Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.

Monday, May 2, 2016

Jimmy Choo thwarts knock-off domain names

By Adrian Chang, Associate

Jimmy Choo has expanded its autumn range by picking up four new domain names from cyber squatters.

Using the Uniform Domain Name Dispute Resolution Policy (UDRP) procedure, the fashion house lodged complaints against three individuals (the Registrants) holding between them the following domain names (links are to the respective UDRP decisions):

The UDRP is a policy that all .com (and similar, for example, .org and .net) domain name registrants must agree to abide by and sets out a procedure by which persons other than the registrants can claim ownership of a domain name despite someone else's prior registration. It is much faster than judicial proceedings, with complaints able to be turned around in as few as six weeks. Each case is decided 'on the papers' by either a single panellist, or if requested by either party, a panel of three comprised of a panellist selected by each party and another selected by the service provider.

In each case Jimmy Choo alleged the Registrants had registered and used, in bad faith, domain names that were confusingly similar to its brand. For their part, each of the Registrants chose not to respond to the allegations made against them.

To prevail, Jimmy Choo had to establish that each domain name was identical or confusingly similar to its trade marks, that the Registrant had no legitimate interest in the disputed domain name, and that the domain name was registered and used in bad faith. Failing to establish any one of those elements meant it would not be entitled to relief.

The Panellist in each case found that the domain names were confusingly similar to the word mark JIMMY CHOO which the fashion house had registered in many jurisdictions, including England, the United States and China, where each of the Registrants was based. The Panellists found that the inclusion of mere geographical indicators (ie. 'US'), descriptive elements (ie. -utletsale and -utletsale2013) or hyphens (ie. jimmy--choo) does not prevent confusing similarity to a trade mark.

The Panellist in each case then found the domain names had been registered well after the trade marks had been registered and the Registrants could not otherwise establish a legitimate interest in the domain name, for example, by pointing to their own names being 'Jimmy Choo'. Also, the website for each domain name advertised and sold JIMMY CHOO branded products. This was enough to establish that the Registrants had no legitimate interest in the domain names and that they had registered and used the domain names in bad faith.

It followed that in each case the domain names were transferred to the fashion house. Each of the disputed domain names now redirect to the Jimmy Choo website.

These cases were relatively straightforward, but it's good to see brands at the top of their game investing time into the basics and utilising the UDRP to quickly swat out opportunistic traders. It's all part of the daily struggle of being fabulous.

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