Phat Fashions, LLC v. Christopher McBrown
Claim Number: FA0204000110866
Complainant is Phat Fashions, LLC, New York, NY (“Complainant”) represented by Brad D. Rose, of Pryor, Cashman, Sherman & Flynn LLP. Respondent is Christopher McBrown, Fort Worth, TX (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <2phatapparel.com>, registered with Verisign - 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.
Hon. Charles A. Kuechenmeister (Ret.) is the Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 25, 2002; the Forum received a hard copy of the Complaint on April 25, 2002.
On May 1, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <2phatapparel.com> is registered with Verisign - Network Solutions, Inc. and that the Respondent is the current registrant of the name. Verisign - Network Solutions, Inc. has verified that Respondent is bound by the Verisign - 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 May 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 21, 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 20, 2002.
On May 24, 2002, Complainant timely filed an additional submittal.
On June 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Charles A. Kuechenmeister (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is the owner of numerous trademark registrations for the mark PHAT and variations thereof, including U.S. Trademark No. 2,372,748 for PHAT, which represents a first use as of December 31, 1992, covering wearing apparel. Registration of this mark was issued August 1, 2000.
Complainant has invested substantial time, effort and money developing its trademarks and goodwill associated therewith.
In November of 1999, Respondent attempted to register the mark 2PHAT PRAISING HIM AT ALL TIMES with the U.S. Patent and Trademark Office (USPTO). Complainant entered that proceeding as an opposer, giving Respondent actual knowledge of its use of the mark PHAT and its opposition to any other person, including Respondent, using that mark. Respondent's application was published for opposition on January 30, 2001. Complainant's opposition papers were filed on February 20, 2001.
Respondent registered <2phatapparel.com> on or about January 26, 2001.
The domain <2phatapparel.com> is identical to or confusingly similar with Complainant's PHAT trademark.
Respondent has no right or legitimate interest with respect to <2phatapparel.com>. Respondent is not licensed or authorized by Complainant to use the PHAT mark or any variation thereof, and Respondent is not known by the name PHAT or any variation thereof.
Respondent uses the mark PHAT to market its own wearing apparel products, thus competing directly with Complainant using Complainant's mark PHAT. Respondent maintains his registration of and is using <2phatapparel.com> in connection with and as a part of its efforts to compete with Complainant.
Respondent is using <2phatapparel.com> with the intent to secure commercial gain and to divert Complainant's customers to a competing website.
Respondent, doing business as 2Phat Apparel Co., also known as 2Phat Praising Him At All Times, commenced business operations in November 1998. The assumed name for both 2PHAT and PRAISING HIM AT ALL TIMES was filed in Texas in November 1998.
As used by Complainant, PHAT is a mainstream slang word used in and synonymous with the hip-hop culture. It stands for "pretty hot and tempting" and means sexy or cool.
Respondent uses PHAT as an abbreviation for "praising him at all times" with the "2" denoting giving God double praise. The drawings used by these parties in connection with their respective marketing efforts are dramatically different. For example, the drawing displayed with Respondent's use of PHAT shows a pair of praying hands surrounded with the words "praising him at all times." Because of this it is very unlikely that there will be any confusion between the Complainant's use of PHAT and that of Respondent.
In addition to Respondent, many other people have registered trademarks using the mark PHAT.
Further, there are many domain names registered by persons other than the Complainant, which represent clothing or apparel and contain the mark PHAT. The Response lists examples in each of these categories.
C. Additional Submission by Complainant.
Respondent's bad faith is further demonstrated by its registration of other infringing "PHAT" domain names, including <2phatfashions.com>, the day after Complainant served Respondent with a copy of the Complaint in these proceedings.
Complainant's Federal Trademark registrations give it the exclusive rights to use the mark PHAT, regardless of whether "phat" is used in the vernacular. Complainant has federally recognized rights in the mark PHAT.
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:
(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 or Confusingly Similar Policy ¶ 4(a)(i).
Complainant is the owner of numerous trademark registrations with the U.S. Patent and Trademark Office for the PHAT (Reg. No. 2,372,748), BABY PHAT (2,240,881) and PHAT FARM (2,429,559) marks, among others. Complainant commenced business operations in the clothing and apparel business in 1992 and has expanded its undertaking worldwide pursuing numerous international trademark registrations. Based on the extensive foregoing registrations, its rights to the PHAT mark are well-established.
Respondent's reference to the use, and indeed registration of PHAT and variations of it by others, and his assertion that Complainant does not have exclusive rights to PHAT are misplaced. Policy paragraph 4(a)(i) does not require that a Complainant have exclusive rights to the name, only that it have some rights. Complainant's U.S. trademark registrations confer upon it sufficient rights to PHAT for the purposes of this proceeding.
Respondent’s <2phatapparel.com> domain name is confusingly similar in sound, appearance, meaning and overall commercial impression to Complainant’s PHAT mark. The addition of a number to the mark fails to detract from the overall influence of PHAT in the domain name and will lead to confusion among Internet users. See Am. 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 Omnitel Pronto Italia S.P.A. v. Carlo Dalla Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark).
Likewise, the addition of an industry-specific word, such as “apparel,” implies an obvious relationship to Complainant’s retail business, thereby confusing users searching for its website. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark); see also Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”).
Respondent's assertion that no confusion will result because of the dramatically different associations and cultural contexts in which the parties use PHAT, i.e., secular/hip-hop vs. religious, is also misplaced. Confusion will exist in the mind of an Internet user seeking wearing apparel associated with the PHAT mark regardless of the different cultural associations intended subjectively by the parties in connection with their use of that mark.
Based upon the foregoing, the Panel finds and determines that <2phatapparel.com> is identical or confusingly similar to the mark PHAT, in which Complainant has rights.
Rights or Legitimate Interests Policy ¶ 4(a)(ii).
Respondent asserts that his business venture making a bona fide offering of goods or services using a variation of PHAT as early as November 1998 confers upon him a right or legitimate interest in respect of <2phatapparel.com> pursuant to Policy ¶4(c)(i). Respondent's proof in this regard, however, consists only of an unsupported allegation that he "commenced business operations" under the name "2PHAT Apparel Co.," a/k/a "Praising Him at all Times," in November 1998 and that he registered both as assumed names in the State of Texas at that same time. Had he registered that name in Texas and had he been using the 2PHAT name in connection with a bona fide offering of goods and services there would be ample corroborating evidence of it. No such evidence was tendered.
Although Complainant has the ultimate burden of persuasion on all elements of the case, it is incumbent upon Respondent to offer at least some evidence of right or legitimate interest in respect of the domain name if any he has. See AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests where Respondent alleged that it intended to use the domain name <attweb.com> for a company called “At the Web” but failed to provide any evidence as to the existence of the company). On the evidence presented, the Panel is satisfied that the Respondent has no right or legitimate interest in respect of <2phatapparel.com>.
Having determined this element of the case upon evidentiary grounds, the Panel does not address Complainant's contention that constructive notice of Complainant's USPTO application for a tradename including PHAT before November 1998 precludes Respondent as a matter of law from being able to have made a bona fide offering of goods and services under another variation of PHAT at that time.
Registration and Use in Bad Faith Policy ¶ 4(a)(iii).
Respondent’s registration and use of <2phatapparel.com> creates the impression that Respondent’s website is related to Complainant’s PHAT mark. The addition of an industry-specific word, such as “apparel,” creates a false association in the minds of Internet users. This demonstrates bad faith use and registration under Policy ¶4(b)(iv). Respondent had constructive knowledge of Complainant’s PHAT mark covering wearing apparel when it registered <2phatapparel.com> in January 2001, and he has had actual knowledge of it since the very next month, when Complainant filed an opposition statement to his application to register 2PHAT PRAISING HIM AT ALL TIMES. He nevertheless initiated and has continued his registration and use of <2phatapparel.com> to promote the sale of his wearing apparel products. See Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding constructive notice as a result of Complainant’s widespread promotional efforts, coupled with diversion from Complainant’s site to Respondents for competing commercial gain, is sufficient evidence of bad faith registration and use). Respondent is intentionally attempting to attract Complainant’s customers by creating a likelihood of confusion with Complainant’s mark. See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant).
In its Additional Submission Complainant points out that the day after Respondent was served with the Complaint in this matter, Respondent registered other infringing “phat” domain names, including <2phatfashions.com>. Respondent has thus demonstrated a bad faith pattern of registering the PHAT mark at issue, continually infringing on Complainant's PHAT mark. In addition to underscoring its use of <2phatapparel.com> to attract users to its website, this conduct also evidences bad faith registration and use under Policy ¶4(b)(ii) in that Respondent appears to be attempting to prevent Complainant from registering domain names reflecting its PHAT mark. See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).
Based upon the foregoing, the Panel finds and determines that the Respondent registered and is using <2phatapparel.com> in bad faith.
Based upon the foregoing Findings and Discussion, the relief sought in the Complaint as to <2phatapparel.com> is granted. The domain-name <2phatapparel.com> is ordered transferred to Complainant.
Honorable Charles A. Kuechenmeister (Ret.)
Dated: June 21, 2002
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