Cookie and gift seller loses arbitration for domain 1800cookies.com.
Cookie and gift company Mrs. Fields has lost an arbitration case at National Arbitration Forum for the domain name 1800cookies.com. Mrs. Fields has a trademark for 1-800-Cookies, which is its primary phone number for ordering. It also uses the web address 800cookies.com. But the arbitration panel found that the owner of the domain registered it before Mrs. Fields had rights to the trademark.
This must be a tough loss for Mrs. Fields, especially since the owner of the domain name forwards it to his own online cookie store, BattersandDoughs.com. According to the decision, Mrs. Fields contacted the domain owner and offered $2,000 for the domain name. The owner countered that he would sell it for $50,000.
Mrs. Fields claims that the trademark was first used by the company’s predecessor-in-interest in 1993 which filed a supplemental registration of the mark in 1994. In 1997 Mrs. Fields acquired the trademark and phone number from the predecessor. In 1998 Mrs. Fields sent out catalogs including the trademark. The domain 1800cookies.com was registered in 2000. Then Mrs. Fields filed an application for the trademark for principal registration in 2002.
The panel decided that the 2002 filing was the important one, and the supplemental registration didn’t matter.
Regarding Complainant’s rights in the Mark prior to registration, the evidence is: a single catalog page; a statement in a declaration as to distribution of catalogs in 2001; general statements of use in declarations of Complainant. The Panel finds this evidence insufficient to establish Complainant’s prior rights.
RegFeeNames.com says
Strange case – Its good to see that the bigger company doesnt alway win the case because they have money.
It does show that protecting your assets are key!
Always register all domains ext when available.
Regards,
Robbie
Rick says
I think the price on the name just went to $200K.
Tim Davids says
Kooky, I mean cookie story…agree it’s nice to see the underdog win sometimes.
TurkDN.com says
hoorraayyyyy…
Finally domainers started to win cases. Hope this will create a sample for future.
Regards,
Ataol
Andrew says
@turkDN- I wouldn’t call the owner a domainer
TurkDN.com says
🙂 may be I should restate then,
hoorraayyyyy…
Finally big companies started to lose cases. Hope this will create a sample for future.
Regards,
Atao
Free Reg Names says
It is good to see that the domain owner won.
However, had the domain been pointed towards a ppc page, he probably would have lost.
Domain Name Juggler says
Interesting case. Great to see the little guy coming out on top and retaining his domain. This just reinforces the real estate valuation and considerations when trying to take what is not yours. Money isn’t eveything.
Now if the name was “Grandma” Fields…well, the case would have been much different…Sympathy factor…lol.
Steve M says
Am betting this isn’t over yet…look for a lawsuit shortly.
A US court likely will give far more weight to Fields’ prior use arguments than the panel did.
Andrew says
I really think this could have gone either way. It’s one of those cases where you could flip a coin with the arbitration panel.
domain guy says
the key here is supplemental register. this is where you have weak rights but convince the examing attorney you have some rights. during the 5 yr period then you are suppose to acquire distinctivness and then appray in 5yrsto be on the principal register. also
words with design element are weak and udrp
do not recognize these rights.this decision several yrs ago.udrp is being consistant with
their decisions.on to court with attorneys this cound be a 200k dollar legal battle spread over several yrs..
DR. DOMAIN says
Give ’em 100k.Tell ’em to get lost.
JAC says
Generally when a case goes to arbitration there are no appeals and they loser can not file a lawsuit on the same matter. Both sides agreed to the arbitration and chose not to go through a court case.
Andrew Allemann says
@ JAC – with domain arbitration, you can file a lawsuit within 10 days to halt the transfer.