scribe v ryan ramsey case summary
overview

Ryan registered the domain name <koozies.com> in December 1998 and used the website from 2008 to 2010 for selling insulated covers called “KOOZIES”.  This use stopped in 2010 and thereafter the website has been inactive, resolving to a “404 error” page.

Scribe had a trade mark for KOOZIE in relation to “insulated containers for beverage cans”, originally registered in 1980.  This lapsed in 2001 and in 2007 it acquired new trade mark registrations for the term.

In 2012 Scribe wrote to Ryan with a letter of demand but after some communication the matter was not resolved. Seven years later Scribe initiated the domain name dispute.

decision

Ryan was permitted to retain the domain due to following:

1. Scribe failed to prove they had reputation in the term “KOOZIE” at the time the domain was registered (1998).
2. Ryan selling goods between 2008 to 2010 on the website, which infringed Scribe’s trade mark, was immaterial to whether the attainment of the website in 1998 was in bad faith.
3. There was doubt as to whether the general public (and therefore Ryan) would have been aware of Scribe’s trade mark rights as at 1998 (given Scribe’s lack of evidence supporting its reputation at that time).

key takeaways

• Bad faith is assessed at the time of the domain name registration.  Hence if a website was originally used legitimately, the subsequent abandonment of its use and holding it (say for resale purposes) can be legitimate.
• When making domain name complaints, evidence of use of the trade mark and associated reputation should be provided to establish that the domain name registrant would probably have known about the trade mark, and so registered it in bad faith.
• Trade marks should be duly registered and renewed to support that the mark is being used and thereby known to the public and domain name registrants.