I once blogged that one of a domain holder’s risks is their domain name might be seen to infringe its trademark namesake. As in one registers a domain name bearing a word or so used as a trademark, and their use infringes it.

I was reminded a few days ago of a version of that risk: that a trademark holder (or at least one claiming trademark rights) might possibly overreach or exceed their claim of accusing one of infringing their mark, simply because their domain name contains it. Yet there might be circumstances that doesn’t necessarily suggest infringement at all!

I just read of a small businesswoman in New Zealand who was recently ordered by a British shoe manufacturer’s lawfirm to transfer their domain name to them. Sounded routine…until I saw what else was demanded.

The report indicated the firm, Luxury women’s shoemaker Jimmy Choo, wanted the woman to not only give the domain name Kookychoo.com to them, but also their business cards and any other printed material bearing their supposed trademark. That’s…rather too much.

From what I gather, the firm claimed the woman’s domain registration and use of Kookychoo.com infringed their Jimmy Choo mark. What I saw was kinda mind boggling, to say the least.

One way domain-trademark infringement can occur is if one knowingly registers and uses their domain name to make money off the party’s trademark without their consent. As in one intentionally registers the domain name bearing that mark and tries to make money off it, such as putting ads of competing ads of it or tries to sell the domain name to them.

Again, from what I gather, the Jimmy Choo folks are mainly claiming trademark rights for the name for selling shoes. But their action against the woman seemingly gives the impression they think they have some kind of “exclusive” right for Choo.

This might be an unnecessarily simplified way of explaining things, but domain-trademark infringement boil down to what’s called “likelihood of confusion”. That sort of thing can occur if users who visit a domain name might confuse it with its trademark namesake, even if it’s not endorsed or permitted by them.

Unless I missed something, I don’t see how users are likely to confuse Kookychoo.com with Jimmy Choo. The site sells a variety of products except shoes as of this post, and the shoe maker is likely claiming trademark rights for the full name Jimmy Choo.

Unfortunately some trademark holders, especially those with deep pockets, also seem to think having a trademark for a word or so gives them some kind of magical exclusivity claim. They think only they have the right to use the mark for any and all other situation, and they might be bold (or brazen?) enough to take action against those that don’t necessarily infringe their mark.

In some cases, they might even claim a domain name bearing only part of their overall trademark is infringing. That’s what’s apparently going on with this case.

I read the woman was even about to give the domain name to them, just to stay out of trouble. But she stopped when she got their additional demands.

I don’t know if the actual people running Jimmy Choo are aware of this, much more allowed their lawyers to proceed in this manner. If they did, however, then I’d say it’s a shameful way to go about it.

You can read more about it below:

http://www.nzherald.co.nz/nz/news/article.cfm?c_id=1&objectid=10549055

http://randazza.wordpress.com/2008/12/20/koo-koo-jimmy-choo/

http://www.thedomains.com/2008/12/19/today-we-call-out-jimmy-choo-for-attempted-reserve-hijacking-why-is-there-no-penalty-for-this/

If you look online enough, you’ll find this happened a couple of times over the years. Not just Jimmy Choo, but a few like Stelios Haji-Ioannou and Leo Stoller. (in fairness to Stelios, though, I haven’t seen or heard anything about this involving him in the past year or so…)

Now, one thing I could suggest is to try to avoid registering domain names bearing trademarks, including supposedly no-brainer ones like Microsoft, Google, or maybe drug names of the big pharmaceutical companies. But sometimes it’s not necessarily easy, especially if one’s on another part of the globe and is hardly aware of these things.

Which leaves with only one other practical suggestion, however distasteful it is: be ready to talk to a lawyer who specializes in this field. Fortunately there are some as I also previously blogged about.

Meanwhile, I hope the New Zealand woman gets this resolved somehow. And I also hope the Jimmy Choo folks will let this one go, although I don’t always hold my breath.

Oh, and I hope you won’t find yourself in this situation, too. It certainly sucks.

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