Complainant given the boot over 'shoes.biz'

International

World Intellectual Property Organization (WIPO) panellist Alan Limbury has issued a finding of reverse domain name hijacking in a Start-up Trademark Opposition Policy (STOP) case involving the domain name 'shoes.biz'.

California resident Dan Zuckerman, the vice president of Shoes.com, brought his STOP complaint challenging Vincent Peeris's registration of 'shoes.biz'. Zuckerman was made to file an amended claim, as his original did not describe sufficiently the grounds on which the complaint was made.

Limbury stated that:

  • Zuckerman's trademark registration of SHOES.COM was made only after his complaint against Peeris was filed;

  • Zuckerman did not meet the requirements of STOP Rule 1, which states that complaints may only be brought by parties that possess valid trademark registrations before proceedings are filed; and

  • the word 'shoes' is generic and therefore "cannot become distinctive of goods and services in the field of footwear, in which the complainant engages."

Limbury held that Peeris had established rights and legitimate interests in the domain name, and he found no evidence of registration or use of the domain name in bad faith. Limbury instead found Zuckerman guilty of reverse domain name hijacking

The decision emphasizes that parties should not attempt to use the dispute resolution process against domain names based solely on generic words.

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

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