Annco, Inc. v. mybabyclothes.com
Claim Number: FA1207001452539
Complainant is Annco, Inc. (“Complainant”), represented by Meichelle R. MacGregor of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is mybabyclothes.com (“Respondent”), represented by Christina S. Loza of Loza & Loza, LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <littleloft.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she 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.
Douglas M. Isenberg as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 9, 2012; the National Arbitration Forum received payment on July 9, 2012.
On July 10, 2012, GoDaddy.com, LLC, confirmed by e-mail to the National Arbitration Forum that the <littleloft.com> domain name (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC, and that Respondent is the current registrant of the Dispute Domain Name. GoDaddy.com, LLC, has verified that Respondent is bound by the GoDaddy.com, LLC, registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on July 11, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 27, 2012.
An Additional Submission from Complainant was received and determined to be compliant on July 31, 2012.
An Additional Submission from Respondent was received and determined to be compliant on August 2, 2012.
On August 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Douglas M. Isenberg as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the Disputed Domain Name be transferred from Respondent to Complainant.
In its Complaint, Complainant contends, in relevant part, as follows:
· Complainant is a subsidiary of Ann Taylor, Inc., which, in turn, is a subsidiary of ANN INC., the shares of stock in which are publicly traded on the New York Stock Exchange. (Hereinafter, references in this decision to Complainant are intended to refer collectively to these three entities, unless the context indicates or requires otherwise.)
· Complainant “and its predecessors have been in the business of designing, producing, and selling apparel and accessories, and owning and operating retail stores and an online retail store” since 1956 and as of January 28, 2012, “operated 953 retail stores in 46 states, the District of Columbia and Puerto Rico, comprised of 280 Ann Taylor stores, 500 LOFT stores, 99 Ann Taylor Factory stores and 74 LOFT Outlet stores.”
· Complainant “began selling clothing bearing the LOFT Marks in its AnnTaylor Factory Stores” in 1995, opened its first LOFT Store in 1998 and launched its LOFT online store in 2003, which is currently found at <loft.com>.
· Complainant “generated more than One Billion Dollars in sales in its LOFT stores, LOFT factory stores, and the LOFT website” in the past three fiscal years.
· Complainant owns 280 registrations and applications for its LOFT trademarks worldwide, including U.S. Reg. No. 3,373,790 for LITTLE LOFT for use in connection with “clothing; namely, dresses, skirts, blouses, shoes, pants, shorts, jackets, coats, jeans, sweaters, shirts, t-shirts, tank tops, bodysuits, jumpers, vests, and sleepwear” (first used in commerce on November 6, 2006; filed on August 20, 2004; and registered on January 22, 2008).
· Respondent registered the Disputed Domain Name on May 17, 2010, and is currently using it “in connection with a website that contains information regarding a soon-to-be-launched ‘Little Loft’ e-commerce website…. [that] will offer kids and baby furniture and related merchandise for sale.”
· “Respondent’s website states that the ‘Little Loft’ website will feature ‘kids and baby furniture [including] children’s items for every room -- from kids bathrooms and children’s play spaces to kids study decor and shared rooms for siblings.’ Respondent’s website also states that it will feature diaper bags, mobiles, picture frames, jewelry boxes, sheets, comforters, throw pillows, rugs, flooring, toys, baby blankets, bath towels, games, kids sheets, pillow cases, bedding, wall decorations, bath accessories, kids luggage, backpacks, and personalized décor, among other items.”
· During a discussion on June 21, 2012, between Complainant’s counsel and Greg Sanders, who is listed as the administrative and technical contact for the Disputed Domain Name, Mr. Sanders indicated that the website using the Disputed Domain Name would eventually carry 10,000 items of children’s furniture and toys and that it would be linked with Respondent’s website using the domain name <mybabyclothes.com>. In that same conversation, Mr. Sanders “offered to sell the Domain Name to Complainant for a ‘ballpark figure’ of $2,000,000.00.”
· The Disputed Domain Name is identical to Complainant’s LITTLE LOFT trademark and is confusingly similar to its LOFT trademarks.
· Respondent has no rights or legitimate interests in the Disputed Domain Name because, inter alia, “[n]either LITTLE LOFT nor LOFT are part of Respondent’s name”; “Respondent is not a licensee of Complainant and has not been authorized by Complainant to use any of the LOFT Marks”; “Respondent is not presently using the Domain Name in connection with any bona fide offering of goods or services”; “Respondent could not establish that it had a legitimate right in the Domain Name in light of Complainant’s prior use and registration of the LOFT Marks, specifically including the LITTLE LOFT Mark”; “Respondent has been on constructive notice of Complainant’s LITTLE LOFT mark since at least 2008 when that mark was registered, and of Complainant’s LOFT Marks since at least 2003, when the first registration for LOFT was issued”; and “any use by Registrant of the Domain Name is likely to cause confusion with, and thus infringe, Complainant’s LOFT Marks, including LITTLE LOFT.”
· The Disputed Domain Name was registered and is being used in bad faith because, inter alia, Respondent had “constructive notice of Complainant’s LITTLE LOFT registration and actual knowledge of Complainant’s LOFT Marks and Registrations when Respondent registered” the Disputed Domain Name; Respondent’s offer to sell the Disputed Domain Name for $2 million “far exceeds the costs relating to registration of the Domain Name and any administrative or legitimate business costs that could have been conceivably incurred in connection therewith given that there is no present business operating at Respondent’s website”; use of the Disputed Domain Name “to promote and sell children’s furniture would constitute an attempt to trade on Complainant’s goodwill”; and Respondent has failed to make preparations to use the Disputed Domain Name for two years, that is, since registration.
· Respondent “repeatedly refused to sell the domain name” to Complainant and only cited the “ballpark figure” of $2 million after receiving “litigation threats” from Complainant – a figure that would “compensate for time and money already invested and a sales forecast for the business.”
In its Response, Respondent contends, in relevant part, as follows:
· “The inquiry here should focus only on whether the Complainant has rights to the mark LITTLE LOFT,” not the mark LOFT, because “[t]here are over 220 third-party marks pending or registered before the United States Patent and Trademark Office (USPTO) that use the word LOFT in connection with a variety of goods and services.”
· Complainant’s “rights to the mark LITTLE LOFT are tenuous at best” because the specimen provided by Complainant to the USPTO contains “no showing of the use of the mark on actual goods or showing the tags attached to the goods” and “after calling several AnnTaylor LOFT Outlet stores (nationwide) only three Outlet store employees had ever even heard of a LITTLE LOFT brand.”
· Although Complainant states that the Disputed Domain Name was registered on May 17, 2010, it was actually obtained by Respondent via auction on February 29, 2012, for $350.00, prior to the date (June 13, 2012) on which Respondent was contacted by Complainant.
· In this period of time, Respondent prepared to use the Disputed Domain Name by working with its web developer and graphic designer, resulting in a test site by June 4, 2012.
· Respondent “is not preparing to operate a competitive site. The Respondent intends to sell baby and nursery furniture,” not women’s clothing. “Clothing and furniture are not considered related goods by any stretch of the imagination.”
· “Complainant did not have actual notice of the Respondent’s mark” and “[t]here is no evidence whatsoever, and there is none alleged in the Complaint, that Respondent knew or should have known about the mark LITTLE LOFT when it purchased the domain name.”
· “[W]hen Respondent’s site goes live, Respondent will offer baby and children’s furniture. These goods do not compete with Complainant’s in any way and customers of Complainant would not assume these goods originate from the same source.”
C. Additional Submissions
In its Additional Submission, Complainant contends, in relevant part, as follows:
· “Respondent’s assertions of non-validity [of the LITTLE LOFT trademark] are insufficient to overcome the presumptions that flow from a federal registration.”
· “Respondent’s reliance on cases involving non-competing goods should also be rejected since those cases do not comport with the facts here. Respondent is not using the Domain Name on unrelated products. It is using the Domain Name in connection with a website that sells children’s products, namely children’s furniture, décor, games and accessories. Moreover, it admits that it intends to display the Domain Name as a link to the <mybabyclothes.com> website which features children’s clothing.”
· “Lest there be any doubt that such goods [children’s clothing and children’s furniture and accessories] are commonly derived from the same source, a search for federal registrations for marks that include both clothing and furniture yielded over 3,600 results. Over 1,000 of those results were for children’s clothing and children’s furniture.”
· “Respondent has prepared to use a domain name that is identical to Complainant’s mark for similar goods and services -- such use does not constitute a bona fide use.”
· “Respondent’s claim that it was not aware of Complainant’s LITTLE LOFT Mark does not render its proposed use bona fide.”
· “Respondent acquired the Domain Name for use in connection with the sale of children’s products that are closely related Complainant’s children’s products.”
· “Respondent’s attempts to justify its offer to sell the Domain Name does not diminish the fact that its offer was far greater than any concievable [sic] costs related to, or value acquired in, the Domain Name.”
In its Additional Submission, Respondent contends, in relevant part, as follows:
· Complainant “argues that because Babies-R-Us, Target, and Wal-Mart all sell children’s clothing and furniture, then that must mean that the goods are related….. Wal-Mart sells guns and sunscreen. Are these goods related? Target sells lawn furniture and sporting goods in adjacent aisles. Does that mean that the goods are merchandised together and thus related and marketed to the same consumers? Babies-R-Us sells diaper bags and bath toys. Would a consumer believe that they originate from the same source? Lest there be any doubt, in a world with large department stores and warehouse retail establishments, goods are often sold together and are not related goods for purposes of confusing similarity.”
· “There is no indication that [the LITTLE LOFT trademark] was being used with children’s clothes in the description of goods.”
· “Complainant’s argument that Respondent was justifying its offer to sell for a value far greater than the cost, does not diminish the fact that Respondent was pursued and bullied until it made such offer to sell.”
The Panel finds that the Disputed Domain Name is confusingly similar to the LITTLE LOFT trademark but that Respondent has rights or legitimate interests in the Disputed Domain Name. As a result, and for the reasons set forth below, the Panel makes no findings with respect to whether the Disputed Domain Name was registered and is being used in bad faith.
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."
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Based upon U.S. Reg. No. 3,373,790 cited by Complainant, it is apparent that Complainant has rights in and to the LITTLE LOFT trademark. With respect to Respondent’s arguments questioning the validity of the registration, “[t]his is not the appropriate forum in which to determine Respondent’s invalidity claims. So long as Complainant’s trademark registration remain[s] on the USPTO’s Principal Register, the Panel regards [it] as valid.” See Lotte Berk Method Ltd. v. Renaissance Ventures, FA 1108002 (Nat. Arb. Forum January 10, 2008).
As to whether the Disputed Domain Name is identical or confusingly similar to the LITTLE LOFT trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “littleloft”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2 (“WIPO Overview 2.0”) (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
Therefore, other than the elimination of the space character between the words “little” and “loft” (a character that is not permissible in a domain name), the Disputed Domain Name is identical to Complainant’s LITTLE LOFT trademark.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Under the Policy, a Respondent can demonstrate its rights or legitimate interests in a domain name by providing evidence of any of the following:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
See Policy, para. 4(c).
Here, Respondent has argued that it has rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(c)(i) because it prepared to use the Disputed Domain Name in connection with a website offering children’s furniture before it was contacted by Complainant or otherwise became notified of this dispute. Complainant does not appear to disagree with this. Rather, Complainant has argued that such use is not “bona fide” and, therefore, cannot shield Respondent from an adverse finding.
Therefore, this Panel considers whether Respondent’s preparations, prior to notice of this dispute, to use the Disputed Domain Name in connection with a website offering baby and nursery furniture constitutes a “bona fide offering of goods or services” under the Policy.
As numerous decisions under the Policy make clear, using (or preparing to use) a domain name in connection with the same or related goods or services associated with a complainant’s relevant trademark is not bona fide, typically regardless of the strength of the trademark. And, as numerous decisions under the Policy also make clear, using (or preparing to use) a domain name in connection with different goods or services associated with a complainant’s relevant trademark is not bona fide if the mark is well-established or famous. However, far fewer decisions under the Policy have addressed the question presented here, that is, whether using (or preparing to use) a domain name in connection with different goods or services associated with a complainant’s relevant trademark is bona fide where the mark is relatively weak, that is, neither well-established nor famous. (The Panel notes that LITTLE LOFT trademark is protected by only one registration cited by Complainant, and that it was registered only on January 22, 2008; and that Complainant has provided no evidence of widespread strength in the mark, given that the number of stores, advertising and other cited data relate only to the LOFT trademark or Complainant’s business in general, which the Panel does not deem relevant in this proceeding.)
The Panel agrees with the decision cited by Respondent that such use is indeed bona fide. See, e.g., Tammy Upwall and Michael Upwall d/b/a Got Beauty v. Kam Yaghobian d/b/a Got beauty products, FA 1122960 (Nat. Arb. Forum Feb. 21, 2008) (denial of transfer of <gotbeautyproducts.com> where Complainant’s GOT BEAUTY trademark was registered in the same year as the complaint was filed).
Similarly, in LifeWatch Holding Corp.d/b/a LifeWatch Inc. v. Network Earth, Inc., FA 96301 (Nat. Arb. Forum Jan. 26, 2001), the panel found that the respondent had rights and legitimate interests in the domain name <lifewatch.com> despite Complainant’s rights to the trademark LIFEWATCH. In that case, the panel wrote:
A trademark does not confer on its owner (or licensee) any rights in gross or at large. Unlike copyright or patent owners, trademark owners have no rights in gross. The law does not per se prohibit the use of trademarks or servicemarks as domain names. Rather, the law prohibits only uses that infringe or dilute a mark. Innocent third party users of the trademark have no duty to police the mark for the benefit of the owners of the mark. See Panavision Int’l, LLP v. Toppen, 945 F. Supp. 1296 (C.D. Cal.1996).
The Complainant and the Respondent are not competitors. The Complainant markets specialized cardiac monitoring services and equipment. Respondent is engaged in offering non-medical monitoring services to parents who have children in daycare and other related monitoring services.
It is true that the Respondent has not developed a web site in connection with the disputed domain name. The registration of the disputed domain name together with elderwatch.com, lifelinewatch.com, and hutwatch.com are evidence that Respondent was preparing to provide monitoring services over the Internet to serve a variety of markets for monitoring including homes, retail stores and other venues….
Complainant’s rights in the mark LIFEWATCH are limited to cardiac monitoring services and equipment.
See also Brasserie Almaza S.A.L v. Orbyt, D2004-0799 (WIPO Jan. 13, 2005) (respondent’s “prior use was exclusively in relation to jewellery products” and “[t]here is no evidence that the domain name was used in relation to beer or beverage products, nor that it was used in such a way as to trade-off the Complainant’s reputation in the ALMAZA trademark for such products”).
Similarly here, Complainant’s rights in the mark LITTLE LOFT appear to be limited to those set forth in its trademark registration, that is, “clothing; namely, dresses, skirts, blouses, shoes, pants, shorts, jackets, coats, jeans, sweaters, shirts, t-shirts, tank tops, bodysuits, jumpers, vests, and sleepwear,” while Respondent’s preparations to use the Disputed Domain Name are in connection with baby and nursery furniture.
Accordingly, the Panel finds that Respondent’s preparations to use the Disputed Domain Name are in connection with a bona fide offering of goods or services and, therefore, Respondent has rights or legitimate interests in the Disputed Domain Name.
Although Respondent has stated that it “intends to sell baby and nursery furniture,” should Respondent’s preparations or actual usage change, this Panel believes that it would not necessarily be inappropriate for Complainant to file a new complaint with respect to the Disputed Domain Name, depending at least in part on the nature of such changes. See WIPO Overview 2.0, para 4.4 (“A refiled case may only be accepted in limited circumstances. These circumstances include when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or of due process has occurred, or that there was other serious misconduct in the original case (such as perjured evidence). A refiled complaint would usually also be accepted if it includes newly presented evidence that was reasonably unavailable to the complainant during the original case.”)
Given that, for the reasons set forth above, it is unnecessary for the Panel to make a finding with respect to the third element of the Policy, paragraph 4(a)(iii), the Panel refrains from doing so.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <littleloft.com> domain name REMAIN WITH Respondent.
Douglas M. Isenberg, Panelist
Dated: August 21, 2012
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