Urban Sophistication Ltd. v. Luke Donnelly / Puffer Case Store
Claim Number: FA2204001994161; <puffercasestore.shop>
June 1, 2022
Fashions catch on. And if you put the word “urban” in front of a product or describe it as “edgy”, it does wonders in the promotion. Celebrity endorsements will also help immeasurably. So it was with the puffer jacket which is now de rigeur in fashionable street wear. I am sure you know what I mean: the ribbed, chunky garments in compulsory black, where avant-garde meets popular culture. With that in mind, it was almost inevitable that someone would pick up the notion of the puffer jacket and link it with other products. Thus it was that the Israeli company Urban Sophistication produced the Puffer Case, a polyurethane mobile phone case that resembled the quilted down puffer jacket that has been quite a success. It is, however, almost inevitable that in line with that success, along would come other operators who would either copy the product or claim that the product they were selling was in fact the original product or engage in other conduct that would make potential buyers think they were getting the original article or its equivalent or that the article they are being offered was being sold with the approval of the producers of the genuine article.
Thus, Urban Sophistication found that another entity had come along and registered the domain name <puffercasestore.shop> and was using it to sell what it implied was the genuine puffer case article .
The complainant, Urban Sophistication, did not have a registered trademark, although it had applied for one. So the first step it had to take was to show that it had a common law or unregistered trademark for PUFFER CASE. This it was able to do. Clearly its products had given a secondary meaning to the term “ puffer case”.
Next, Urban Sophistication had to show that the domain name was identical or confusingly similar to the PUFFER CASE mark. This was clearly so, as adding the word “store” simply invoked the notion of selling or distributing the puffer case in a store which, if anything, strengthened the impression that the domain name was dealing with the sale of the official trademark branded puffer cases in a store.
It also became clear that the registrant of the domain name did not have a right or legitimate interest in the domain name because it was pretending it was the trademark owner and that it was selling genuine puffer cases. It was also acting in an illegitimate way by trying to extract personal and financial information from potential buyers of puffer cases.
On bad faith, the panel had no trouble finding that the registrant of the domain name must have known by now of the PUFFER CASE trademark and that it was just trying to confuse potential buyers into believing that its products were the genuine article. It was by that means passing itself off as the trademark owner and implying that it was sponsored by or affiliated with Urban Sophistication. That belief must have been enhanced by the fact that the registrant apparently helped itself to content on the official Urban Sophistication website without permission and that. All of that amounted to bad faith registration and use of the domain name. The complaint had thus proved all three elements that it had to establish.
This it was granted an order that the domain name was to be transferred to itself.
The decision is a useful example of how the UDRP, the basis of all domain name arbitration, can adapt to modern products and protect trademark rights that underpin them. It also shows that you can still win one of these case if you have a common law treademark in the absence of a registered one.