Frederick's of Hollywood Group Inc v. www.jinmi.com / hu weisheng
Claim Number: FA1304001493277
Complainant is Frederick's of Hollywood Group Inc (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is www.jinmi.com / hu weisheng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fredericsk.com>, registered with 1 MORE NAME, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 5, 2013; the National Arbitration Forum received payment on April 5, 2013.
On May 7, 2013, 1 MORE NAME, LLC confirmed by e-mail to the National Arbitration Forum that the <fredericsk.com> domain name is registered with 1 MORE NAME, LLC and that Respondent is the current registrant of the name. 1 MORE NAME, LLC has verified that Respondent is bound by the 1 MORE NAME, LLC 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 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 2013 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@fredericsk.com. Also on May 14, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
Complainant’s Mark: FREDERICKS
[i.] FREDERICK'S - for women's and girls'
dresses, brassieres, corsets, girdles, foundation garments, slips, panties,
garter belts, slippers, hosiery, nightgowns, pajamas, robes, chemises, men's
under shorts, and pajamas (U.S. Reg. No. 664,746);
[ii.] FREDERICK'S OF HOLLYWOOD - for retail store and mail order services in
the fields of clothing, personal items, cosmetics and toiletries (U.S. Reg. No.
1,627,771);
[iii.] FREDERICKS.COM - for computerized online retail store services featuring
clothing, lingerie, undergarments, accessories for men and women, hairpieces
and wigs, loungewear, active wear, hosiery, slippers, shoes, boots, swimwear
and beachwear (U.S. Reg. No. 2,403,596);
[iv.] FREDERICK'S - for retail store and mail order services in the fields of
clothing, personal items, cosmetics and toiletries (U.S. Reg. No. 1,051,548);
and
Complainant is the owner of a federal trademark registration in the United
States that consist of the word FREDERICKS and FREDERICKS OF HOLLYWOOD. The
registration is referred to hereafter as the "Complainant's Mark(s)."
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
Complainant Frederick's of Hollywood Group Inc. (Frederick's) is a publicly
traded corporation (NYSE AMEX: FOH) with its principal place of business in New
York, New York. Frederick's was founded in 1946 by Frederick Mellinger who set
out to create lingerie that made women feel beautiful and embodied the
glamorous Hollywood lifestyle. More than sixty years later, Frederick's is
still a leading trendsetter in intimate apparel and has earned a renowned
reputation for flattering women of all sizes with its signature styles.
Complainant primarily sells women's intimate apparel and related products
through 117 specialty retail stores nationwide as of April 28, 2012. Direct
sales are also made through the company’s world-famous catalog and online shop
at www.fredericks.com and
WWW.FREDERICKSOFHOLLYWOOD.COM. The websites were launched in 1995 and 1996, and
have been very well-received, with more than a million visitors per month. The
combined revenue of the company’s successful stores and direct sales for the
first quarter of 2012 exceeded $30 million.
In addition, Frederick’s selectively licenses
the right to use the Frederick’s of Hollywood® brand and logo on specified
categories of products manufactured and sold by other companies, featuring
licensed merchandise categories which include sexy costumes, jewelry and
accessories. The signing of a license agreement with a subsidiary of Emirates
Associated Business Group (“EABG”) has provided for EABG to build and operate
Frederick’s of Hollywood retail stores in the Middle East, and the flagship
store in Abu Dhabi opened in July 201, with a second store opened in the UAE in
2012.
Frederick's has continuously used the Marks since 1946 in connection with the
sale of women's clothing, lingerie and undergarments. Frederick's owns the
Marks for which it has obtained federal trademark registrations. The federal
mark registrations have not been abandoned, cancelled or revoked.
Furthermore, Frederick's has spent hundreds of thousands of dollars in
advertisement and promotion of the Marks in media and on the Internet. Based on
its federal trademark registrations and extensive use, Frederick's owns the
exclusive right to use the Marks in connection with the sale of intimate
apparel via retail stores and online stores.
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[a.] |
The Disputed Domain Name(s) are nearly identical and confusingly similar to Complainant's Marks.
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[b.] |
Respondent has no rights or legitimate interests in respect of the Disputed Domain Name(s) for the following reasons:
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[c.] |
The Domain Name(s) should be considered as having been registered and being used in bad faith for the following reasons:
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B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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.
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.”).
Complainant claims it is a leading retailer in intimate apparel and has widely known signature styles. Complainant owns trademark registrations with the United States Patent & Trademark Office (“USPTO”) for the FREDERICK’S mark (e.g., Reg. No. 664,746, registered July 22, 1958), for the FREDERICK’S OF HOLLYWOOD mark (Reg. No. 1,627,771, registered December 11, 1990), and for the FREDERICKS.COM mark (Reg. No. 2,403,596, registered November 14, 2000). Complainant is not required to registered its mark in Respondent’s home country to prove its rights under Policy ¶4(a)(i). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Complainant’s registration of the FREDERICK’S, FREDERICK’S OF HOLLYWOOD, and FREDERICKS.COM mark with the USPTO sufficiently establishes Complainant’s rights in the marks pursuant to Policy ¶4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO). Complainant merely needs to have rights to its marks, not necessarily rights to its marks in Respondent’s country.
Complainant claims the disputed domain name is confusingly similar to Complainant’s mark because it differs by only a single character from Complainant’s mark. Respondent’s <fredericsk.com> domain name includes Complainant’s FREDERICKS.COM mark in its entirety, and transposes the letters “k” and “s.” Respondent’s transposition of letters in this mark does not sufficiently differentiate the mark from the disputed domain name under Policy ¶4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). Respondent’s <fredericsk.com> domain name is confusingly similar to Complainant’s FREDERICKS.COM mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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.”).
Complainant claims Respondent has not been commonly known by the disputed domain name. The WHOIS information identifies “www.jinmi.com / hu weisheng” as the registrant of the <fredericsk.com> domain name, which does not bear any apparent relationship to the disputed domain name. Based upon the information provided, this Panel concludes Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s mark in a domain name.
Complainant claims Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent’s <fredericsk.com> domain name resolves to a website where Respondent provides links to Complainant’s own website, as well as other unrelated hyperlinks. Respondent presumably receives pay-per-click fees from these linked websites. In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), the panel held 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). This Panel agreed and holds Respondent’s use of the disputed domain name to provide links to Complainant’s website and to unrelated websites is not a Policy ¶4(c)(i) bona fide offering of goods and services or a Policy ¶4(c)(iii) legitimate noncommercial or fair use.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s advertised pay-per-click links displayed on the resolving website promote products which compete with Complainant. Respondent’s <fredericsk.com> domain name links to a hyperlink directory providing links to Complainant’s website, as well as unrelated links titled “Michael Jones,” “Golf Swing,” “Feature Article,” and others. These links divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. This constitutes bad faith registration and use under Policy ¶4(b)(iii).
Complainant claims Respondent is using the disputed domain name to attract and mislead consumers for its own profit. Respondent uses the domain name to host a hyperlink directory (or parking page), which provides links to Complainant’s website and websites unrelated to Complainant. Respondent is using the disputed domain name in connection with generating revenue as a “click through” website. Respondent’s setting up of a “click through” website for which it receives revenue (directly or indirectly) for each misdirected Internet user demonstrates Respondent’s bad faith under Policy ¶4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Complainant claims Respondent’s typosquatting behavior is evidence of bad faith. This Panel does not accept “typosquatting” as an independent basis for finding bad faith. This is not an enunciated reason for finding bad faith under the UDRP. The point of “typosquatting” is to misdirect internet users in the hopes of Respondent’s financial gain. Since bad faith can be proven under Policy ¶4(b)(iv) by respondent by using the domain name to attract Internet users to its web site for commercial gain by creating a likelihood of confusion with the complainant's mark, the fact there is a typographical similarity between a mark and disputed domain name does not add anything to the analysis. It is perfectly possible to be “typosquatting” and not using the domain name to attract Internet users to its web site for commercial gain by creating a confusion about the true owner of the web site.
Policy ¶4(b)(iii) allows a panel to find bad faith if Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor. The fact the mark and the disputed domain name are typographically similar does not affect the analysis. It is perfectly possible to be “typosquatting” and not have registered the domain name primarily for the purpose of disrupting the business of a competitor.
Nevertheless, the Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <fredericsk.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, June 12, 2013
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