Most parents have heard the word “onesies,” but it appears as though one Panel believes those people do not associate that term with a trademark. In the case of Kellwood Company v. Onesies Corporation D2008-1172, WIPO Septemeber 22, 2008, the Panel DENIED Complainant’s request for transfer of www.onesies.net. The Complainant owns many trademark registrations for ONESIES, with the first dating back to 1984. Respondent registered the disputed domain in April 2006, which purportedly listed many commercial links for clothing and other related children and infant products.
The Panel quickly dealt with the first two requirements of identical or confusingly similar mark versus domain name and whether Complainant has legitimate rights or interests. The Panel primarily focused on the element of bad faith. The Panel found that “the word onesie has become something of a descriptive term as well as a trademark in the United States.” In fact, the Panel quoted Wikipedia for the proposition which stated “ Onesie or onesize is American English for bodysuit for infants designed to conceal a diaper when worn. It is also called a creeper, diaper shirt or snapsuit.” The Panel also noted many Google search results, “most of which do not refere to Complainant or Complainant’s products.”
Most of the cases in which a Panel has found bad faith registration without proof or a reasonable inference of actual knowledge of complainant’s mark involved either a distinctive mark, or some other indication of cybersquatting. When the mark is an everyday word or phrase panels more often decline to find registration in bad faith based solely upon a claim of constructive notice, even when the parties are both American.
The Panel went further to explain:
In some cases it may be permissible for a panel to infer actual knowledge from other evidence, most often a complainant’s showing that a substantial segment of the public or its target market associates the common word or phrase with complainant or its products. That is not possible in this case as Complainant has submitted no evidence at all of the word’s exclusive or prominent association with Complainant or its products. Such evidence, if it exists, is almost by definition within Complainant’s control and not dependent upon access to Respondent. For example, sales volumes, product literature, advertising expenditures, and sample advertisements could have demonstrated sufficient identification of this word with Complainant or its products to allow an inference of actual knowledge. Without such evidence, however, the Panel is left only with counsel’s unsupported and conclusionary statement. Complainant bears the burden of proof under each Policy element, and as to Respondent’s registration of the disputed domain name in bad faith has not carried that burden.
Ultimately the Panel DENIED the request for transfer.
