Windsor Fashions found guilty of reverse domain name hijacking

International

In Windsor Fashions Inc v Windsor Software Corporation, a three-member World Intellectual Property Organization panel has refused to transfer 'windsor.com' to the complainant because the respondent has an obvious legitimate interest in the domain. The panel also held that the complainant was guilty of reverse domain name hijacking.

Windsor Fashions, a manufacturer of clothing, claimed to have used the trademark WINDSOR since 1939. However, it only obtained a registration for the mark in the United States in April 2002. Based on this alleged extensive use and registration, it filed a trademark infringement suit under the Uniform Domain Name Dispute Resolution Policy (UDRP) against Windsor Software for its registration and use of 'windsor.com'.

Windsor Software registered the domain name in 1995. It argued that it had a legitimate interest in 'windsor.com' and had rejected several offers by Windsor Fashions to purchase it.

The panel held that, although 'windsor.com' is identical to Windsor Fashions' registered mark, the complaint could not succeed because Windsor Software has rights and legitimate interests in the disputed domain name. The panel stated that it was most improbable that a company, formally incorporated under the name Windsor Software Corporation, had used that name to facilitate the registration of 'windsor.com' in "a clever decade-long ruse to deceive and extort money from the complainant." Because Windsor Fashions failed to meet the requirement set out in Paragraph 4(a)(ii) of the UDRP, the panel did not have to consider whether the domain name had been registered and used in bad faith (Paragraph 4(a)(iii)).

However, the panel did conclude that Windsor Fashions had acted in bad faith in filing the complaint, as it was well aware of Windsor Software's legitimate claim to the domain name. Hence, the panel found Windsor Fashions guilty of reverse domain name hijacking.

John Macera, Macera & Jarzyna, Ottawa

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