Coach, Inc. v. Koko Island LLC Case No. Lro

2013-0002 (2013)

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Nature of the Case

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Facts

P is a well-known company that manufactures and retails handbags, other leather goods, and complementary accessories on a worldwide basis. P has obtained hundreds of trademark registrations throughout the world for its COACH trademark and related marks. It has spent billions of dollars in marketing, advertising, and protecting its “Coach” brand products. The COACH mark has become widely-known worldwide. The Objector also owns and conducts e-commerce through its domain name coach.com, which receives almost 50 million unique browser visits per year. The opposed string, coach, is identical to P’s COACH trademark in appearance, sound, and meaning. By D's admission, it was aware of that mark prior to application for the opposed string. D has applied for 307 gTLD strings, among which are other trademarked words, such as express .limited, and direct. There is no evidence that D has made any preparations for a bona fide offering of goods or services in connection with the opposed string that would not infringe upon P’s trademark. D claims that P's trademark has not reached the level of recognition that would prohibit generic or non-competitive uses. D claims that the opposed string has countless uses beyond P’s rather narrow area of commerce. P has not shown that its trademark is known outside the confines of its narrow commerce boundaries. D claims that P has failed to establish a likelihood of confusion between the opposed string and its trademark in accordance with the established criteria used by courts. Fame alone is not enough, and the term “coach” has been used in association with the sale of goods and services unrelated to those offered by P.