Phat Fashions, LLC v. Christopher McBrown
Claim Number: FA0208000118269
PARTIES
Complainant
is Phat Fashions, LLC, New York, NY
(“Complainant”) represented by Brad D.
Rose, of Pryor Cashman Sherman &
Flynn, LLP. Respondent is Christopher McBrown, Ft. Worth, TX
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <2phatfashions.com>,
registered with Veri Sign, 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.
James
A. Crary as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 14, 2002; the Forum received a hard copy of the
Complaint on August 13, 2002.
On
August 19, 2002, Veri Sign, Inc. confirmed by e-mail to the Forum that the
domain name <2phatfashions.com>
is registered with Veri Sign, Inc. and that Respondent is the current
registrant of the name. Veri Sign, Inc.
has verified that Respondent is bound by the Veri Sign, 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
August 22, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
11, 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 postmaster@2phatfashions.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 October 3, 2002, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed James A. Crary 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
assertions:
1. Respondent’s <2phatfashions.com>
domain name is confusingly similar to Complainant’s PHAT family of marks.
2. Respondent does not have any rights or
legitimate interests in the <2phatfashions.com> domain name.
3. Respondent registered and used the <2phatfashions.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant is the owner of numerous
trademarks and service marks registered with the U.S. Patent and Trademark
Office (“USPTO”) that incorporate its PHAT mark, including, inter alia:
PHAT (Reg. No. 2,372,748; August 1, 2000); BABY PHAT (Reg. No. 2,240,881; April
20, 1999); PHAT FARM (Reg. No. 1,809,325; December 7, 1993); and, PHAT THREADS
(Reg. No. 1,819,997; February 8, 1994). Complainant’s first use of the PHAT
marks is listed with the USPTO as December 31, 1992.
Complainant holds numerous worldwide
registrations for its PHAT family of marks, including registrations in
Argentina, the Benelux countries, Canada, Chile, China, and Italy, among
others.
Since Complainant’s inception nearly a
decade ago, its commercial success has increased rapidly. Complainant’s product
sales amounted to $200 million dollars in 2000 and over $322 million dollars in
2001. Over $3.7 million dollars each year is expended on advertising and
promoting Complainant’s trade name and PHAT family of marks. Complainant
operates its business from numerous domain names, including:
<phatfashions.com>, <phatfashions.net>, <phatfashions.org>,
<phatfarm.com>, <phatfarm.net> and <babyphat.com>, among
others.
Complainant has achieved a prominent
position in the fashion industry, attributable to the significant amount of
time, effort and money expended in promoting and marketing its clothing
products under the PHAT family of marks.
Respondent registered the <2phatfashions.com>
domain name on April 26, 2002. Complainant’s Submission states that
Respondent had motivations to enter the clothing industry prior to registering
the subject domain name when Respondent applied to register a mark encompassing
the term “2Phat” with the USPTO. Complainant opposed the registration of
Respondent’s term because Respondent was seeking to utilize it in the same
industry as Complainant uses its PHAT family of marks. Complainant prevailed in
its opposition, which resulted in Respondent’s application being deemed
abandoned by the Trademark Office.
Complainant’s investigation of
Respondent’s use of the domain name indicates that, subsequent to Respondent’s
trademark being abandoned, Respondent registered a <2phatapparel.com>
domain name and began to sell clothing. The day after Respondent was served
with Complainant’s UDRP action in the <2phatapparel.com> dispute (FA110866),
Respondent registered the <2phatfashions.com> domain name at issue
in the current dispute.
DISCUSSION
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 Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2)
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.
Complainant has established rights in the
PHAT family of marks by successfully registering its PHAT marks, and variations
thereof, with worldwide authorized trademark authorities, including the USPTO.
Complainant has also continually used its PHAT family of marks since 1992
regarding its fashion design and supply business.
Respondent’s
<2phatfashions.com> domain name is confusingly similar to
Complainant’s PHAT family of marks. Respondent’s domain name uses the random
number “2” as a prefix to Complainant’s PHAT mark, and incorporates the
industry-related word “fashions” to the second-level domain. The word
“fashions” has obvious significance in Complainant’s clothing business, which
is illustrated by the fact that Complainant operates from numerous domain names
that include the word as part of the second-level domain (e.g.,
<phatfashions.com> and <phatfashions.net>). Previous Panels have
determined that the random addition of numbers to a famous mark fails to
detract from the overall dominating presence of the mark in the domain name.
Furthermore, the addition of an industry-related word fails to create a
distinct and separate domain name capable of overcoming a Policy ¶ 4(a)(i)
“confusingly similar” analysis. See Oki Data Americas, Inc. v. ASD Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a
Complainant’s registered mark is sufficient to establish identical or confusing
similarity for purposes of the Policy despite the addition of other words to
such marks”); see also 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 Parfums Christian Dior v. 1 Netpower, Inc., D2000-0023 (WIPO Mar.
3, 2000) (finding that four domain names that added the descriptive words
"fashion" or "cosmetics" after the trademark were
confusingly similar to the trademark).
Accordingly,
the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
The Panel has determined that
Complainant’s Submission constitutes a prima facie case. Because Complainant’s
allegations and evidence are uncontested, the Panel may accept all of
Complainant’s reasonable assertions and inferences as true. See 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); see also Talk
City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint”).
Furthermore, Respondent did not submit a
Response in this proceeding, thereby failing to propose any set of
circumstances or facts that would corroborate its alleged rights or legitimate
interests in the <2phatfashions.com> domain name under Policy ¶
4(a)(iii). See Canadian Imperial
Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept.
23, 2000) (finding no rights or legitimate interests where no such right or
interest was immediately apparent to the Panel and Respondent did not come
forward to suggest any right or interest it may have possessed); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name).
Complainant has submitted reasonable and
uncontested evidence that indicates Respondent is engaged in distributing and
selling clothes from its infringing domain name. From the facts surrounding the
present dispute, it is evident that Respondent is attempting to profit from a
perceived affiliation with Complainant and its famous mark. Respondent’s
diversionary use of the domain name, and Respondent’s attempt to commercially
benefit from the Internet users who are misled by the <2phatfashions.com>
domain name, does not constitute a bona fide offering of goods or services
under Policy ¶ 4(c)(i). Additionally, because Respondent presumably profits
from the sale of its line of “2Phat” clothing, Respondent is not making a
legitimate noncommercial or fair use of the <2phatfashions.com>
domain name pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc.,
FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial
use of the domain name to confuse and divert Internet traffic is not a
legitimate use of the domain name); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct.
2, 2000) (finding no bona fide use where Respondent used the domain name to
divert Internet users to its competing website).
Because of the fame associated with
Complainant’s PHAT family of marks, the background of the present dispute and
the evidence before the Panel, it is presumed that Respondent is not commonly
known by the <2phatfashions.com> domain name pursuant to Policy ¶
4(c)(ii). As stated, Complainant’s Submission indicates that the USPTO rejected
Respondent’s attempt to establish legitimate rights in the “2Phat” phrase,
thereby further supporting a finding that Respondent does not have rights or
legitimate interests in the subject domain name. 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 Policy
¶ 4(a)(ii) has been satisfied.
Although Policy paragraph 4(b) provides
various circumstances that establish both bad faith registration and use, the
list is non-exhaustive. Panels are permitted to scrutinize the “totality of
circumstances” in determining whether Respondent registered the domain name in
bad faith under Policy ¶ 4(a)(iii). See 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”); see also Cellular
One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the
criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith
evidence).
Circumstances indicate that Respondent
had knowledge of Complainant’s PHAT mark prior to seeking registration of the
infringing domain name. As stated, Respondent was familiar with Complainant’s
rights in the PHAT family of marks because Complainant contested Respondent’s
attempted registration of the “2Phat” phrase at a USPTO hearing. Additionally,
Complainant had previously filed a UDRP action against Respondent in an attempt
to prevent a similar infringing use of the <2phatapparel.com> domain
name. Lastly, Complainant’s PHAT family of marks enjoy the trademark protection
afforded by the USPTO’s Principal Register, which confers constructive notice
on all those wishing to make an infringing use out of the mark, or any
confusingly similar variation thereof. Respondent’s registration of a domain
name, despite preexisting knowledge of Complainant’s rights, evidences bad
faith registration under Policy ¶ 4(a)(iii). See 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); see also Paws, Inc. v. Odie, FA 96206 (Nat. Arb.
Forum Jan. 8, 2001) ("Given the uniqueness and the extreme international
popularity of the [ODIE] mark, the Respondent knew or should have known that
registering the domain name in question would infringe upon the Complainant's
goodwill").
Respondent’s bad faith use of the <2phatfashions.com>
domain name is illustrated by its opportunistic and diversionary use of the
domain name. It is evident that Respondent is attempting to ensnare
unsuspecting Internet users who falsely believe some affiliation or sponsorship
exists between Complainant’s mark and Respondent’s clothes. Because of the fame
associated with Complainant’s PHAT family of marks and Respondent’s use of a
confusingly similar domain name to offer identical goods, Respondent’s use of
the domain name constitutes opportunistic bad faith under Policy ¶ 4(b)(iv). See
Red Bull GmbH v. Gutch,
D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the
domain name <redbull.org> would lead people to believe that the domain
name was connected with Complainant, and thus is the equivalent to bad faith
use); see also State Farm Mut.
Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000)
(finding that Respondent registered the domain name <statefarmnews.com>
in bad faith because Respondent intended to use Complainant’s marks to attract
the public to the website without permission).
Therefore, the Panel finds that Policy ¶
4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <2phatfashions.com>
domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: October 10, 2002
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