Fetish Factory, Inc. v. The Fetish Factory a/k/a Stanford Stuart a/k/a Pamela Hancock a/k/a Internetwork Partners
Claim Number: FA0108000099610
The Complainant is Fetish Factory, Inc., Ft. Lauderdale, FL ("Complainant") represented by Frank J. Benasutti. The Respondent is The Fetish Factory a/k/a Stanford Stuart a/k/a Pamela Hancock a/k/a Inernetwork Partners, Forest Hills , NY ("Respondent"), represented by Pamela Hancock.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thefetishfactory.com>, registered with Tierranet, Inc.
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.
Alan L. Limbury as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on August 30, 2001. The Forum received a hard copy of the Complaint on September 4, 2001.
On August 30, 2001, Tierranet, Inc. confirmed by e-mail to the Forum that the domain name <thefetishfactory.com> is registered with Tierranet, Inc. and that the Respondent is the current registrant of the name. Tierranet, Inc. has verified that Respondent is bound by the Tierranet, 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 September 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 25, 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 email@example.com by e-mail.
Respondent sought an extension of time because of the disruption caused to its business and to its communications with its attorney by the terrorist attacks on New York City on September 11, 2001. There is a dispute as to whether Complainant refused to consent to an extension. On September 24, 2001, the Forum found that extenuating circumstances exist warranting an extension and granted Respondent an extension until October 15, 2001 to submit the response. A timely response was received and determined to be complete on October 15, 2001.
Complainant’s timely Additional Submission was received on October 22, 2001. Respondent’s timely Additional Submission was received on October 22, 2001.
On October 30, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Alan L Limbury as Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
Complainant's Federally Registered service mark FETISH FACTORY is identical in sight, sound and meaning to the disputed domain name and is used for the same services in selling the same goods through the same channels of trade, namely mail order and retail services provided by a global computer communication network, all featuring fetish-related clothing.
Since 1995 Complainant has advertised and used in commerce the service mark FETISH FACTORY in connection with the sale of fetish-related clothing. Complainant obtained a federal registration for its mark and secured the domain name
<fetish-factory.com> on July 1, 1997.
After customers of Complainant reported confusion in trying to access Complainant's website, Complainant requested Respondent to give up the name. It responded that the name was too valuable to give up and that since Complainant was in Florida, Respondent’s presence in New York should not matter.
Respondent's website has bragged about having over one million hits.
Following a "cease and desist" letter from Complainant’s counsel, Respondent repeatedly promised to drop the name and transfer it to Complainant but reneged and gave as a reason that it wanted to capture the upcoming holiday season.
Respondent’s activities demonstrate bad faith under paragraph 4(b)(iv) of the Policy and the absence of legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant's mark: paragraph 4(c)(iii).
Complainant is using these proceedings to harass Respondent and its business. Complainant is attempting to reverse domain hijack Respondent's domain name.
The Complaint should be dismissed because Complainant comes with "unclean hands".
Complainant's mark was not registered until long after the Respondent registered the disputed domain name. Respondent did not know Complainant existed at the time Respondent registered the disputed domain name.
There is at least one other company selling products under a domain similar to Fetish Factory, Inc. (<www.fetishfactory.org>) and there are countless other sites using the term "fetish factory" as subtext to sell merchandise. Complainant has not, to the best of our knowledge, commenced proceedings against any of them.
Complainant waited until Respondent's business had been established almost four years before selectively declaring the similarity in name was an issue. The look and feel of the two parties' sites was substantially different. The parties' logos are extremely different in look and Respondent always prominently featured its New York address on the site.
Respondent asks the Panel to determine that this proceeding constitutes an abuse of the administrative proceeding and to dismiss the complaint; to direct Complainant immediately to relinquish both <lavendarslatexlair.com> and <L8tex.net> domain names and to pay Respondent's attorney's fees incurred in these proceedings.
C. Additional Submissions
Respondent was aware of Complainant’s domain name before it registered the disputed domain name because Annex 2 to the Response shows the search results for Complainant’s "Fetish Factory" mark, which indicated that the record for that name was created on July 1, 1997, five months before Respondent registered its "knock-off" name.
Complainant owned its mark and widely advertised it since at least as early as May 1995, as shown by the records of the U.S. Patent and Trademark Office and "Excitement USA", Volume 3, Issue 9, South Florida Edition (1995). Respondent did not oppose the issuance of Complainant's trademark registration.
By redirecting traffic from the disputed domain name to its < elegantharlot.com > website, Respondent siphoned off Complainant's business. This demonstrates Respondent's bad faith in intentionally attempting to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's mark.
Annex 2 to the Response shows the results of a database search for Complainant’s domain name <fetish-factory.com> conducted on October 15, 2001. It does not show that Respondents knew of that domain name on November 4, 1997.
Complainant’s mark is extremely weak. Respondent has a right to use those words in the domain <thefetishfactory.com>, as they are generic. Because Respondent does make fetish goods, it is by definition a "fetish factory".
Whether Complainant "owned" the mark in 1995 or May 2001, it was obliged to "police" that mark. It did not do so in a timely fashion; the service mark is weak, and Complainant is trying selectively to choose which "policing" to do, based solely on some arbitrary notion that after four years of fairly peaceful coexistence in a very small niche market, it can hijack the domain for its own use.
Respondent did not register and has not used the disputed domain name in bad faith.
Both parties are retailers in the niche market for fetish-related clothing. The Complainant has operated in that market since at least May 1995 and the Respondent since at least 1997 or 1998.
On June 18, 1997, an unrelated party, WebMagic, Inc. of Pasadena, California registered the domain name <fetishfactory.com>, a pornographic redirect site.
On July 1, 1997 Complainant registered the domain name <fetish-factory.com>. It also registered <fetish-factory.net> on Oct 16, 2000.
On November 4, 1997, Respondent registered the disputed domain name <thefetishfactory.com>. At the website reached by means of that address it initially displayed R-rated pictures of local models, including one of the owners of its business, Ms. Hancock. Commencing in 1998, it offered fetish-related clothing for sale.
Both at the time Respondent registered the disputed domain name and when it began to sell fetish-related clothing through its www.thefetishfactory.com website, Respondent was unaware of the existence of Complainant.
Prior to registering the disputed domain name, Respondent conducted a search for a domain name which uncovered only the WebMagic domain name <fetishfactory.com>. The search which Respondent conducted did not reveal Complainant’s domain name
<fetish-factory.com> because Respondent did not think to search for a hyphenated name nor that anyone would choose to register a hyphenated expression as a domain name.
Other parties, unrelated to the disputants, have registered < thefetishfactory.net > (August 24, 2000), < fetishfactory.org > (December 15, 1999) and < fetish-factory.org > (December 7, 2000).
Complainant became aware of Respondent’s activities in the field of fetish-related clothing by at least late 1999, when there were telephone conversations between the parties regarding the possibility of the Respondent selling a clothing line sold wholesale by Complainant’s wholesale company. By then Complainant had received reports of confusion from its customers and it requested Respondent to give up the disputed domain name.
The Policy commenced operation in late 1999.
On January 3, 2000, Complainant filed an application with the United States Patent and Trademark Office to register FETISH FACTORY as a service mark for "retail store services, mail order services and retail services provided by a global computer communication network, all featuring fetish-related clothing", in International class 35. The date of first use was stated to be May 1995 and the date of first use in commerce was stated to be July 15, 1995. The mark was registered on May 8, 2001 with a disclaimer as to the exclusive right to use "fetish" apart from the mark as shown, i.e. FETISH FACTORY.
Page 43 of the South Florida Edition of Volume 3, Issue 9 of "Excitement USA", published in 1995, contains an advertisement placed by Complainant which states: "FETISH FACTORY Specializing in Latex Clothing and Fetish Accessories". That publication also contains references to Complainant as "Fetish Factory" and "The Fetish Factory" but none of those references was made by Complainant.
Respondent registered the domain name <L8tex.com> on March 17, 1999 and has used it as an additional shopping site at which, since 1999, the advertising slogan "Lavendar’s Latex Lair" has appeared. Lavendar is a pseudonym used by Ms. Hancock on customer email since 1997. On April 23, 2001 Complainant registered the domain names <L8tex.net> and <lavendarslatexlair.com> and has used them as redirects to its <fetish-factory.com> site.
On June 1 2001, Complainant’s counsel wrote a "cease and desist" letter to Respondent, enclosing a copy of the U. S. Trademark Registration certificate, and sent a follow-up letter on July 20, 2001.
Attempts were made to negotiate a settlement, during which time Respondent changed its shopping cart at <www.thefetishfactory.com> to another website it owned, <www.elegantharlot.com>, and, while retaining the disputed domain name, redirected traffic from that name to that other site. On July 27, 2001 Respondent notified Network Solutions, Inc. that the name of the registrant of the disputed domain name should be changed from The Fetish Factory to Internetwork Partners. There is no evidence that NSI was the registrar of the disputed domain name at the time nor of the date of any change from NSI to the present registrar. During the negotiations Complainant did not inform Respondent of its April 23, 2001 domain name registrations.
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.
The Panel has no power in this administrative proceeding to direct Complainant to relinquish the domain names <lavendarslatexlair.com> and <L8tex.net> nor to pay Respondent's attorney's fees.
Identical and/or Confusingly Similar
Essential or virtual identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (WIPO Case No. D2000-0802) and Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102).
The Panel finds the disputed domain name <thefetishfactory.com>is identical to the Complainant’s registered trademark FETISH FACTORY.
Complainant has established this element.
Rights or Legitimate Interests
Respondent first received notice of this dispute when it received the "cease and desist" letter dated June 1, 2001. It had registered the disputed domain name on November 4, 1997 and initially used it to show pictures, subsequently (in 1998) offering fetish-related clothing for sale.
There is insufficient evidence of use by Complainant of FETISH FACTORY as a distinctive service mark so as to have created common law rights in that mark prior to Respondent’s registration of the disputed domain name. See Interactive Television Corp. v. Noname.com, (WIPO Case No. D2000-0358), (finding that "[S]erious questions as to whether Complainant has any proprietary rights require us to reject Complainant’s claim. The ultimate decision as to whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal").
Nor is there any evidence that the advertisement for Complainant's services appearing in the South Florida Edition of the 1995 publication "Excitement USA" ever came to Respondent's attention.
The descriptive nature of the words "fetish factory" and Respondent's lack of awareness of Complainant or its mark at the time of registration of the disputed domain name and at the time of Respondent's entry into the fetish-related clothing market by means of the Internet, leads the Panel to the conclusion that Respondent has demonstrated, within paragraph 4(c)(i) of the Policy that, before any notice to it of this dispute, it used the disputed domain name in connection with a bona fide offering of goods or services.
The disputed domain name was registered in the name "The Fetish Factory" in the absence of any knowledge of Complainant on the part of the partners in the business. The Panel finds that Respondent has been commonly known by the disputed domain name. See Policy, paragraph 4(c)(ii).
Respondent has therefore demonstrated that it has rights and legitimate interests in respect of the domain name. Complainant has failed to establish this element.
Registration and Use in Bad Faith
The weakness of Complainant's mark; the descriptive nature of the words "fetish factory" and the lack of knowledge of Complainant on the part of Respondent when the disputed domain name was registered lead the Panel to the conclusion that Complainant has not demonstrated that the disputed the name was registered and is being used in bad faith.
Reverse Domain Name Hijacking
Respondent has asked the Panel to make a finding of attempted reverse domain name hijacking. Rule 1 defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." See also Rule 15(e). To prevail on such a claim, Panels have held that a respondent must show that complainant knew of or was reckless in disregarding respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. See, e.g., Deutsche Welle v. DiamondWare Ltd., (WIPO Case No. D2000-1202); Koninklijke KPN N.V. v. Telepathy Inc., (WIPO Case No. D2001-0217): Sydney Opera House Trust v. Trilynx Pty. Ltd., (WIPO Case No. D2000-1224); Goldline International, Inc. v. Gold Line (WIPO Case No. D2000-1151) and Smart Design LLC v. Hughes, (WIPO Case No. D2000-0993).
Here it has been established that many businesses have long used the expression Fetish Factory in connection with the supply of fetish-related goods. Complainant did not initiate an administrative proceeding over Respondent's use of the disputed domain name when the Policy commenced in late 1999 but instead waited almost two more years until Complainant had registered the trademark FETISH FACTORY. This delay suggests that Complainant appreciated that it could not establish common law rights in that mark prior to the registration of the disputed domain name and thus could not sustain a complaint under the Policy. See New Piper Aircraft, Inc. v. Piper.com, FA 94367 (Nat. Arb. Forum May 2, 2000) (finding that Complainant’s failure to initiate a suit in over two years indicated that Complainant did not believe that Respondent intended to attract customers through confusion).
By the time this administrative proceeding was commenced, Complainant was aware of the long use by Respondent of the name The Fetish Factory, in which the disputed domain name was registered, and was aware of Respondent’s activities in selling fetish-related clothing over the Internet by means of the disputed domain name. It was also aware that Respondent's activities pre-dated the filing of the application by Complainant for registration of the mark FETISH FACTORY in relation to the same kind of activities.
The Panel concludes that this administrative proceeding has been brought by Complainant in knowing or reckless disregard of the likelihood that Respondent possessed legitimate interests in the disputed domain name and primarily for the purpose of harassing Respondent into surrendering the disputed domain name to Complainant. That is attempted reverse domain name hijacking as defined by the Policy.
Complainant has accused Respondent of siphoning off Complainant's business by redirecting traffic from the disputed domain name to its < elegantharlot.com > website, in the course of the negotiations following the "cease and desist" letter. Because the Complainant failed to establish common law rights in its mark prior to the registration of the disputed domain name, this argument has not been accepted as demonstrating bad faith registration and use on the part of the Respondent.
Yet Complainant itself has sought to siphon off Respondent’s business by registering the domain names <L8tex.net> and <lavendarslatexlair.com> and redirecting traffic intended for Respondent to Complainant’s <fetish-factory.com> site. That harassing conduct supports the conclusion that this administrative proceeding was brought primarily for the purpose of harassing Respondent into surrendering the disputed domain name to Complainant.
The Respondent having demonstrated that it has rights and legitimate interests in respect of the disputed domain name, the Panel states, pursuant to rule 15(e), that the dispute is not within the scope of paragraph 4(a) of the Policy.
The Panel also declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Alan L Limbury, Panelist
Dated: November 8, 2001
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