Texas cookie maker tastes the sweets of UDRP success

In MGW Group Inc v AAH! Cookies!, a National Arbitration Forum (NAF) panellist has ordered the transfer of domain name 'cookie-bouquet.com' to Texas-based cookie franchiser MGW Group Inc.

MGW is the owner of over 240 'Cookie Bouquet' and 'Cookies by Design' shops, where it produces and sells gourmet cookies and specialty cookie gift arrangements. It also sells its products over the Internet at cookiebouquet.com. MGW owns 10 US federal trademark registrations for its family of COOKIE BOUQUET marks. AAH! Cookies! owns a retail cookie business in New Jersey. It registered the domain name 'cookie-bouquet.com' in September 2000, and used it to set up a website selling cookies and other gifts in competition with MGW.

MGW contacted AAH! in 2001 objecting to its registration and use of the COOKIE BOUQUET mark in the domain name and metatags of its website. AAH! offered to remove the offending metatags and transfer the domain name to MGW, but failed to do so. In May 2003 MGW filed a Uniform Domain Name Dispute Resolution Policy complaint against AAH! after it renewed the domain name registration for 'cookie-bouquet.com'.

AAH! claimed that the COOKIE BOUQUET mark was generic, merely describing the selling of cookies and gift bouquets. It also asserted that it had registered the domain name in good faith, based on the recommendation of its internet consultant.

NAF panellist Houston Putnam Lowry rejected AAH!'s arguments, stating that (i) the domain name was confusingly similar to the COOKIE BOUQUET trademark, and (ii) AAH! had used the domain name intentionally to attract internet users to its site for commercial gain by creating a likelihood of confusion. Lowry further stated that:

"[The] respondent's internet consultant (Snell Brothers) chose the 'cookie-bouquet.com' domain name based, in part, upon the popularity of the COOKIE BOUQUET mark without realizing it was a registered trademark. That cannot provide a defence to the claim the domain name registration was made in bad faith."

The decision is a timely reminder to companies seeking to compete in the same category as an established brand not to register and use domain names containing registered marks in order to boost traffic or sales.

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

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