DECISION

Phat Fashions, LLC v. Phat Phasions, Inc.

Claim Number: FA0105000097130

PARTIES

Complainant is Phat Fashions, LLC, New York, NY, USA (“Complainant”) represented by Brad D. Rose, of Pryor Cashman Sherman & Flynn, LLP.  Respondent is Phat Phasions, Inc., Fort Meade, MD, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <phatphasions.com> registered with Network Solutions, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 2, 2001; the Forum received a hard copy of the Complaint on May 1, 2001.

On May 3, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <phatphasions.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 May 9, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 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@phatphasions.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.

On June 5, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

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 maintains that the <phatphasions.com> domain name is confusingly similar to Complainant’s federally registered trademark; that Respondent has no rights or legitimate interests in the <phatphasions.com> domain name; and that Respondent registered and used the <phatphasions.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 and an unauthorized retailer of Complainant’s products, registered the domain name <phatphasions.com> on August 10, 2000.  Sometime thereafter, Respondent began to offer Complainant’s goods as well as other brands for sale in connection with the domain name in 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(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.

Identical to and/or Confusingly Similar

Complainant has established rights in the PHAT mark that is contained in its entirety in the domain name registered by Respondent.  The domain name, <phatphasions.com> is identical in sound and is overall confusingly similar to Complainant’s PHAT family of marks.  See YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to the Complainant’s YAHOO mark).

Therefore, the Panel finds that Complainant has met the requirements set out in Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant has established that it is known by the PHAT mark that is contained in its entirety in the domain name registered by Respondent.  The proof before the Panel permits the inference that Respondent is not commonly known by the domain name and that Respondent has not used the domain name in connection with a legitimate noncommercial or fair use without intent for commercial gain.  Respondent’s use of the domain name seeks to compete with Complainant in the same commercial area using Complainant’s own products without permission.  These facts permit the finding that the domain name is being used in a manner that is purposefully confusingly similar to Complainant’s mark.  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 Complainant’s mark.  Respondent’s use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Therefore, the Panel finds that Complainant has met its burden relative to the requirements of 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 intentionally attempted to attract, for commercial gain, Internet users to a website that contains in its entirety Complainant’s PHAT mark and by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or products and services on the website, Respondent has also acted in bad faith.  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 <phatphasions.com> be transferred from Respondent to Complainant.

Honorable Carolyn Marks Johnson (Ret), Panelist

Dated: June 19, 2001.

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