In the recent case of Harry Winston, Inc. and Harry Winston S.A. v. Jennifer Katherman WIPO D2008-1267 (October 18, 2008), a Panel was presented with an interesting decision which covered numerous topics defenses not often raised by Respondents, which included fair use and parody. The Respondent registered the disputed domain, www.hairywinston.com on March 11, 2008, to purportedly run her business of retail sales of dog and cat supplies and accessories (for example: leashes, collars and toys). The Complainant is the well known Harry Winston, who owns the federally registered trademark HARRY WINSTON for jewelry, diamonds, and timepieces and operates a website at www.harrywinston.com.

Respondent acknowledges that the name was selected to make a playful use of the name of her dog, Winston, and that the name will bring to mind the Complainant. The Respondent contends that her use of the name is fair use by way of parody. The Respondent notes that “for the Panel to hold that she has no rights or legitimate interests in respect of the Domain Name, is tantamount to a finding of trade mark infringement, a finding that is outwith the scope of the Policy and the Panel’s competence.”

In addressing the three prong UDRP test, the Panel first addresses whether or not the domain name is identical or confusingly similar. The Respondent argues that anyone who simply views the site could not possibly believe that it is related in any way to the Complainant. However, as the Panel explained, “it is now well-established that the content of the Respondent’s website is an irrelevant factor when assessing confusing similarity under the first element of the Policy. The test is to be conducted by way of a side-by-side comparison of the Complainants’ trade mark and the Domain Name.” Therefore, the Panel found this factor in favor of the Complainant.

The Panel next briefly addressed the second prong, whether the Respondent had any rights or legitimate interests. The Respondent claims that she had a bonafide offering of goods and services prior to notification by the Complainant. However, the Panel explained that the potential for the dispute arose the moment she considered adopting the parody name, and thus she could not enjoy the benefit of the bona fide offering. Interestingly though, the Panel did not make a decision regarding the second prong, and instead explained that the third prong was determinative of the case.

The Panel appears to almost chastise the Complainant for their attempt to “adopt a scatter gun approach” regarding their contentions of bad faith. One of the Complainant s arguments is explained by the Panel as follows:

The Complainants then go on to contend that the commercial gain that the Respondent is hoping and expecting to derive from the Domain Name will be achieved by visitors visiting the Respondent’s website in the mistaken belief that, because of the confusing similarity of the Domain Name to the Complainants’ trade mark, the Respondent’s website is a site of or associated with the Complainants (paragraph 4(b)(iv) of the Policy). On arriving at the site, those visitors will appreciate their mistake, but insofar as any of those visitors may be interested in acquiring pet supplies and accessories, the Respondent will thereby have derived an unfair business opportunity, the unfairness lying in the deceit by which the Respondent has diverted the visitors to her site.

Interestingly though, the Panel explains that it is not their task to “attempt to assess whether the Respondent’s activities constitute infringement of the Complainant’s trade mark rights.”
The Respondent acknowledges that the Complainant’s name will come to mind among consumers, but believes it will not lead to confusion. The Panel agreed and explained:

In the view of the Panel, it is inconceivable that people of the sophistication of the Complainants’ clientele will believe that the Complainants could begin to countenance use of such a variant of their name for their business. Even if the Complainants were minded to consider brand extensions, it is most unlikely that Hairy Winston would feature as a candidate.

The Panel also examined the parody arguments, and apparently believed that in the domain context her usage was not bad faith in accordance with the UDRP. The Panel noted that it may constitute trademark infringement, but that is not within the Panel’s decision making powers. The Panel explained:

The Panel is satisfied that the Respondent’s intention in registering and using the Domain Name as she has was to parody the Complainants’ famous name and trade mark and that she was justified in believing that the parody would successfully differentiate the parody from the original such as to obviate any significant risk of confusion or deception. In such circumstances it would be perverse to categorise the Respondent’s intentions when she registered the Domain Name as bad faith intentions for the purposes of the Policy.

Ultimately, the Panel DENIED the request for transfer.