Registration In Bad Faith Is Essential - Even When The Domain Name Is Over 20 Years Old

Author:Mr David Taylor and Jane Seager
Profession:Hogan Lovells
 
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In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel refused to transfer the disputed domain name koozies.com, finding that the Complainant had failed to prove that the Domain Name had been registered in bad faith. This was still crucial for success, even though the domain name had been registered way back in 1998.

Background

The Complainant was Scribe Opco, Inc, a United States-based supplier of promotional products including insulated beverage containers, bags, chairs and portable coolers labelled "Koozie". In 1980, a company that the Complainant later acquired registered the trade mark KOOZIE in a stylised form for insulated containers for beverage cans. The trade mark lapsed in 2001 and was re-registered by the Complainant in 2007. To date, the Complainant has registered several United States trademarks for KOOZIE.

The Respondent was Ryan Ramsey, based in the United States. He registered the Domain Name in 1998 and appeared to have used it between 2008 and 2010 for a website selling insulated covers, also referred to as "koozies". The Domain Name had not resolved to an active website since 2010.

The Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name.

To be successful under the UDRP, a Complainant must satisfy the requirements of paragraph 4(a) of the UDRP, namely:

(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name was registered and is being used in bad faith.

Identity / similarity

Under the first element of paragraph 4(a) of the UDRP, the Complainant argued that the Domain Name was virtually identical or confusingly similar to its trade mark and that the Respondent had only added an "s" to the word. The Respondent did not contest this assertion but argued that the term "koozie" was a generic reference for insulated container covers for beverage cans. The Panel considered that, although the Respondent had provided examples of descriptive uses of "koozie", it was not in a position to assess the validity of the Complainant's trade mark registrations and held that the requirements of paragraph 4(a) of the UDRP were satisfied.

Rights / legitimate interests

With regard...

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