National Arbitration Forum

DECISION

Westcoast Contempo Fashions Limited v. Manila Industries, Inc.

Claim Number: FA0610000814312

PARTIES

Complainant is Westcoast Contempo Fashions Limited (“Complainant”), represented by Gene Bolmarcich, of Liz Clairborne, Inc., Legal Department, One Claiborne Ave., North Bergen, NJ 07047. Respondent is Manila Industries, Inc. (“Respondent”), represented by Daniel G. Altman, of Shrull Altman LLP, 1701 River Run, Suite 1116, Fort Worth, TX 76107.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <kensiegirl.com>, registered with Compana, LLC.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Mr. P-E H Petter Rindforth as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 9, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 16, 2006.

On October 17, 2006, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <kensiegirl.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 October 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 6, 2006 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@kensiegirl.com by e-mail.

A timely Response was received and determined to be complete on November 6, 2006.

A timely Additional Submission from Complainant was received and determined to be complete on November 13, 2006.

A timely Additional Submission from Respondent was received and determined to be complete on November 16, 2006.

On November 15, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. P-E H Petter Rindforth as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, based in Canada, is a designer, manufacturer and retailer of apparel sold in Canada and the U.S. under the trademarks “Mac & Jac,” “Kenzie,” and “Kenzie Girl”.

Complainant launched a website at the <kenziegirl.com> on February 6, 2005 and began selling its Kenzie Girl line of apparel in early 2005 in the United States, having already been selling its line of Kenzie brand apparel in the U.S. since 1999.

Complainant has two U.S. trademark registrations for KENZIE and claims to have common law trademark rights to KENZIE GIRL, established by actual sale in the U.S.

The Respondent registered the domain name <kensiegirl.com> on June 3, 2005, four months after Complainant’s launch of the <kenziegirl.com> website. Respondent’s domain name directs to web pages with links to various products and services. The term “Kenzie Girl Clothing” is often displayed as a “Related Search” on Respondent’s web site (printouts provided as Exhibit F of the Complaint).

Complainant states that <kensiegirl.com> is confusingly simialr to the trademark KENZIE GIRL, as the letters “s” and “z” are phonetically similar and adjacent on a keybord, and refers to United Features Syndicate, Inc. v. John Zuccarini, D2000-1449 (WIPO Jan. 8, 2001) (<dillbert.com> held confusingly similar to DILBERT mark), and Valpak Direct Marketing Systems, Inc. v. Manila Industries, Inc., D2006-0714 (WIPO Aug. 17, 2006) (<vallpak.com> held confusingly similar to VALPAK mark). Complainant also refers to that “typosquatting” has been found to constitute confusing similarity, herewith referring to a number of UDRP decisions such as Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (finding that the misspelling of Pfizer’s name by omission of a letter amounted to confusing similarity).

In addition, Complainant states that the disputed domain name is confusingly similar to the trademark KENZIE, and that the addition of the non-distinctive word “girl” does not dispel the similarity.

Complainant asserts that Respondent is not affiliated with or related to Complainant, is not known by the domain name and that Respondent’s use does not constitute fair use and is not a legitimate noncommercial use. Respondent is using the disputed domain name to direct Internet users to Respondent’s websites that feature links to third-party websites that compete with Complainant.

Complainant argues that <kensiegirl.com> is registered and used in bad faith, pointing out that i) typosquatting is already sufficient evidence of bad faith, and ii) that the KENZIE and KENZIE GIRL trademarks are used and established and that soon after Complainant began doing business under the KENZIE GIRL mark on its website <kenziegirl.com>, Respondent registered the website <kensiegirl.com>, using its website subsequently to channel customers to competitor’s websites.

Complainant concludes that Respondent has registered the Domain Name solely for the purpose of attracting, for commercial gain, Internet users, by creating a likelihood of confusion with the KENZIE trademarks.

Finally, Complainant refers to Paragraph 4(b)(ii) of the UDRP, providing that bad faith registration and use will be made out where the Respondent has “registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] … engaged in a pattern of such conduct.” Respondent has and had registered a huge variety of other domain names incorporating the slightly modified marks of other entities (a list of nine prior UDRP Cases presented as Exhibit G of the Complaint).

B. Respondent

Respondent states that Complainant has not established any trademark rights in the term “kensie girl” as the trademark KENSIE GIRL was applied for under an “intent to use” application on October 4, 2006. Further, in Complainant’s application for KENZIE GIRL, the USPTO has requested a Statement of Use, which has not been filed timely.

Therefore, the domain name <kensiegirl.com> is not identical to or confusingly similar to any mark held by Complainant.

Respondent further argues that the disputed domain name is a common girl’s name, and refers to a number of UDRP Cases such as Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Feb. 5, 2001) (<tammy.com> legitimately registered because it contained a common female name). Without a federal trademark or secondary meaning, the disputed domain name is just a combination of a common name and the generic word “girl”, and ICANN panels have repeatedly found that generic words in combination are themselves a generic designation.

Respondent denies that the disputed domain name is a “typo” of KENZIE, and refers to Abercrombie & Fitch Stores, Inc. v. Chad Nestor, D2003-0260 (WIPO May 24, 2003) (the distinction of “ch” being replaced by “z” to make <aberzombie.com> created a new word and could not be considered identical or confusingly similar).

Respondent claims to have rights and legitimate interest in the Domain Name, as Respondent is using <kensiegirl.com> as an advertising portal that provides access to a broad range of services. The fact that advertising revenues may be generated by Respondent’s activity demonstrates a legitimate interest.

Even if there were potentially offending content where third parties, such as Google or Yahoo, control that content Respondent is not accountable. Respondent refers to Admiral Insurance Services v. Dicker, D2005-0241 (WIPO June 4, 2005) (“the Panel accepts that the terms under which Google makes its Adsense advertisements available do not permit the Respondent to control them . . .”) and Experimental Aircraft Association (EAA) v. EAA.COM, FA 206309 (Nat. Arb. Forum Dec. 16, 2003) (“brief appearance of aviation links on respondent’s websites was automatically provided by a pay-per-click search engine provider…”).

Respondent registers thousands of names, looking for commonly used, generic, descriptive terms to which no party had exclusive rights, including common names. This evidences Respondent’s good faith intent to register non-protected words. Respondent concludes that, as Complainant does not have any exclusive rights to KENSIE GIRL, it must follow that Respondent did not register and is not using <kensiegirl.com> in bad faith.

C. Additional Submissions

Complainant’s Additional Submission

The Complainant states that the fact that Complainant has no rights per se in the specific word(s) “kensie” or “kensie girl” is irrelevant, as is the fact that Complainant only recently filed trademark applications for these specific marks. The Complaint is based on the confusing similarity between the disputed domain name and the KENZIE and KENZIE GIRL trademarks.

As to Respondent’s conclusion that no common law rights are established in the KENZIE GIRL trademark, because of the fact that no Statement of Use has been filed, Complainant argues that it could and would nonetheless have common law rights.

Complainant also points out that although KENZIE is a given name, Complainant has trademarks rights therein, and refers to a number of previous UDRP cases in support of its arguments, including that the Domain Name is registered and used in bad faith.

Respondent’s Additional Submission

Respondent question that the Forum’s Supplemental Rule No. 7 is in compliance with the UDRP Rule that the submission of additional material beyond the Complaint and the Response is to the “sole discretion” of the Panel, at the Panel’s request and requests that the Panel disregard the entire supplementation and the exhibits submitted.

Respondent thereafter comments on Complainant’s Additional Submission, stating that Complainant has failed to disclose the reasons for the trademark application of KENSIE GIRL as well as why Complainant failed to submit a timely Statement of Use for KENZIE GIRL.

FINDINGS

Complainant is the owner of the following U.S. Trademark Registrations:

No 2,685,301 KENZIE (word) in respect of “women’s sportswear, namely – sweaters, T-shirts, pants, jackets, shorts, shirts and blouses”, Intl Class 25. First used in commerce in 1999. Application filed on August 28, 2000. Registered on February 11, 2003.

No 3,062,833 KENZIE (word) in respect of “retail store services in the field of clothing and accessories”, Intl Class 35. First used in commerce in 2004. Application filed on February 12, 2004. Registered on February 28, 2006.

Complainant also claims to have common law rights to the trademark KENZIE GIRL, although its trademark application for such trademark in class 25, filed on February 15, 2005 was abandoned on September 15, 2006 (according to the USPTO TESS).

Finally, Complainant has a pending U.S. application No. 77/013,213 for KENSIE GIRL, filed on October 4, 2006 for goods in Intl class 25.

Complainant registered the domain name <kenziegirl.com> on August 8, 2004 and launched a website at the <kenziegirl.com> on February 6, 2005.

The Respondent registered the domain name <kensiegirl.com> on June 3, 2005.

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 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;

(2) the 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.

As to Respondent’s arguments regarding the use of Supplemental Rule No. 7, the Panel notes that both Additional Submissions have been timely filed and will therefore be considered in this dispute. It is the opinion of this Panel that none of the Additional Submissions have amended the original Complaint/Response, but also that no significant additional facts or arguments have been presented.

Identical and/or Confusingly Similar

Complainant has established rights in the KENZIE trademark in the U.S. through registration No. 2,685,301, issued February 11, 2003. 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.”).

Regarding the trademark KENZIE GIRL, claimed to be a common-law trademark, the Complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. While the Panel accepts the evidence provided that Complainant has used KENZIE GIRL, it is however not convinced that Complainant has established unregistered common law rights in the same, based on the limited time between first use in commerce and the date of registration of the disputed domain name.

Complainant alleges that the <kensiegirl.com> domain name is confusingly similar to its KENZIE mark because the disputed domain name contains a common misspelling of Complainant’s KENZIE mark and the additional term “girl,” a word Complainant uses to describe its business. Complainant further alleges that the <kensiegirl.com> domain name is visually and phonetically similar to its registered mark.

The Panel finds that i) there is a considerable similarity between KENZIE and KENSIE, both visually and phonetically, and that ii) the addition of the descriptive word “girl” makes no difference in this respect – especially as Complainant already uses this term in connection to its registered trademark. See Nokia Corporation v. Nokiagirls.com, D2000-0102 (WIPO Apr. 20, 2000) (finding that “the Domain Name consequently consists of the trademark of the Complainant to which the general noun "girls" is added. The ability of this word "girls" to distinguish the Domain Name from the trademark of the Complainant is limited. As a general noun, "girls" is indeed a rather neutral addition to this trademark.”)

Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark KENZIE. The Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant asserts that Respondent is not associated in any way with Complainant and has never been authorized or licensed to use a domain name incorporating the trademark KENZIE or any confusingly similar versions thereof.

Nothing in the case indicates that Respondent is commonly known by the disputed domain name, because the WHOIS information lists the registrant of the domain name as “Manila Industries, Inc.,” and there is no other evidence in the record indicating that Respondent is commonly known by the disputed domain name.

Furthermore, Complainant alleges that Respondent is using the <kensiegirl.com> domain name to maintain a commercial web directory of links to women’s clothing companies that compete with Complainant. Complainant argues that Respondent is deriving commercial benefit from click-through fees it earns from diverting consumers to websites competing with Complainant.

Respondent asserts that the disputed domain name is made up of commonly-used terms and further that Respondent has established rights in the domain name through its use.

It is already concluded above that “kensiegirl” is confusingly similar to the complainant’s trademark KENZIE and it is also well established that Respondent’s use cannot constitute a bona fide use of the domain name pursuant to Policy ¶ 4(c)(i) of the UDRP. See TM Acquisition Corp. v. Gary Lam, FA 280499 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s use of the disputed domain name for a commercial web directory website linking users to competing services did not constitute a bona fide use or fair use pursuant to the UDRP); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.

Registration and Use in Bad Faith

Respondent’s business is to register domain names to be used “in connection with Internet searching, locator, and/or targeted advertising services.” The Panel notes that such business is in general lawful and rather common on the Internet. According to the Respondent, it has registered “thousands of names, looking for commonly used, generic, descriptive terms to which no party had exclusive rights, including common names.” Again, such activities do typically not comprise “bad faith” under the ICANN Policy.

However, if the above-mentioned business is used in connection with registration and use of domain names confusingly similar to others trademarks it is truly an act of bad faith.

As stated above, the disputed domain name is confusingly similar to the KENZIE trademark. Even if Complainant may not have established common-law rights to KENZIE GIRL, the said combination was used by Complainant prior to the registration of <kensiegirl.com>, as proved by the registration and use of the web site located at <kenziegirl.com>.

The Panel finds it rather far-fetched that Respondent, in good faith, would register a domain name that consists of i) a very similar, however misspelled version, to the trademark KENZIE, and ii) combine that word with the word “girl” to form <kensiegirl.com>, when the Complainant launched its web site at <kenziegirl.com> just four months earlier.

Respondent admits that advertising revenues are generated by its activities, but seems to take no responsibility for the content of the web site located at <kensiegirl.com>, stating that “even if there were potentially offending content where third parties, such as Google or Yahoo, control that content the domain site owner is not accountable.” This Panel is not convinced by such arguments. Respondent is well-established in this business, with thousands of domain name registrations, and is presumably well aware of how these third parties works, in combination with links and targeted advertising services. Respondent has the possibility to link the domain names with advertisements connected with the meaning and/or associations thereto. The Panel concludes that Respondent’s use of the <kensiegirl.com> domain name to divert Internet users seeking Complainant’s products to the websites of Complainant’s competitors constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).

The Complainant alleges that Respondent has been the subject of numerous UDRP proceedings in which panels have ordered Respondent to transfer a disputed domain name. See Valpak Direct Marketing Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006); Cap Gemini v. Manila Indus. Inc./”Cap Gemini,” D2006-0027 (WIPO May 16, 2006); Group Kaitu, LLC, Darkside Prod., Inc. v. Group Kaitu LLC a/k/a Manila Indus., Inc., D2005-1087 (WIPO Jan. 20, 2006); KPMG Int’l v. Manila Indus., Inc., D2006-0597 (WIPO July 13, 2006); Hummert Int’l Inc. v. Manila Indus., Inc., D2006-0777 (WIPO Aug. 18, 2006); Eastman Chem. Co. v. Manila Indus., Inc., FA 450806 (Nat. Arb. Forum May 6, 2005); Pioneer Hi-Bred Int’l, Inc. v. Manila Indus., Inc., FA 444468 (Nat. Arb. Forum May 7, 2005); Commemorative Brands, Inc. v. Manila Indus., Inc., FA 709096 (Nat. Arb. Forum July 5, 2006); Tahoe Joe’s, Inc. v. Manila Indus., Inc., FA 721976 (Nat. Arb. Forum July 14, 2006).

The Panel finds that Respondent has demonstrated a pattern of registering domain names containing others’ marks in order to prevent these parties from reflecting their marks in domain names, and that such conduct is prohibited under Policy ¶ 4(b)(ii).

Referring to all the above circumstances, the Panel concludes that Respondent has registered and used the domain name in 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 <kensiegirl.com> domain name be TRANSFERRED from Respondent to Complainant.

P-E H Petter Rindforth, Panelist
Dated: November 29, 2006

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