Licensee knocks out 'georgeforeman.com' cybersquatting claim
In Salton Inc v George Foreman Foods Inc, a World Intellectual Property Organization (WIPO) panellist has refused to order the transfer of 'georgeforeman.com' to the complainant - the owner of rights, granted by ex-boxer George Foreman, in several GEORGE FOREMAN trademarks.
Salton Inc acquired the right to use Foreman's name for a number of products, including the well-known George Foreman Grill and had been using the GEORGE FOREMAN trademarks since 1995. George Foreman Foods (GFF) registered 'georgeforeman.com' in 1998 and used the website to which the name resolved to advertise and sell meat and other food products.
Salton filed a complaint with WIPO under the Uniform Domain Name Dispute Resolution Policy, seeking the transfer of the domain name. GFF responded that, among other things, it had been licensed by Foreman to use the name George Foreman in connection with food products and that this agreement had also transferred to GFF the right to use several domain names, including 'georgeforeman.com'.
WIPO panellist Debra J Stanek first noted that GFF's domain name was identical to Salton's mark, rejecting GFF's argument that where a domain name consists of a celebrity's name, "confusing similarity" should be decided on the basis of whether the domain name causes confusion, not whether it is identical to the complainant's mark. However, she was of the opinion that GFF continued to have some rights in the domain name as a result of the licensing agreement with Foreman, despite the fact that Foreman and GFF were in separate arbitration over whether the agreement had in fact been terminated. Stanek stated that based on evidence of correspondence from Foreman's lawyers, referring to Foreman's intention to seek the "return" of the domain name and the request that GFF "protect" it in the interim, GFF continues to have some rights and legitimate interests in the domain name, albeit subject to the outcome of the arbitration.
Accordingly, Stanek refused to order the transfer of the domain name.
Aaron Wood, Hammonds, London
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