NATIONAL ARBITRATION FORUM
Apparel, Inc. v. Eric Bischoff
Claim Number: FA0711001106071
Complainant is Alternative Apparel, Inc. (“Complainant”), represented by Jeffrey B. Sladkus, of Jeffrey B. Sladkus, LLC, 1519 Wesley Parkway, Atlanta, GA 30327. Respondent is Eric Bischoff (“Respondent”), represented by Paul Rubell, of Meltzer Lippe Goldstein & Breitstone, L.L.P., 190 Willis Avenue, Mineola, NY 11501.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alternative.com>, registered with Network Solutions, Inc.
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.
Timothy D. O’Leary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 6, 2007.
On November 5, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <alternative.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 November 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 6, 2007 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 firstname.lastname@example.org by e-mail.
On December 6, 2007, Respondent requested, without Complainant’s consent, an extension of time by which to file a timely Response. On December 6, 2007, the National Arbitration Forum granted Respondent’s request, extending the deadline by which a timely Response could be filed to December 17, 2007.
A timely Response was received and determined to be complete on December 17, 2007.
A timely Additional Submission was received from Complainant on December 21, 2007.
A timely Additional Submission was received from Respondent on December 26, 2007.
On January 3, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Timothy D. O’Leary as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Alternative Apparel, Inc. (“Alternative”) is a manufacturer of organic eco-friendly clothing. Alternative’s products are sold under the brands, ALTERNATIVE, ALTERNATIVE APPAREL and ALTERNATIVE EARTH, among others. The Company was first started in January 1995 as Gagwear, Inc. (which later changed its name to Alternative Apparel, Inc.) in Norcross, Georgia. Since 1999 Alternative has sold its products internationally to over 35 countries, including; Europe, Asia, South America, Africa, Australia, the Middle East and the Caribbean.
Complainant contends that it has common law rights in the ALTERNATIVE mark dating back to January 31, 1995, as reflected in its trademark registration. Complainant’s evidence to support this assertion is that it sold over $668 million in retail sales on 37 million products in over 35 countries.
Complainant advises that Respondent registered the URL <alternative.com> on December 14, 1995; however, upon information and belief, the Respondent has not commenced commercial use of the URL <alternative.com> (the “Domain Name”). Respondent has not used the website for a legitimate purpose and is simply warehousing this Domain.
Complainant contends that the <alternative.com> URL is confusingly similar to its long standing ALTERNATIVE Marks. The URL <alternative.com> incorporates the mark ALTERNATIVE in its entirety and is identical to Complainant’s ALTERNATIVE marks and virtually identical to Complainant’s other ALTERNATIVE marks, such as ALTERNATIVE APPAREL and ALTERNATIVE EARTH.
Complainant argues that it is well settled that the addition of a top level domain, such as .com, .net, or .org, to a registered trademark does not sufficiently differentiate the resulting domain name from the mark and therefore a domain name incorporating a registered mark will still be held to infringe the trademark incorporated therein.
Complainant further argues that Respondent’s use of the Domain Name also is likely to cause initial interest confusion between Complainant’s ALTERNATIVE Marks and Respondent’s domain name by initially luring a consumer to a site that is thought by the consumer to be authorized by Complainant.
Complainant states that Respondent should be considered as not having any rights or legitimate interest in the domain name because for well over ten (10) years, Respondent does not appear to have made preparations to use the Domain Name in a bona fide offering of goods and services.
Complainant contacted Registrant over 18 months ago regarding the URL and, since that time, Registrant still has not made a bona fide offering of goods or services, despite his verbal assurances to Complainant that he desired to create a functioning website. Respondent is not commonly known by the mark incorporated in the Domain Name. Complainant argues that these facts support Complainant’s assertion that Registrant does not maintain a “legitimate interest” in and to the Domain Name.
Complainant strongly asserts that Registrant’s non-use of the Domain Name for several years - if not over a decade - should weigh heavily in the Panel’s determination of whether or not Registrant maintains the type of legitimate interests contemplated by Policy ¶ 4(a)(ii).
Complainant maintains that Respondent is using the domain name in bad faith.
Respondent has been merely holding the URL passively for a period of at least 18 months and likely for a period dating back as far as 1995 when the URL was originally registered by Complainant. Complainant argues that a URL that is passively held is presumed to be used in bad faith. Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith.
Complainant contends that Respondent is merely warehousing the Domain Name for commercial gain for the purpose of selling it to Complainant or another third party at a profit. Complainant has contacted Respondent on various occasions over the past couple of years to advise Respondent of its rights in the ALTERNATIVE Marks and to advise Complainant that his ownership of the Domain Name is causing confusion and interfering with his business. In an effort to amicably resolve this issue, Complainant has offered to reimburse Respondent for his costs in registering and maintaining the URL. Respondent has replied merely with claims that he will be creating a website and starting an unrelated, non-confusing business in connection with the Domain Name – none of which Complainant states has come into fruition. Respondent made additional statements regarding his investment in the URL implying that he would only consider selling the Domain Name for an amount greatly exceeding his actual costs in registration and maintenance of the domain name.
Complainant submits that Respondent is using the Domain Name in bad faith by warehousing the Domain Name and trying to sell it to Complainant for a profit.
Respondent contends that the Domain Name is not identical and is not confusingly similar and Complainant’s request should be denied.
Respondent purchased the domain on July 8, 2002, and has used the domain for commercial purposes at all times since its acquisition. Respondent states that its commercial use of the domain <alternative.com> and the brand name “alternative” precedes Complainant’s use of the solitary word “alternative.”
Respondent states that it has never sought to sell or rent the domain. In fact, Respondent has rejected many unsolicited offers to purchase the domain, and Respondent has informed all of the offerors (including Complainant) that the domain is not for sale.
Respondent argues that there can be no confusion between the businesses of Complainant and Respondent. Complainant is a clothing company. Respondent is in the business of providing products and services to achieve healthy, sustainable, ecological living.
Respondent contends that the word “alternative” is a generic word. United States courts consider generic marks to be weak and incapable of enforcement.
Complainant’s claim that it has continuously used the word “alternative” is disingenuous. A decade ago, on January 1, 1998, Complainant abandoned its corporate use of the name “alternative.” Complainant changed its name from Alternative Headwear, Inc. to Gagwear, Inc. How critical can the word “alternative” be to Complainant, if it voluntarily surrendered the word from its corporate name? Respondent argues that Complainant abandoned the use of the name “Alternative” in 1998, an only re-adopted it this year (in 2007) in order to commence this proceeding.
The fact is that Complainant has used the word “Gagwear” and the trade name “Gagwear, Inc.” as its corporate name and trade name at all times from 1998 through 2007. Complainant only recently changed its corporate name from Gagwear Inc. to Alternative Apparel Inc. on February 27, 2007 – apparently in anticipation of commencing this proceeding.
Complainant obtained the “Alternative” trademark registration only recently, on August 14, 2007. This 2007 registration was granted to Complainant under its legal corporate name, Gagwear, Inc. In late 2007, Gagwear, Inc. assigned the registration to Alternative Apparel, Inc. Thus, Complainant did not obtain the registration for the mark “Alternative” until late in 2007, or 5 1/2 years after Respondent- acquired the domain <alternative.com.> and began using it in connection with Respondent’s business.
Respondent contends that the facts do not support Complainant’s bald allegation that it has used the “alternative” brand for a decade. In fact, the only trademark registrations that Complainant acquired under its legal name, Gagwear, Inc., prior to 2005 are “Gagwear,” “Sweet Sue,” and “Alternative Headwear.”
Respondent argues that the important mark for Gagwear, Inc. is obviously “Gagwear,” not Alternative Headwear.”
In 2007, Complainant obtained the “Alternative” trademark. This mark is also limited to a very narrow class of products: “Men’s, women’s, and children’s apparel, namely, T-shirts, tank top, golf shirts, dress shirts, blouses, pans, underwear, hats, caps and visors.” No other (or alternative) products are covered by the “Alternative” mark.
Respondent argues that “Alternative Headgear” and “Alternative Apparel” are not the same thing as “Alternative.” Complainant simply uses the word as an adjective to describe and sell shirts and hats.
Respondent contends that Complainant’s trademark is relevant in the apparel industry only. Complainant Gagwear, Inc. (formerly known as Alternative Headgear, Inc., and now known as Alternative Apparel, Inc.) sells hats, shirts, and underwear. “Alternative” is just a generic word used to describe the Complainant’s apparel products. Complainant’s trademark really has no significant meaning unless taken in context within other words. When the words “alternative,” “Apparel,” and “inc.” are analyzed separately, it is clear that the word “alternative” simply means a choice (noun) or outside the norm (adjective); “apparel” describes the type of product; and “inc.” symbolizes that it is a corporation. Taken as a whole, it can mean a different type of apparel outside the norm. Complainant’s trademark only protects Complainant’s sales of this narrow class of clothing-related products.
The word “alternative,” as used in Complainant’s mark, has not acquired any secondary meaning in any industry. Consumers do not associate Complainant’s product simply by seeing or hearing the word “alternative.” It is only when the two words, “alternative” and “apparel,” are taken together that they have any significance at all. The word “alternative” has no secondary meaning.
Without the modifier “apparel,” Complainant’s mark is generic, without intrinsic meaning, and incapable of protection or enforcement.
Respondent points out that Complainant and Respondent are not the only businesses using the generic, multi-purpose word “alternative” as their trade names or domain names. A plethora of alternative companies use the word “alternative” to describe their businesses, and to locate their businesses on the World Wide Web. For example, Alternative magazine is a bimonthly periodical that covers alternative music, alternative clubs, alternative body art, alternative fashion, alternative cinema, and alternative events. This magazine can be purchased at Borders, W.H. Smiths, Virgin, HMV and, according to Alternative’s website, at “Alternative Related Stores.”
Complainant’s entire webpage only uses the word “alternative” but a single time, in the final sentence. And in that usage, Complainant uses the word “alternative” merely to describe its customer, not its products.
Respondent maintains that it sells products and services related to healthy, sustainable, ecological living. Respondent began selling its products in 2002, immediately upon being incorporated under the name Alternative, Inc. Alternative, Inc. filed a United States corporate income tax return as early a 2002. The return shows the company’s first-year sales activities.
In 2002, Respondent sold exercise equipment known as “Kangoo Jumps.” These were initial “alternative” health products sold by Respondent five (5) years ago.
Respondent argues that none of Respondent’s products have any connection to Complainant’s business of selling apparel, hats, shirts, or underwear.
Respondent alleges it purchased each of these domains and, in many cases, paid substantial sums to acquire them.
Respondent alleges that Complainant itself acted in bad faith in bringing this proceeding. Respondent asserts that Complainant abandoned the use of the name “Alternative” in 1998, and only readopted it in the year 2007 in order to commence this proceeding.
Respondent contends that it is engaging in a bona fide commercial use of the <alternative.com.> domain.
Respondent further states that its use of the domain <alternative.com.> precedes Complainant’s use of the solitary word “alternative.” Further, Respondent argues that the domain is generic and there can be no bad faith involved.
Respondent maintains that he has never sought to sell the domain and that he has informed Complainant that it is not for sale.
Complainant’s Additional Submissions under Contention A.
Complainant has been awarded various Federal registrations of its ALTERNATIVE Marks. In addition, Complainant has made continuous and extensive us of it ALTERNATIVE Marks since 1995.
Respondent owns the domain name <alternative.com> which it acquired in 2002. Respondent’s domain name is identical or virtually identical to Complainant’s ALTERNATIVE Mark.
Respondent claims that it has a “legitimate” business under the brand “ALTERNATIVE” that is not confusing to Complainant’s business. In support of these claims, Respondent has submitted a 2002 tax return for Alternative, Inc. and some listings of over 300 domain names it owns, some of which incorporate the word “alternative.” Upon closer scrutiny of these materials, it becomes questionable whether the Respondent’s claims are bona fide. First, why is only one year’s tax return included -- especially one that is over 5 years old? Why not show the increase in the business by using the increase in revenue with additional financial information? Further, the tax return cannot be considered verified evidence that the revenue reported on the return was in fact generated from the website located at <alternative.com>.
Complainant argues that Respondent has provided no credible evidence that he is known under the “Alternative” mark. The products he has represented to sell are not branded with the “alternative” mark and all that has been submitted to evidence his corporate business is a copy of “Articles of Incorporation.” Most importantly, the Respondent’s domain name registrations are in his personal name, not his company name.
Respondent is only warehousing the Domain Name in an effort to sell it for a profit, and Respondent is in fact in the business of warehousing domain names to sell for a profit.
Submissions under Contention B.
Complainant further strongly asserts that Registrant’s non-use of the Domain Name for several years – if not over five (5) years – should weigh heavily in the Panel’s determination of whether or not Registrant maintains the type of legitimate interests contemplated by Policy ¶ 4(a)(ii).
The facts firmly support Complainant’s assertion that Registrant does not maintain a “legitimate interest” in and to the Domain Name.
Additional Submissions under Contention C.
Respondent is using the domain name in bad faith. Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii).
ICANN’s UDRP Policy provides non-exclusive guidelines on the type of evidence to establish bad faith. Merely passively holding a domain name has been well established to be a presumption of bad faith (mis)use of a domain name.
Respondent has not submitted any credible evidence of “legitimate” use of its website.
The mere fact that Respondent has submitted no proof of bona fide use of the domain name is an implication of bad faith ownership.
Respondent was not operating a “legitimate” website and its web pages show only the bare minimalist use. In fact, for the period from November 2005 to June 2007, the site specifically denotes that it is “under development.”
Complainant respectfully submits that Respondent is using the Domain Name in bad faith by, among other things, warehousing the Domain Name and trying to sell it to Complainant for a profit.
Submissions under Contention A.
Respondent argues that no one has ever been confused by the apparent similarity of the domains <alternative.com> and <alternativeapparel.com>. Complainant has not adduced one scintilla of evidence to show otherwise despite its bald allegation of actual confusion in the marketplace.
Respondent asserts that Complainant Gagwear, Inc. n/k/a Alternative Apparel, Inc. was issued a trademark (Alternative) that is a generic word. This weak mark is not susceptible of enforcement.
Complainant registered its mark to seek protection for the sale of “women’s, men’s and children’s apparel” - and nothing more. The mark does not afford Complainant any protection for the alternative uses of the word “alternative” by musicians, recording studios, radio stations, magazines, famous pets, dictionaries, or - in Respondent’s case - “green,” healthy, sustainable, ecological lifestyles.
Respondent contends that its use of the Domain Name has not caused initial interest confusion between Complainant’s Alternative marks and Respondent’s domain name by initially luring consumers to a site that is thought by the consumer to be authorized by Complainant as Complainant contends. The reason is obvious as there is no similarity, no comparison, no confusion between these two vastly differing industries.
Not one person has ever visited the <alternative.com> domain in a misguided effort to locate Complainant’s site. Complainant does not offer a solitary piece of evidence - no anecdote, no customer survey - to support this unsubstantiated, prejudicial statement of “fact.”
Respondent’s Additional Submissions under Contention B.
Respondent asserts that its use of the domain and the expansion of Respondent’s business since 2002 (and since 2006) shows clearly that the domain is central to its business.
Respondent’s use of the domain is for the purpose of promoting the business of selling “green” products for healthy, sustainable ecology and lifestyles.
Respondent argues that to say that Respondent’s growth of its business was in response to Complainant’s unsolicited purchase offer almost two (2) years ago is laughable.
Respondent’s Additional Submissions under
Respondent has used the <alternative.com> domain in commerce continuously since its acquisition in 2002.
Complainant abandoned its use of the word “alternative,” banishing it from its corporate name in 1998. At that time (and until 2005), the sole trademarks that were registered to Complainant were “Gagwear,” “Sweet Sue,” and “Alternative Headwear.”
The domain is not for sale or rent and never has been.
FINDINGS and 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:
the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
the Respondent has no rights or legitimate interests in respect of the domain name; and
the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The Panel finds the issues on this element in favor of Respondent.
Respondent disputes Complainant’s assertion of common law rights in the ALTERNATIVE mark. Respondent contends that Complainant abandoned all use of the ALTERNATIVE mark in 1998 when it changed its business name to Gagwear, Inc. and has only recently taken up using the ALTERNATIVE mark again in commerce. The Panel finds that while Complainant owns a trademark registration for the ALTERNATIVE mark, Complainant’s rights do not predate Respondent’s registration of the <alternative.com> domain name. Therefore, the Panel finds that Complainant has not established rights in the mark for purposes of Policy ¶ 4(a)(i). See Trujillo v. 1Soft Corp., FA 171259 (Nat. Arb. Forum Sept. 10, 2003) (“As Complainants have not shown that their rights predate Registrant’s domain name, Complainants have not satisfied paragraph 4(a)(i) of the Policy.”); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration . . . of the domain name”).
While the Panel recognizes that a finding on this element in favor of the Respondent makes it unnecessary to consider the remaining two elements Complainant must prove in order to satisfy its burden, the Panel elects to consider the other two elements.
Rights and Legitimate Interests
The Panel finds the issues on this element in favor of Respondent.
The Panel finds that Complainant has failed to allege facts sufficient to create a prima facie case for lack of rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does file a response, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the Panel declines to transfer the disputed domain name).
Respondent contends that it is using the <alternative.com> domain name in connection with its business dedicated to selling alternative health, ecology, and sustainable living products. Respondent contends that it began selling products in 2002 and submits evidence of tax returns from that year in furtherance of this assertion. The Panel finds find that Respondent’s use of the <alternative.com> domain name is a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Funskool (India) Ltd. v. funschool.com Corp., D2000-0796 (WIPO Nov. 30, 2000) (finding a bona fide use of the <funskool.com> domain name where the respondent submitted an article that indicated that the respondent had been using the similar <funschool.com> domain name to resolve to a popular gaming website for school children prior to notice of the dispute); see also InfoSpace, Inc. v. Lemieux, D2000-1476 (WIPO Jan. 18, 2001) (finding that the use of the <sportsinfospace.com> domain name was a bona fide offering of goods or services where the respondent registered the domain solely for the purpose of offering season tickets to baseball games and restricted the use to that extent).
Moreover, Respondent contends that the<alternative.com> domain name is comprised of a generic term. The Panel finds that Respondent’s registration of a domain name comprised of a generic term is sufficient to establish rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (“CONCIERGE is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website.”); see also SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that the complainant failed to show that it should be granted exclusive use of the domain name <soccerzone.com>, as it contains two generic terms and is not exclusively associated with its business).
Registration and Use in Bad Faith
The Panel finds the issues on this element in favor of Respondent
The Panel finds that Complainant failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy If 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the Panel may conclude that the respondent acted in bad faith).
Having found that Respondent has established rights or legitimate interests in the <alternative.com> domain name through its use in connection with the sale of alternative health, ecology, and sustainable living products under Policy ¶ 4(a)(ii), the Panel concludes that Respondent did not register the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) (“Respondent’s rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy ¶ 4(a)(iii).”); see also Pensacola Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (“Because the Panel has found that Respondent has rights and interests in respect of [sic] the domain name at issue, there is no need to decide the Issue of bad faith.”).
Moreover, Respondent contends that the <alternative.com> domain name is comprised of a generic term. The Panel finds that Respondent could not have registered the disputed domain name, used in its generic sense, in bad faith under Policy ¶ 4(a)(iii). See Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (“As to both registration and use, the generic nature of the disputed domain name itself rebuts any allegation by Complainant that Respondent registered or used the disputed domain name in bad faith.”); see also Trump v. olegevtushenko, FA 101509 (Nat. Arb. Forum Dec. 11, 2001) (finding that <porntrumps.com> does not infringe on the complainant’s famous mark TRUMP, since the complainant does not have the exclusive right to use every form of the word “trump”).
Finally, having rejected Complainant’s assertion of common law rights in the <alternative.com> domain name and that Respondent’s domain name predates Complainant’s trademark rights, the Panel finds that Respondent could not have registered the <alternative.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Open Sys. Computing AS v. degli Alessairdri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant); see also Interep Nat’l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark).
Having failed to establish any of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Timothy D. O’Leary, Panelist
Dated: January 17, 2008