Fruit of the Loom, Inc. v. Tom Cruise
Claim Number: FA1105001389031
Complainant is Fruit of the Loom, Inc. (“Complainant”), represented by C.A. Brijesh of Remfry & Sagar, Attorneys-at-law, India. Respondent is Tom Cruise (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newfruitoftheloom.com>, registered with GoDaddy.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 17, 2011; the National Arbitration Forum received payment on May 17, 2011.
On May 18, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <newfruitoftheloom.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.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@newfruitoftheloom.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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard 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:
Complainant is a large provider of undergarments and other general apparel.
Complainant owns registrations for the FRUIT OF THE LOOM trademark on file with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 152,132, issued December 28, 1951).
Complainant uses the FRUIT OF THE LOOM trademark to promote and market its undergarment and apparel business.
Respondent registered the disputed domain name on September 4, 2009.
The disputed domain name resolves to a site offering links to the websites of Complainant’s competitors in the undergarment industry.
Respondent presumably receives click-through fees for each Internet user diverted to the linked sites.
Respondent’s <newfruitoftheloom.com> domain name is confusingly similar to Complainant’s FRUIT OF THE LOOM mark.
Respondent does not have any rights to or legitimate interests in the <newfruitoftheloom.com> domain name.
Respondent registered and uses the <newfruitoftheloom.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the FRUIT OF THE LOOM trademark under Policy ¶ 4(a)(i) by registering the mark with a national trademark authority, the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
See also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complainant has registered its trademark in the country of a respondent’s residence, it being sufficient that a complainant can demonstrate its rights in a mark in some jurisdiction).
Respondent’s <newfruitoftheloom.com> domain name is confusingly similar to Complainant’s FRUIT OF THE LOOM mark. The disputed domain name includes the entire mark, removing only the spaces between the terms while adding the generic top-level domain (“gTLD”) “.com” along with the generic term “new.” These alterations of the mark in forming the contested domain name do not sufficiently differentiate the domain name from the mark for purposes of Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms of a mark and the addition of a gTLD do not establish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); further see Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to a complainant’s ICQ mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant is obliged to make out a prima facie showing that Respondent lacks rights to and legitimate interests in the contested <newfruitoftheloom.com> domain name. Thereupon Respondent acquires the burden to demonstrate that it has such rights or interests. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):
It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
Complainant has made out the requisite prima facie showing under this head of the Policy. Therefore, Respondent, having failed to record a response to the Complaint in this matter, we are free to presume that Respondent lacks rights to or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that Complainant alleges, and Respondent does not deny, that Respondent is not related to Complainant and has not been granted any license or authorization to use the FRUIT OF THE LOOM mark in a domain name, and that Respondent has not been commonly known by the contested domain name. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Tom Cruise,” which does not resemble the contested domain name. On this record, we must conclude that that Respondent is not commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had no rights to or legitimate interests in it under Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name, and so had no rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii), based on the pertinent WHOIS information and other evidence in the record).
We next note that Complainant asserts, without objection from Respondent, that Respondent is not engaging in a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name in that Respondent’s domain name resolves to a site offering links to the websites of Complainant’s competitors in the undergarment and apparel field. Using a disputed domain name to resolve to a site offering links to Complainant’s competitors does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because that respondent was using the domain name to operate a website containing links to various commercial websites competing with the business of a complainant, which was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s mark to send Internet users to a website which displayed a series of links, some of which resolved to the websites of that complainant’s competitors, was not a bona fide offering of goods or services).
The Panel thus finds that the requirements of Policy ¶ 4(a)(ii) have been met.
Respondent’s domain name, which is confusingly similar to Complainant’s FRUIT OF THE LOOM trademark, disrupts Complainant’s business in that it resolves to a website offering links to the websites of Complainant’s competitors in the undergarment and apparel markets. Internet users seeking Complainant’s website may thus arrive at Respondent’s site and be re-routed to Complainant’s the websites of its competitors. This use of the contested domain evidences bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iii) by using them to operate a commercial search engine with links to websites offering the products of a complainant and those of that complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represented bad faith registration and use under Policy ¶ 4(b)(iii)).
In the circumstances here presented, we may comfortably presume that Respondent profits, whether from the receipt of click-through or similar fees, from the operation of the website resolving from the disputed domain name. Respondent is thus attempting to gain commercially from the behavior alleged in the Complaint. This is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003):
[M]any Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the …[disputed]… domain name, which features links for competing … websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
See also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003):
Respondent's … use of the … domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.
For these reasons, the Panel finds that the proof requirements of Policy ¶ 4(a)(iii) have been met.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <newfruitoftheloom.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 27, 2011
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