Backstage Fashion Inc v. Back Stage Inc
Claim Number: FA0109000100135
Complainant is Backstage Fashion, Inc., Prescott, AZ ("Complainant") represented by Scott K. Risley, of Murphy, Lutey, Schmitt & Beck, P.L.L.C. Respondent is Back Stage Inc, of Los Angeles, CA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <backstagefashion.com>, registered with Bulkregister.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 25, 2001; the Forum received a hard copy of the Complaint on September 25, 2001.
On September 27, 2001, Bulkregister.com, Inc. confirmed by e-mail to the Forum that the domain name <backstagefashion.com> is registered with Bulkregister.com, Inc. and that Respondent is the current registrant of the name. Bulkregister.com, Inc. has verified that Respondent is bound by the Bulkregister.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 1, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 22, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On October 29, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The <backstagefashion.com> domain name is identical to Complainant’s mark.
Respondent has no rights or legitimate interests in respect to <backstagefashion.com>.
Respondent registered <backstagefashion.com> in bad faith.
No Response was received.
Complainant first began using the BACKSTAGE service mark in April 1989 and as a result, has established common law rights to the mark. Further, it has federally registered its BACKSTAGE FASHION service mark in 2001. Complainant sells concert t-shirts and other licensed merchandise to store owners and dealers under this mark. Complainant advertises and sells merchandise from its <backstage-fashion.com> website. This website is easily confused with Respondent’s
Respondent registered <backstagefashion.com> in 1999. Respondent’s domain name connects to a site that presents clothing merchandise as its "Spring Collection". Respondent’s site has an email link through which users may contact Respondent, presumably to purchase items presented on the website.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has common law rights to the BACKSTAGE FASHION service mark. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require "that a trademark be registered by a governmental authority for such rights to exist"); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) ("[O]n account of long and substantial use of the said name ["keppelbank.com"] in connection with its banking business, it has acquired rights under the common law).
Respondent’s <backstagefashion.com> domain name is identical to Complainant’s common law BACKSTAGE FASHION mark. See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark);
The Panel finds that Policy 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent does not have any rights or legitimate interests in <backstagefashion.com> because it was not used for a bona fide offering of goods. Using a domain name identical to Complainant’s service mark with the result of diverting potential customers from Complainant to Respondent is not a bona fide offering of goods. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to divert Internet traffic is not a legitimate use of the domain name).
Respondent does not have any rights or legitimate interests in <backstagefashion.com> because Respondent was not commonly known by that domain name. Respondent was known as "Back Stage, Inc." See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Respondent does not have any rights or legitimate interests in <backstagefashion.com> because Respondent did not make a fair use of the domain name. Using a domain name to divert complainant’s consumers to Respondent’s site is not a fair use. See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
The Panel finds that Policy 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent’s use of the domain name identical to Complainant’s mark to attract Internet users to Respondent’s site without Complainant’s permission is evidence of bad faith. See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intends to use Complainant’s marks to attract the public to the web site without permission from Complainant); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s good will and attract Internet users to the Respondent’s website).
The Panel finds that Policy 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <backstagefashion.com> be transferred from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 5, 2001
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