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
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to 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. 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
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.
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 “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
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.
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
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.”)
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
 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.
 The respondent in that case was Ramani Custom Attire.
 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.