A Hairy Domain Name Situation

Complainants own a number of trademark registrations of or including the name "Harry Winston".  In this case, it is undisputed that "Harry Winston" is a very well-known, longstanding trademark for fine jewelry, diamonds and timepieces.

The disputed domain name, "hairywinston.com", was registered by Respondent for use in her retail sale of "dog and cat supplies and accessories" under the name "Hairy Winston".  In an interesting twist, Respondent candidly admitted that she selected the name, Hairy Winston, as the name of her business with Complainants' famous trademark very much in mind.  While accepting that the disputed domain name is similar to Complainants' well-known trademark, Respondent denied that it is confusingly similar to that trademark.  Instead, Respondent contends that it will be obvious to all that her use of the name "Hairy Winston" is a playful variation of the Complainants' famous trademark.  One of Respondent's dogs is a hairy dog named Winston and claims to have selected the name "Hairy Winston" for her luxury pet boutique business to make playful fair use of the dog's name and Complainant's trademark by way of parody.

In support of Respondent's argument that the disputed domain name is not confusingly similar to Complainants' marks, she relied heavily on the nature of her luxury pet boutique website. However, as the Panel noted, it is well-established that the content of Respondent's website is an irrelevant factor when assessing confusing similarity under the Policy.  Rather, the test is to be conducted by way of a side-by-side comparison of Complainants' marks and the disputed domain name. By application thereof, the Panel found that "hairywinston.com" was confusingly similar to Complainants' marks. 

Harry Winston Inc. and Harry Winston S.A. v. Jennifer Katherman, WIPO Case No. D2008-12

Comments

[business domain name]

I think in this case the Harry Winston people have a legit complaint. hairy winston is only one letter off of thiers and the woman went for the association deliberately.

On the other hand, since her site / business isn't in any was competing with them, seems to me that they could work out an arrangment for her to have a link to their page on her site something like: if you came here looking for Harry Winston jewelry, click here to go to their site.

this way both parties win. she gets to take advantage of the association and they get free advertising and inbound link for the life of the site.

[Eve]

Although this company won the domain name dispute, Harry Winston Inc is still pursuing the Trademark Infringement route. Goodwill is a very large and hard earned asset on many company’s books. To ride on the coat tails of another company’s goodwill is a mockery of our capitalism. Although this dog boutique is not associated with the sale of fine jewelry, the owner candidly admits using Harry Winston to entice customers of an upscale boutique. I hope the Trademark Trial and Appeal Board will see the bad faith this company is using on Harry Winston’s name. If not, all companies should begin to write down their goodwill or just write it off the books.

http://ttabvue.uspto.gov/ttabvue/v?pno=91192387&pty=OPP