Phat Fashions, LLC v. Majic Group Inc.
a/k/a James M.
Claim Number: FA0207000115039
PARTIES
Complainant
is Phat Fashions, LLC, New York, NY
(“Complainant”) represented by Brad D.
Rose, of Pryor Cashman Sherman &
Flynn, LLP. Respondent is MAJIC Group Inc. a/k/a James M., Brooklyn, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <phatfarmit.com>,
registered with Register.com.
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. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 10, 2002; the Forum received a hard copy of the
Complaint on July 10, 2002.
On
July 10, 2002, Register.com confirmed by e-mail to the Forum that the domain
name <phatfarmit.com> is
registered with Register.com and that Respondent is the current registrant of
the name. Register.com has verified
that Respondent is bound by the Register.com 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
July 11, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 31,
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@phatfarmit.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
August 8, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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
The
<phatfarmit.com> domain name is confusingly similar to
Complainant’s PHAT FARM mark.
Respondent
has no rights or legitimate interests in the <phatfarmit.com>
domain name.
Respondent
registered and used the <phatfarmit.com> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response in this proceeding.
FINDINGS
Complainant owns U.S. Patent and
Trademark Office (“USPTO”) Reg. Nos. 1,809,325; 2,415,455; and 2,260,888 for PHAT
FARM, registered on the Principal Register.
Complainant owns multiple trademarks for the design version of PHAT
FARM. Complainant also owns various
trademarks that incorporate the PHAT moniker.
Complainant has used the PHAT FARM mark
since 1992 to denote its urban clothing line.
Since Complainant’s inception in 1992, Complainant has ascended to the
top of the urban fashion market. In
2001, Complainant’s products drew in $322 million in revenue. In a continuing effort to promote and
distribute its urban clothing, Complainant spends over $3.7 million a year
advertising its PHAT FARM mark and related marks. Due to Complainant’s successful rise in the fashion industry and
Complainant’s promotional efforts, the PHAT FARM mark has become famous and notorious.
Respondent registered the <phatfarmit.com>
domain name on February 21, 2002.
Respondent has not made constructive use of the domain name and has
failed to come forward and provide evidence of demonstrable plans to use the
domain name.
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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights; and
(2)
the 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.
Identical and/or Confusingly Similar
Complainant has established its rights in
the PHAT FARM mark through registration on the Principal Register of the USPTO
and continuous use since 1992.
Respondent’s <phatfarmit.com>
domain name contains Complainant’s entire PHAT FARM mark with the
inconsequential omission of the space between the words. The addition of the general suffix “it” does
not detract from the overall impression of Respondent’s domain name, which is
Complainant’s PHAT FARM mark.
Therefore, Respondent’s <phatfarmit.com> domain name is
confusingly similar to Complainant’s PHAT FARM mark. See Tech. Prop.,
Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the
domain name <radioshack.net> is identical to Complainant’s mark, RADIO
SHACK); see also L.L. Bean, Inc.
v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that
combining the generic word “shop” with the Complainant’s registered mark
“llbean” does not circumvent the Complainant’s rights in the mark nor avoid the
confusing similarity aspect of the ICANN Policy).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Complainant has met its burden under
Policy ¶ 4(a)(ii) by asserting that Respondent has no rights or legitimate
interests in the <phatfarmit.com> domain name. Thus, Respondent carries the burden of
establishing its rights or legitimate interests in the domain name. Since Respondent failed to submit a
Response, it may be presumed that Respondent has no such rights or interests in
the domain name. See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that
once Complainant asserts that Respondent has no rights or legitimate interests
in respect of the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name); see also 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).
Furthermore, without the submission of a
Response, the Panel may draw all reasonable inferences in favor of Complainant. See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant to be deemed true).
Respondent has not actively used the <phatfarmit.com>
domain name in connection with a website.
Since Complainant’s PHAT FARM mark is famous and Respondent’s domain
name is such a close variant of the mark, it may be inferred that Respondent
registered the domain name in order to capitalize on the goodwill Complainant’s
mark has established. Respondent’s
confusingly similar registration and passive holding of a domain name that
fully incorporates the famous PHAT FARM mark suggests that Respondent has no
rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) and (iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where Respondent failed to
submit a Response to the Complaint and had made no use of the domain name in
question); see also Nike, Inc. v.
Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or
legitimate interests where Respondent made no use of the infringing domain
names); see also Bloomberg L.P. v.
Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or
legitimate interest can be found when Respondent fails to use disputed domain
names in any way).
Respondent is not commonly known by the <phatfarmit.com>
domain name or any identity that uses a variation of the PHAT FARM mark;
Respondent is known only as either Majic Group, Inc. or James M. Therefore, Respondent has no rights or
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). 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
Respondent has no rights or legitimate interests in the subject domain name;
thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy lists a set
of circumstances that, if found, warrant a finding of bad faith. However, prior Panels have frequently held
the list to be nonexclusive and have surveyed the totality of circumstances
when determining the bad faith registration and use issue. This Panel too will reference the totality
of circumstances upon confronting the bad faith issue. See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in
Paragraph 4(b) are intended to be illustrative, rather than exclusive); see
also 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”).
Complainant has worked hard to develop
and build the strong reputation the PHAT FARM mark enjoys. Because of the fame of Complainant’s PHAT
FARM mark and the registration of the mark on the Principal Register of the
USPTO, Respondent had, at minimum, constructive notice of Complainant’s rights
in the mark. Therefore, Respondent’s
registration of a confusingly similar domain name, despite notice of
Complainant’s rights, constitutes bad faith registration pursuant to Policy ¶
4(a)(iii). See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov.
9, 2000) (finding that Respondent’s registration and use of an identical and/or
confusingly similar domain name was in bad faith where Complainant’s BEANIE
BABIES mark was famous and Respondent should have been aware of it); see
also 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).
Furthermore, Respondent has
failed to use the infringing domain name.
The passive holding of a domain name that contains a famous trademark
permits a finding of bad faith use under Policy ¶ 4(a)(iii). Because the mark is famous, there is no
eventual future use of the infringing domain name that would not interfere with
Complainant’s mark. Therefore, Respondent’s
behavior represents bad faith use. See
E.
& J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where
(1) Respondent knew or should have known of the Complainant’s famous GALLO
marks and (2) Respondent made no use of the domain name <winegallo.com>);
see also Hewlett-Packard Co. v.
Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (finding that the
Respondent’s failure to submit an assertion of good faith intent to use the
domain name, in addition to the passive holding of the domain name, reveal that
the Respondent registered and uses the domain name in bad faith).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby GRANTED.
Accordingly, it is Ordered that the
domain name <phatfarmit.com> be TRANSFERRED from
Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 12, 2002
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