Fruit of the Loom, Inc. v. Sahiba Kaur
Claim Number: FA1105001388852
Complainant is Fruit of the Loom, Inc. (“Complainant”), represented by C.A. Brijesh of Remfry & Sagar, India. Respondent is Sahiba Kaur (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fruitofloom.org>, registered with GoDaddy.com, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 16, 2011; the National Arbitration Forum received payment on May 16, 2011.
On May 16, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <fruitofloom.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@fruitofloom.org. Also on May 17, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 5, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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.
A. Complainant makes the following assertions:
1. Respondent’s <fruitofloom.org> domain name is confusingly similar to Complainant’s FRUIT OF THE LOOM mark.
2. Respondent does not have any rights or legitimate interests in the <fruitofloom.org> domain name.
3. Respondent registered and used the <fruitofloom.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fruit of the Loom, Inc., manufacturers and distributes men’s and boy’s underwear, women’s and girls’ underwear, t-shirts, fleece, casual wear and children’s wear, sleep wear, lounge wear, socks. Complainant owns trademark registrations with the Indian Industrial Property Office (“IPO”), the United States Patent and Trademark Office (“USPTO”), and the Canadian Intellectual Property Office (“CIPO”) for the FRUIT OF THE LOOM mark:
IPO
Reg. No. 631,605 issued May 31, 2005;
USPTO
Reg. No. 174,998 issued October 30, 1923;
Reg. No. 175,314 issued November 6, 1923;
Reg. No. 1,876,708 issued January 31, 1995;
Reg. No. 3,119,226 issued July 25, 2006; and
CIPO
Reg. No. TMDA33,513 issued July 3, 2002.
Respondent, Sahiba Kaur, registered the <fruitofloom.org> domain name on November 27, 2009. The disputed domain name resolves to a website that provides links and advertises products of other brands, such as Hanes, Calvin Klein, Hugo Boss, and Jockey.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); 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.”).
Paragraph 4(a) of the Policy requires that 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 owns trademark registrations with the IOCGPDT, the USPTO, and the CIPO for the FRUIT OF THE LOOM mark:
IPO
Reg. No. 631,605 issued May 31, 2005;
USPTO
Reg. No. 174,998 issued October 30, 1923;
Reg. No. 175,314 issued November 6, 1923;
Reg. No. 1,876,708 issued January 31, 1995;
Reg. No. 3,119,226 issued July 25, 2006; and
CIPO
Reg. No. TMDA33,513 issued July 3, 2002.
The Panel finds that these trademark registrations sufficiently prove Complainant’s rights in the FRUIT OF THE LOOM mark for the purposes of Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <fruitofloom.org> domain name is confusingly similar to Complainant’s FRUIT OF THE LOOM mark because the only minor differences are the omission of the word “the,” the deletion of the spaces between terms, and the addition of the generic top-level domain name (“gTLD”). The Panel holds that the omission of the word “the” does not remove the disputed domain name from the realm of confusing similarity. See Buffalo News v. Barry, FA 146919 (Nat. Arb. Forum Mar. 31, 2003) (finding the respondent's <bufalonews.com> domain name confusingly similar to Complainant's THE BUFFALO NEWS mark); see also Mega Soc. v. LoSasso, FA 215404 (Nat. Arb. Forum Jan. 30, 2004) (finding that the <megasociety.net> and <megasociety.com> domain names were identical or confusingly similar to Complainant's THE MEGA SOCIETY mark). The Panel also determines that the added gTLD and the deleted spaces are irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel thus concludes that Respondent’s <fruitofloom.org> domain name is confusingly similar to Complainant’s FRUIT OF THE LOOM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
In arguing that Respondent has no rights and legitimate interests in the disputed domain name, Policy ¶ 4(a)(ii) requires that Complainant present a prima facie case against Respondent before the burden to prove rights and legitimate interests shifts to Respondent. In this case, the Panel finds that Complainant has met this obligation. Respondent, however, has failed to respond, which allows the Panel to infer that Complainant’s allegations may be accepted as true and that Respondent lacks rights and legitimate interest s in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”). The Panel elects to consider the evidence in the record against the Policy ¶ 4(c) factors, however, to determine independently if Respondent possesses rights and legitimate interests in the disputed domain name.
Complainant asserts that Respondent is not in any way related to Complainant and is not an agent of Complainant. Complainant alleges that it has not granted any license or authorization to Respondent to use the mark or register the disputed domain name. The WHOIS information for the disputed domain name lists the registrant as “Sahiba Kaur,” which has no apparent connection to the disputed domain name. The Panel accordingly concludes that Respondent is not commonly known by the disputed domain name and lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”).
Complainant contends that Respondent uses the <fruitofloom.org> domain name in order to advertise pay-per-click links to third parties offering competing apparel products, such as Hanes, Calvin Klein, Hugo Boss, and Jockey. The Panel finds that this directory function does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that the website resolving from the <fruitofloom.org> domain name advertises Complainant’s competitors, also selling undergarments, through pay-per-click links. Complainant alleges that these links divert Complainant’s intending customers to competing websites not affiliated with Complainant. The Panel finds that these links therefore facilitate competition with Complainant and disrupt Complainant’s business, which shows bad faith registration and use according to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant alleges that Respondent registered a variation of Complainant’s FRUIT OF THE LOOM mark as the disputed domain name in order to attract Internet users seeking Complainant’s products. Complainant asserts that its mark in the disputed domain name and the presence of links advertising the same type of products sold by Complainant creates a likelihood of confusion as to the source or affiliation of Respondent’s resolving website. Complainant contends that Respondent profits from this misleading attraction as the links displayed on the resolving website are presumably pay-per-click links. The Panel finds that these activities signal Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fruitofloom.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 14, 2011
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