Guru Denim, Inc. v. Hooman Partovi
Claim Number: FA0503000445327
PARTIES
Complainant
is Guru Denim, Inc. (“Complainant”),
represented by Gary J. Nelson of Christie, Parker & Hale LLP, 350 West Colorado Boulevard, Suite 500, P.O. Box 7068, Pasadena,
CA 91109-7068. Respondent is Hooman Partovi (“Respondent”), 764
South Stanford Avenue, Los Angeles, CA 90021.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <truereligionoutlet.com>,
registered with Go Daddy Software, Inc.
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.
Honorable
Richard B. Wickersham, Judge (Ret.), as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
23, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 24, 2005.
On
March 25, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <truereligionoutlet.com>
is registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
Inc. 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
March 30, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 19,
2005 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@truereligionoutlet.com by e-mail.
A
timely Response was received and determined to be complete on April 18, 2005.
On April 22, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Honorable Richard B. Wickersham, Judge (Ret.), as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
Guru Denim, Inc. ("Guru") is the owner of United States Trademark
Registration Nos. 2,761,793 and 2,917,187.
These trademark registrations are valid and enforceable. Complainant began using its TRUE RELIGION
trademark at least as early as 2002, and has been using the mark continuously
ever since. In addition to the rights
associated with its federal trademark registrations, Guru has established common
law trademark rights in the TRUE RELIGION word mark in association with the
sale and distribution of clothing and clothing labels.
Guru sells TRUE
RELIGION products in the United States to many high-end boutiques including
Saks Fifth Avenue, Neiman Marcus, Barney's New York, Henri Bendel, Bergdorf
Goodman, and Nordstrom. Guru also has
distribution agreements for TRUE RELIGION products with distributors outside
the Unites States including in Italy, Germany, Switzerland, Japan, Holland,
France, Scandinavia, Canada, the United Kingdom and Australia. Guru's international customers of TRUE
RELIGION products include Harrods, Harvey Nichols, Barney's Japan, Isitan,
Rosebud Trading, Elephant Trading, Ueno Shokai, Liberty, Selfridges and many
others.
Complainant’s
federally registered trademark is included in Respondent's domain name,
<truereligionoutlet.com>. Respondent cannot avoid the confusing similarity between
its registered domain name and the TRUE RELIGION trademark simply by tagging on
the generic and descriptive word "outlet" at the end of the TRUE
RELIGION trademark. See Sony
Kabushiki Kaisha v. Inja, D2000-1409 (WIPO Dec. 13, 2000) (finding that
[n]either the addition of an ordinary descriptive word . . . nor the suffix
“.com” detract from the overall impression of the dominant part of the name in
each case, namely the trademark SONY and thus Policy ¶ 4(a)(i) is satisfied).
Respondent
registered and began using the <truereligionoutlet.com> domain name in
January 2005, a date well after Complainant’s trademark registrations had
issued (i.e., September 26, 2002 and June 17, 2003, respectively, and a date
well after Complainant’s rights in its TRUE RELIGION trademark had been firmly
established.
Moreover,
Respondent is not commonly known by the name True Religion, and has not
acquired trademark rights in the TRUE RELIGION name.
Since Complainant has developed prior rights in the TRUE RELIGION
trademark in at least the United States, Respondent is not commonly known as
TRUERELIGIONOUTLET, and Respondent is not a licensee of Complainant, Respondent
is foreclosed from establishing rights or a legitimate use in the contested
domain name. See Charles Jourdan
Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or
legitimate interest where respondent was not a licensee of complainant,
complainant’s rights in the domain name preceded the registration, and
respondent was not commonly known by the domain name).
B.
Respondent
This
letter is in response to your domain name dispute by Guru Denim dated March 23,
2005.
Firstly,
I was not aware that the picture of the guru had a trademark therefore after
the complaint I asked my web programmer to immediately take it off.
Secondly,
the website truereligionoutlet.com is not an operating website, therefore I
have no problem transferring the name to Guru Denim. But I do feel that the
name was reserved by me and I do have certain rights to it. I would like to ask
Guru Denim to reimburse me my costs of the domain name registration and website
building costs in the amount of $225.00
(two-hundred twenty five dollars). This payment will be accepted in the form of
shares of there [sic] common stock or a check made payable to me. If your
client would like to reimburse me for the costs I have entailed that would be
great otherwise they can have the domain name at no costs.
Thirdly,
If the above isn’t agreed upon I do elect a single member panel to resolve the
complaint.
Fourthly,
All responses can go to the following:
Hooman
Partovi
764
Stanford Ave
Los
Angeles, CA 90021
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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;
(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.
FINDINGS
Complainant asserts that it has established rights
in the TRUE RELIGION BRAND JEANS and the TRUE RELIGION BRAND JEANS WORLD TOUR
FASHION FOR THE SENSES SECTION ROW SEAT marks through the registration of the
marks with the United States Patent and Trademark Office (Reg. No. 2,761,793
issued Sept. 9, 2003 and Reg. No. 2,917,187 issued Mar. 23, 2004,
respectively). Moreover, Complainant
states that it has used the mark in commerce since at least August 2002. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under U.S. trademark law, registered marks hold a presumption that they
are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive and that a respondent has the burden of refuting this assumption).
Complainant
contends and the Panel finds that the <truereligionoutlet.com>
domain name is confusingly similar
to Complainant’s TRUE RELIGION BRAND JEANS mark because Respondent’s
domain name incorporates Complainant’s mark and merely omits the terms “brand”
and “jeans,” leaving “true” and “religion,” the dominant features of
Complainant’s mark. In addition,
Complainant argues that Respondent’s domain name merely adds the generic or
descriptive term “outlet,” which describes a service Complainant could easily
offer. Panel determines that such minor alterations do not
disguise the fact that “true” and “religion” of Complainant’s TRUE RELIGION
BRAND JEANS mark is the dominant feature of the disputed domain name and the
alterations are not enough to overcome a finding of confusing similarity
pursuant to Policy ¶ 4(a)(i). See
Hammond Suddards Edge v. Westwood
Guardian Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the domain
name, <hammondsuddards.net>, is essentially identical to the
complainant's mark, Hammond Suddards Edge, where the name “Hammond Suddards”
identifies the complainant independently of the word “Edge”); see also WestJet Air Ctr., Inc. v. W. Jets LLC,
FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com>
domain name is confusingly similar to the complainant’s mark, where the
complainant holds the WEST JET AIR CENTER mark); see also Vivid Video, Inc.
v. Tennaro, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding that any
distinctiveness resulting from a respondent’s addition of a generic word to the
complainant’s mark in a domain name is less significant because the respondent
and the complainant operate in the same industry).
Furthermore,
Complainant argues that the addition of the generic top-level domain “.com” and
the omission of the space in between the terms of Complainant’s mark are not
enough to negate a finding of confusing similarity pursuant to Policy ¶
4(a)(i). See Nev. State Bank v. Modern
Ltd. – Cayman Web Dev., FA
204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a
generic top-level domain is irrelevant when considering whether a domain name
is identical or confusingly similar under the Policy.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd.,
FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain
is irrelevant when establishing whether or not a mark is identical or
confusingly similar, because top-level domains are a required element of every
domain name.”); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7,
2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as
spaces are impermissible in domain names and a generic top-level domain such as
‘.com’ or ‘.net’ is required in domain names”).
Complainant avers that Respondent is appropriating
Complainant’s marks to market and sell Complainant’s goods. The <truereligionoutlet.com>
domain name directs Internet users to a website that states “Why pay
more? True Religion Outlet is your
source to all new and trendy True Religion clothing!” The Panel finds that Respondent’s use of a confusingly similar
domain name that resolves to a website that directly competes with Complainant
is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)
or a legitimate noncommerical or fair use pursuant to Policy ¶ 4(c)(iii). See Ziegenfelder Co. v. VMH Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests based on the fact that the domain names bear no
relationship to the business of a
respondent and that the respondent would only legitimately choose to use
the complainant’s mark in a domain name if the respondent was seeking to create
an impression that the two businesses were affiliated); see also Avery Dennison
Corp. v. Steele, FA
133626 (Nat. Arb. Forum Jan 10, 2003) (finding
that a respondent had no rights or legitimate interests in the disputed domain
name where it used the complainant’s mark, without authorization, to attract
Internet users to its business, which competed with the complainant); see
also Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable to find that a bona
fide offering of services in a respondent’s operation of [a] web-site using
a domain name which is confusingly similar to the complainant’s mark and for
the same business.”).
The
Panel finds that the <truereligionoutlet.com>
domain name is not being used for
competing use, but the Panel finds that the domain name is confusingly similar
to Complainant’s TRUE RELIGION BRAND JEANS mark and used for Respondent’s
commercial benefit, and the Panel concludes that the use of the domain name
does not fall within the parameters of Policy ¶ ¶ 4(c)(i) or (iii). See Ziegenfelder Co. v. VMH Enter., Inc.
D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
based on the fact that the domain names bear no relationship to the business of
a respondent and that the respondent would only legitimately choose to use the
complainant’s mark in a domain name if the respondent was seeking to create an
impression that the two businesses were affiliated).
Moreover,
Complainant alleges that Respondent was not authorized or licensed to register
or use a domain name that incorporates the dominant features of Complainant’s
TRUE RELIGION BRAND JEANS mark, “true” and “religion.” In addition, Complainant argues that
Respondent is not commonly known by the disputed domain name. The Panel finds that Respondent is not
commonly known by the domain name; therefore, the Panel finds that Respondent
lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).
See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that
one has been commonly known by the domain name prior to registration of the
domain name to prevail”); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interests where a respondent was not commonly
known by the mark and never applied for a license or permission from the
complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) the respondent is not a licensee of the complainant; (2) the
complainant’s prior rights in the mark precede the respondent’s registration;
and (3) the respondent is not commonly known by the domain name in question).
Complainant
argues that Respondent registered and used the <truereligionoutlet.com> domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) as Respondent is using the domain name to intentionally attract Internet users to its website, by
creating a likelihood of confusion with Complainant as to the source,
sponsorship, affiliation or endorsement of its website. See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding
that a respondent’s use of the <saflock.com> domain name to offer goods
competing with the complainant’s illustrates the respondent’s bad faith
registration and use of the domain name, evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14,
2001) (finding bad faith where a respondent used the domain name, for
commercial gain, to intentionally attract users to a direct competitor of the
complainant); see also Fossil Inc.
v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that a respondent
acted in bad faith by registering the <fossilwatch.com> domain name and
using it to sell various watch brands where the respondent was not authorized
to sell the complainant’s goods).
In
addition, Complainant contends that Respondent is using the <truereligionoutlet.com> domain
name for the purpose of bringing Internet users desiring to purchase
Complainant’s goods to Respondent’s website for the intended purpose of
offering Complainant’s goods at a discount price thus disrupting the business
of Complainant. Therefore, the Panel
finds that Respondent’s registration of a domain name confusingly similar to
Complainant’s mark, for this purpose, is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iii). See
Volkswagen of Am., Inc. v. Site
Design Online, FA 95753 (Nat. Arb. Forum Nov. 6, 2000) (transferring
BAYAREAVW.COM from the respondent, an automobile dealership specializing in
Volkswagens, to the complainant); see also Gorstew Ltd. & Unique Vacations, Inc. v. Satin Leaf, Inc., FA
95414 (Nat. Arb. Forum Oct. 4, 2000) (transferring <sandalsagency.com>
and <sandalsagent.com> from the respondent travel agency to the
complainants, who operate Sandals hotels and resorts); see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding that a respondent registered the
domain name in question to disrupt the business of the complainant, a
competitor of the respondent).
Complainant further argues that Respondent’s
registration of the disputed domain name, a domain name that incorporates the
dominant features of Complainant’s mark and deviates only with the addition of
a generic or descriptive term, suggests that Respondent knew of Complainant’s
rights in the TRUE RELIGION BRAND JEANS mark.
Additionally, the term incorporated in the domain name is easily
connected to Complainant’s business. In
its Complaint, Complainant has included one hundred examples of websites with
domain names that include a brand name that end in “outlet.com.” Thus, the Panel finds that Respondent chose
the <truereligionoutlet.com> domain name based on the distinctive and
well-known qualities of Complainant’s mark, and therefore registered and used
the domain name in bad faith. See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb.
Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when
Respondent reasonably should have been aware of Complainant’s trademarks, actually
or constructively.”); see also Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad
faith registration and use where it was “inconceivable that Respondent could
make any active use of the disputed domain names without creating a false
impression of association with Complainant”); see also Orange Glo Int’l v.
Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN
mark is listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”).
The
Panel finds that Respondent’s offer to sell the disputed domain name to
Complainant for a value in excess of out-of-pocket expenses directly related to
the domain name, and the Panel concludes that Respondent’s registration and
attempt to sell a domain name that is confusingly similar to Complainant’s mark
evidences opportunistic bad faith pursuant to Policy ¶ 4(b)(i). See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr.
30, 2001) (finding a respondent’s offer to sell the domain name at issue to the
complainant was evidence of bad faith).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <truereligionoutlet.com>
domain name be TRANSFERRED from Respondent to Complainant.
___________________________________________________
Honorable Richard B. Wickersham, Judge
(Ret.), Panelist
Dated: May 6, 2005
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