UK teddy bear maker is a two-time loser

Furrytails Ltd, a UK-based manufacturer of stuffed animals, recently faced a second loss in its attempt to recover from a US competitor a domain name that contains its trademark.

On September 6 2001 an arbitration panel appointed by the World Intellectual Property Organization (WIPO) told the company that a former US employee of Furrytails, Andrew Mitchell, could keep the domain name 'furrytails.com'. This decision followed a loss last March in front of a National Arbitration Forum arbitrator who declared that Mitchell could keep the name because he did not register the name in bad faith.

Mitchell registered the 'furrytails.com' domain in April 1998, seven months after he left Furrytails Ltd and one month after his non-compete agreement with the firm expired. He uses the domain name for his own Georgia-based soft toy business, also called Furrytails. In the initial case, the arbitrator ruled that the prior relationship was not enough to warrant removal because Mitchell operated a legitimate business and was not a cybersquatter.

In his decision on behalf of the WIPO panel, arbitrator Philip Argy wrote that a UDRP (Uniform Dispute Resolution Policy) rehearing can only occur if:

• the arbitrator in the first hearing committed serious misconduct;
  
  
• one of the parties submitted perjured evidence during the first arbitration; or
  
  
• the party requesting a rehearing presents new evidence.

The rehearing was based on Furrytails' allegation that Mitchell had asked the company to buy the domain name from him after the first arbitration. The WIPO panel ruled, however, that the new evidence was insufficient for a rehearing because the email from Mitchell asked for £98,000 not only for the domain name, but also for the US corporation. In addition, Mitchell presented evidence that Furrytails solicited the offer.

Douglas Wood and Linda Goldstein, Hall Dickler Kent Goldstein & Wood LLP, New York