Fruit of the Loom, Inc. v. Sandra Yackolow
d/b/a Marblehead Consulting
Claim Number: FA0602000649866
PARTIES
Complainant is Fruit of the
Loom, Inc. (“Complainant”), represented by Steven L. Snyder, of Wyatt,
Tarrant & Combs, LLP, PNC
Plaza, Suite 2800, 500 W. Jefferson St., Louisville, KY 40202. Respondent is Sandra Yackolow d/b/a Marblehead Consulting (“Respondent”), 67 Glendale Rd, Marblehead, MA 01945, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fruitoftheloominc.us>,
registered with Abr Products, Inc. d/b/a Misk.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 February 24, 2006; the Forum received a hard
copy of the Complaint on February 27, 2006.
On February 24, 2006, Abr
Products, Inc. d/b/a Misk.com confirmed by e-mail to the Forum that
the <fruitoftheloominc.us> domain name is registered with Abr
Products, Inc. d/b/a Misk.com and that Respondent is the current
registrant of the name. Abr Products, Inc. d/b/a Misk.com has
verified that Respondent is bound by the Abr Products, Inc. d/b/a Misk.com registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution
Policy (the “Policy”).
On March 6, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 27, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On April 4, 2006, 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. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the 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
1. Respondent’s <fruitoftheloominc.us> domain name is identical/confusingly similar to Complainant’s FRUIT OF THE LOOM mark.
2.
Respondent does not have any rights or legitimate
interests in the <fruitoftheloominc.us> domain name.
3.
Respondent registered and used the <fruitoftheloominc.us>
domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding
FINDINGS
Complainant, Fruit of the Loom, Inc., has used its FRUIT OF THE LOOM
mark for more than 150 years in association with its quality textile
goods. Complainant owns numerous
registrations with the United States Patent and Trademark Office (“USPTO”) for
the FRUIT OF THE LOOM mark (including Reg. No. 174,998 issued October 30, 1923;
Reg. No. 175,314 issued November 6, 1923; Reg. No. 678530 issued May 12,
1959). Furthermore, Complainant has
spent millions of dollars in advertising and marketing for its mark. Due to these efforts and Complainant’s
efforts in protecting its mark from infringers, the mark has become famous and
distinctive in the United States.
Respondent
registered the <fruitoftheloominc.us> domain name on May 4,
2002. Respondent has not made any use
of the domain name since the registration date and has not provided any
evidence of plans to use the domain name for any purpose.
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(f), 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.”).
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Complainant has provided evidence of numerous registrations of its FRUIT OF THE LOOM mark with the USPTO, which is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See Dermalogica, Inc. v. Gerassi, FA 624530 (Nat. Arb. Forum Feb. 22, 2006) (finding that the complainant had rights in the DERMALOGICA mark through its registration of the mark with the USPTO); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant asserts that the <fruitoftheloominc.us> domain name is confusingly similar to Complainant’s FRUIT OF THE LOOM mark, because the only difference is the addition of the abbreviation “inc.” In Venator Group Retail Inc v. Hussain, FA 100706 (Nat. Arb. Forum Dec. 7, 2001), the panel found that “[t]he addition of “INC” to Complainant’s FOOT LOCKER mark does not distinguish the disputed domain name from Complainant’s mark.” Accordingly, the Panel concludes that the addition of the abbreviation “inc” is not sufficient to distinguish the mark from the domain name. See (finding the <hewittassociatesinc.com> domain name confusingly similar to the the complainant’s HEWITT ASSOCIATES mark in holding that “simply adding a common abbreviation for a generic term to Complainant’s registered mark is insufficient to distinguish the domain name from the mark”).
Complainant has
satisfied the requirements of Policy ¶ 4(a)(i).
Complainant has the initial burden of
establishing a prima facie case that Respondent lacks rights and
legitimate interests in the <fruitoftheloominc.us> domain
name under Policy ¶ 4(a)(ii). Once
Complainant has satisfied its burden, that burden falls on Respondent to
provide evidence of its rights or legitimate interests under Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant
has asserted that the respondent has no rights or legitimate interests with
respect to the domain name, it is incumbent on the respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”). Due to Respondent’s failure to Respond, the
Panel may presume that Respondent has failed to meet its burden. See Bank
of Am. Corp. v. McCall, FA 135012 (Nat.
Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in
its failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain
name.”). However, the Panel chooses to
evaluate whether the evidence provided supports a finding of Respondent’s
rights or legitimate interests under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <fruitoftheloominc.us> domain name, because Respondent identified itself as “Sandra Yackolow” d/b/a “Marblehead Consulting” in the WHOIS information for the domain name. Furthermore, Complainant maintains that it is the exclusive owner of the FRUIT OF THE LOOM mark and has never permitted Respondent to use the mark. Without a response from Respondent, the WHOIS information is the only evidence of Respondent’s identity. Thus, where the WHOIS information supports Complainant’s contentions and Respondent has not come forward to provide affirmative evidence that it is known by the domain name, the Panel is left to conclude that Respondent has not established rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(iii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting UDRP ¶ 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"). Furthermore, Respondent has not provided evidence that it is the owner or beneficiary of a mark that is identical to the disputed domain name pursuant to Policy ¶ 4(c)(i).
Complainant asserts
that Respondent has made no use of the <fruitoftheloominc.us>
domain name since registering the domain name on May 4, 2002. In addition, Respondent’s failure to submit
a response means that Respondent has not provided any evidence of demonstrable
preparations to use the domain name for any purpose. In Bloomberg L.P. v. Sandhu,
FA 96261 (Nat. Arb. Forum Feb. 12, 2001), the panel found that the respondent
could not establish rights or legitimate interests in the
<bloombergmoney.tv> and <bloombergnews.tv> domain names where the
respondent had made no use of the domain names and had not “provided evidence of
any use or demonstrable preparations to use the disputed domain names.” Cf. Hewlett-Packard
Co. v. Rayne, FA 101465 (Nat. Arb. Forum
Dec. 17, 2001) (finding that the “under construction” page, hosted at the
disputed domain name, did not support a claim of right or legitimate interest
under UDRP ¶ 4(a)(ii)). Furthermore,
Complainant has provided evidence that Respondent offered the domain name
registration for sale to Complainant, who holds registrations for the FRUIT
OF THE LOOM mark.
The panel in Am. Nat’l Red
Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003), addressed such
behavior in its holding that “Respondent’s lack of rights and legitimate
interests in the domain name is further evidenced by Respondent’s attempt to
sell its domain name registration to Complainant, the rightful holder of the
RED CROSS mark.”
Thus, Respondent has not shown that it is using the disputed
domain name in connection with a bona fide offering of goods or services
pursuat to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iv).
Complainant has
satisfied the requirements of Policy ¶ 4(a)(ii).
Although Complainant may establish bad faith registration
and use pursuant to one of the elements under Policy ¶ 4(b), Complainant is not
required to prove the existence of one of those elements to show bad
faith. The Panel is entitled to view
the totality of the circumstances to determine bad faith registration and use. See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he 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) (“The requirement in the
ICANN Policy that a complainant prove that domain names are being used in bad
faith does not require that it prove in every instance that a respondent is
taking positive action. Use in bad faith can be inferred from the totality of
the circumstances even when the registrant has done nothing more than register
the names.”).
The evidence suggests that Respondent has made no use of, or any demonstrable preparations to use, the <fruitoftheloominc.us> domain name in nearly four years but has offered to transfer the domain name to Complainant. The panel in Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) addressed this situation in finding that “[m]ere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale.” Thus, Complainant’s passive holding of the domain name coupled with its attempts to sell the domain name to Complainant are indicative of bad faith registration and use under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).
In addition, the
circumstances of this case indicate that Respondent registered the <fruitoftheloominc.us>
domain name with actual or constructive knowledge of Complainant’s rights in
the FRUIT OF THE LOOM mark. First,
Complainant’s registration of its mark with the USPTO provides Respondent with
constructive notice of Complainant’s rights in the mark because Respondent is
also located within the United States. See
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.”).
Second, Complainant has spent millions of dollars to advertise and
market its mark and used the mark continuously for more than 150 years to
render its marks famous, making it unlikely that Respondent had no knowledge of
the mark when it registered the domain name.
See Victoria's Secret v.
Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (“In light of the notoriety
of Complainant’s famous marks, Respondent had actual or constructive knowledge
of the BODY BY VICTORIA marks at the time she registered the disputed domain
name.”). Therefore, Respondent’s
actual or constructive knowledge of
Complainant’s rights at the time it registered the domain name is further
evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant has
satisfied the requirements of Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three
elements required under the usTLD Policy, the Panel concludes that relief shall
be GRANTED.
Accordingly, it is Ordered that the <fruitoftheloominc.us>
domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 17, 2006
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