Drinking a cold beer outside on a hot Summer day is something I enjoy, and a koozie helps keep my beer cold. Did you know that the term “Koozie” is actually a trademark rather than a generic term? A recent UDRP decision sheds light on this and shows the issue with buying generic-sounding domain names that are actually trademarks.
BIC Corporation of Clearwater, Florida filed a UDRP at the World Intellectual Property Organization for BottleKoozies.com and Koozie.com. It is WIPO case No. D2016-0557. Citing its “Koozie” trademarks, the complainant prevailed in this single panelist UDRP decision, and the domain names will be transferred to the complainant. The respondent did not reply to the UDRP.
I did not even realize that “koozie” is a trademark, as I’ve always thought that is just what they are called. There are a ton of domain names registered with the word “koozie” in them, and I would imagine there are plenty of domain name owners who have no idea that “koozie” is protected in the same manner as Microsoft or Realtor.
Interestingly, the “koozie” trademark apparently lapsed at some point, and that may have protected the domain name owner to some degree due to the registration date of the domain name. The panelist’s discussion of this issue was what I found most interesting in this decision:
“There is a potential issue with the Complainant’s case arising from the history of the Complainant’s trademark registrations and the dates on which the disputed domain names were created. The disputed domain name
was created on April 14, 2001. At that time, the original trademark in the name of the Complainant’s predecessor in interest was still in force such that bad faith registration would be evident at that time. However, in December 2001 that trademark was cancelled due to the Complainant’s predecessor failing to renew it. The disputed domain name was created on June 28, 2005. At that time, the Complainant’s original trademark registration had been cancelled and its registered trademark no. 3240989 was under application but had not yet proceeded to grant.
The Respondent might have argued that any rights that the Complainant’s predecessors may have held in the KOOZIE mark at the time when the disputed domain name
was created – at least as far as registered rights are concerned – temporarily ceased to exist. Equally, the Respondent might have suggested that there could be no registration in bad faith in respect of the disputed domain name as the Complainant’s predecessor held no registered rights in the KOOZIE mark when that disputed domain name was created (it arguably did have unregistered rights still in force however). The Respondent has however made no such arguments, despite having had an opportunity both to answer the Complaint and to comment on the Complainant’s response to Procedural Order No. 1.
In any event, the Panel does not consider that these potential lines of argument would have had any merit, had they been put forward. While there may be an apparent break in the Complainant’s registered rights between 2001 and 2007, the Complainant has made the uncontradicted assertion that the KOOZIE mark has been in extensive and continuous use prior to and over the entire period of existence of the disputed domain names, in connection with the sale of insulated beverage containers by the Complainant and its predecessors. Although the Complainant has not provided any direct evidence in support of this assertion, in the Panel’s view, there is just enough support to be gleaned from the Complainant’s trademark application filed in February 2004 which claims the same first use in commerce date of April 1979 as that of the Complainant’s predecessor’s original trademark registration, rather than citing any more recent date.
Accordingly, notwithstanding the apparent break in the Complainant’s registered rights, the Panel finds on the balance of probabilities that the Complainant and its predecessors in interest did have rights in the KOOZIE mark (whether registered, or at common law), both at the time when each of the disputed domain names were created (which in both cases is well after 1979) and thereafter over the entire period in which they have been in existence. In other words, nothing in the record suggests that the Respondent’s motivation would have been any different for registering
in light of its prior registration of . On its own, this finding does not necessarily lead to a conclusion that the disputed domain names must have been registered and used in bad faith. It merely confirms that there was the potential for the Complainant’s rights to have been targeted by the Respondent at the point of creation and during its subsequent use of each of the disputed domain names. It is necessary for the Panel to have regard to the surrounding facts and circumstances of this case, and in particular the manner of the Respondent’s use of the disputed domain names, in order to reach a concluded view on this topic.”
It is also interesting to me that the company waited so long to try and get this domain name. It would seem like they should have tried to get the domain name many years ago if it was that important to their brand.
In any event, it looks like they will be getting the domain name barring any subsequent litigation from the domain owner.