Michael Smith Custom
Clothiers, Inc. d/b/a The Custom Shop d/b/a Myshirtmaker.com v. Custom Shirt
Shop c/o Jim Nice
Claim Number: FA0711001109402
PARTIES
Complainant is Michael Smith Custom Clothiers, Inc. d/b/a The Custom
Shop d/b/a Myshirtmaker.com (“Complainant”), represented by Richard
G. Martin, of Fraser Clemens Martin & Miller LLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <customshirtshopllc.com>, registered
with Network
Solutions, Inc.
PANEL
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.
Jeffrey M. Samuels, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 14, 2007; the
National Arbitration Forum received a hard copy of the Complaint on November 16, 2007.
On November 15, 2007, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <customshirtshopllc.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 19, 2007, the National Arbitration Forum notified
Complainant of certain deficiencies in its Complaint and gave it five (5)
calendar days to correct such deficiencies.
On November 21, 2007, Complainant submitted an Amended Complaint in
which the identified deficiencies were corrected.
On November 26, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 17, 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 postmaster@customshirtshopllc.com
by e-mail.
A timely Response was received and determined to be complete on December 13, 2007.
A timely Additional Submission was received from
Complainant and determined to be complete on December 18, 2007.
On December 21, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Jeffrey M. Samuels as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, located in
Prior to filing for bankruptcy protection and having its assets sold to
Complainant, The CustomShop.com, Inc. operated over 50 stores throughout the
U.S. and maintained a website at www.thecustomshop.com. Among the stores operated by
TheCustomShop.com, Inc. was a store located in
On September 4, 2001, after the bankruptcy filing and after the assets
of TheCustomShop.com, Inc. were purchased by Complainant, Respondent
incorporated Custom Shirt Shop, LLC and went into business for himself in
On December 29, 2005, Complainant’s counsel wrote to Respondent
requesting that it “cease and desist” from the use of Complainant’s marks. See Complaint, Exhibit G.
A “reminder” letter was sent on August 6, 2007. See Complaint, Exhibit
H.
In a decision issued on June 3, 2002, another ICANN panelist found in
favor of Complainant in connection with a complaint filed against the owner of
the domain name www.customshirtshop.com.[2] See Complaint, Exhibit I.
Complainant contends that the disputed domain name <customshirtshopllc.com> is confusingly similar to its
federally registered THE CUSTOM SHOP marks.
It further maintains that Respondent is not making a legitimate
noncommercial or fair use of the domain name.
Complainant argues that Respondent, as a former employee and manager of
the
Complainant further asserts that, by using the disputed domain name,
Respondent has intentionally attempted to attract, for commercial gain,
internet users to its website by creating “initial interest confusion” and/or a
likelihood of confusion with Complainant’s marks as to the source, sponsorship,
affiliation, or endorsement of Respondent’s site or of the products offered at
such site.
B. Respondent
Respondent alleges and requests that the Amended Complaint be dismissed
because Complainant has not operated in good faith. Respondent notes that Complainant was aware
of the use of the disputed domain name since 2005 but did not initiate this
proceeding until November 2007.
Respondent maintains that it continued to use its domain name under the
impression that Complainant had abandoned its claim to the domain name and
continued to invest significant sums of money in the marketing and development
of the domain.
Respondent also points out that Complainant’s website located at
customshirtshop.com is not under any commercial operation, does not redirect a
user to any commercially operating site, and states that it is “under
construction.”
Respondent argues that the domain name <customshirtshopllc.com> is descriptive of the goods offered
and sold by Respondent; that long before any notice of the dispute, Respondent
had used the domain name in connection with a bona fide offering of goods and
services, particularly, the sale of custom dress shirts; and that through
business contact, Yellow Pages ads, the use of the disputed domain and word of
mouth, Respondent’s business is commonly known as the “Custom Shirt Shop.”
Respondent further maintains that there can be no confusion between the
Complainant’s alleged mark and the use of the disputed domain name. “First, the
`substantially similar’ domain is not in use.
Second, a web search for `custom shop’ does not lead potential customers
to the disputed domain. Therefore, any
potential customers of [Complainant] that ultimately purchase product from the
Respondent have done so as the result of normal and legitimate
competition.”
With respect to Complainant’s contention that Respondent offered to
sell the disputed domain name for $12,000, Respondent contends that it offered
to accept such payment in order to resolve the instant dispute along with
threatened legal action[3]
“and that Complainant was informed that such payment was a fraction of the
substantial investment that Respondent had made in the use of the domain for
commercial purposes.
C. Additional Submissions
In its “Additional Submission,” Complainant urges that Respondent’s
laches argument should be rejected.
Complainant notes that it contacted Respondent to request that it “cease
and desist” from using the domain name and that this action was filed after
Respondent indicated that it would refuse to do so. Complainant also notes that it has actively
policed its marks and has been successful in obtaining the transfer of the
domain names customshirtshop.com and thecustomshirtshop.com.
With regard to the contention that its domain customshirtshop.com is
not under commercial operation, Complainant indicates that it owns the domain
name and has long been known as “The Custom Shirt Shop.”
Complainant, in response to Respondent’s contention that the subject
domain name is merely descriptive of the goods offered by Respondent, notes
that Complainant owns a number of
FINDINGS
The Panel finds that: (1) the disputed domain
name is confusingly similar to marks in which Complainant has rights; (2)
Respondent has no rights or legitimate interests in respect of the domain name;
(3) the domain name in dispute was registered and is being used in bad faith;
and (4) this proceeding should not be dismissed on grounds of laches.
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.
The Panel concludes that the disputed domain
name <customshirtshopllc.com>
is confusingly similar to Complainant’s THE CUSTOM SHOP marks. The disputed domain name merely adds the
generic term “shirt” in between “custom” and “shop,” as well as the top-level
domain “com” and entity abbreviation “llc”, and deletes the term “the.” These differences are insufficient to
distinguish Respondent’s domain name from Complainant’s marks. See
Sony Kobushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding
that “[n]either the addition of an ordinary descriptive word … nor the suffix
`.com’ detract from the overall impression of the dominant part of the name
….); Magnum Piering, Inc. v. Mudjackers,
D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not
change the confusing similarity).
The Panel further finds that, as a result of
its ownership of
The Panel concludes that Complainant has made
a prima facie case in support of its
allegations that Respondent has no rights or legitimate interests in the
challenged domain name and that Respondent has not successfully rebutted such prima facie case.
First, the evidence supports the
determination that Respondent, Mr. Jim Nice, as a former employee and manager
of the Las Vegas store operated by Complainant’s predecessor-in-interest, was aware of Complainant and its substantial
business trade and goodwill prior to registering his confusingly similar domain
name and opening up his own business in Las Vegas. Under such circumstances, the Panel concludes
that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
The Panel further concludes that Respondent
may not be found to be commonly known by the domain name, within the meaning of
paragraph 4(c) (ii) of the Policy. First,
there is no evidence, such as customer declarations, that Respondent’s business
is commonly known as the “Custom Shirt Shop.”
See Red Bull GmbH v. Gutch,
D2000-0766 (WIPO Sept. 21, 2000) (panel transferred name to complainant because
although respondent claimed he was known by the nickname “Red Bull,” he
provided no demonstrable evidence of the nickname’s use).
Second, other ICANN panels have held, and
this Panel agrees, that in order to have rights or legitimate interests under
the “commonly known” provision of the Policy a respondent must be commonly
known by the domain name prior to registration of the domain name in
issue. Such was not the case here. See
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001); “What
paragraph 4(c) (ii) envisages is a situation where a person or business is
commonly known …prior to registration of the disputed domain name.”
See also Paule
Ka v. Paula Korenek
D2003-0453 (WIPO July 24, 2003).
Finally, the Panel finds that Respondent is
not making a fair use of the domain name within the meaning of paragraph 4(c) (iii)
of the Policy insofar as the evidence indicates that Respondent’s “entire
purpose in registering the domain name was to conduct its own commercial
operations.” To fall within the Policy’s
“fair use” provisions, a respondent must use the domain name “without intent
for commercial gain.”
The Panel rules that the disputed domain name
was registered and is being used in bad faith.
The evidence indicates that, by using the domain name in issue,
Respondent intentionally attempted to attract, for commercial gain, internet
users to its web site by creating a likelihood of confusion with Complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of such site or
of the products offered at such site, within the meaning of paragraph 4(b) (iv)
of the Policy. See, e.g., TM Acquisition Corp. v. Carrol FA 97035 (Nat. Arb. Forum
May 14, 2001) (finding bad faith where respondent used the domain for commercial
gain to intentionally attract users to a direct competitor of
complainant).
Laches
While Respondent does not use the term
“laches,” its Response sets forth facts and argument consistent with such
equitable defense. However, the Panel
finds that the doctrine of laches is not relevant to consideration of this
matter. See, e.g., E.W. Scripps Co. v. Sinologic Indust. D2003-0447 (WIPO
July 1, 2003) (“[T]he Policy does not provide any defence of laches. This accords with the basic objective of the
Policy of providing an expeditious and relatively inexpensive procedure for the
determination of disputes relating to egregious misuse of domain names.”); Hebrew Univ. of Jerusalem v. Alberta Hot
Rods, D2002-0616 (WIPO Oct. 7, 2002) (“There is no limitation period in the
Policy. The remedy available in an
Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no
application.”)
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <customshirtshopllc.com> domain name
be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: January 4, 2008
[1] According to the Amended Complaint, Respondent, Custom Shirt Shop, LLC, was dissolved as a business entity on September 19, 2007 but the disputed website is still located at www.customshirtshopllc.com.
[2] The respondent in that case was Ramani Custom Attire.
[3] The threatened legal action apparently relates to Complainant’s assertion that Respondent misappropriated certain trade secrets of TheCustomShop.com, Inc. The Panel has no jurisdiction over such claim and gives it no consideration in its determination of the merits of the instant proceeding.