Michael Smith Custom Clotheirs, Inc. d/b/a The Custom Shop d/b/a Myshirtmaker.com v. Ramani Custom Attire
Claim Number: FA0204000109575
The Complainant is Michael Smith Custom Clothiers, Inc. d/b/a The Custom Shop d/b/a Myshirtmaker.com, Toledo, OH (“Complainant”) represented by Richard G. Martin, of MacMillan, Sobanski & Todd, LLC. The Respondent is Kris Ramani Ramani Custom Attire, New York, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <customshirtshop.com>, registered with Register.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Anne M. Wallace, Q.C. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 12, 2002; the Forum received a hard copy of the Complaint on April 16, 2002.
On April 12, 2002, Register.com confirmed by e-mail to the Forum that the domain name <customshirtshop.com> is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 April 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 6, 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 May 3, 2002.
On May 23, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace as Panelist.
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
In addition, the Complainant is the owner of the following relevant domain names used in connection with its business:
Domain Name Listed Registrant Created
thecustomshirtshop.com Michael Smith March 9, 2001
thecustomshop.com The Customshop.com, Inc. April 17, 2000
customshop.com The Customshop.com, Inc. April 20, 2000
customshirt.com The Customshop.com, Inc. April 17, 2000
The Complainant, Michael Smith Custom Clothiers, Inc., dba The Custom Shop, and Myshirtmaker.com, is located in Toledo, Ohio and has been engaged in the business of selling custom-made clothing since 1984. The company operates multiple store locations, sells through a network of sales representatives, and maintains an online website.
The Complainant purchased the major assets of TheCustomShop.com, Inc. on July 10, 2001, from the Bankruptcy Trustee appointed by the Federal Bankruptcy Court for the Southern District of Texas, Houston Division.
The purchased assets included TheCustomShop.com, Inc.'s corporate name and all of its trademarks, service marks, trade names and logos. Furthermore, the Complainant acquired all computer hardware, software, intangible property, or intellectual property relating to the web site of TheCustomShop.com, Inc.
Prior to filing for bankruptcy protection and having its assets sold to Complainant, TheCustomShop.com, Inc. operated over 50 stores across the United States and maintained a website at <thecustomshop.com>. TheCustomShop.com, Inc. and its predecessors had been in business since 1937 and had developed substantial clientele and good will in their trademarks.
A number of the flagship stores operated by TheCustomShop.com, Inc. were located in New York City and surrounds, including stores on Wall Street, Broadway, Lexington Avenue, Fifth Avenue, and Madison Avenue; three stores on Long Island; and two stores in New Jersey. Prior to the March 13, 2000 bankruptcy filing, the company’s New York area stores had developed a substantial and loyal customer trade. New York City area clientele were in the habit of visiting the various stores and also ordering via the company website.
The Wall Street store of TheCustomShop.Com, Inc. was located within walking distance of the Respondent’s place of business. Complainant believes that the Respondent was well aware of the TheCustomShop.Com, Inc., its various stores in the New York City area, certainly the nearby Wall Street store, the substantial and loyal customer base of Complainant, and the good will that had been developed by Complainant since 1937.
When TheCustomShop.com, Inc. filed for bankruptcy on March 13, 2001, all stores were temporarily closed, including the stores in the New York City area. The website was taken off line temporarily, pending disposition of the assets of the company through bankruptcy proceedings. A trustee was appointed for the benefit of creditors.
On July 2, 2001, approximately four months after TheCustomShop.com, Inc. filed for bankruptcy protection, the Respondent registered the domain name <customshirtshop.com>. The domain name <customshirtshop.com> was registered by Respondent after the registrations by Complainant of <thecustomshirtshop.com> (March 9, 2001), <thecustomshop.com> (April 17, 2000), <customshop.com> (April 20, 2000) and <customshirt.com> (April 17, 2000).
Respondent registered the domain name <customshirtshop.com> while the stores and website of TheCustomShop.Com, Inc. were temporarily closed and under the jurisdiction of the Bankruptcy Trustee, and only eight days before the auction of the assets by the bankruptcy court in Texas.
Respondent admitted to Complainant in a personal conversation prior to the bankruptcy auction that Respondent was aware of the bankruptcy of TheCustomShop.Com, Inc. and the date of the auction of its assets.
Complainant believes that Respondent was aware of the Complainant and its substantial business trade and good will prior to registering the domain name <customshirtshop.com>. Complainant believes Respondent intentionally registered the confusingly similar domain name <customshirtshop.com> to capitalize on the business clientele and good will of the Complainant and to divert the customers of the Complainant to the Respondent’s business.
Complainant contacted Respondent in August 2001 to request that Respondent cease its use of the domain name. After several attempts, Complainant’s counsel eventually reached Respondent by telephone on December 3, 2001. Mr. Ramani agreed at that time that he would transfer the domain name to Complainant. Eventually, however, Respondent advised Complainant by way of a letter of February 6, 2002 that Respondent would not be transferring or selling the domain name to Complainant.
The domain name <customshirtshop.com> is not similar to the Respondent’s trade name, Ramani Custom Attire. The Respondent is not generally known by the domain name. However, the Respondent’s domain name <customshirtshop.com> is essentially identical to, and confusingly similar to, Complainant’s trademarks, trade name, and previously registered Internet domain names.
The Respondent’s domain name customshirtshop.com is confusingly similar to the Complainant’s trademark THE CUSTOM SHOP, to the Complainant’s trade name CUSTOM SHOP, INC., and to the Complainant’s domain names <thecustomshirtshop.com>, <thecustomshop.com>, <customshop.com>, and <customshirt.com>.
Prior to registering the domain name on July 2, 2001, the Respondent had no rights or legitimate interests in respect of the domain name <customshirtshop.com>.
Neither Respondent nor his company, Ramani Custom Attire, has been known commonly by the domain name <customshirtshop.com>.
On information and belief, Respondent was aware of the trademarks, trade name, domain names, and previous New York store trade of the Complainant prior to his registration of the domain name <customshirtshop.com>.
Respondent’s commitment to transfer the domain name to Complainant evidences his knowledge that Complainant’s rights in the mark and domain name were superior to Respondent’s rights.
Respondent’s use of the domain name <customshirtshop.com> is commercial and is done with the intent of misleading and diverting consumers to his website. Respondent’s attempts to stall the transfer of the domain name to Complainant until after the holidays indicates his intent to capitalize on the good will of the Complainant as long as possible.
Respondent is not making a legitimate noncommercial or fair use of the domain name.
Complainant contends the domain name was registered and is being used in bad faith, as evidenced by the following:
The domain name <customshirtshop.com> is not related to the trade name Ramani’s Custom Attire. The domain name is very closely related to, and confusingly similar to, the Complainant’s trademarks, trade name, and domain names.
The Respondent indicated repeatedly that there would not be a problem with him over the domain name. Ultimately, however, the Respondent simply stalled for time to capitalize on the heavy selling season around the holidays.
The Respondent placed a disclaimer on its website, indicating that it is aware of the likelihood of confusion created by its use of the domain name. The disclaimer was placed “below the horizon” on the website so that it is not immediately visible to visitors to the website.
The Respondent indicated to the Complainant that the Respondent was free to sell the domain name but that he decided not to sell it to the Complainant. This conduct indicates that the Respondent would be willing to sell the domain name to the Complainant for a fee considerably in excess of Respondent’s out-of-pocket expense in acquiring the domain name. Complainant also believes that the Respondent wishes the Complainant to believe that the domain name could be sold to a competitor of Complainant, in order to inflate the price received by the Respondent.
By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site by creating “initial interest confusion” and/or a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or of a product or service on Respondent’s web site. Such conduct is further evidence of bad faith.
By using the domain name, Respondent intends to create and capitalize on initial interest confusion among web browsers.
By using the domain name, Respondent is violating the rights of the Complainant in the mark, is diluting the distinctive character of the mark and its overall selling power, is engaging in deceptive and unfair trade practices under Lanham Act Section 43(a), and is in violation of the Anti-cybersquatting Consumer Protection Act found at Section 43(c) of the Lanham Act.
Respondent denies most of Complainant’s allegations. Respondent says that the communications between Respondent and Complainant were initiated by Complainant for the purpose of coercing and intimidating Respondent into giving up its rights in the domain name.
Respondent contends that it had a legitimate interest in the domain name <CUSTOMSHIRTSHOP.COM> even prior to its registration since it was literally descriptive of the business of Respondent, the making and selling of custom made shirts. Respondent is known for its business of making and selling custom made shirts which is reflected in its domain name <CUSTOMSHIRTSHOP.COM>.
Respondent Ramani Custom Attire is the registered owner of the disputed domain name: <CUSTOMSHIRTSHOP.COM> which is currently in use by Respondent, said registrar record was created July 2, 2001 and Respondent’s use of the domain name in connection with its legitimate business promotion commenced immediately thereafter.
Complainant acquired the major assets of TheCustomShop.com, Inc., including TheCustomShop.com, Inc.’s corporate name and associated trademarks from the Bankruptcy Trustee appointed by the Federal Bankruptcy Court for the Southern District of Texas, Houston Division on July 10, 2001.
Complainant owns trademark registrations for THE CUSTOM SHOP for goods and services including jewelry, neckties, shirts, trousers, sweaters, suits, blazers, pants and blouses and retail clothing store services. Complainant’s registered trademark THE CUSTOM SHOP is not limited to shirts but includes a variety of other goods including neckties, trousers, sweaters, suits, blazers, pants, blouses, jewelry and retail clothing store services. Complainant owns no trademark registrations for CUSTOM SHIRT SHOP which is the domain name in dispute.
Respondent’s domain name <CUSTOMSHIRTSHOP.COM>, registered July 2, 2001, is not identical or confusingly similar to Complainant’s registered trademarks THE CUSTOM SHOP which are registered for a variety of clothing goods and and retail clothing store services.
Respondent’s domain name <CUSTOMSHIRTSHOP.COM> is not the same as, and is materially different from, Complainant’s business name MICHAEL SMITH CUSTOM CLOTHIERS, INC. or any of its alternate dba names THE CUSTOM SHOP or MYSHIRTMAKER.COM.
Respondent’s domain name <CUSTOMSHIRTSHOP.COM> is literally descriptive of Respondent’s business which includes the design, manufacture and sale of custom made shirts.
Respondent’s domain name <CUSTOMSHIRTSHOP.COM> was registered and is being used in good faith by Respondent to promote and market its business of designing, marketing and selling custom made shirts.
Respondent’s domain name <CUSTOMSHIRTSHOP.COM> is directly related to Respondent’s trade and business of designing, marketing and selling custom made shirts.
Complainant’s communications with Respondent were coercive in nature and were intended to intimidate Respondent into giving up its valuable intellectual property rights in disputed domain name.
Respondent has no intention of selling, renting or otherwise transferring the domain name registration to the Complainant or anyone else.
Complainant, by commencing this arbitration proceeding, is guilty of Reverse Domain Name Hijacking.
Complainant seeks by this arbitration proceeding to deprive Respondent of the use of its lawfully obtained and valuable intellectual property rights in the disputed domain name by making wild and unsupported allegations of improper conduct and motives against Respondent.
Complainant seeks by this arbitration proceeding to extend unlawfully and improperly trademark rights associated with its trademarks THE CUSTOM SHOP to cover Respondent’s domain name <CUSTOMSHIRTSHOP.COM> which is materially different from and not confusingly similar to Complainant’s trademarks THE CUSTOM SHOP.
Complainant’s allegations of improper conduct by Respondent are convoluted and contradictory to the extent that they acknowledge that Respondent’s domain name is in actual commercial use in its web site yet assert that Respondent is cyber squatting.
Complainant’s allegations of improper conduct by Respondent are also contradictory to the extent that they both acknowledge that Respondent’s web site bearing the disputed domain name carries a disclaimer, yet allege that Respondent’s use of its domain name is done with the intent of misleading and diverting consumers to his website.
Complainant’s allegations of improper conduct by Respondent are false, unfounded and speculative and are entirely based on conjecture by Complainant as to Respondent’s motive and intent regarding its use of its lawfully obtained domain name.
I have found that the disputed domain name is confusingly similar to Complainant’s registered trademarks, that Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent has registered and is using the domain name 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
There is no question of Complainant’s rights in the trade mark THE CUSTOM SHOP. While these rights still rested in the bankruptcy trustee at the time of registration of the domain name by Respondent, as of the date of acquisition of the assets of the bankruptcy, they became the property of the Complainant.
The domain name <customshirtshop.com> is confusingly similar to Complainant’s mark because it incorporates the entirety of Complainant’s mark and merely adds the generic term “shirt” in-between “custom” and “shop.” The addition of a generic term to another’s mark does not create a distinct mark capable of overcoming a claim of confusing similarity. The evidence before me establishes that Complainant’s mark, THE CUSTOM SHOP has acquired sufficient distinctiveness that merely adding the word shirt to the mark is insufficient to take the domain name out of the realm of the confusingly similar.
Complainant succeeds on the first element.
Rights or Legitimate Interests
While I have noted and considered all of Respondent’s arguments set out above, the Complainant’s arguments in this case are more compelling. Applying the tests set out in Policy 4(c) to this case, I find that Respondent does not have rights or legitimate interests in the domain name.
Respondent knew about The Custom Shop and knew that the business was in bankruptcy. Respondent also knew that the assets in the hands of the trustee were to be sold at auction on July 10, 2001. Eight days before the sale, Respondent registered the domain name. Hence, Respondent knew about the rights of others in the name before Respondent’s registration and use of the name.
While in the absence of Complainant’s marks, one might argue that the domain name contains generic words only which are arguably descriptive of Respondent’s business, the registered, well-known marks combining those words make the mark sufficiently distinctive to defeat that argument.
Knowing of the existence of the mark and the fact the mark would be sold to a competitor within a few days, Respondent registered the domain name. The logical inference from this evidence is that Respondent registered the name to capitalize on the goodwill attached to THE CUSTOM SHOP mark. That being the case, I conclude that Respondent was not using the name on connection with a bona fide offering of goods or services.
Respondent has never been commonly known by the domain name.
Respondent is not making a legitimate noncommercial or fair use of the domain name and in fact is using the domain name exclusively for commercial purposes in competition with the Complainant.
For these reasons, Complainant succeeds on the second element.
Registration and Use in Bad Faith
The allegations of bad faith in this case relate to Policy 4(b)(iii) and (iv); i.e. whether Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, and whether by using the domain name, Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site by creating likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation or endorsement of the web site or of a product or service on the web site.
The evidence before me establishes that Respondent knew about The Custom Shop’s rights in the THE CUSTOM SHOP mark when it registered the disputed domain name. Respondent knew these rights were being sold shortly by the bankruptcy trustee. Respondent knew that the business was in bankruptcy and that its websites were not up and running. Complainant invites me to conclude that Respondent therefore seized the opportunity to benefit from Internet user confusion and registered the disputed domain name to capitalize on that confusion. In circumstances such as this, where it is clear that Respondent chose a mark it knew to be similar to another, one can infer intent to confuse. I find therefore, that Respondent’s intent in registering the domain name was to cause confusion between its business and the Complainant’s business, in the hopes of commercial gain. The proximity in time of the bankruptcy auction and the registration of the domain name is no coincidence. Respondent knew that Complainant had taken steps toward purchase of the valuable assets of the bankrupt, including the intellectual property. Respondent knew about THE CUSTOM SHOP mark. Respondent decided to register the domain name and operate a web site to capitalize on the familiarity of customers with that mark. These circumstances amount to bad faith under the policy.
I do not accept that the use of a disclaimer on the web site is sufficient to take this case out of the realm of bad faith. The likelihood of confusion arises with the name itself. Once a user has entered Respondent’s competing web site, Respondent’s intention to use the confusion to attract users to its web site is realized.
In light of my findings, I need not deal with Respondent’s claim of reverse domain name hijacking.
I find in favor of the Complainant in this case and order that the domain name <customshirtshop.com> be transferred to Complainant.
Anne M. Wallace, Q.C. , Panelist
Dated: June 3, 2002
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