Phat Fashions, LLC v Kevin Ross
Claim Number: FA0202000104983
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@phattyz.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.
RELIEF SOUGHT
The
Complainant requests that the domain name be transferred from the Respondent to
the Complainant.
PARTIES’ CONTENTIONS
A. 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".
B.
Respondent
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.
FINDINGS
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.
DISCUSSION
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.
DECISION
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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