Puppy finder wins in domain name dogfight

An attempt to wrestle the domain name woofstock.com from its current owner has been unsuccessful. Two dog-related businesses struggled for control of the domain, but puppyfind.com won out.

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.