Phat Fashions, LLC v. Majic Group Inc. a/k/a James M.
Claim Number: FA0207000115039
Complainant is Phat Fashions, LLC, New York, NY (“Complainant”) represented by Brad D. Rose, of Pryor Cashman Sherman & Flynn, LLP. Respondent is MAJIC Group Inc. a/k/a James M., Brooklyn, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <phatfarmit.com>, registered with Register.com.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 10, 2002; the Forum received a hard copy of the Complaint on July 10, 2002.
On July 10, 2002, Register.com confirmed by e-mail to the Forum that the domain name <phatfarmit.com> is registered with Register.com and that 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 July 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 31, 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.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On August 8, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The <phatfarmit.com> domain name is confusingly similar to Complainant’s PHAT FARM mark.
Respondent has no rights or legitimate interests in the <phatfarmit.com> domain name.
Respondent registered and used the <phatfarmit.com> domain name in bad faith.
Respondent failed to submit a Response in this proceeding.
Complainant owns U.S. Patent and Trademark Office (“USPTO”) Reg. Nos. 1,809,325; 2,415,455; and 2,260,888 for PHAT FARM, registered on the Principal Register. Complainant owns multiple trademarks for the design version of PHAT FARM. Complainant also owns various trademarks that incorporate the PHAT moniker.
Complainant has used the PHAT FARM mark since 1992 to denote its urban clothing line. Since Complainant’s inception in 1992, Complainant has ascended to the top of the urban fashion market. In 2001, Complainant’s products drew in $322 million in revenue. In a continuing effort to promote and distribute its urban clothing, Complainant spends over $3.7 million a year advertising its PHAT FARM mark and related marks. Due to Complainant’s successful rise in the fashion industry and Complainant’s promotional efforts, the PHAT FARM mark has become famous and notorious.
Respondent registered the <phatfarmit.com> domain name on February 21, 2002. Respondent has not made constructive use of the domain name and has failed to come forward and provide evidence of demonstrable plans to use the domain name.
Paragraph 15(a) of 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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
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; and
(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
Complainant has established its rights in the PHAT FARM mark through registration on the Principal Register of the USPTO and continuous use since 1992.
Respondent’s <phatfarmit.com> domain name contains Complainant’s entire PHAT FARM mark with the inconsequential omission of the space between the words. The addition of the general suffix “it” does not detract from the overall impression of Respondent’s domain name, which is Complainant’s PHAT FARM mark. Therefore, Respondent’s <phatfarmit.com> domain name is confusingly similar to Complainant’s PHAT FARM mark. See Tech. Prop., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to Complainant’s mark, RADIO SHACK); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the Complainant’s registered mark “llbean” does not circumvent the Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has met its burden under Policy ¶ 4(a)(ii) by asserting that Respondent has no rights or legitimate interests in the <phatfarmit.com> domain name. Thus, Respondent carries the burden of establishing its rights or legitimate interests in the domain name. Since Respondent failed to submit a Response, it may be presumed that Respondent has no such rights or interests in the domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, without the submission of a Response, the Panel may draw all reasonable inferences in favor of Complainant. See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent has not actively used the <phatfarmit.com> domain name in connection with a website. Since Complainant’s PHAT FARM mark is famous and Respondent’s domain name is such a close variant of the mark, it may be inferred that Respondent registered the domain name in order to capitalize on the goodwill Complainant’s mark has established. Respondent’s confusingly similar registration and passive holding of a domain name that fully incorporates the famous PHAT FARM mark suggests that Respondent has no rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) and (iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way).
Respondent is not commonly known by the <phatfarmit.com> domain name or any identity that uses a variation of the PHAT FARM mark; Respondent is known only as either Majic Group, Inc. or James M. Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the subject domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy lists a set of circumstances that, if found, warrant a finding of bad faith. However, prior Panels have frequently held the list to be nonexclusive and have surveyed the totality of circumstances when determining the bad faith registration and use issue. This Panel too will reference the totality of circumstances upon confronting the bad faith issue. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
Complainant has worked hard to develop and build the strong reputation the PHAT FARM mark enjoys. Because of the fame of Complainant’s PHAT FARM mark and the registration of the mark on the Principal Register of the USPTO, Respondent had, at minimum, constructive notice of Complainant’s rights in the mark. Therefore, Respondent’s registration of a confusingly similar domain name, despite notice of Complainant’s rights, constitutes bad faith registration pursuant to Policy ¶ 4(a)(iii). See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).
Furthermore, Respondent has failed to use the infringing domain name. The passive holding of a domain name that contains a famous trademark permits a finding of bad faith use under Policy ¶ 4(a)(iii). Because the mark is famous, there is no eventual future use of the infringing domain name that would not interfere with Complainant’s mark. Therefore, Respondent’s behavior represents bad faith use. See E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) Respondent knew or should have known of the Complainant’s famous GALLO marks and (2) Respondent made no use of the domain name <winegallo.com>); see also Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that the Respondent registered and uses the domain name in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby GRANTED.
Accordingly, it is Ordered that the domain name <phatfarmit.com> be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 12, 2002
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