Domain Name Shame

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

Fine Diamond of Domain Names

Complainants have been the owners of well-known marks WINSTON and HARRY WINSTON for fine jewelry and watches since 1932, which marks are especially associated in the minds of the public with fine diamonds.  Complainants seek transfer of the disputed domain name www.harrywinstondiamond.com from the Respondent h.    Respondent failed to reply to the Complaint.

In holding that the disputed domain name is confusingly similar to the Complainants' mark, as a threshold matter the Panel found that a trademark registration adequately demonstrates a complainant's rights in a mark.  The addition of the generic term "diamond" and the top-level domain ".com" to Complainants' mark does not effect the domain name for the purpose of determining whether it is confusingly similar. 

The disputed domain name resolved to a website containing various links to websites featuring jewelry and other products competitive with Complainants' products. Determining that Respondent had no rights or legitimate interest in the disputed domain name, the Panel inferred that the Respondent collects click-through fees for each internet user redirected to competing commercial websites.  The Panel concluded that this was a bona fide offering of goods or services under the Policy, not a legitimate non-commercial or fair use.

Ordering transfer of the disputed domain name to Complainants, the Panel lastly concluded that the Respondent's use of the disputed domain name constituted a disruption of the Complainant's businesses and evidenced bad faith under the Policy due to the website providing internet users with links to various websites offering competing goods.  The Panel also indicated that the domain name will likely cause confusion as to Complainants' sponsorship of, and affiliation with, the resulting website and, consequently, the use of a confusingly similar domain name for Respondent's own commercial gain is evidence of bad faith registration and use under the Policy.  Interestingly, the Panel found further evidence of bad faith by Respondent's intentional hiding of its true identity by providing false and incomplete contact information.  Respondent and its address were both listed as "h" and the Respondent's administrative contact was listed as "hh" in the US with a telephone number of "10000000000".  As the Panel has done in the past, a finding of bad faith was founded (at least in part) on Respondent's failure to provide any contact information.  Harry Winston, Inc.  and Harry Winston, S.A. v. h, WIPO Case No. D2008-1266

Domain Name Knockout In The Ring

The Respondent manufactures and sells jewelry products, including engagement rings, wedding and anniversary rings and other types of rings.  Respondent registered the disputed domain name "thering.com" in September 1995. During the period 1998-2001, Respondent used the disputed domain name to direct Internet users to its website displaying and providing information about its rings.  Thereafter, Respondent discontinued this use in favor of "ajaffe.com", which reflects the Respondent's brand, but continued to use the disputed domain name as a corporate email address for its employees.

Complainaint owns various trademark rights for the mark "The Ring" for use with the boxing publication "The Ring Magazine", the earliest of which rights date back to January 1977.  Seeking transfer of the disputed domain name, Complainant contends that the disputed domain name, "thering.com", is identical to and confusingly similar to its trademark and contends that Respondent has never used the disputed domain name for any purpose, thus constituting bad faith under the Policy.

The Panel denied Complainant's complaint.  In so doing, the Panel found that even though Complainant had trademark rights in "The Ring" and that the disputed domain name was identical and confusingly similar to Complainant's mark, Complainant had failed to satisfy its burden of showing bad faith registration and use of the disputed domain name by Respondent.  Instead, Respondent appears to have used the disputed domain name in a descriptive sense and it was noted that a number of panels have held that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive word provided the domain name was not registered with the Complainant's mark in mind, even where it is confusingly similar to the registered mark of a complainant.  Sports and Entertainment Publications LLC v. Sandberg & Sikorski, WIPO Case No. D2007-1693