Phat Fashions, LLC v Kevin Ross
Claim Number: FA0202000104983
The Complainant is Phat Fashions, LLC, New York, NY (“Complainant”) represented by Brad D. Rose, of Pryor, Cashman, Sherman& Flynn, LLP. The Respondent is Kevin Ross, Boulder , CO (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <phattyz.com>, registered with Parava Networks.
The undersigned, Daniel B. Banks, Jr., 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.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on February 22, 2002; the Forum received a hard copy of the Complaint on February 22, 2002.
On February 26, 2002, Parava Networks confirmed by e-mail to the Forum that the domain name <phattyz.com> is registered with Parava Networks and that the Respondent is the current registrant of the name. Parava Networks has verified that Respondent is bound by the Parava Networks 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 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 18, 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 also filed two additional responses, both of which were considered by the Panel.
On March 26, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr., as Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
Complainant commenced business operations in 1992 and is the proprietor of several highly successful brands of designer fashion wear, including PHAT, PHAT THREADS, PHAT FARMS and BABY PHAT. Phat fashions has achieved a prominent position in the fashion industry and is vigilant in the protection of its intellectual property portfolio and its registered trade and service marks. Complainant is the owner of some thirteen (13) trademark and service mark registrations on the Principal Register of the United States Patent and Trademark Office, all of which contain in part the mark "PHAT". Complainant has also filed intent to use trademark applications for several other marks containing the mark "PHAT". Complainant has also registered "Phat" marks in other countries throughout the world.
Complainant has been using its family of PHAT trademarks on clothing and has operated a retail store selling clothing and fashion accessories under the service mark PHAT FARM for over eight years. Its revenue from licensing its PHAT marks in 2000 totaled over $110 million dollars and in 2001 totaled approximately $180 million dollars. Complainant spends over $3.5 million dollars each year advertising and promoting its trade name, its family of PHAT trademarks and the goods and services offered in connection therewith. It advertises its trademark and products in publications throughout the world. Complainant also owns registrations for domain names that reflect its trademarks, such as <phatfashions.com>, <.net>, and <.org> and <phatfarm.com>, <.net> and <.org>. In addition, Complainant markets and promotes its BABY PHAT products via its official BABY PHAT web site accessible through <babyphat.com>.
The disputed domain name is confusingly similar to the Complainant's family of famous Phat marks. Respondent's domain name is confusingly similar in sound, appearance, meaning and overall commercial impression to Complainant's Phat Fashions mark and the Phat trademark. This similarity facially and falsely suggests some sponsorship by, affiliation with and/or association between Complainant and Respondent.
Respondent's registration and use of the disputed domain name is in bad faith. At the time Respondent registered <phattyz.com> on or about January 31, 2001, Complainant was the owner of nine of the trade and service mark registrations for its Phat marks, including a registration for the trademark PHAT that has been in use since December, 1992. There registrations on the principal register of the USPTO create constructive, nationwide knowledge of Phat Fashions' ownership of its marks so registered. It is proper to conclude that Respondent, a domiciliary of Colorado, had at least constructive knowledge of Complainant's registered marks at the time of registration of the disputed domain name. And, there is a legal presumption of bad faith where Respondent should have been aware of Phat Fashions' famous and distinctive PHAT FARM trademark. Registration with knowledge of Phat Fashions' trade name, registered marks and PHAT products is evidence of Respondent's bad faith.
As further evidence of bad faith, Respondent has intentionally attempted to attract, for commercial gain, Internet Users to its web site by creating a likelihood of confusion with Complainant's registered marks. Respondent is offering for sale, through its web site, the same type of goods as Phat Fashions (clothing) under a trademark that is confusingly similar to Complainant's registered trademark. (Complainant's exhibit H is a printout of the website) This constitutes knowing, willful and purposeful infringing and diluting activity on the part of Respondent through its web site accessible via the disputed domain name. This activity is not only unlawful under federal and state trademark, unfair competition, anti-dilution and anti-cybersquatting laws, it is also unlawful as bad faith registration and use of a domain name under ICANN's UDRP, adopted by Respondent's Registrar, Parava.
Respondent has no rights or legitimate interests in <phattyz.com>. Respondent has been selling clothing on and through its web site for one year. Complainant has indisputable prior and paramount rights to use of its registered marks and given the confusing similarity in sound, appearance and meaning, it is clear that there is and will be consumer confusion and dilution, blurring and tarnishment of Complainant's mark. Also, Respondent is not using the disputed domain name in connection with a "bona fide offering of goods or services". Since Complainant is the exclusive owner of all rights in and to its family of PHAT marks, and has not licensed Respondent to use that mark, any offering of products for sale under the disputed domain name is not bona fide. Furthermore, Respondent's use of the disputed domain name is not a "fair use".
Respondent, Kevin Ross, is the registrant for the disputed domain name <phattyz.com>. He registered this domain for the owners of Smoking Fish Division, which is a company formed in 1989 by a group of skateboarders. Two of its members envisioned Phattyz as a future rider owned and operated skateboarding company. The idea for Phattyz was created in 1990 as a company that would be focused on the sports of snowboarding and skateboarding. Phattyz was a concept acquired by a general slang term used by skateboarders. The focus later included wakeboarding and BMX riding. Smoking Fish Division eventually became an official business plan and took many years to develop a mission and the process in which the company would execute its products and services. It applied for registration with the United States Patent and Trademark Office one year ago.
<Phattyz.com> is not confusingly similar and does not offer the exact goods that are offered by Phat Fashions. Phattyz offers goods that are geared for those who are involved in extreme sports such as Snowboarding, Skateboarding, Wakeboarding and Biking. The word Phat has many meanings and is used in many contexts. It is utilized to describe numerous ideas. It is a slang term used by many individuals and businesses for description and expression.
Phat Fashions is not the only registrant of the generic word Phat to promote and sell goods and services. Smoking Fish Division does not refute that Phat Fashions has registered trademarks and uses the word Phat to promote and sell goods and services, however, Smoking Fish Division is also aware that many other businesses and individuals have registered and use this generic word to associate it with their products and services.
<Phattyz.com> is not likely to cause consumers to erroneously believe that Smoking Fish Divisions' goods and services are sponsored by, authorized by or connected to Phat Fashions. Smoking Fish Division has a legitimate business interest in its use of <Phattyz.com> to promote and advocate for extreme sports as described above. It is not interested and does not want to be affiliated with Phat Fashions and their marks. Respondent feels that this action is reverse domain name hijacking.
C. Additional Submissions
In Complainant's first additional submission, which was submitted in a timely manner, Complainant states that Respondent attempts to diminish the strength of Phat Fashions' family of PHAT trademarks by asserting that "phat is a general slang term". Whether or not "phat" is used in the vernacular in no way diminishes the exclusive rights granted to Phat Fashions by virtue of its federal trademark registrations. Phat is not merely a word; it is a federally registered trademark on the Principal Register of USPTO. The addition of "tyz" as a suffix in now way mitigates the infringing nature of the disputed domain name.
The additional submission goes on to restate that Complainant owns the exclusive right to use the mark PHAT on or in connection with clothing; that the disputed domain name is substantially identical to Phat Fashions' PHAT trademark and identical in dominant part to Phat Fashions' family of famous PHAT marks; that Respondent has no rights or legitimate interests in the disputed domain names; and, that Respondent registered and is using the disputed domain name in bad faith. Complainant also asserts that reverse domain name hijacking under the present circumstances is a legal impossibility because it cannot hijack a mark that Respondent does not own.
In Complainant's second additional response, which was not timely received but was considered by the Panel, Complainant attached a Federal Court decision entered on March 20, 2002. In this case, Phat Fashions was the plaintiff and Phat game Athletic Apparel, Inc. and Phat Game, Inc. were the defendants. The Court granted summary judgment in favor of Phat Fashions on all of its trademark infringement, trademark dilution and unfair competition claims and permanently enjoined the defendants from using or permitting the use of the trademark PHAT GAME and the domain name <phatgame.com> in connection with the advertising, promotion, marketing, manufacturing, licensing, sub-licensing, sale and/or distribution of any of the Defendants' apparel and/or products.
1 - The disputed domain name <phattyz.com> is confusingly similar to Complainants' family of Phat marks.
2 - Respondent has no rights or legitimate interests in the disputed domain name.
3 - The domain name was registered and is being used in bad faith.
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:
(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
The disputed domain name <phattyz.com> is confusingly similar to Complainant's family of PHAT marks because it has incorporated the entirety of Complainant's PHAT mark and merely added "tyz" as a suffix. The addition of three letters to the end of Complainant's well-known mark is not enough to create a distinct mark capable of overcoming a claim of confusing similarity. See America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding 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”).
Additionally, even though the term “phat” may be a generic slang term, Complainant has federally recognized rights in the term PHAT. It is a registered trademark with the United States Patent and Trademark Office, and Complainant is the only entity with legal rights to use the term in relation to apparel. Furthermore, Respondent does not yet have a trademark registration for its PHATTYZ mark.
Rights or Legitimate Interests
Respondent is using its confusingly similar domain name to sell products that are similar to Complainant's products. The use of a confusingly similar domain name to sell competing products is not considered to be a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i). See Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).
Based on the fame of Complainant's mark Respondent cannot be commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).
It is also found that Respondent is attempting to attract Complainant's customers to its website for its own commercial gain and therefore is not making a legitimate, noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). 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); 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 confuse and divert Internet traffic is not a legitimate use of the domain name).
It is irrelevant that Respondent’s clothing is marketed to people who engage in extreme sports because Complainant’s trademark registration for PHAT is in relation to ALL types of clothing, and therefore Complainant is the only entity who can legally use that term in relation to apparel.
Registration and Use in Bad Faith
Respondent registered and is using the disputed domain name in bad faith because Respondent had actual and constructive notice of Complainant's famous marks before it registered the disputed domain name. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).
Also, Respondent is using its confusingly similar domain name in order to attract Complainant's customers to its website for its own commercial gain. This type of use is in bad faith pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s good will and attract Internet users to the Respondent’s website); see also America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent attracted users to a website sponsored by Respondent).
Reverse Domain Name Hijacking
Complainant denies all of Respondent’s allegations and asserts that it cannot hijack a mark that Respondent does not own. Respondent does not have a registered trademark and has only been using the term PHATTYZ in commerce since 2001, therefore Complainant is not bringing this Complaint in bad faith, nor engaging in an abuse of this administrative proceeding. Complainant is merely policing its mark.
It is ordered that the domain name <phattyz.com> be transferred to the Complainant.
Daniel B. Banks, Jr., Panelist
Dated: April 9, 2002
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