Phat Fashions LLC v. Kevin Kruger
Claim Number: FA0012000096193
The Complainant is Phat Fashions, LLC, New York, NY, USA ("Complainant") represented by Brad Rose, Pryor, Cashman, Sherman & Flynn LLP. The Respondent is Kevin Kruger, Philadelphia, PA, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "phattpharm.com" registered with Register.com.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.
Judge Irving H. Perluss (Retired) is the Panelist.
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on November 29, 2000; The Forum received a hard copy of the Complaint on November 29, 2000.
On December 6, 2000, Register.com confirmed by e-mail to The Forum that the domain name "phattpharm.com" is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.
On December 6, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 26, 2000 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 Respondentís registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
On December 15, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
1. The domain name in issue is phonetically identical and confusingly similar to Complainantís registered marks. These marks were registered with the United States Patent and Trademark Office in 1993 and 1994. the marks are also registered in numerous foreign countries. By virtue of these registrations and the extensive use of the marks, the marks are entitled to the higher protection of famous and distinctive marks.
2. The domain name in issue improperly suggests sponsorship affiliation or association with Complainant.
3. Respondent has no rights or legitimate interests in the domain name in issue.
4. Respondent had or should have had constructive notice of Complainantís famous and distinctive marks, and, accordingly, the registration and nominal use of the domain name in issue was in bad faith.
1. Respondent does not contest the charges made by Complainant, except that he denies having acted in bad faith.
1. Complainantís marks are famous and distinctive and are entitled to the higher protection afforded them by law. The domain name in issue is identical and confusingly similar to Complainantís world-famous and distinctive marks.
2. Respondent reasonably should have been aware of Complainantís famous and distinctive marks when he registered the domain name in issue on March 5, 2000.
3. In essence, Respondent has defaulted and agrees to the transfer of the domain name in issue.
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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.
This is so even though the Respondent has defaulted. Complainant has demonstrated a prima facie case here, as will be seen.
Identical and/or Confusingly Similar
1. Respondent has conceded this issue, and it has been so found that phonetically the domain name in issue is identical and confusingly similar to Complainantís marks.
Rights or Legitimate Interests
Because Complainantís marks were registered with the United States Patent and Trademark Office years before Respondent acquired the domain name in issue, Respondent would have rights and a legitimate interest in the domain name only if its registration and use of the domain name was not in bad faith.
It is of interest to note that the recently enacted Anticybersquatting Consumer Protection Act ("ACPA") [15 U.S.C. 1125(d)] protects owners of a famous and distinctive mark (as here) from a person who registers or uses a domain name that is confusingly similar to the mark or dilutive of the mark, if such person has a bad faith intent.
As will be seen hereafter, the Panelist necessarily has determined that such bad faith is present here.
Registration and Use in Bad Faith
Section 4b of the Policy sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith. Subparagraph (iv) of Section 4b provides:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The words "source, sponsorship, affiliation, or endorsement" are particularly apt here. Inevitably, the Panelist believes that consumers would conclude that the domain name in issue was endorsed and sponsored by Complainant.
In addition, to the demonstration of bad faith by the application of ACPA, and subparagraph (iv) of Section 4b of the Policy, there is a legal presumption of bad faith, when, Respondent should have been aware of Complainantís famous and distinctive trademark. This is "constructive bad faith," and it does not mean that Respondent is a bad person.
In Interstellar Starship Services, Ltd. v. Epix, Inc. (CA 9th 1999) 184 F.3d 1107, 1111, it was said:
"However, ISS became aware of the ëEPIXí trademark when it applied for its own registration of ëEPIX.í Adopting a designation with knowledge of its trademark status permits a presumption of intent to deceive. See Brookfield, 174 F.3d at 1059 (citing Official Airline Guides, Inc. v. Goss, 6 F.3d 1385 (9th Cir. 1993)). In turn, intent to deceive is strong evidence of a likelihood of confusion. Sleekcraft, 559 F.2d at 354."
Finally, it may be argued that Respondent has not used the domain name in issue in bad faith, even though it was so registered.
The Panelist heretofore has determined that Respondent has no rights or legitimate interest in the domain name, and that it has registered the name in bad faith. It makes no sense whatever to wait until it actually "uses" the name, when inevitably, when there is such use, it will create the confusion described in the Policy.
Under similar circumstances, a preliminary, mandatory injunction was granted by a federal court requiring the transfer of a domain name even though a website had not yet been opened. (Green Products Co. v. Independence By-Products Co. (N.D. Iowa 1997) 992 F.Supp. 1070.) The threatened harm is "use."
The Panelist, thus, has determined that there is bad faith use by Respondent even though his website is not as yet fully activated. In any event, there has been nominal use.
Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided that the domain name "phatpharm.com" registered by Respondent Kevin Kruger shall be, and the same is, transfer to Complainant Phat Fashions, LLC.
JUDGE IRVING H. PERLUSS (Retired)
Dated: December 29, 2000
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