The dispute made its way to the World Intellectual Property
Organisation's dispute resolution service for domain names, with
Marlene Cook claiming that Katarzyna Bieniek held a domain that
should rightfully be hers.
Cook runs a business organising trade shows for pet businesses
and owns a registered trade mark in Canada and the US for the term
'Woofstock, a festival for dogs'.
Bieniek runs a listings website of dog breeders at
puppyfind.com, and owns the domain name woofstock.com, which
redirects to puppyfind.
Cook sent cease and desist orders to Bieniek claiming that she
had the right to own woofstock.com, but Bieniek ignored the
notices. Cook argued at the WIPO arbitration that Bieniek was
"clearly misusing the name Woofstock and directing trade and
commerce from the legitimate name holder," according to WIPO's
account of the dispute.
Bieniek argued that though Cook holds a trade mark for the term
in relation to dog trade shows in the US and Canada, it was a
widely used term prior to the registration of that mark and Cook
did not have an automatic right to the domain.
"[Bieniek argued that] since the original music festival
hundreds of dog related Woofstock events have taken place around
the world and many businesses have called themselves Woofstock,"
said the WIPO document. "On this basis she suggests that the term
should be considered generic. In support of this [Bieniek] provides
details of a number of URLs of web sites that she states give
details of Woofstock festivals that predate the Complainant’s first
use of the term. Details are provided. The earliest Woofstock
festivals she was able to locate took place in 1997, eight years
before the Complainant registered her marks."
The arbitration panel said that in order for the domain name to
be transferred it had to find that the name is confusingly similar
to Cook's trade mark, that Bieniek had no rights to or legitimate
interests in the domain and that it was registered and being used
in bad faith.
Clive Elliot, who was the sole panellist, found that Cook did
have rights in the name, and that the name was confusingly similar
to that trade mark. He found, though, that the term was a generic
one by the time that Bieniek registered the name, so that no
attempt was made to take advantage of Cook's rights.
He also said that because the domain was registered before Cook
used the term woofstock commercially, and because it relates to a
different kind of dog business than Cook's, that Bieniek neither
registered nor used the domain in bad faith.
The complaint was denied and Bieniek can keep the domain, he
said.
