JA Apparel Corp. v. farris nawas
Claim Number: FA1404001553753
Complainant: JA Apparel Corp. of Houston, Texas, United States of America.
Complainant Representative:
Complainant Representative: Kilpatrick Townsend & Stockton LLP of New York, New York, United States of America.
Respondent: farris nawas of Austin, Texas, US.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: CLOTHING Registry
Registrars: GoDaddy.com, LLC
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 Examiner in this proceeding.
Piotr Nowaczyk, as Examiner.
Complainant submitted: April 11, 2014
Commencement: April 11, 2014
Default Date: April 28, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Procedural Findings:
No domain names are dismissed from this complaint
No domain names are dismissed from this complaint.
Findings of Fact:
The Complainant is a designer, manufacturer and distributor of apparel and other products under the “JOSEPH ABBOUND” mark. Complainant’s predecessors first used the “JOSEPH ABBOUND” mark in connection with clothing in 1986, and received the first U.S. registration for the Mark in 1992. The Complainant owns several trademark registrations in multiple jurisdictions for trademarks consisting of or including “JOSEPH ABBOUND” – inter alia U.S. Reg. No. 1675915, 2357617, 3534494. The “JOSEPH ABBOUND” marks are commonly known in many countries since they have been used and advertised in connection with clothing for nearly 28 years.
The Respondent registered <josephabboud.clothing> on February 2, 2014, long
after Complainant’s Mark was registered and became well-known.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires the Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
Legal Findings and Conclusion:
IDENTICAL OR CONFUSINGLY SIMILAR
The Domain Name, <josephabboud.clothing> is identical to Complainant's JOSEPH ABBOUND marks since it includes the exact wording of the registered trademarks. The generic word “clothing” which serves as a gtld does not distinguish the Domain Name. Moreover, it rather increases risk of confusion - Complainant's trademarks were registered in connection with clothing. The Examiner finds that the Complainant met the standard sets out in 1.2.6.1. of the URS Procedure since it proved that it holds a valid national trademark registration (among others: U.S. Reg. No. 1675915, 2357617, 3534494). Further, the Complainant confirmed that the registered trademarks are in current use by presenting pictures of its goods produced under the JOSEPH ABBOUND marks.
NO RIGHTS OR LEGITIMATE INTERESTS
The Respondent does not have any rights in the name “JOSEPH ABBOUND” nor is the Respondent commonly known by this name. The Complainant has not authorized Respondent’s use of its mark and has no affiliation with the Respondent. Furthermore, as confirmed by Complainant, the Domain Name resolves to a parking page which clearly does not constitute a bona fide offering of goods or services. Therefore, the Examiner finds that the Respondent has established no rights or legitimate interests in the Domain Name (1.2.6.2. of the UDR Procedure).
BAD FAITH REGISTRATION AND USE
The Complainant has satisfied URS 1.2.6.3 (b) since the Respondent must have known of the Complainant's trademarks when registering <josephabboud.clothing>. Moreover, the Respondent’s registration and unfair use of <josephabboud.clothing> prevents the Complainant from using its exact mark on the Internet with the gtld that describes the Complainant’s main area of business activity.
Additionally, the Respondent has engaged in a pattern of such conduct as Registrant was recently a party in Dana Limited v. farris nawas et al., FA1402001545160 (NAF March 13, 2014) (finding against the Respondent) and Banco Bilbao Vizcaya Argentaria, S.A. v. farris nawas, FA1403001547721 (NAF March 27, 2014) (finding against the Respondent). This also confirms bad faith of the Respondent.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration:
Piotr Nowaczyk, Examiner
Dated: April 28, 2014
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