Phat Fashions, LLC v. Robert Cleeve,
CTNYC
Claim Number: FA0202000104975
The Complainant is Phat Fashions, LLC,
New York, NY (“Complainant”) represented by Brad D. Rose, of Pryor, Cashman,
Sherman & Flynn, LLP. The
Respondent is Robert Cleeve, CTNYC, New York, NY (“Respondent”).
The domain name at issue is <babyphat.tv>,
registered with the .tv Corporation.
PANEL
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.
Tom
Arnold is the sole Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (“the Forum”) electronically on February 21, 2002;
the Forum received a hard copy of the Complaint on February 21, 2002.
On February 27, 2002, The .tv Corporation
confirmed by e-mail to the Forum that the domain name <babyphat.tv>
is registered with the .tv Corporation and that the Respondent is the current
registrant of the name. The .tv
Corporation has verified that Respondent is bound by the the .tv Corporation
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 February 27, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 19, 2002 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
postmaster@babyphat.tv by e-mail.
A timely Response was received and
determined to be complete on March 15, 2002.
Complainant submitted its additional
response on March 20, 2002. Respondent submitted its additional response on
March 25, 2002. Complainant submitted another additional response on March 22,
2002. Since this March 22, 2002
additional response filed by Complainant was after the submission deadline, the
submission is not in compliance with Supplemental Rule #7 and has not been
considered.
On March 27, 2002, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the
Forum appointed Tom Arnold as Panelist.
The Complainant requests that the domain
name <babyphat.tv> be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts that it has legal
rights to its BABY PHAT mark due to its registration of that mark on the United
States Principal Register, Registration No. 2,240,881 on April 20, 1999, as
well as other stylized and design registrations of the mark in the United
States as well as in other countries.
The disputed domain name registered by Respondent, <babyphat.tv>
is a total appropriation of Complainant’s trademarks as such domain name is
essentially identical to the BABY PHAT registered trademark in sound,
appearance and meaning. Respondent should have been aware of its BABY PHAT
trademark due to the fame and distinction of the mark, as well as Respondent’s
ability to discover Complainant’s BABY PHAT trademark at the United States
Principal Register website.
In addition, Respondent does not mention the term “babyphat”
anywhere on its website, or offer any goods or services under the name. In
fact, Respondent has failed to develop a website located at the disputed domain
name. This indicates that it had not
made preparation to use the domain name in connection with a bona fide offering
of goods pursuant to Policy ¶ 4 (c)(i).
Respondent’s failure to assert any rights in response to requests by
Complainant’s counsel for the disputed domain name is consistent with the
concept that it does not have any legally sound rights or legitimate interests
in the dispute domain name.
Further, Complainant contends that the
domain name was registered and is being used in bad faith. Respondent’s failure
to use the disputed domain name for any purpose other than to seek a windfall
by selling it to Complainant indicates that it registered and used the domain
at issue in bad faith pursuant to Policy ¶ 4 (b)(i). In addition, Respondent
had actual knowledge of Complainant’s mark because it independently located and
solicited Complainant in an attempt to sell the confusingly similar domain name
to it. Respondent’s refusal to transfer the domain name for $200 offered by
Complainant, indicates that it does not have rights or legitimate interests in
the disputed domain name and Respondent’s threat to put the domain name up for
auction is additional evidence of bad faith.
B. Respondent
Respondent contends that it has used the
term “babyphat” for over 19 years, beginning in January 1983. Respondent asserts that it has satisfied
Policy ¶ 4 (c)(i) by demonstrating legitimate business plans for the disputed
domain name such as using the disputed domain name for email and to forward
visitors to its other <dailyyoga.com > website. In addition, Respondent contends that it has produced videos
specifically for <babyphat.tv> and the only reason the website is
still undeveloped is due to unforeseen financial constraints.
In addition, Respondent denies that it
had actual knowledge of Complainant’s BABY PHAT trademark when it registered
the domain name at issue. Respondent
contends that it did a good faith trademark search for both “babyfat” and
“babyphat” prior to registration in which both searches resulted in
non-conflicting trademark ownerships.
As a result, its inability to discover Complainant’s mark after a
thorough search should not be construed as bad faith.
Further, Respondent further asserts that
only after it ran into financial trouble, did it conduct a domain name search
for “babyphat” to see if there would be any companies interested in purchasing
the domain name. While conducting the
domain name search, Respondent came upon Complainant’s company. Respondent contends that it spent over $600
in out of pocket expenses developing the website and $2500 in video editing of
the pilot tapes which is sufficient evidence of its business plans. Respondent further contends that
Complainant’s offer to purchase the disputed domain name for $200 does not
cover its out-of-pocket costs to develop the website and the videos it planned
to launch on the website. As a result,
its refusal of the offer does not preclude it from rights or legitimate
interests in the disputed domain name.
The
Panel has found that the domain name registered by the Respondent is
confusingly similar to the trademark in which the Complainant has rights, that
the Respondent has failed to prove it has any rights or legitimate interests in
respect of the domain name, and that the domain name has been registered and is
being used in bad faith. The allegation
of “financial trouble” in only conclusionary terms carries only a low
credibility and meaning without more details.
Paragraph 15(a) of the Rules for Uniform
Domain Name Dispute Resolution Policy (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.”
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:
(i) the domain name registered by the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights;
(ii) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(iii) the
domain name has been registered and is being used in bad faith.
Paragraphs
4(b) and 4(c) of the Policy provide further nonexclusive criteria for
determining whether the Registrant has engaged in abusive domain name
registration with respect to subparagraphs 4(a)(ii) and 4(a)(iii).
The Panel finds that the disputed domain
name is identical to Complainant’s mark because it incorporates Complainant’s
trademark in its entirety, merely adding the generic top-level domain name
“tv.” See Hollywood Network, Inc., v. Video Citizen Network, FA 95897
(Nat. Arb. Forum Dec. 20, 2000) (finding that the domain name
<hollywoodnetwork.tv> is identical to Complainant’s HOLLYWOOD NETWORK
mark because it includes Complainant’s mark in its entirety in the domain name
at issue); see also World Wrestling Fed’n
Entm’t., Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (finding that
“[t]he addition of the country code top level domain (ccTLD) designation .tv
does not serve to distinguish those names from Complainant’s marks since ‘.tv’
is a common Internet address identifier that is not specifically associated
with Respondent”).
In addition, because the disputed domain
name is confusingly similar to Complainant’s mark, it will cause confusion as
to the source, sponsorship and affiliation of the website. See
Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5,
2001) (finding the domain name confusingly similar “so as to likely confuse
Internet users who may believe they are doing business with Complainant or with
an entity whose services are endorsed by, sponsored by, or affiliated with
Complainant; hence, satisfying the confusing similarity requirement”).
The Complainant has therefore satisfied
the conditions for the first element to be successful.
The Panel considers the nonexclusive list
of factors found in Paragraph 4(c) of the Policy to determine whether the
Respondent has rights or legitimate interests in the disputed domain name. On the basis of persuasive evidence
presented or not presented, the Panel cannot find that the Respondent has
rights or legitimate interests in the domain name. At the time of registration, Respondent did not show any use of,
or demonstrable preparations to use the domain name in connection with the bona
fide offering of goods and services under the babyphat term. Nor has the Respondent shown that it has
been commonly known by the domain name.
Therefore, Respondent does not have rights or legitimate interests in
the disputed domain names pursuant to Policy ¶ 4 (c)(ii). See
Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
In addition, Respondent has submitted no
evidence that it is commonly known by the disputed domain name or BABY
PHAT. Respondent has made only mere
conclusionary allegations without submitting supporting evidence that it has or
had a bona fide intent to use the domain name or what that use was planned to be. Respondent’s mere assertion that it has used
the term “babyphat” for 19 years is insufficient evidence of business plans, if
the nature, quantity, notoriety or impact of the use, or the nature and use of
the population segment likely to have become aware of this use was the use of a
private nature. Also, no video to
support the use of the domain name was offered in evidence for
examination. The allegation that videos
were produced “for” <babyphat.tv> is not evidence of use of <babyphat>.
See Melbourne IT Ltd. V. Stafford,
D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in
the domain name where there is no proof that Respondent made preparations to
use the domain name or one like it in connection with a bona fide offering of
goods and services before notice of the domain name dispute, the domain name
did not resolve to a website, and Respondent is not commonly known by the
domain name).
Further, Respondent’s offer to sell the
disputed domain name to Complainant for an inflated price is not a bona fide
offering of goods pursuant to Policy ¶ 4 (c)(i) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4 (c)(iii).
See Cruzeiro Licenciamentos Ltda
v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or
legitimate interests do not exist when one holds a domain name primarily for
the purpose of marketing it to the owner of a corresponding trademark); see
also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)
(finding Respondent’s conduct purporting to sell domain name suggests it has no
legitimate use).
The Panel finds that the Respondent has
no rights or legitimate interests in respect to the domain name and that the conditions for the second element
have been satisfied.
The Panel considers the nonexclusive list
of factors found in Paragraph 4(b) of the Policy to determine whether the
Respondent registered and used the disputed domain name in bad faith.
The Panel finds there is no logical
explanation for the choice of “babyphat” as a domain name, except to pretend a
false association with Complainant, of some activity or persons NOT affiliated
with Complainant, using the domain name as its tool to deceive members of the
public with the registered trademark BABY PHAT of the Complainant.
Bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration. See
Phat Fashions LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000)
(finding that there is a legal presumption of bad faith where Respondent should
have been aware of Phat Fashions’ “famous and distinctive” PHAT FARM
trademark); see also Exxon Mobil Corp. v.
Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that Respondent had actual
and constructive knowledge of Complainant’s EXXON mark given the world-wide
prominence of the mark and thus Respondent registered the domain name in bad
faith); Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that
Respondent’s registration and use of an identical and/or confusingly similar
domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous
and thus Respondent should have been aware of it).
The Panel finds Respondent’s contention
that it searched a database and did not find BABY PHAT as a registered
trademark unpersuasive. First, Complainant
did not use the official trademark search site at the U.S. Patent and Trademark
Office (“PTO”). Second, the Respondent
did find the mark “PHAT” registered several times, yet still chose that mark as
part of its domain name. Third, there
is at least some evidence that Respondent may have been aware of the PTO site,
as after the date this Complaint was filed, Respondent filed an intent-to-use
trademark application for the mark “PHAT FARM” and attached as evidence to its
Response, the print-out from the PTO website. The Panel contends that
Respondent had at least constructive knowledge of Complainant’s BABY PHAT mark
at the time of registration. The Panel can not reasonably conclude that the
Respondent had a good faith intent when it registered and began using the
domain name. This conclusion is further
bolstered by the fact that Respondent has not provided any persuasive evidence
that it used the term to identify itself in a descriptive sense in its
advertising or on the web site found at the domain name.
In addition, because Respondent made no
use of the domain name except to offer it for sale, the Panel concludes that
the domain name in dispute has been registered and is being used in bad faith. See Little Six, Inc. v. Domain For Sale,
FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent’s offer to sell
the domain name at issue to Complainant
was evidence of bad faith); see
also Wrenchead.com, Inc v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000)
(finding that offering the domain name for sale at an auction site is evidence
of bad faith registration and use); Universal City Studios, Inc. v. Meeting
Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where the
Respondent made no use of the domain names except to offer them to sale to the
Complainant).
The conditions for the third element are
therefore satisfied.
As a result, the Panel has found that the
domain name registered by the Respondent is confusingly similar to the
trademark in which the Complainant has rights, that the Respondent has no
rights or legitimate interests in respect to the domain name, and that the
domain name has been registered and is being used in bad faith.
Accordingly, the Panel directs the
registration of the domain name <babyphat.tv> to be transferred
by Respondent to the Complainant.
Tom Arnold,
Panelist
Dated: April 19, 2002
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