Tween Brands Investment LLC v. Chris Bown
Claim Number: FA0608000778715
Complainant is Tween Brands Investment, LLC (“Complainant”), represented by Melanie R. Martin-Jones, of Porter, Wright, Morris & Arthur LLP, 41 South High Street, Columbus, OH 43215. Respondent is Chris Bown (“Respondent”), 7500 N. Dreamy Draw Drive, #212, Phoenix, AZ 85020, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <limited-too-clothing.com>, registered with Moniker Online Services, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 18, 2006.
On August 28, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <limited-too-clothing.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 August 30, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 19, 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@limited-too-clothing.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 22, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <limited-too-clothing.com> domain name is confusingly similar to Complainant’s LIMITED TOO mark.
2. Respondent does not have any rights or legitimate interests in the <limited-too-clothing.com> domain name.
3. Respondent registered and used the <limited-too-clothing.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Tween Brands Investment, LLC, sells girls’ clothing and related accessories under the LIMITED TOO mark. Since 1987, Complainant has continuously used the mark in the United States to refer to its retail products and services. Complainant offers its girls’ clothing and accessories at brick-and-mortar stores and online at multiple domain names, including <limitedtoo.com>.
Complainant is the exclusive licensee of the LIMITED TOO mark, which its licensor has registered numerous times with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,492,347 issued June 14, 1988; Reg. No. 1,636,474 issued February 26, 1991; Reg. No. 1,726,609 issued October 20, 1992; Reg. No. 2,427,419 issued February 6, 2001; Reg. No. 2,243,565 issued May 4, 1999; Reg. No. 2,336,279 issued March 28, 2000).
Respondent’s <limited-too-clothing.com> domain name, which was registered on January 24, 2006, resolves to a competing website displaying Complainant’s LIMITED TOO mark and links such as “Young Girls Clothing,” “Preteen Girls Clothing” and “Jewelry for Girls.” Respondent’s website also displays text describing all of the different types of girls’ clothing it offers and invites consumers to click on various links to see images of this clothing.
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The panel in Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) stated, “Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.” In addition, the panel in Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) also found that registration of a mark with the USPTO established a complainant’s rights in a mark for purposes of Policy ¶ 4(a)(i). Consequently, the Panel finds Complainant’s numerous trademark registrations for the LIMITED TOO mark to sufficiently establish its rights in the mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <limited-too-clothing.com> domain
name incorporates Complainant’s federally registered mark in its entirety and
merely separates the terms of the mark by a hyphen, appends another hyphen
after “too” and adds the word “clothing,” a descriptive term for Complainant’s
products. In Eastman Chemical Co. v.
Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005), the respondent registered
the <eastman-chemical.com> domain name and the panel concluded that the
“addition of a term descriptive of Complainant’s business, the addition of a
hyphen, and the addition of the gTLD “.com” are insufficient to distinguish
Respondent’s domain name from Complainant’s mark.” In this case, then, Respondent’s alterations to Complainant’s
LIMITED TOO mark in the domain name render the <limited-too-clothing.com>
domain name confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Google Inc. v. Xtraplus Corp., D2001-0125
(WIPO Apr. 16, 2001) (finding that the respondent’s domain names were
confusingly similar to Complainant’s GOOGLE mark where the respondent merely
added common terms such as “buy” or “gear” to the end); see also Health
Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003)
(“[T]he addition of punctuation marks such as hyphens is irrelevant in the
determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).
The Panel finds that Complainant has satisfied this element of the Policy.
Complainant alleges that Respondent lacks rights and
legitimate interests in the <limited-too-clothing.com> domain
name. Complainant must first make a prima
facie case in support of its allegations.
The burden then shifts to Respondent to show it does have rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii). See Clerical Med.
Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000)
(finding that, under certain circumstances, the mere assertion by the
complainant that the respondent has no right or legitimate interest is
sufficient to shift the burden of proof to the respondent to demonstrate that
such a right or legitimate interest does exist); see also Hanna-Barbera Productions, Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <limited-too-clothing.com>
domain name. See Branco do Brasil
S.A. v. Sync Tech., D2000-0727 (WIPO Sept. 1, 2000) (“By its default,
Respondent has not contested the allegation . . . that the Respondent lacks any
rights or legitimate interests in the domain name. The Panel thus assumes that there was no other reason for the
Respondent having registered <bancodobrasil.com> but the presumably known
existence of the Complainant’s mark BANCO DO BRASIL”); see also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond).
However, the Panel will now examine the record
to determine if Respondent has rights or legitimate interests under Policy ¶
4(c).
Respondent has registered the domain name under the name “Chris Bown,” and there is nothing in the record to suggest that Respondent is commonly known by the <limited-too-clothing.com> domain name. Thus, Respondent has not established rights or legitimate interests in the <limited-too-clothing.com> domain name pursuant to Policy ¶ 4(c)(ii). The Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Respondent has chosen a domain name confusingly similar to
Complainant’s LIMITED TOO mark and is using it to operate a competing girls’
clothing website. Respondent’s website
contains various links to providers of girls clothing, and the Panel therefore
infers that Respondent is generating click-through fees for each Internet user
it diverts to other websites. As a
result, Respondent is not using the <limited-too-clothing.com>
domain name in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services.”); 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)).
The Panel finds that Complainant has satisfied this element of the Policy.
Respondent has registered and is using the <limited-too-clothing.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because the disputed
domain name resolves to a competing girls’ clothing website that also provides
links to other competing websites.
Respondent likely receives click-through fees for each consumer it
redirects to third-party websites.
Therefore, Respondent is taking advantage of the confusing similarity
between Respondent’s domain name, the website content, and Complainant’s LIMITED
TOO mark, and capitalizing on the goodwill associated with the mark. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb.
Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and
registration by using domain names that were identical or confusingly similar
to the complainant’s mark to redirect users to a website that offered services
similar to those offered by the complainant); see also Nokia
Corp. v. Private, D2000-1271
(WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(iv) where the domain name resolved to a website that offered similar
products as those sold under the complainant’s famous mark).
Furthermore, Respondent
has registered and is using the disputed domain name for the primary purpose of
disrupting the business of Complainant, because Respondent is using the <limited-too-clothing.com>
domain name to sell girls’ clothing and accessories in direct competition with
Complainant. Therefore, Respondent has
registered and is using the domain name in bad faith pursuant to Policy ¶
4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
(finding that the respondent registered the domain name in question to disrupt
the business of the complainant, a competitor of the respondent); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”).
The Panel finds that Complainant has satisfied this element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <limited-too-clothing.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R, Atkinson, Jr., Panelist
Dated: October 4, 2006
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