DECISION

 

Phat Fashions, LLC v. My Wear

Claim Number: FA0105000097305

 

PARTIES

The Complainant is Phat Fashions, LLC, New York , NY, USA (“Complainant”) represented by Brad D. Rose, of Pryor Cashman Sherman & Flynn, LLP.  The Respondent is My Wear, Clearwater, FL, USA (“Respondent”) represented by Anatola Cefail.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <phat-wear.com>, <phat-jeans.com>, <phat-jeans.net>, <phatjeans.com>, <phatjeans.net>, <phatshack.com>, <phatshack.net>, and <flavajeans.com>, registered with Network Solutions.

 

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.

 

Nelson A. Diaz as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on May 21, 2001; the Forum received a hard copy of the Complaint on May 22, 2001.

 

On May 24, 2001, Network Solutions confirmed by e-mail to the Forum that the domain names "phat-wear.com", "phat-jeans.com", "phat-jeans.net"," phatjeans.com", "phatjeans.net", "phatshack.com", "phatshack.net", and "flavajeans.com" are registered with Network Solutions and that the Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 May 29, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 18, 2001 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@phat-wear.com, postmaster@phat-jeans.com, postmaster@phat-jeans.net, postmaster@phatjeans.com, postmaster@phatjeans.net, postmaster@phatshack.com, postmaster@phatshack.net, and postmaster@flavajeans.com by e-mail.

 

On June 15, 2001, Respondent requested an extension of time to respond to the Complaint.  The Forum granted one extension, setting a deadline of July 9, 2001 by which Respondent could file a response.

 

A timely response was received and determined to be complete on July 9, 2001.  Both parties submitted timely Supplemental Written Statements under Forum Supplemental Rule No. 7.  Complainant submitted an additional Supplemental Written Statement, which was untimely and is therefore not considered.

 

On July 17, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Nelson A. Diaz as Panelist.

 

RELIEF SOUGHT

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant, a proprietor of clothing lines branded under the  “PHAT” family of trademarks, contends that respondent, also a clothing line proprietor, whom complainant contends has no legitimate rights or interests in the trademark, “PHAT,” registered the disputed domain names in circumstances demonstrating bad faith.

 

B. Respondent

Respondent contends (1) that there in no confusing similarity between the PHAT family of trademarks and the disputed domain names because Complainant and Respondent use the term, “PHAT,” in different word combinations, (2) that Respondent has a legitimate interest in the disputed domain names based on its intent to use the domain names in the future, and (3) that Respondent could not have acted in bad faith in registering the names because the disputed registrations do not prevent Complainant from using its marks and because Complainant and Respondent target their clothing lines at different markets and are therefore not competitors.

 

FINDINGS

Complainant is the proprietor of numerous highly successful brands of fashion wear, which include PHAT ®, PHAT FARM ®, PHAT THREADS ®, BABY PHAT ®, and CLASSIC AMERICAN FLAVA ®.  The dates of first use of these marks in connection with the sale of fashion clothing range from December 1992 to December 1994, and the dates the United States Patent and Trademark Office issued these marks range from December 1993 to August 2000.  Complainant has also registered these marks in countries in Europe, South America, as well as in Japan, China, and numerous other countries.  Complainant spends $3.5 million annually to advertise and promote the PHAT ® branded family of goods, yielding vast media exposure in major media publications and through the public use of PHAT ® branded clothing by major media and professional sports celebrities.  Complainant also owns registrations for domain names that reflect its mark, including <PHATFASHIONS.COM, .NET and .ORG> and <PHATFARM.COM, .NET and .ORG>.

 

Respondent is also a clothing designer and manufacturer, but who is not known by a name, that includes the word “PHAT,” and has never operated under a name which includes the word, “PHAT.”  Respondent possesses no trademarks, common law or otherwise, related to the name, “PHAT.”

 

The first and dominant word in the second level domain in all but one of the disputed domain names is “PHAT,” which is the also the first and dominant word in most of Complainant’s trademarks.  Both the disputed domain names and the Complainant’s marks use the term, “PHAT,” in combination with words connoting clothing or building structures (“farm,” “shack”), the latter of which are suggestive of a retail establishment.

 

Respondent registered the disputed domain names on or about February 6, 2000.  Since that time, Respondent has not posted content tied to the addresses of the disputed domain names.  Despite repeated inquires by Complainant, Respondent has failed to address Complainant’s concerns regarding Respondent’s use (or lack thereof) of the disputed domain names.  Although Respondent has not as yet used the domain names, it states that it intends to use them to market and sell clothing.

 

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 canceled 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.

 

Identical and/or Confusingly Similar

The disputed domain names are confusingly similar to Complainant’s trademarks, particularly in light of the similar nature of the parties’ businesses.

 

Rights or Legitimate Interests

There is no evidence that Respondent was ever known by the disputed domain names.  There is no evidence that Respondent has used or made demonstrable preparations to use the disputed domain names (or any name corresponding to the disputed domain names) in connection with a bona fide offering of goods, and Respondent claims it intends to use the disputed domain names to market and sell clothing, which use would misleadingly divert Complainant’s customers from Complainant.  Accordingly, Respondent has no rights or legitimate interests in the disputed domain names.

 

Registration and Use in Bad Faith

Respondent’s registration of the disputed domain names was the first step toward the goal of attracting Internet users to its avowedly planned Web sites through which it would market and sell clothing.  Given the universe of names Respondent could have chosen in connection with fashion clothing, the fact that it chose the term, “PHAT,” can only reasonably lead to the conclusion that Respondent planned to intentionally use the name to confuse consumers as to the source, sponsorship, affiliation, or endorsement of Respondent’s Web sites and the goods to be sold thereon.  There is no reason to wait for Respondent to actually accomplish its goal inasmuch as its attempt to do so is sufficient to meet the definition of bad faith under the Policy.

 

DECISION

All disputed domain names, including <flavajeans.com>, which domain name Respondent has relinquished to Complainant, are transferred to Complainant.

 

 

Nelson A. Diaz, Panelist

 

Dated: July 30, 2001.