Family business takes on US competitor and wins cybersquatting case

Cinzia Cozzolino, a qualified nutritionist, originally developed the Smoothie Bombs for her daughter Lana, who was a fussy eater, but loved her mum’s healthy smoothie mixes. She combined the 10+ Australian certified organic ingredients she was putting in her smoothies and shaped them into pre-portioned smoothie booster “bombs” to be blended with fruit and liquid.

The business was launched in 2011 and is growing steadily each year. Since 2011, the Smoothie Bombs’ duo has been posting photos and videos about their smoothie booster product on social media. Over nine years later, they have built up a global following and customer base. Thousands of members of their Smoothie Bomb Squad regularly post photos of their smoothies and participate in their monthly Smoothie Challenges.

In 2015, Cozzolino was looking to register a website domain, and did the classic rookie mistake of buying the domain name that she thought would sound better “THEsmoothiebombs.com” and neglected to buy the simpler “SmoothieBombs.com”.

In the following years, she received emails from different owners of the domain name SmoothieBombs.com to buy it at exuberant prices of which she refused. In March 2019, her competitor bought the domain off a scalper for $962.17 in bad faith for the sole purpose of redirecting traffic to their website and therefore misleading customers.

On 8 September 2014, Cozzolino trademarked the name “Smoothie Bombs” in Australia. On 13 February 2018, she also trademarked the name in the United States as the business made their first move into the US market.

In June 2019, a number of Smoothie Bombs’ customers alerted Cozzolino and Lana that a competitor in the United States was using the domain www.smoothiebombs.com, which includes the registered trademark, and redirecting it to a website featuring the competing product.

This competitor, who sprung up in 2017, was originally discovered when they had hashtagged #smoothiebombs on Instagram and were misusing her photos on their website as if they were their own. At that time, she reached out social media and the competitor took down the images.

Cozzolino did some research and found that this bad faith use of their trademark is considered cybersquatting. According to the Internet Corporation for Assigned Names and Numbers (ICANN), cybersquatting is generally bad faith registration of another’s trademark in a domain name.

With the help of the team at law firm Mills Oakley, Cozzolino prepared a cybersquatting case for the World Intellectual Property Organization. Shortly after filing the case, the competitor’s lawyer reached out to offer Cozzolino the domain at the price they paid for it, but she was confident and wanted to press ahead. This decision paid off and she emerged victorious when the panel ruled in her favour. The competitor was required to hand over the domain.

“My advice to other business owners in similar situations is to persevere,” Cozzolino said. “I also recommend that new business owners or those looking to start a business register all domains. It’s imperative that IP is done early on, especially worldwide protection if you are on social media and plan to expand internationally. It may seem like a huge expense at the time, but if you are serious about your business and believe in your product, it’s a must.”

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