Miami Style, Inc. v. Lusette Lopez
Claim Number: FA1408001573611
Complainant is Miami Style, Inc. (“Complainant”), represented by Robert H. Thornburg of Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A., Florida, USA. Respondent is Lusette Lopez (“Respondent”), represented by Jaime Rich Vining of FRIEDLAND VINING, P.A., Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shopmiamistyle.com>, registered with GODADDY.COM, LLC.
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.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 5, 2014; the National Arbitration Forum received payment on August 5, 2014.
On August 6, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <shopmiamistyle.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, 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 August 7, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 2014 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@shopmiamistyle.com. Also on August 7, 2014, 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.
A timely Response was received and determined to be complete on August 27, 2014.
A timely Additional Submission was received from Complainant on September 2, 2014.
An Additional Submission was received from Respondent on September 4, 2014.
On September 4, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the MIAMI STYLE mark through registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,382,793 registered August 13, 2013, filed September 19, 2012). Complainant has used the mark since 1997 in furtherance of its retail efforts relating to apparel and beachwear. Since 1997, Complainant has actively marketed the mark through trade shows and exhibits. Further, Complainant has owned and operated the domain name <miamistyle.com> since April 2002. For the last several years, Complainant has used the website to offer on-line retail services to customers. The disputed domain name <shopmiamistyle.com> is confusingly similar to the MIAMI STYLE mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not generally known by the disputed domain name. Additionally, Respondent is using the domain name at issue for the purposes of marketing, advertising, and selling apparel in direct competition with Complainant.
The disputed domain name was registered and is being used in bad faith. Respondent is using the disputed domain name to sell unauthorized goods under Complainant’s trademark.
B. Respondent
Complainant does not provide sufficient evidence of priority rights in the MIAMI STYLE mark. The alleged MIAMI STYLE mark is comprised of a descriptive phrase. Further, the mark is weak because it is primarily geographically descriptive of the origin of Complainant’s goods, and is used by numerous third parties.
Respondent is commonly known by the disputed domain name. Specifically, Respondent is the managing member of Shop Miami Style LLC, an active LLC in Florida. See Resp., at Attached Ex. 5. Respondent is using the disputed domain name for a bona fide offering of goods as the domain name is used in connection with Respondent’s apparel business. See Resp., at Attached Ex. 6. Further, because the domain name at issue is comprised of descriptive terms, Complainant does not have exclusive right in the terms.
Respondent cannot have acted in bad faith as Respondent’s registration of the disputed domain name predates Respondent’s claimed rights in the MIAMI STYLE mark. Further, the mark claimed is comprised of a merely descriptive phrase.
C. Additional Submissions
Complainant
As of the time Respondent’s December 2011 registration of the disputed domain name, Complainant had enjoyed approximately $24 Million in sales of apparel under the MIAMI STYLE mark.
Respondent is not commonly known by the disputed domain name as Respondent registered the name under her individual name in December 2011, and then later on January 10, 2012 formed the Shop Miami Style LLC.
Consumer complainants further negate a finding of legitimate use.
Respondent must have had knowledge of Complainant’s business at the time of registration.
Respondent
Respondent’s Additional Submission reiterates that Complainant didn’t apply for, and didn’t obtain, its federal trademark registration until Respondent registered the domain name and incorporated its business. Respondent uses the domain name to provide the services of her business and has demonstrated her bona fide steps to set up her business from before the domain’s registration. Complainant has selected a very descriptive trademark and cannot therefore expect that it can prevent others from using such descriptive terms to describe their businesses. Failing to respond or capitulate to a cease and desist letter is not bad faith when Respondent was seeking the advice of counsel.
The disputed domain name was created on April 08, 2002.
Complainant owns the MIAMI STYLE mark through registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,382,793 registered August 13, 2013, filed September 19, 2012).
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.
Complainant claims to own the MIAMI STYLE mark through registration with the USPTO (Reg. No. 4,382,793 registered August 13, 2013, filed September 19, 2012). Prior panels have agreed that USPTO registration is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i), and that such rights date back to the filing date if the application proves successful. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).
The Panel finds that Complainant’s rights in the MIAMI STYLE mark under Policy ¶ 4(a)(i).
Complainant argues the disputed domain name <shopmiamistyle.com> is confusingly similar to the MIAMI STYLE mark. Complainant urges that the domain name fully incorporates the MIAMI STYLE mark and adds the generic term “shop.” The Panel notes that the disputed domain name affixes the generic top-level domain (“gTLD”) “.com” and eliminates the spacing in the mark. The Panel finds that such alterations are insufficient to differentiate the domain name under Policy ¶4(a)(i). See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); 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 and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
The Panel finds that the <shopmiamistyle.com> is confusingly similar to the MIAMI STYLE mark pursuant to Policy ¶ 4(a)(i).
Respondent argues that it is commonly known by the disputed domain name and that is a managing member of Shop Miami Style LLC, an active LLC in Florida. See Resp., at Attached Ex. 5. In Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003), the panel found that, as the respondent had registered its domain name as its business identity with the New York County Clerk a month after registering the domain name and then conducted his prop rental business under that name, it had demonstrated rights and legitimate interests in the domain name. At present, the Panel finds that Respondent’s LLC filing with the Florida Department of State creates a sufficient nexus between Respondent and the terms of the disputed domain name, therefore, Panel finds Respondent was commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Respondent claims it is using the disputed domain name for a bona fide offering of goods as the domain name is used in connection with Respondent’s apparel business. See Resp., at Attached Ex. 6. In Downstream Exch. Co. v. Downstream Energy, FA 96304 (Nat. Arb. Forum Feb. 2, 2001), the panel found that the respondent established rights in the <downstreamexchange.com> domain name pursuant to Policy ¶ 4(c)(i) by obtaining “the domain name in contemplation of creating and operating an Internet auction exchange” and showing demonstrable preparations for such use. The Panel finds that the Respondent established rights in the domain name by operating an online shop, therefore, it’s use warrants the protections afforded under Policy ¶¶ 4(c)(i) and (iii).
Respondent further argues that because the <shopmiamistyle.com> domain name at issue is comprised of descriptive terms, Complainant does not have exclusive right in the terms on the Internet. The Panel 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); Walsh Bishop Assocs. v. Honggi, Honggi Kim, FA 907521 (Nat. Arb. Forum Mar. 6, 2007) (“[A] respondent may have a legitimate interest in a domain name if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word.”).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See 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 the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent contends that the <shopmiamistyle.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s MIAMI STYLE mark. Moreover, Respondent contends that the registration and use of domain name comprising such common term is not necessarily done in bad faith. The Panel finds that a respondent is free to register a domain name consisting of common terms and the domain name currently in dispute contains such common term.
Therefore, the Panel also found that Respondent did not register or use the <shopmiamistyle.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int'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).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <shopmiamistyle.com> domain name REMAIN WITH Respondent.
Luiz Edgard Montaury Pimenta Panelist
Dated: September 18, 2014
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