Panel divided on crockpot decision

In the case of The Rival Company v DVO Enterprises, a split three-member World Intellectual Property Organization panel has ordered the transfer of the domain name 'crockpotrecipes.net' to a company engaged in the business of selling electric casseroles and slow cookers, based on findings that the registrant lacked a legitimate interest in the domain name and registered it in bad faith.

The Rival Company, based in Milford, Massachusetts, brought the complaint against DVO Enterprises, a software company selling online the computer software 'Cookin' Fix and Forget', which included 369 recipes for use with electric casseroles and slow cookers. Rival, which owns two US registrations for its CROCK-POT mark, has operated a website containing recipes at 'crock-pot.com' since March 1998.

Each of the three panellists agreed that 'crockpotrecipes.net' was confusingly similar to the complainant's trademarks. They found that the addition of the generic word 'recipes' aggravated, rather than avoided, confusion, as it described the complainant's products. The majority also determined that 'crockpot' is not commonly recognized as a descriptive term, deciding instead that the long use and registration of CROCK-POT as a trademark would lead internet users to believe the domain name was a reference to Rival's trademarks. The majority concluded on this basis that the software company had no rights in the domain name. The majority also found bad faith registration, relying in part on a business proposal made by DVO to include its recipes with the sale of Rival's cookers. The proposal was made in response to a letter objecting to DVO's use of the domain name and demanding its transfer.

Dissenting panellist R Eric Gaum disagreed with the majority's characterization of the word 'crockpot'. Gaum had conducted a keyword search on Google.com and found hundreds of uses of 'crockpot', which he believed were made in a generic or descriptive manner. Gaum also referred to a dictionary definition of the word, which he found to be consistent with his search results. As such, Gaum questioned whether DVO had a legitimate interest in the domain name and had registered the domain name in bad faith. He also made a distinction between 'crockpot' and 'Crock-Pot', implying that the latter version was not the question before the panel.

In any case, the majority found that the registration violated Rival's trademark rights in the CROCK-POT mark and ordered the transfer of the domain name to Rival. The decision is in line with other Uniform Domain Name Dispute Resolution Policy cases involving the addition of generic or descriptive words to well-known trademarks.

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