eFashionSolutions, LLC v. eFashionClothing.Com / Vinod K Tanwar
Claim Number: FA1105001388971
Complainant is eFashionSolutions, LLC (“Complainant”), represented by Aaron I. Messing of OlenderFeldman LLP, New Jersey, USA. Respondent is eFashionClothing.Com / Vinod K Tanwar (“Respondent”), represented by Ravinder Rao of R.R. Associates, India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <efashionclothing.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.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.
Calvin A. Hamilton 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 18, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <efashionclothing.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com 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 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 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@efashionclothing.com. Also on May 19, 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.
A timely Response was received and determined to be complete on June 7, 2011.
On June 10, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton as Panelist.
On June 21, 2011, the Panel issued a procedural order extending the time for the Panel to submit its decision until July 1, 2011.
On July 1, 2011, the Panel issued a second procedural order extending the time limit for the Panel to submit its decision until July 6, 2011.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a Limited Liability Company organized and existing under the laws of the State of New Jersey. Complainant is the owner of the Federal Registered trademark "eFashions Solutions" under Registration Number
3347606 (the "Trademark"), and is the owner and operator of the website located at www.efashionsolutions.com.
Respondent is the owner of efashionclothing.com, a website which uses the Trademark, as well as several of Complainant's Copyrights, without the permission of Complainant and in contradiction to explicit cease and desist demands made by Complainant, for competing goods and services. Complainant's customers and readers are misled into believing that efashionclothing.com is in fact Complainant or is connected to Complainant. Respondent is using the efashionclothing.com website to tortuously interfere with Complainant's business by deceptively siphoning business intended to go to Complainant by using Complainant's Trademark. Complainant has learned from several of its customers that in searching for Complainant, they came across Respondent's efashionClothing website and believed it to be a site operated by Complainant, as a direct and proximate result of Respondent's use of Complainant's Trademark and Copyright in his website.
Respondent has failed and refused to turn over the efashionclothing.com domain name.
B. Respondent
Respondent is a small time retailer residing in New Delhi, India and is the owner of domain name, www.efashionclothing.com. Claimant's allegations are denied. The Respondent has no present or future intentions to infringe the intellectual property rights or deceive the customer base of the Complainant. The Respondent has been operating the business with bona fide intentions and is a small internet retailer thus, making its line of business altogether different from that of the Complainant's.
Respondent believes that the complaint is an attempt to harass Respondent.
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."
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.
Preliminary Issue: Arbitration Jurisdiction
Respondent in its Response argues that it has not agreed to arbitration. The Panel is reminded that Respondent consented to be bound by the UDRP when it executed the Registration Agreement with the Registrar. The verification e-mail from Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com reflects that the UDRP applies to Respondent's registration of the disputed domain name. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187
(WIPO May 11, 2000) (finding that the UDRP applied because: " [b]y virtue of its contract with NSI, Respondent agreed to be bound by NSI's then-current domain name dispute policy, and any changes made to that policy made by NSI in the future"). While Policy ¶ 4(k) allows the parties to litigate in court, the Panel remains free to decide the instant dispute on the merits strictly under the guidelines of the Policy, and trademark issues other than those expressly enumerated within the Policy ¶ 4(a) elements fall outside of the scope of the Panel's jurisdiction.
Complainant contends that it has established its rights in the EFASHION SOLUTIONS mark by registering that mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,347,606 issued December 4,
2007). The Panel finds that Complainant has established its rights in the mark under Policy ¶ 4(a)(i) based upon the evidence offered to show that it has been duly registered. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr.
17, 2006) ("Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO."); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) ("As the [complainant's] mark is registered with the USPTO, [the] complainant has met the requirements of Policy
4(a)(i)."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant must also show that the Domain Name is confusingly similar or identical to Complainant's marks.
Complainant contends that Respondent's <efashionclothing.com> domain name is confusingly similar to the EFASHION SOLUTIONS mark. Complainant alleges that the disputed domain name contains most of the mark removing the word "solutions" and including the word "clothing" in its place. In the disputed domain name, Respondent removes a space from the mark and adds the generic top level domain ("gTLD") ".com." Many Panels have recognized that removing spaces between terms and adding a gTLD are insignificant changes that do not overcome a Policy ¶ 4(a)(i) confusingly similar analysis. See 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.
Accordingly, the Panel finds that the disputed domain name efashionclothing.com is confusingly similar to Complainant's EFASHION SOLUTIONS mark, for the purposes of Policy ¶ 4(a)(i), due to Respondent's failure to sufficiently differentiate the disputed domain name from the mark. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant's AMERICAN EAGLE OUTFITTERS mark); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the<novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term "solutions" because even though "the word 'solutions' is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL"); see also Bond & Co. Jewelers, Inc. v. Tex. lnt'l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30,
2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant's mark under Policy
4(a)(i)); see also Jerry Damson, Inc. v. Tex. lnt'l Prop. Assocs., FA 916991 (Nat.
Arb. Forum Apr. 10, 2007) ("The mere addition of a generic top-level domain ("gTLD") ".com" does not serve to adequately distinguish the Domain Name from the mark.").
The Panel is reminded that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) ("Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.").
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant's burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Complainant alleges that Respondent's disputed domain name resolves to Respondent's site where it sells women's apparel in competition with Complainant. Respondent contends that it is engaging in a bona fide offering of goods through the disputed domain name. Respondent further contends that it sells women's apparel from its website legitimately and that there is little chance of consumer confusion between itself and Complainant.
The Panel finds that Respondent's use of the disputed domain name as a commercial retailing site is a bona fide offering of goods under Policy ¶ 4(c)(i). See Vanguard Group Inc. v. Investors FastTrack, FA 863257 (Nat. Arb. Forum
Jan. 18, 2007) ("Respondent makes a bona fide offering of goods and services in providing investment products and services to people wishing to consider investment in Complainant's financial products and services."); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that the respondent's operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name).
Respondent claims that it is using the disputed domain name in a completely different industry than Complainant, supporting a finding of concurrent rights and failure to establish Policy ¶ 4(a)(ii). Respondent alleges that its business differs from Complainant because it is a retailer of dresses and other women's apparel while Complainant is a provider of eCommerce systems and software.
The Panel finds that the two parties do operate in different industries, granting each concurrent rights under Policy ¶ 4(a)(ii) in the mark and disputed domain name, respectively. See Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr.
18, 2002) (finding that the respondent was making a bona fide offering of goods or services at the <warmthings.com> domain name as the respondent was operating in a field unrelated to the complainant or its products); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum
Jan. 16, 2003) (finding that the respondent could maintain rights in a similar mark as the complainant because the complainant and the respondent were not in the same field of business, and therefore not competitors).
Respondent also argues that the terms of the <efashionclothing.com> domain name are common and generic and therefore, Complainant does not have an exclusive monopoly on the term on the Internet.
The Panel agrees with Respondent and finds that Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm't, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was "generic" and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc'ns lnt'l v. QC Publ'g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that "Complainant's rights in the QWEST mark are limited to its application to the tele-communications industry," where a variety of other businesses used the mark in unrelated fields).
Registration and Use in Bad Faith
Complainant contends that Respondent's use of the disputed domain name disrupts its business providing evidence of bad faith registration and use. Complainant alleges that Respondent's disputed domain name resolves to a site that offers goods which directly compete with Complainant in the apparel industry.
Complainant also contends that Respondent is using the allegedly confusingly similar domain name for its own commercial gain constituting bad faith registration and use. Furthermore, Complainant claims that due to the competing usage, Internet users are very likely to be confused as to the source and sponsorship of Respondent's website and may confuse Respondent's site with Complainant's own product offerings. Complainant also alleges that Respondent is attempting to capitalize on the confusing similarity between the mark and disputed domain name to gain commercially.
The Panel concluded that Respondent has rights or legitimate interests in the <efashionclothing.com> domain name pursuant to Policy 4(a)(ii), and consistent with that conclusion, the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see a/so Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) ("Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.").
The Panel further finds that Respondent has not registered or used the <efashionclothing.com> domain name in bad faith as Respondent has not violated any of the factors listed in Policy 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad
faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP 4(a)(iii)).
Respondent contends that the <efashionclothing.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant's EFASHION SOLUTIONS mark. Moreover, Respondent contends that the registration and use of a domain name comprising such common terms is not necessarily done in bad faith. Indeed, the Service Mark Principal Register reveals that Claimant does not make a claim to the "exclusive right to use "eFASHION", apart from the Mark as shown."
The Panel finds that Respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common terms. Consequently, the Panel finds that Respondent did not register or use the <efashionclothing.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Zero lnt'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent's registration and use of the <target.org> domain name was not in bad faith because the complainant's TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
DECISION
Claimant failed to establish all three elements required under the ICANN Policy; therefore, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <efashionclothing.com> domain name REMAIN WITH THE RESPONDENT.
Calvin A. Hamilton, Panelist
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