Fashion house fails to secure 'kennethcole.biz'
A World Intellectual Property Organization (WIPO) panel has issued a decision under the Start-up Trademark Opposition Policy (STOP) which demonstrates once again that if a party is commonly known by a domain name, this is sufficient to demonstrate a legitimate interest in that name.
The complainant was Kenneth Cole Productions Inc, which owns trademark registrations for KENNETH COLE in 25 countries, including the United States. The respondent was Donna Lawhown of DotComNetOrg, who registered the domain name 'kennethcole.biz' on behalf of Kenneth Cole, a self-employed insurance salesman who purchased several domain names he planned to develop.
Under the STOP Rules, evidence that a party is commonly known by a domain name is sufficient to demonstrate a legitimate interest in that domain name. Thus, the panel held that Lawhown had a legitimate interest in the domain name as she had registered it on behalf of a client, Cole. In making this finding, the panel relied on a decision that went against fashion designer Georgio Armani involving the domain name 'armani.com'.
Although the panel rejected the argument that the respondent was making no commercial use of the domain name, it did indicate that the claimant could challenge the decision under the Restrictions Dispute Resolution Policy if the respondent failed to make bona fide commercial use of the domain name in the future.
For another example of a STOP ruling benefiting an individual over a trademark owner, see Legitimate trademark not enough to secure 'genting.biz'.
James L Bikoff and Patrick L Jones, Silverberg, Goldman & Bikoff, LLP, Washington DC
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