Shoe Polish Company's Image Needs Polishing After Reverse Hijacking Attempt Fails

By Ron Jackson
Editor/Publisher

Noted attorney Stevan Lieberman wrote an article for DNJournal.com (with Debora McCormick) on reverse domain hijacking. Too bad one major corporation didn't read that article before locking horns with Lieberman in an important WIPO case that was decided Jan. 4th. 

In a case heard by the World Intellectual Property Organization (WIPO), Lieberman successfully defended his client, Future Media Architects Inc., against a challenge from Kiwi European Holdings B.V. over FMA's ownership and use of the domain name KIWI.com. Future Media Architects will retain full rights and ownership of the domain name under the WIPO ruling.

Though Kiwi European Holdings, a subsidiary of the giant Sara Lee Corporation owns the popular KIWI brand of shoe care products and the related U.S. and foreign trademarks, the WIPO Arbitration and Mediation Panel found no evidence of bad faith by FMA in its ownership of the domain name Kiwi.com. The Panel concluded that FMA neither intended nor created any consumer confusion or disruption relating to the Kiwi Brand.

Lieberman, a recognized domain name dispute expert from the Washington D.C. firm Greenberg & Lieberman, said "the decision by the Panel clearly establishes FMA's good faith ownership of the Kiwi.com domain name and affirms that ownership and use of generic domain names is a legitimate and appropriate business activity. More importantly, the Panel cited Kiwi European Holdings behavior as a clear abuse of administrative procedure, by holding that Kiwi's complaint was brought in bad faith with a complete lack of evidence in what the Panel termed a clear "instance of reverse domain name hijacking."

"We are gratified that the Panel saw this complaint for what it was - frivolous," Lieberman said. "FMA will continue to vigorously defend its intellectual property; it is just unfortunate that FMA has been forced to defend itself against a complaint that had no basis. We certainly hope that this ruling will dissuade other corporations from attempting to claim ownership to generic terms to which they have no exclusive right." FMA currently manages a portfolio of more than 100,000 domain names. Full text of the WIPO Arbitration Panel's decision in Case No. D2004-0848 can be found online through this link. 

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