Phat Fashions,
LLC v Sarah Wilber
Claim Number: FA0107000097850
PARTIES
Complainant is Phat Fashions, LLC, New York, NY, USA (“Complainant”) represented by Brad D. Rose, of Pryor Cashman Sherman & Flynn, LLP. Respondent is Sarah Wilber, St. Charles, MI, USA (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <phattythreads.com> registered with Name Secure.com, Inc.
PANEL
On August 6, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist.
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 3, 2001; the Forum received a hard copy of the Complaint on July 3, 2001.
On July 9, 2001, Name Secure.com, Inc. confirmed by e-mail to the Forum that the domain name <phattythreads.com> is registered with Name Secure.com, Inc. and that Respondent is the current registrant of the name. Name Secure.com, Inc. has verified that Respondent is bound by the Name Secure.com, 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 July 9, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 29, 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@phattythreads.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
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.” 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant maintains that the <phattythreads.com> domain name is confusingly similar to Complainant’s federally registered trademark; that Respondent has no rights or legitimate interests in the <phattythreads.com> domain name; and that Respondent registered and used the <phattythreads.com> domain name in bad faith.
B. Respondent did not file a Response.
FINDINGS
Complainant commenced business operations in 1992. Complainant is the proprietor of several highly successful brands of designer fashion wear, including PHAT®, PHAT FARM®, PHAT THREADS® and BABY PHAT®. Complainant’s fashions have achieved a prominent position in the urban segment of the fashion market, attributable to the high quality of its products sold under its family of famous PHAT marks. Complainant has owned its PHAT family of marks since 1993.
Respondent, a competitor of Complainant registered the domain name <phattythreads.com> on November 27, 2000. Sometime thereafter, Respondent began to sell a competing line of clothing in connection with the domain name at issue.
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(e), 14(a) and 15(a) of the Rules.
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.
Identical and/or
Confusingly Similar
Respondent’s <phattythreads.com> domain name is confusingly similar to
Complainant’s PHAT THREADS mark, which it has used in commerce since 1993. The domain name merely adds the letters “ty”
to the domain name, and adding letters to a mark does not bring it out of the
realm of confusing similarity under Policy ¶ 4(a)(i).
See America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that Respondent’s domain name, <americanonline.com>, is confusingly similar to the Complainant’s famous mark); see also Victoria’s Secret et al. v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks).
Therefore, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or
Legitimate Interests
Respondent is unable here to show a bona fide fair and non-commercial use of the domain name; Respondent’s offering of competing products under Complainant’s mark does not constitute use of the disputed domain name in connection with a bona fide offering of goods. See Policy ¶ 4(c)(i). See The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of the disputed domain names is confusingly similar to the use made the subject of Complainant’s registration of its mark and Respondent’s use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods).
Nor is the offering of competing goods a legitimate noncommercial or fair use of the domain name as provided by Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
Lastly, Complainant has successfully alleged that Respondent is not commonly known by the disputed domain name, and Respondent has not come forward with any evidence to the contrary pursuant to Policy ¶ 4(c)(ii).
Therefore, the Panel determines that Complainant has established its burden set forth under Policy ¶ 4(a)(ii).
Registration and
Use in Bad Faith
Respondent’s conduct cited above also permits a finding of bad faith under Policy ¶ 4(b)(iv). Respondent has acted in bad faith by intentionally attempting to attract, for commercial gain, Internet users to a website by using a domain name that is confusingly similar to Complainant’s PHAT THREADS mark, thus creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website or products and services on the website. See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks).
Therefore, the Panel finds that Complainant has met the burden required under Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <phattythreads.com> be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated August 13, 2001
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page