Vanity Fair, Inc. v. Jack Potash / Jacks Lingerie
Claim Number: FA1506001624374
Complainant is Vanity Fair, Inc. (“Complainant”), represented by Carrie A. Shufflebarger of Thompson Hine LLP, Ohio, USA. Respondent is Jack Potash / Jacks Lingerie (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bestformbras.com>, <bestformbras.org>, <bestformcom.com>, <bestformnursing.com>, <bestformnursingbra.com>, <bestformnursingbras.com>, <bestformsbra.com>, <bestformsbras.com>, <bestformsportbra.com>, <bestformsportbras.com>, <bestformsports.com>, <bestformsportsbra.com>, <bestformsportsbras.com>, <curvationbras.org>, <exquisiteformbra.net>, <exquisiteformbras.com>, <exquisiteformbras.net>, <exquisiteformfully.com>, <exquisiteformposture.com>, <vanityfairbras.com>, <vanityfairpanties.com>, <vassarettebra.com>, <vassarettebra.net>, <vassarettebras.net>, <vassaretteslip.com>, <vasaretteslips.com>, <vassarettestockings.com> and <vassarettethong.com>, registered with GKG.NET, INC.; Wild West Domains, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 15, 2015; the Forum received payment on June 16, 2015.
On June 22, 2015, GKG.NET, INC. confirmed by e-mail to the Forum that the <bestformbras.org>, <bestformcom.com>, <bestformnursing.com>, <bestformnursingbra.com>, <bestformnursingbras.com>, <bestformsbra.com>, <bestformsbras.com>, <bestformsportbra.com>, <bestformsportbras.com>, <bestformsports.com>, <bestformsportsbras.com>, <exquisiteformbra.net>, <exquisiteformbras.com>, <exquisiteformbras.net>, <exquisiteformfully.com>, <exquisiteformposture.com>, <vanityfairbras.com>, <vanityfairpanties.com>, <vassarettebra.com>, <vassarettebra.net>, <vassarettebras.net>, <vassaretteslip.com>, <vasaretteslips.com>, <vassarettestockings.com> and <vassarettethong.com> domain names are registered with domain names are registered with GKG.NET, INC., and that Respondent is the current registrant of the names. GKG.NET, INC. has verified that Respondent is bound by the GKG.NET, INC. 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 June 22, 2015, Wild West Domains, LLC confirmed by e-mail to the Forum that the <bestformbras.com>, <bestformsportsbra.com> and <curvationbras.org> domain names are registered with Wild West Domains, LLC and that Respondent is the current registrant of the names. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 June 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2015 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@bestformbras.com, postmaster@bestformbras.org, postmaster@bestformcom.com, postmaster@bestformnursing.com, postmaster@bestformnursingbra.com, postmaster@bestformnursingbras.com, postmaster@bestformsbra.com, postmaster@bestformsbras.com, postmaster@bestformsportbra.com, postmaster@bestformsportbras.com, postmaster@bestformsports.com, postmaster@bestformsportsbra.com, postmaster@bestformsportsbras.com, postmaster@curvationbras.org, postmaster@exquisiteformbra.net, postmaster@exquisiteformbras.com, postmaster@exquisiteformbras.net, postmaster@exquisiteformfully.com, postmaster@exquisiteformposture.com, postmaster@vanityfairbras.com, postmaster@vanityfairpanties.com, postmaster@vassarettebra.com, postmaster@vassarettebra.net, postmaster@vassarettebras.net, postmaster@vassaretteslip.com, postmaster@vasaretteslips.com, postmaster@vassarettestockings.com, postmaster@vassarettethong.com. Also on June 30, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 24, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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" 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 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 names be transferred from Respondent to Complainant.
A. Complainant
Since its founding in the early 1900s, Complainant has been a leader and innovator in intimate apparel. Complainant has registered the VANITY FAIR mark (Reg. No. 918,102, registered Aug. 10, 1971), the VASSARETTE mark (Reg. No. 343,505, registered Feb. 23, 1937), the BESTFORM mark (Reg. No. 562,317, registered Jul. 29, 1952), the CURVATION mark (Reg. No. 2,757,539, registered Aug. 26, 2002), the
EXQUISITE FORM mark (Reg. No. 1,491,241, registered June 7, 1988), and the FULLY mark (Reg. No. 892,926, registered June 16, 1969) with the United States Patent and Trademark Office (“USPTO”). Complainant uses its collection of marks in connection with its promoting, designing, producing, and marketing brassieres and related intimate apparel for women. The disputed domain names are confusingly similar to Complainant’s VANITY FAIR, VASSARETTE, BESTFORM, CURVATION, EXQUISITE FORM, and FULLY marks. The domain names include generic words, such as “bra” “bras,” “com,” “nursing,” “sport,” “sports,” “posture,” “panties,” “slip,” “slips,” “stockings,” and “thong,” and each domain name inserts the generic top-level domain (“gTLD”) “.com,” “.org,” or “.net.”
Respondent has no rights or legitimate interests in the disputed domain names. Complainant’s marks predate Respondent’s registration of the disputed domain names by decades. Respondent is not commonly known by the disputed domain names, as the WHOIS record for the disputed domain names does not reflect that Respondent is commonly known by the disputed domain names. Further, Complainant has never authorized Respondent to use Complainant’s marks. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to redirect Internet users to websites that are unaffiliated with Complainant, but purport to offer Complainant’s products bearing Complainant’s marks.
Respondent has engaged in bad faith registration and use of the disputed domain names. Respondent has offered to sell the disputed domain names to Complainant for an amount that exceeds the value of the out-of-pocket costs associated with the domain names. Further, Respondent has engaged in a pattern of registering domain names comprised of the brands of others, in violation of Policy ¶ 4(b)(ii). Respondent’s registration and use of the disputed domain names disrupts Complainant’s business by misleading Complainant’s consumers. Additionally, Respondent uses the domain names to intentionally attract, for commercial gain, Internet users through a likelihood of confusion with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Vanity Fair, Inc. of Bowling Green, KY, USA. Complainant is the owner of numerous domestic registrations for marks it uses in connection with the provision of goods and services in the female intimate apparel business. Complainant has been using its marks continuously since at least as early as 1937. Complainant’s registered marks include VANITY FAIR, VASSARETTE, BESTFORM, CURVATION, EXQUISITE FORM, and FULLY.
Respondent is Jack Potash / Jacks Lingerie, of Linden, NJ, USA. Respondent’s registrars addresses are Bryan, TX, USA and Scottsdale, AZ, USA. The Panel notes that the <bestformbras.com> domain name was registered October 17, 2011, the <bestformbras.org> domain name was registered July 19, 2011, the <bestformcom.com>, <bestformnursing.com>, <bestformnursingbra.com>, <bestformnursingbras.com>, <bestformnursingbras.com>, <bestformsbra.com>, <bestformsbras.com>, <bestformsportbra.com>, <bestformsportbras.com>, <bestformsports.com>, <bestformsportsbra.com> and <bestformsportsbras.com> domain names were registered February 22, 2008. The <curvationbras.org> domain name was registered August 5, 2011. The <exquisiteformbra.net>, <exquisiteformbras.com>, <exquisiteformbras.net>and <exquisiteformposture.com> domain names were registered November 8, 2010. The <exquisiteformfully.com> domain name was registered November 8, 2010. The <vanityfairbras.com> domain name was registered November 15, 2001. The <vanityfairpanties.com> domain name was registered October 10, 2014. The <vassarettebra.com>, <vassarettebra.net>, <vassarettebras.net>, <vassaretteslip.com>, <vasaretteslips.com>, <vassarettestockings.com> and <vassarettethong.com> domain names were registered November 9, 2010.
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.
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 argues that since its founding in the early 1900s, it has been a leader and innovator in intimate apparel. Complainant provides evidence that it has registered the VANITY FAIR mark (Reg. No. 918,102, registered Aug. 10, 1971), the VASSARETTE mark (Reg. No. 343,505, registered Feb. 23, 1937), the BESTFORM mark (Reg. No. 562,317, registered Jul. 29, 1952), the CURVATION mark (Reg. No. 2,757,539, registered Aug. 26, 2002), the EXQUISITE FORM mark (Reg. No. 1,491,241, registered June 7, 1988), and the FULLY mark (Reg. No. 892,926, registered June 16, 1969) with the USPTO. Complainant states that it uses its collection of marks in connection with its promoting, designing, producing, and marketing brassieres and related intimate apparel for women. Prior panels have concluded that registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel here finds that Complainant’s USPTO registrations of the VANITY FAIR, VASSARETTE, BESTFORM , CURVATION, EXQUISITE FORM, and FULLY sufficiently prove Complaiant’s rights in the marks under Policy ¶ 4(a)(i).
Complainant claims that the disputed domain names are confusingly similar to Complainant’s VANITY FAIR, VASSARETTE, BESTFORM, CURVATION, EXQUISITE FORM, and FULLY marks. The <exquisiteformfully.com> domain name is merely a combination of Complainant’s EXQUISITE FORM and FULLY marks, with the addition of a gTLD. Previous panels have found that the combination of marks, and the addition of a gTLD, is incapable of overcoming confusing similarity. See Yahoo! Inc. v. Domain Contact 3, FA 1222420 (Nat. Arb. Forum Oct. 13, 2008) (holding that the <hotjobsyahoo.com> domain name is confusingly similar to Complainant’s HOTJOBS mark because the disputed domain name merely combined Complainant’s HOTJOBS mark with Complainant’s YAHOO! mark); Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The remaining domain names include generic words, such as “bra” “bras,” “com,” “nursing,” “sport,” “sports,” “posture,” “panties,” “slip,” “slips,” “stockings,” and “thong,” and each domain name inserts the gTLD “.com,” “.org,” or “.net.” Past panels have found that simply inserting generic terms into an otherwise registered mark does not adequately differentiate the disputed domain name from the mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). Previous panels have found that the addition of a gTLD is insignificant when determining confusing similarity. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel here finds that the disputed domain names are confusingly similar to Complainant’s collection of marks under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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). The Complainant has met this burden.
Complainant insists that Respondent has no rights or legitimate interests in the disputed domain names. First, Complainant argues that its marks predate Respondent’s registration of the disputed domain names by decades. Further, Complainant contends it has never authorized Respondent to use Complainant’s marks. Complainant asserts that Respondent is not commonly known by the disputed domain name, because, on information and belief, Respondent does not operate a business under any name consisting of or incorporating any of Complainant’s trademarks. The Panel notes that the WHOIS information for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name, but rather indicates that “Jack Potash / Jacks Lingerie” is the registrant of records. As Respondent has not refuted Complainant’s allegations in any formal response, the Panel finds that Complainant’s contentions sufficiently establish Respondent’s lack of rights to the disputed domain name according to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
According to Complainant, Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant asserts that Respondent uses the disputed domain names to redirect Internet users to websites that are unaffiliated with Complainant, but purport to offer Complainant’s products bearing Complainant’s marks. Complainant argues that when users click on the links attached to the disputed domain names, users are connected to Respondent’s websites, <hosierystreet.com> or <lingerieparkway.com>. The Panel also notes Respondent’s correspondence with the forum. Respondent there admits that it has used the disputed domain names to point to <hosierystreet.com> and <lingerieparkway.com>. Previous panels have found that such use is not a bona fide offering of goods or services a legitimate noncommercial or fair use pursuant to Policies ¶ 4(c)(i) or ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel here finds that Respondent’s actions are not a bona fide offering of goods or services under Policy ¶ 4(c)(i). The Panel also finds that Respondent attempts to profit through consumer confusion. As such, there can logically be no “noncommercial or fair use” pursuant to Policy ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant asserts that Respondent has offered to sell the disputed domain names to Complainant for an amount that exceeds the value of the out-of-pocket costs associated with the domain names. Complainant alleges that Respondent stated the following in a response to Complainant’s attempt to discuss the disputed domain names: “Legally you can make an offer if you want to buy these domain names.” Previous panels have found that an invitation to discuss offers for disputed domain names may rise to the level of bad faith pursuant to Policy ¶ 4(b)(i). See Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the respondent offered to sell the Domain Name to the complainant for $10,000 when the respondent was contacted by the complainant). The Panel notes that Respondent has not requested a specific sum in excess of its out-of-pocket costs, however Respondent’s general willingness to sell the disputed domain names has been found as evidence of bad faith registration pursuant to Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Further, Complainant claims that Respondent has engaged in a pattern of registering domain names comprised of the brands of others, in violation of Policy ¶ 4(b)(ii). According to Complainant, Respondent has registered 28 domain names that incorporate one or more of Complainant’s mark in the instant matter – conduct which satisfies the requirements of Policy ¶ 4(b)(ii). Prior panels have found that the registration of several infringing domain names involving the same mark or marks is evidence of bad faith. See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)). The Panel here finds that Respondent has engaged in a pattern of bad faith in violation of Policy ¶ 4(b)(ii).
Complainant argues that Respondent’s registration and use of the disputed domain names disrupts Complainant’s business by misleading Complainant’s consumers. Complainant contends that Respondent is a competitor of Complainant, as it benefits from using confusingly similar variations of Complainant’s marks and redirects traffic to Respondent’s competing websites. Prior panels have agreed that this behavior is disruptive to Complainant’s business and evidence of bad faith registration and use. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel here finds that Respondent’s disruptive use of the disputed domain names is evidence of bad faith under Policy ¶ 4(b)(iii).
Additionally, Complainant contends that Respondent uses the disputed domain names to intentionally attract, for commercial gain, Internet users through a likelihood of confusion with Complainant. Complainant alleges that Respondent use of the disputed domain names causes confusion by diverting Internet traffic to Respondent’s competing websites. Previous panels have found that this intentional diversion, for commercial gain, is evidence of bad faith. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant). As Respondent’s behavior indicates that Respondent seeks financial gain through the use of Complainant’s registered marks, the Panel finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <bestformbras.org>, <bestformcom.com>, <bestformnursing.com>, <bestformnursingbra.com>, <bestformnursingbras.com>, <bestformsbra.com>, <bestformsbras.com>, <bestformsportbra.com>, <bestformsportbras.com>, <bestformsports.com>, <bestformsportsbras.com>, <exquisiteformbra.net>, <exquisiteformbras.com>, <exquisiteformbras.net>, <exquisiteformfully.com>, <exquisiteformposture.com>, <vanityfairbras.com>, <vanityfairpanties.com>, <vassarettebra.com>, <vassarettebra.net>, <vassarettebras.net>, <vassaretteslip.com>, <vasaretteslips.com>, <vassarettestockings.com> and <vassarettethong.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 7, 2015
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