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.