Anyone who reads this blog knows we are squarely again blatant trademark infringing domains, the companies and platforms that sell them, and those who buy them.
However, we are also strongly opposed to large companies trying to take advantage of their wealth, power and ability to pay large legal fees to basically steal domains they have no right to.
He is a case of one such company, Jimmy Choo, the maker of fine footwear made even more famous by Sex in The City.
So here’s the story.
Jimmy Choo lawyers sent a letter, you know the type, threatening a women who owns a small internet gift shop Kookychoo.com, telling her she must agree, by Tuesday, to give up its name or face a lawsuit.
Actually, the owner of Kookychoo.com, registered for her own trademark, when they were first contacted by Jimmy Choo, telling her new company to drop plans to trademark its name or get sued.
She and business partner were prepared to do that, but then another letter this week asked that the company cease using the domain Kookychoo.com
Moreover, not only did they lawyers for Jimmy Choo demand this women stop using the domain, they “want us to send all our business cards and any printed material that we have to them as well.”
Here’s the kicker, the site Kookychoo.com does not sell shoes.
Nor is it a parking site serving up ads containing the trademarked term.
Instead the site features gifts such as a teddy bears, a Venetian glass bracelets and a hot pink bean bags.
“There is absolutely no comparison, there’s nothing remotely even similar in our branding, in the products that we sell.” to Jimmy Choo’s products.
In the latest letter, Jimmy Choo’s counsel, asks Kookychoo to “agree that you will never use the Kookychoo trademark or any other trademark that is similar to Jimmy Choo or Choo in relation to any goods or services that are identical or similar to the goods covered by our client’s registered trademarks”.
Mrs James said lawyers had told her that she might have a case, but it would cost upwards of $50,000 to fight it.
“I’m a mother of seven and I live out on a little farm, there’s no way I have those kind of funds.”
Yesterday she was preparing to accede to the company’s demands.
No doubt, just as bad as a bang on trademark infringement, are bang on thefts of people’s domain name.
It looks like this company wants any domain ending in “choo” and with the funds to support this legal theft they can pick off people who cannot afford to defend themselves.
When Congress moves on CADNA efforts for stronger trademark laws, next year, I urge the ICA and all domainers to move for a fine or penalty to be imposed, if a judge or WIPO panel determines that the case amounts to reserve hijacking.
Right now domain holders are subject to civil fines and damages if a case is filed in federal court.
Why shouldn’t a company engaged in reverse domain hijacking be liable for the same amount of fines for in its attempt to steal a domain?
Right now we have a situation where a company can play this game risk free.
All they have to do now is pay an attorney a few bucks to write a letter, and if the domain holder can’t afford to fight the case which is going to be 99% of the time, they get something they have no right to for free. There is no financial downside, because there is no fine or penalty in place for “trademark” holders who go after domains they have no right to. If there was a $100,000 per domain, fine or damages, for bringing such an action, these companies would have to think twice before stealing other people’s property.
In the meantime keep this case in mind next time your shopping for “choo”s
I am going to send this BS choo sh*it to
http://thestar.com.my/news/nation/
He is from Malaysia and they sure do not like this kind of publicity.
So any last name of Choo,or LEEs, or common Asian names cannot be used?
He is not the only Choo or LeeS or WongS in the Asian world!!!
Might change my name to F- choo to piss him off.
I am the owner of the largest blogs/forum about Malaysia and here is the posting:
http://www.bodohland.com/
I own MalaysiaBodoh.com,BodohMalaysia.com, and Bodohland.com
Bodoh in Malay means Stupid!!!
Even though it seems fair that a penalty should be imposed here, we must be careful what we wish for. The last thing we’d want is every domain dispute ending up in court – and the threat of a 100K Reverse Hiajcking penalty may be all a legal team needs to convince a company to pony up and circumvent UDRP arbitration. The present UDRP system is extremely cost effective for everyone, particularly most domainers.
PS:
And, yes, there should be a severe fine if someone is found guilty of Reverse Name Hiajcking in court outside of WIPO/UDRP.
Pretty ironic, I have distant cousins and their last name is Choo and so are billions of Asians with that name.
We have ChooChicken Rice Restaurant,Choo Pawn shops, AlberChoo hand bags and shoes and Choo Social escort services…
Choo choo trains..
Why doesn’t he go after all these owners in China/Hong Kong?
He knows he will be D-ea_d meat if he tries that!!
David
I agree we have to be careful here, but with CADNA gearing up for even stronger trademark “protection” laws next year, we need to start trying to get some protection for ourselves before we get overrun.
I think that certainly in federal cases, where their is an existing $100K per domain penalty, which may be increased to the seven figures judging from The Snowe Bill, we must push for a like fine to stop abuses by “trademark” holders.
As far as WIPO/UDRP I think that trademark holders who bring claims that are found to be reverse hijacking, need to get the same taint or disadvantage going in the next time they file a claim as domain holders who have lost many of these disputes have.
We need to level the playing field before the playing field levels us.
Mike:
I agree with you on both points: 100K penalty in Federal or a blackmark for future disputes in WIPO/UDRP.
I can’t stand when big companies do this, why would she have to even respond to their letters? Let them file UDRP and lose the case. I know whatever panel she gets, will see the obvious bullying being committed by this company.
I kinda recall reading a U.S. law allowing that, although I’m kicking myself for not remembering the exact one to quote here. OTOH, one lawyer said one can use a Reverse Domain Hijacking decision as persuasive evidence to demonstrate abuse in a separate action.
Of course, that depends on one’s jurisdiction, especially if both parties are in different parts of the globe that don’t really see eye to eye.
Another case of a company that has turned big and thought – Im going to do whatever the F**K I want!
This is a disgrace that Jimmy Choo think they can take this domain away from this company – Yes there maybe typo of there domain but was it meant as this I dont believe so.
They dont sell shoes – One women business – Cash is low.
I dont see why they are wasting there time but just shows with money brings lawyers and they are just taking advantage of others – If this was up againest a domainer or parking website then yes I would understand but someone is just trying to earn some extra cash.
Regards,
Robbie
Hi there. This is Looie from Kookychoo.com and I think this is why the internet is such an amazing thing – the support we are getting is fantastic. Believe me, we had no intention of ripping off anyone. We are just trying to earn some honest money and for this to happen only 3 months into trading just took our breath away, especially one week before Christmas. We use mostly local companies to supply us our items and don’t brand any product Kookychoo so how can we be trying to copy Jimmy Choo? Believe me this is a David v Goliath fight.
I like your post – you make a great point there.
Good luck to the owner of Kookychoo.com and do NOT give this domain name up to Jimmy Choo.
Stand strong and do NOT give up – be who you are as you have the support of many people online.
Confidence and enthusiasm are the greatest sales procedures in any kind of ceremony
This reminds of the case about 3-4 years ago in which Spike Lee tried to stop SpikeTV from using the word Spike as their cable TV brand. He claimed that he only was known by that name. Needless to say, he overstepped by a huge margin and lost the case.
I think this Jummy Choo, who practically few have ever heard of, can easily lose his claim. KookyChoo is significantly unique and while selling retail products, they are not selling shoes. Another case of a self-entitled ego trying to intimidate a business owner.
Donald Trump tried to obtain a trademark on “You’re fired” too, remember that?
Shoo, Choo!
Great post and a fine example of the sort of greedy attitude that brought the financial markets down in the first place.
Looie, don’t do anything! Don’t respond to their scare tactics. Let them file with URDP and they will lose. File a counter complaint of reverse domain hijacking. I doubt this will ever go to court.
Jummy jimmy whatever Choo is probably personally not even aware of this going on – just his lawyers performing their tasks. Maybe if someone got word out to Choo himself, he might drop this? There I go, with faith in the decency of people again, maybe I that’s just wishful thinking.
I think it is obvious that Choo has no case. Why woudl it cost $50k for Looie to defend her case? The case is obvious and a law student could do the defending for free, for publicity? Maybe some law firm could take this case for free since it’s such a high profile company, sure to make some news.
One more thing – I think they’re just sending bulk letters to anyone with choo in their domain name. I find it likely that they would pursue legal action. More reason not to react?
Screw Choo. Hold onto the domain and make him take it to court. I would never buy any Choos from this thief after reading this.
I recently got into a dispute with a very large corporation’s law firm. Every step of the way I sent them emails arguing their points and making sure they understood that I knew the law and that they were on thin rope. Once the actual corporation got involved in the email exchange the stupidity stopped.
Legal counsel are trained by rote to write the nastiest and most damaging clauses for you to sign. You are not obligated to sign anything. Argue each point individually and if they are an independent law firm, tell them you want documentation that links them to Choo.
Treat this case for what it is – stupid paperwork designed by lawyers to begin a process of negotiation. Argue TM law with them indefinitely and you’ll get concessions, if not full retraction.
Sign nothing! Once you do your rights are forever gone.
Like Choo cares what we think!
We would sell kookychoo.com for a dollar @ the domain name dollar store.
http://www.DomainNameDollarStore.com
If this thread keeps up, start using the term “Jimmy Choo” when referring to the shoe company, this will help it get picked up and syndicated more. Also itmay put it on Jimmy Choo’s PR radar.
Looie, start finding some shoe blogs and stating your case. “Mom and Pop Shop Target of Theft from Jimmy Choo” Headlines like that.
Also, I would prepare a news release at http://www.prnewswire.com and get your story out there, it has a high potential of getting picked up in the main stream media I would say.
Wouldn’t the ICA be more effective if they spanked these big corporations by tarnishing their image in the media for this blatant absue of power? Negative PR might be a good weapon?
He also owns his last name, Choo.com. I wonder if he did the same thing to the previous owner of that domain, giving him confidence to pursue other names in a similar fashion. I see that Choo.com changed to Jimmy Choo’s ownership in early 2006.
When you say ICA are you referring to ICANN?
Tried to visit the site to find some insight but it’s non-responsive right now. Guess they’re getting some traffic.
Would be interesting to hear how the site came to be named “KookyChoo” in the first place, if there is any influence from the Choo brand there. For example, I might create a site called, say, “Gamebay” and if Ebay come around create the same outrage, but it would be hard to stand up in court and swear that I’d have still named the site the same thing if Ebay had never existed.
On the face of it, this Jimmy Choo company are indeed trying to steal the name, but lets hear all the facts and read the UDRP (if one ever comes) first.
At least this lady got a letter. Wonder when we’ll get another round of Enom deciding to transfer names to themselves out of customer’s accounts because they contain “Enom”. Last time they managed to pick up quite a few “genome” names too 🙂
“And, yes, there should be a severe fine if someone is found guilty of Reverse Name Hiajcking in court outside of WIPO/UDRP.”
I agree. But I also think that a “black mark” against a TM abuser will not be effective. What I would like to see is that under the UDRP, if a Complainant is found guilty of Reverse Domain Hijacking, that the Complainant must give up to the Respondent Domainer, its prime URL that is similar to the one that the Respondent holds. THAT would even the playing field considerably.
Howard
Even better.
Now we have to get the ICA moving to support this so when the new proposed CADNA backed law hits Washington, we can strike back
Dave
There is a statutory damages for violation of the federal trademark law for case brought in federal court.
This amount is $100,000 per domain.
There is no such statutory amount for reverse domain hijacking.
Guys
The problem this women is facing isn’t a UDRP or WIPO action but a case filed in court seeking the domain, damages and all the rest.
This is where the $50K figure comes from and its a real problem that a victim of such an action has no chance to “win” anything, just to keep what they had.
The law needs to be changed to provide a penalty for those who bring bogus actions in what in really stealing, not with a gun, but with a bunch of lawyers
I don’t know New Zealand civil procedure, but many countries have a “loser pays” system. I wonder if she could recover her fees. I do know a little about New Zealand trademark law, and I can’t possibly see JC prevailing.
Under U.S. trademark law, a defendant can actually get their fees from an over-reaching plaintiff if they can demonstrate to the court that it is an “exceptional case.”
I agree that the UDRP’s RDNH findings need to have some teeth. In my trademarks class, I teach my students to never bother bringing a claim of RDNH under the UDRP — because all it gives you is an ego boost – but opens the door to a possible right of reply.
A good model, but perhaps not a perfect one, is found in Nominet’s procedures for .uk disputes.
Disgusting – now they think they own the world with a freaken tradermark – it’s stupid thinking your brand can be used when products with no similarity are for sale, this is simply the trash of the democracy.
Marc
Getting your legal fees awarded to you is a very rare situation.
Moreover the vast majority of plaintiffs, especially large corporations, in the course of a case, if they think its going badly for them, will offer to drop the case in exchange for a full release including all parties paying their own attorney fees.
Getting your legal fees awarded to you is a very rare situation.
If you are talking about cases in the USA, I’m not sure I would say it is “very rare.” Well, either that or I’ve just been luckier than most when dealing with trademark bullies.
Every 4 yrs, and the same old BS from the Olympic Committee about companies using Olympics:
http://seattletimes.nwsource.com/html/businesstechnology/2004119045_olympic11.html
We should send this post to Oprah…no more Jimmy choo choo shoes.
Thanks for your thoughts and experience. As you can imagine, we are complete novices at this as we have not had to face this issue before.
Where did Kookychoo come from? We wanted to start up a business with a unique name as we have a unique (in NZ anyway) method of doing business – drop ship for (mostly) smaller companies without a web site. We tried hundreds of names but most of them were taken. Kooky sounded a bit out there but there were lots of sites with that on it. We had to add a bit on it – thats where the choo came from. One word Kookychoo. It is a bit similar to the Beatles words in the Walrus – goo goo g’joob – but not the same.
It is the NZ courts that it would go to, no-where else. My husband qualified from BYU law school around 10 years ago but never went anywhere near this arm of the law – he went back to Finance anyway. In NZ we have a loser pays and that is the problem. If we lose we dont want to lose our house etc paying for Choo’s team’s legal fees. We might change the site to Kookyloo or Kookyshoo – the latter makes it even more absurd doesn’t it!
Any thoughts?
well lets see this is a job for the domain expert.i had the same problem and when you start looking for a tm intellectual property attorney all they are interested in their hourly fee of 300.
that is why i taught my self trademark law.
first of all kookycoo has no trademark application pending on uspto.if this women filed for a tm application the uspto examing attorney would evaluate if there is likihood of confusion,unfair competition,or dilution.
this is why you have to do your own tm work.then jimmy choo would have the opportunity to file a notice of opposition and
the burden would shift to them to prove confusion in the marketplace.this all costs money at 300 an hour.this shit lasts for yrs.
i have done this before and ripped an opposing tm application off the uspto register because of these tm attorneys. after the oppostion spent over 20k to support their legal asshole. i took them to school.
now on to wipo i lost a case because the opposing attorney lied their ass off and just made statements without a survey and the examing attorney approved the application.it took 8 yrs and the uspto approved the application because of the money spent for this legal asshole.
and as for wipo/usdrp the rule is if the word is on the principal register reguardless of the class this is fucked up.the class is everything.and ica has failed to implment an internet class with over 20 billion spent on internet advertising.so this entire tm system is flawed.
another example would be that cities and states cannot be trademarked.but a lying attorney after 8 yrs got their application approved for a city..then udrp said i lost the case because the word/domain was on the uspro principal register. fuck these attorneys this is all legal work to support their fees.wipo/udrp is completely flawed and hurts domainers as described above.dept of commerce will update trademark law in the next 4 yrs..but this archaic law hurts domainers. it is the responsibilty of the trmk holder to police and control their mark.a lot of shit happens with trdmk law it it hurts the public and domainers.i have several other revelant examples.it is a case of paperwork and money.
Aren’t there free legal agencies online that represent obvious reverse hijacking attempt cases like this pro bono?
I’m thinking back to the story on http://www.taubmansucks.com
Looie, you should try contacting the folks at citizen.org or eff.org as soon as possible to see if they can help. All is not lost.
I agree with Dave you don’t want every domain in court.Lets not hope it comes to that.
Question:
To those who have the big $$$(you know who you are) and you own this domain,
will you fight for it or….?
I am off subject, but would like to comment on the language used in some posts, ass, shit, piss, asshole, f**k. Perhaps this is now normal in American culture and would not reflect on ICA / domain community.
While not necessarily on reverse hijack attempts, two sites I recall are InternetJustice.org and PublicCitizen.org (Paul Alan Levy, especially). Of course, it still depends if they’re willing to take it on.
Hey Jimmy Choo,
All I have to say to you is http://www.fuckchoo.com
All the best,
Jeff Geaney
CEO
WorldInternetDomains.com
Here is a limerick for Jimmy Choo.
There was a guy called Jimmy Choo
Who in his spare time sniffed glue
When he got as high as a kite
He tried to take people’s domains in spite
And now he is going to have to deal with the boxing kangaroo.
http://www.genericsun.com
I say enough is enough. ICANN and WIPO have had their fair share of chances. They are prehistoric dinosaurs living in the dark ages. Let’s clean up this mess once and for all and bring in the heavy weights. I vote for WIPPO.com and WINNA.com to end all these senseless mind games.
“The law needs to be changed to provide a penalty for those who bring bogus actions in what in really stealing, not with a gun, but with a bunch of lawyers.”
Isn’t that provided for in one’s right to countersue for the filing of a frivolous lawsuit?
If the choo fits, fit back!
Mike, great article.
Unfortunately, I think domainers are only at the beginning of this type of abuse.
I also see that digg picked it up.
http://digg.com/business_finance/Jimmy_Choo_picks_on_Kiwi_Kookychoo_website_owner
If people wish to phone Jimmy Choo (corporate), their phone numbers are
USA –
1-800-506-9991
1-212-319-1111
UK-
+44 – (0) 20 7368 5000
USA
uspressenquiries@jimmychoo.com
UK
ukpressenquiries@jimmychoo.com
This really ticked me off, so check out Jimmy Choo’s wikipedia entry, end of first chapter. 🙂
Esa
Good for you.
good stuff Esa…a fair way to fight.
I have just registered NeuChoo.com, SueChoo.com, TwoChoo.com, ToChoo.com. Open to suggestions on how to use each one.
Howard
I can’t believe you missed the best one:
howardchoo.com
How about bullshitChoo.com
just like BullShitWebsites.com
Hey guys – Looie here from Kookychoo. There may be a little light at the end of my tunnel! This morning I received a call from a top Auckland Intellectual Property firm, James & Wells. They offered some pro bono work. If the case gets big, ugly and expensive we will have to reconsider. We should here from Jimmy Choo’s solicitors by Wednesday so we will keep you posted. At this stage we are not backing down on the trademark and stopping use of domain name and website.
Have a look on youtube under kookychoo.
Looie
Excellent news, best of luck and keep us in the loop.
Could somebody explain what this site is all about.
I just come across this info.
http://www.worldinternetlaws.com
Looie
Great news, and a great news item on YouTube. Good luck!
I added a reference to Wikipedia, keep an eye out for edits.
Google news has 4 items on this already, including the press release (made by one of the commenters here?)
I’ve watched every single episode (I think) of Sex and the City and I can’t remember ever hearing of Jimmy Choo. Did I miss that episode?
In any case, two thumbs way down for Jimmy Choo and his domain-grab. What loser.