Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Phat Fashions, LLC, New York, NY, USA ("Complainant") represented by Brad Rose, of Pryor, Cashman, Sherman & Flynn LLP. The Respondent is DADDYS, Hamburg, DE, Germany ("Respondent").

The domain name at issue is "phatfarmclub.com" registered with Network Solutions.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Hon. James A. Carmody, as 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 7, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name "phatfarmclub.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 December 7, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting an orginal deadline of December 27, 2000, as well as an extension deadline of January 8, 2001 granted on December 20, 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 Respondent’s registration as technical, administrative and billing contacts, and to postmaster@phatfarmclub.com by e-mail.

Having received no timely 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 January 15, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody 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 the Respondent.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant contends Respondent’s domain name, phatfarmclub.com, is identical or confusingly similar to its registered mark, PHAT FARM. In addition, Respondent’s domain name facially and falsely suggests some sponsorship by, or affiliation with Complainant’s famous mark.

Moreover, Respondent has no rights or legitimate interests in the domain name at issue. And finally, Respondent has acted in bad faith because: 1) Respondent is a competitor of Complainant and therefore was aware of Complainant’s famous mark prior to registration via actual if not constructive notice; 2) Respondent has passively held the domain name at issue; and 3) Respondent has demonstrated a pattern of abuse registration by continuing to register various domain names, which remain unused, relating to clothing merchandising and sales.

B. Respondent

Respondent requested a deadline extension in relation to this matter due to its inability to find legal council. Accordingly, a twelve-day extension was granted, however, Respondent failed to submit a response in compliance with the adjusted deadline.

Complainant, Phat Fashions, LLC, is the proprietor of several highly successful brands of designer fashion wear, including "Phat Farm," and has been in business since 1992. 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, DADDYS, is a competitor of Phat Fashions. To date, Respondent has been unresponsive to Complainant’s request to transfer the domain name at issue.

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 timely 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 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.

Under the UDRP, Complainant must demonstrate that it has rights in a mark, and that the domain name at issue is identical or confusingly similar to that mark.

Accordingly, Complainant’s rights are evidence by its registered mark, PHAT FARM. Also, the Respondent’s domain name is confusingly similar to the Complainant’s famous mark. Policy ¶ 4(a)(i). The Panel finds that the only difference between the Complainant’s mark and the domain name at issue is the addition of a generic term. See General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term "direct" on to the Complainant’s marks (GE CAPTIAL and GECAL) does not alter the underlying mark held by the Complainant, and thus the Respondent’s domain names are confusingly similar).

Finally, Respondent’s domain name is found to be confusingly similar because a reasonable Internet user would assume the domain name is somehow related to the Complainant’s well-established mark. See Treeforms, Inc. v. Cayne Ind. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

Therefore, the panel finds Complainant has shown the Respondent’s domain name is confusingly similar to its mark.

Respondent is not commonly known by the domain name at issue, nor is Respondent using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Policy ¶ 4(c)(i)-(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Also, Respondent has asserted no rights or legitimate interests in the domain name at issue. Consequently, Respondent’s failure to show evidence sufficient to refute Complainant’s contentions, entitles the Panel to conclude that Respondent has no such rights or legitimate interests in regard to the domain name in question. See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names and no use of the domain names has been proved).

The Panel finds that Respondent has no rights to or legitimate interests in the domain name at issue.

Respondent was aware of Complainant’s famous mark prior to registering the domain name at issue. See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).

In addition, Complainant has demonstrated a pattern of conduct sufficient to support Complainant’s bad faith assertion. See Encyclopaedia Britannica Inc. v Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others).

And Finally, Respondent has not used the domain name since its registration, which also establishes Respondent’s bad faith. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose).

The Panel finds the Respondent has acted in bad faith.

Having established all three elements required under the ICANN Policy, the Panel concludes that relief in the form of a transfer of the domain name shall be and is hereby granted.

Accordingly, it is Ordered that the domain name phatfarmclub.com be transferred from Respondent to Complainant.