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.
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.
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 email@example.com 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.
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.
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.
Dated: April 19, 2002
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