Escada AG v. Andy Tran a/k/a Northwest Bakery Inc.
Claim Number: FA0207000117029
Complainant is Escada AG, Aschheim Bei Munchen, GERMANY (“Complainant”) represented by Barbara A. Solomon Esq., of Fross Zelnick Lehrman & Zissu, PC. Respondent is Andy Tran d/b/a Northwest Bakery Inc., Seattle, WA, USA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <escada.us>, registered with Go Daddy Software, 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.
Alan L. Limbury Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 24, 2002; the Forum received a hard copy of the Complaint on July 24, 2002.
On July 24, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <escada.us> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the usTLD Dispute Resolution Policy adopted and approved on February 21, 2002 by the United States Department of Commerce (the “Policy”).
On August 5, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 26, 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 August 26, 2002.
Complainant’s additional submissions were received on August 27, 2002.
On September 13, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is one of the world’s leading fashion and couture companies, manufacturing and selling in 56 countries clothing, jewelry, footwear, cosmetics, accessories and fragrances under the trademark ESCADA, which it has used since 1976. In the United States, ESCADA branded products are available in over 30 freestanding Escada boutiques and in more than 180 other retail locations. In Washington State, where Respondent is located, ESCADA brand clothing is sold at a freestanding Escada boutique in Seattle and in several retailers located throughout the State. There is also extensive advertising of the ESCADA brand name in the Seattle area.
Complainant is the registrant of the domain names <escada.com> and <escada.com.au>. The <escada.com> website went live on March 14, 1996 and averages 45,000 hits per month.
Complainant owns an extensive worldwide portfolio of registrations for the trademark ESCADA and for marks which incorporate that word, including fourteen registrations in the United States, two of which are for the word ESCADA alone: Nos. 1,219,137 dated July 7, 1982 for leather and leather imitations, trunks, bags, purses, wallets and key cases, and 1,574, 202 dated January 2, 1990 for cosmetics. These are incontestable under US law, thus constituting conclusive evidence of Complainant’s exclusive rights in the ESCADA mark. Registration 2,293,698 ESCADA and design, dated November 16, 1999 is for jewelry, handbags, opera bags, trunks, wallets, footwear, ties and scarves.
The disputed domain name is identical or confusingly similar to Complainant’s ESCADA trademark. Respondent has no rights or legitimate interests in the domain name, which has been registered in bad faith. Respondent is also owner of the domain name <movado.us> which suggests a pattern of cybersquatting and creates an inference of bad faith registration. Respondent had constructive, if not actual notice of Complainant’s ESCADA mark.
In response to a “cease and desist” letter, Respondent advised that in Portuguese ESCADA means “staircase” or “ladder” and that ESCADA is an acronym for “electronic supervisory control and data acquisition.” However, Respondent offered no proof that his use or intended use of the disputed domain name refers to these meanings. Respondent also stated he can use the disputed domain name for naming his business. Yet his business name is Northwest Bakery Inc. Respondent provided no evidence that he has a business to which the ESCADA mark is or could be relevant nor that he operates a business under or is known by that name.
Respondent stated that companies use the name ESCADA in the U.S. However, Complainant is not aware of any companies using ESCADA as a trade name, nor has Respondent identified any. According to Trademark Access there are no federal trademark registrations or pending applications for the mark ESCADA other than Complainant’s.
To date there has been no use of the disputed domain name nor has Respondent provided evidence of any demonstrable preparations to use it in connection with a bona fide offering of goods or services. Mere personal assertions of plans to use a domain name in the future in an unspecified manner are insufficient to create legitimate interests.
Respondent has not been commonly known by the name ESCADA. Respondent is not making any non-commercial or fair use of the domain name. There is no relationship between Complainant and Respondent that would give rise to any license, permission or other right by which Respondent could own or use any domain name incorporating Complainant’s famous and federally registered trademark ESCADA.
The fact that the disputed domain name was registered long after the ESCADA mark became famous, after Complainant had obtained numerous U.S. federal trademark registrations for the mark and after Complainant had established a worldwide Internet presence further establishes Respondent’s lack of legitimate interests.
Respondent’s argument that ESCADA has a meaning in Portuguese or may be an acronym for a category of software does not establish legitimate interests in the domain name since these “definitions” do not appear to have any relevance to Respondent, to his proposed personal use of the domain name or to his registration of the domain name.
The fact that Respondent has registered as a domain name more than one federally registered trademark that he does not own suggests a pattern of cybersquatting and creates an inference of bad faith registration.
Bad faith also can be found from the fact that Respondent registered without authorization a domain name identical to Complainant’s famous and federally registered mark.
As a domiciliary of the U.S., Respondent was, as a matter of law, on constructive notice of Complainant’s exclusive rights in the ESCADA mark and name prior to his registration of the disputed domain name: 15 U.S.C. §1072. Given Complainant’s presence in the Seattle area as well as Complainant’s advertising and marketing campaigns nationwide, Respondent likely was on actual notice of the ESCADA mark before registering the domain name. Registration under these circumstances constitutes bad faith.
Respondent alleged in his registration application his intent to make personal use of the name. There is no legitimate basis for making personal use of the disputed domain name where Respondent has no connection with Complainant. By taking that domain name, Respondent will not only have prevented Complainant from reflecting its federally registered trademark in a domain name in violation of usTLD Policy ¶ 4(b)(ii), but any use by Respondent will violate usTLD Policy ¶ 4(b)(iv).
Respondent’s full name is Truong Duy Tran. His nickname is Andy. In 1987 he graduated from the University of Washington with the degree of B.Sc. in Electrical Engineering. Since 1992 he has been President of Northwest Bakery. Since 1990 he has been the proprietor in Washington State of the registered trade name Image Fine Jewelry. On April 24, 2002 he registered the disputed domain name under his nickname.
The ESCADA mark has been registered by the General Electric Company.
The word is generic. In Portuguese ESCADA means stairs, staircase, ladder or escalator.
An online Yellow Pages search at <YP.net> (“America’s Local Yellow Pages”) reveals use of the word “Escada” in connection with numerous businesses, including 19 apparel and accessory stores, 1 auto repair service and garage, 1 engineering and management service, 1 general merchandise store, 3 personal services, 1 social service and 3 wholesale trade – nondurable goods.
In the field of Information Technology, SCADA is an acronym for Supervisory Control And Data Acquisition, a category of software application program for process control, the gathering of data in real-time from remote locations in order to control equipment and conditions. It is used in power plants and in oil and gas refining, telecommunications, transportation and water and waste control. SCADA systems include hardware and software components. The hardware gathers and feeds data into a computer that has SCADA software installed. The computer then processes the data and presents it in a timely manner. SCADA also records and logs all events into a file stored on a hard disk or sends them to a printer. SCADA warns when conditions become hazardous by sounding alarms.
ESCADA – Electronic (or Networking or Wireless) Supervisory Control And Data Acquisition is an application of SCADA for use via the Internet, networking or wireless.
Given Respondent’s degree in electrical engineering, SCADA is one of Respondent’s professional fields. He is working on an application of SCADA via wireless network and plans to use the disputed domain name to distribute his software.
As the owner of Image Fine Jewelry since 1990, if Respondent decides in the future to sell MOVADO watches, he will contact the MOVADO company for permission to use the domain name <movado.us> since this would be of mutual benefit.
C. Additional Submissions by Complainant
Respondent disputes neither Complainant’s ownership of trademark registrations in the mark ESCADA nor Complainant’s common law rights.
General Electric Company merely owns an intent to use application for the mark ESCADA in respect of computer hardware and software. This does not give General Electric rights nor lessen the strength of Complainants rights in the ESCADA mark. Nor does General Electric’s pending application provide to Respondent any basis for registering or obtaining any rights in the disputed domain name.
Respondent has not shown that ESCADA is a common term for any particular goods, business or service.
As to the businesses that use the ESCADA mark, the 19 references Respondent found to apparel and accessory stores are Complainants own boutiques and outlets. Similarly the listings he found under “General Merchandise Stores” and “Wholesale Trade” refer to Complainant. Thus, Respondent cannot prove that there is any recognized third party use of ESCADA that would give him legitimate rights to the disputed domain name. Moreover, the fact that there may be minimal third party use of ESCADA does not mean either that Complainant’s mark is not protectable or that the Respondent has a right to use Complainant’s federally registered trademark.
Respondent’s mere personal assertions that he plans to use the disputed domain name in the future are insufficient to create any legitimate rights.
Respondent has wholly failed to address the evidence of bad faith. His explanation for registering the domain name <movado.us> makes it clear that he is not authorized by Movado and has never received permission to use the MOVADO trademark.
Respondent’s failure to undertake an appropriate investigation of the scope and extent of rights that Complainant has in the ESCADA mark constitutes bad faith registration and maintenance of the domain name.
Respondent’s argument that ESCADA is an acronym for a type of software that he intends to provide and that therefore his domain name registration is not in bad faith is unpersuasive. Despite his admission that he graduated in 1987, Respondent clearly has never realized his proposed business under the name ESCADA nor has he provided any evidence of any demonstrable preparation to use the disputed domain name. Moreover, registration of Complainant’s ESCADA marks put Respondent on constructive notice as a matter of law.
Complainant has established all elements necessary to entitle it to transfer of the disputed domain name.
Paragraph 15(a) of the Rules for the usTLD 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 in bad faith or is being used in bad faith.
Identical and/or Confusingly Similar
Complainant clearly has federally registered, incontestable United States trademark rights in ESCADA in connection with the goods in respect of which the mark is registered. The disputed domain name is identical to Complainant’s mark. The “.us” top-level domain (“TLD”) is inconsequential.
Complainant has established this element of its case.
Rights or Legitimate Interests
Complainant is one of the world’s top ten fashion houses. It has used its mark since 1976. Respondent has no connection with Complainant and was not authorized by Complainant to use its mark nor to register the disputed domain name. Respondent’s personal name does not incorporate the name ESCADA. Respondent is doing business as Northwest Bakery Inc. These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interest in the disputed domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in that name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) and the cases there cited.
The meaning of the word escada in Portuguese has nothing to do with Respondent or Respondent’s bakery business and cannot establish legitimate rights. See Kvaerner ASA v. Tele og Media Consult, D2001-0809 (WIPO Sept. 12, 2001).
General Electric Company’s application to register in the United States the mark ESCADA for electronic and network based supervisory control and data acquisition equipment gives that company no trademark rights. See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001); see also Spencer Douglass MGA v. Absolute Bonding Corp., D2001-0904 (WIPO Sept.5, 2001). More relevantly, it neither deprives Complainant of its trademark rights nor confers any rights or legitimate interests upon Respondent.
The acronym SCADA in the field of information technology and the common practice of using the letter “e” as a prefix to denote electronic delivery afford Respondent the possibility of demonstrating legitimate interests in the disputed domain name. Even perfunctory preparations have been held to suffice for this purpose: See Shirmax Retail Ltd. v. CES Mktg. Group, Inc., AF-0104 (eResolution Mar. 20, 2000); see also Lumena s-ka zo. o. v. Express Ventures Ltd., FA 94375 (Nat. Arb. Forum May 11, 2000); see also Royal Bank of Canada v. Xross, AF-0133 (eResolution May 19, 2000). However, Respondent’s bare assertion of intent to use the disputed domain name in this field is insufficient. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Complainant has established this element of its case.
Registration and Use in Bad Faith
In SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport, FA 94956 (Nat. Arb. Forum July 11, 2000), a finding of bad faith was made where Respondent “knew or should have known” of the registration and use of the trademark prior to registering the domain name. See Marriott Int’l, Inc. v. John Marriot, FA 94737 (Nat. Arb. Forum June 15, 2000); see also Canada Inc. v. Sandro Ursino, AF-0211 (eResolution July 3, 2000); see also Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com, FA 95037 (Nat. Arb. Forum July 20, 2000).
Respondent has a closer than usual association with the jewelry trade because since 1990 he has been the owner of the trade name Image Fine Jewelry. Complainant sells jewelry, among other things. It has outlets in Washington State, where Respondent is located. It advertises in that State. It operates a popular website at <escada.com>. It is one of the top ten fashion houses in the world. These circumstances point strongly to the conclusion that Respondent knew or ought to have known of Complainant’s mark before he registered the disputed domain name. Respondent has not asserted lack of such knowledge. Further, Complainant’s incontestable U.S. trademark registrations put Respondent on constructive notice of the ESCADA mark as a matter of U.S. law: 15 U.S.C. §1072.
In registering the domain name <movado.us>, Respondent has admitted doing so without the permission of the owner of the MOVADO trademark and without any present intent to use that domain name. The Panel infers from these circumstances and the common field of jewelry in which Complainant, Respondent and the Movado Company engage, that Respondent adopted a similar attitude towards the ESCADA mark when he registered the disputed domain name.
When considering all the circumstances, the Panel finds that Respondent either knew or should have known of Complainant’s ESCADA trademark before he registered the disputed domain name. In line with the cases cited above, the Panel finds that the disputed domain name was registered in bad faith. See Fuji Photo Film Co., Ltd. v. RG names, FA 112598 (Nat. Arb. Forum June 11, 2002); see also Victoria’s Secret et al v. Sherry Hardin, FA 96694 (Nat. Arb. Forum March 31, 2001).
Complainant has established this element of its case.
Pursuant to paragraph 4(i) of the Policy, the Panel requires that the domain name <escada.us> be transferred to Complainant.
Alan L. Limbury Esq., Panelist
Dated: September 23, 2002
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