'Kiwi.com' complaint given the bird


In Kiwi European Holdings BV v Future Media Architects Inc, a three-member World Intellectual Property Organization (WIPO) panel has refused to order the transfer of 'kiwi.com'.

Kiwi European Holdings BV (KEH), a division of the Sara Lee Group of companies, filed a complaint with WIPO under the Uniform Domain Name Dispute Resolution Policy (UDRP) against Future Media Architects Inc (FMA), the registrant of 'kiwi.com'. It asserted that it was the owner of numerous trademark registrations worldwide for KIWI, primarily for shoe care and household products, and claimed that it had made use of the KIWI mark since as early as 1910. It stated that the KIWI trademark is the "world's most recognized brand for shoe care".

In response, FMA contended that it had purchased the 'kiwi.com' domain name for $30,000 and made use of it in connection with its Oxide search engine. FMA also argued "domain names containing common dictionary words may be registered in good faith".

The panel agreed with FMA that its use of the disputed domain name in connection with a search engine constituted a legitimate use under the UDRP and that 'kiwi' was "a well-known generic term with several different meanings". According to the panel:

"the domain name consists of a generic term, and it is therefore conceivable to the panel that respondent registered the contested domain name without having complainant in mind, or even without knowledge of complainant. The website corresponding to the contested domain name furthermore does not give any specific reason to believe that respondent has attempted to be confused with complainant, to tarnish complainant's trademark, or disrupt its business in other ways."

Although FMA did not explicitly seek a finding of reverse domain name hijacking against KEH or the Sara Lee Group, the panel determined that the complaint "was brought in bad faith in an instance of reverse domain name hijacking, based upon the complete lack of evidence that the disputed domain name, a generic term, was registered or is being used for reasons related in any way to complainant or its mark".

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, Washington DC

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