (WIPO) accusing Office Depot of so-called 'cybersquatting'.

Cybersquatting is defined as registering ownership of a domain name in bad faith with the intent to profit from a trademark belonging to someone else.

WIPO failed to find evidence of 'bad faith' in Office Depot's actions, as it had previously owned the Viking brand for more than 15 years and continues to control the registered trademark in other parts of the world, including the US.

The lawsuit backfired on the Irish-registered firm, as WIPO found Aurelius to be guilty of "reverse domain name hijacking".

The watchdog ruled that Aurelius made unlawful cybersquatting claims in order to coerce Florida-based Office Depot into handing over the domain when it had no legal entitlement to begin with.

Office Depot Europe's private equity owner Aurelius declined to comment when contacted.

Last autumn, it emerged that around 100 people were being made redundant at office supplies business Viking Direct Ireland, owned by Office Depot Europe.

Office Depot Europe said it was consolidating warehousing operations in Ireland and the UK in order to "create a solid foundation for the future".

"This is part of the company's strategy to improve efficiency and optimise costs, while providing customers with quality products, great prices and world-class service," the firm said.

The company would not say what effect the move would have, if any, on its fulfilment of Irish contracts. It's understood to have won business from the State.

Sunday Indo Business

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