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

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:

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 to the second element of paragraph 4(a) of the UDRP, the Complainant contended that the Respondent had no rights or legitimate interests in the Domain Name because (i) he had never been authorised to register or use KOOZIE by the trade mark rights holders (ii) he was not commonly known by the Domain Name, (iii) he had used the Domain Name from 2008 to 2010 to direct internet traffic to a website in direct competition with the Complainant by offering for sale goods similar or identical to the Complainant's and (iv) he had constructive notice of the Complainant's rights in the trade mark, which was then owned by the Complainant's predecessor-in-interest at the time of registration of the Domain Name.

The Respondent argued that he had rights and legitimate interests in the Domain Name as he had made a good faith offering of goods and services before receiving the notice of the dispute.  The Respondent explained that his legitimate business was to aggregate and hold domain names consisting of acronyms, dictionary words or common phrases and that, as such, he had never been subject to UDRP proceedings.  The Respondent added that the Complainant had initiated the proceedings after a significant period of time, namely 21 years after the Domain Name registration, 9 years after the website first resolved to an error page and 7 years after the Complainant's predecessor-in-interest contacted him and non-conclusive discussions were held to resolve the matter.

However the Panel declined to address the issue of rights and legitimate interests because it found that the Complainant had not established the third element of bad faith registration and use.

Bad faith

With regard to the third element, the Complainant claimed that the Respondent had registered and used the Domain Name in bad faith because (i) he had not attempted to conduct a trade mark search at the time he registered the Domain Name and (ii) he had used the Domain Name between 2008 and 2010 in direct competition with the Complainant with a view to diverting users to his website for commercial gain.  The Complainant explained that "koozie" was a coined term which had been in use since 1979 and which had attained public recognition because the Complainant had used and promoted it extensively.

The Respondent argued that he was not aware that "koozie" was a trade mark or that it had been registered in the United States as he understood that it was a generic term referring to insulated container covers for beverage cans and that he therefore registered the Domain Name as a common name and not based on some possible trademark meaning.  The Respondent added that the Complainant had failed to establish that it had common law rights in the term "koozie" at the time of Domain Name registration, as he considered that, in light of the cancellation of the trade mark registration in 2001, the Complainant needed to rely on common law rights.  The Respondent also stressed that, given the fact that he had owned the Domain Name for 21 years and that the Complainant's predecessor in interest had known about his ownership of the Domain Name for at least 7 years and had failed to take action, he could not be found to have acted in bad faith.

The Panel first underlined that the assessment of whether a disputed domain name was registered in bad faith had to be assessed at the time of registration, which in this case was 1998.  In the Panel's opinion the Complainant had not provided evidence supporting its assertion that the KOOZIE trade mark had been in extensive and continuous use prior to and during the entire span of time since registration of the Domain Name or that the Complainant had such public recognition in the trade mark in 1998.  Conversely, the Panel found that the Respondent had provided evidence that the term "koozie" had been used as a descriptive and reference for insulated beverage covers, including dictionary definitions that appeared to date back to 2004.  In relation to the Respondent's awareness of the existence of the trade mark in 1998, the Panel considered that it was difficult to assess 21 years after the fact whether the Respondent was trying to take advantage of rights the Complainant might have had or not.  Further, the Panel pointed out that Complainant's allegation of bad faith use by the Respondent of a website between 2008 and 2010 referred to events that occurred almost 10 years after registration of the Domain Name and that such use could not, per se, indicate whether the Respondent had registered the Domain Name in bad faith, particularly if the term "koozie" was used descriptively at that time.  The Panel concluded by indicating that, given the absence of evidence, adjudicating the matter in a court action, where discovery and witnesses would be available, would be more suitable than a UDRP proceeding.

Comment

This case illustrates the importance of providing sufficient evidence of the renown and reputation of a business and its trade mark at the time of the registration of a disputed domain name, which is very difficult in the case of early registrations such as the one in question.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.