Tobacco companies lose their 'kool.com'

The World Intellectual Property Organization (WIPO) recently came down against two members of the British American Tobacco group, deciding that the tobacco companies were unable to prove that the current holder of 'kool.com' was cybersquatting.

BWT Brands Inc and British American Tobacco (Brands) Inc have registered the trademark KOOL all over the world in respect of their cigarette brands. The companies brought a complaint at the end of last year against NABR, a company owned by a Californian individual who had registered 'kool.com' (along with many others) in May 1997, in an attempt to have the disputed domain name cancelled or transferred to them.

In order to succeed under the Uniform Domain Name Dispute Resolution Policy (UDRP), the burden of proof was on the complainants to show that:

• the domain name is identical or confusingly similar to a trademark or service mark in which they have rights;
  
  
• the domain name owner has no rights or legitimate interests in respect of the domain name; and
  
  
• the domain name was registered and being used in bad faith.

The first of these conditions was easily proved, but the tobacco firms failed to prove the second condition. The domain name owner provided documentary evidence of 'demonstrable preparations' (eg, contracting with a graphic designer to design the site's layout) for the use of the domain name in connection with a project for a network of interlinked websites.

As regards the third requirement, the tobacconists alleged that the owner's primary purpose in registering the domain name was to sell it for profit, either to them or to a competitor. However, the only evidence for this resulted from an anonymous approach made by their agent, in response to which the owner said a sale might be considered. In the context of the preparations for legitimate use, this was insufficient to show that profit was the primary purpose. The allegation of bad faith was therefore not upheld.

James Lowes, Simmons & Simmons, London