DECISION

Phat Fashions, LLC v. Christopher McBrown

Claim Number: FA0208000118269

PARTIES

Complainant is Phat Fashions, LLC, New York, NY (“Complainant”) represented by Brad D. Rose, of Pryor Cashman Sherman & Flynn, LLP.  Respondent is Christopher McBrown, Ft. Worth, TX (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <2phatfashions.com>, registered with Veri Sign, Inc.

PANEL

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

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 14, 2002; the Forum received a hard copy of the Complaint on August 13, 2002.

On August 19, 2002, Veri Sign, Inc. confirmed by e-mail to the Forum that the domain name <2phatfashions.com> is registered with Veri Sign, Inc. and that Respondent is the current registrant of the name.  Veri Sign, Inc. has verified that Respondent is bound by the Veri Sign, 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 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 11, 2002 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@2phatfashions.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  October 3, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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 makes the following assertions:

1. Respondent’s <2phatfashions.com> domain name is confusingly similar to Complainant’s PHAT family of marks.

2. Respondent does not have any rights or legitimate interests in the <2phatfashions.com> domain name.

3. Respondent registered and used the <2phatfashions.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is the owner of numerous trademarks and service marks registered with the U.S. Patent and Trademark Office (“USPTO”) that incorporate its PHAT mark, including, inter alia: PHAT (Reg. No. 2,372,748; August 1, 2000); BABY PHAT (Reg. No. 2,240,881; April 20, 1999); PHAT FARM (Reg. No. 1,809,325; December 7, 1993); and, PHAT THREADS (Reg. No. 1,819,997; February 8, 1994). Complainant’s first use of the PHAT marks is listed with the USPTO as December 31, 1992.

Complainant holds numerous worldwide registrations for its PHAT family of marks, including registrations in Argentina, the Benelux countries, Canada, Chile, China, and Italy, among others.

Since Complainant’s inception nearly a decade ago, its commercial success has increased rapidly. Complainant’s product sales amounted to $200 million dollars in 2000 and over $322 million dollars in 2001. Over $3.7 million dollars each year is expended on advertising and promoting Complainant’s trade name and PHAT family of marks. Complainant operates its business from numerous domain names, including: <phatfashions.com>, <phatfashions.net>, <phatfashions.org>, <phatfarm.com>, <phatfarm.net> and <babyphat.com>, among others.

Complainant has achieved a prominent position in the fashion industry, attributable to the significant amount of time, effort and money expended in promoting and marketing its clothing products under the PHAT family of marks.

Respondent registered the <2phatfashions.com> domain name on April 26, 2002. Complainant’s Submission states that Respondent had motivations to enter the clothing industry prior to registering the subject domain name when Respondent applied to register a mark encompassing the term “2Phat” with the USPTO. Complainant opposed the registration of Respondent’s term because Respondent was seeking to utilize it in the same industry as Complainant uses its PHAT family of marks. Complainant prevailed in its opposition, which resulted in Respondent’s application being deemed abandoned by the Trademark Office.

Complainant’s investigation of Respondent’s use of the domain name indicates that, subsequent to Respondent’s trademark being abandoned, Respondent registered a <2phatapparel.com> domain name and began to sell clothing. The day after Respondent was served with Complainant’s UDRP action in the <2phatapparel.com> dispute (FA110866), Respondent registered the <2phatfashions.com> domain name at issue in the current dispute. 

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; 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.

Identical and/or Confusingly Similar

Complainant has established rights in the PHAT family of marks by successfully registering its PHAT marks, and variations thereof, with worldwide authorized trademark authorities, including the USPTO. Complainant has also continually used its PHAT family of marks since 1992 regarding its fashion design and supply business.

Respondent’s <2phatfashions.com> domain name is confusingly similar to Complainant’s PHAT family of marks. Respondent’s domain name uses the random number “2” as a prefix to Complainant’s PHAT mark, and incorporates the industry-related word “fashions” to the second-level domain. The word “fashions” has obvious significance in Complainant’s clothing business, which is illustrated by the fact that Complainant operates from numerous domain names that include the word as part of the second-level domain (e.g., <phatfashions.com> and <phatfashions.net>). Previous Panels have determined that the random addition of numbers to a famous mark fails to detract from the overall dominating presence of the mark in the domain name. Furthermore, the addition of an industry-related word fails to create a distinct and separate domain name capable of overcoming a Policy ¶ 4(a)(i) “confusingly similar” analysis. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0023 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

The Panel has determined that Complainant’s Submission constitutes a prima facie case. Because Complainant’s allegations and evidence are uncontested, the Panel may accept all of Complainant’s reasonable assertions and inferences as true. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); 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”).

Furthermore, Respondent did not submit a Response in this proceeding, thereby failing to propose any set of circumstances or facts that would corroborate its alleged rights or legitimate interests in the <2phatfashions.com> domain name under Policy ¶ 4(a)(iii). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Complainant has submitted reasonable and uncontested evidence that indicates Respondent is engaged in distributing and selling clothes from its infringing domain name. From the facts surrounding the present dispute, it is evident that Respondent is attempting to profit from a perceived affiliation with Complainant and its famous mark. Respondent’s diversionary use of the domain name, and Respondent’s attempt to commercially benefit from the Internet users who are misled by the <2phatfashions.com> domain name, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i). Additionally, because Respondent presumably profits from the sale of its line of “2Phat” clothing, Respondent is not making a legitimate noncommercial or fair use of the <2phatfashions.com> domain name pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website).

Because of the fame associated with Complainant’s PHAT family of marks, the background of the present dispute and the evidence before the Panel, it is presumed that Respondent is not commonly known by the <2phatfashions.com> domain name pursuant to Policy ¶ 4(c)(ii). As stated, Complainant’s Submission indicates that the USPTO rejected Respondent’s attempt to establish legitimate rights in the “2Phat” phrase, thereby further supporting a finding that Respondent does not have rights or legitimate interests in the subject domain name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Although Policy paragraph 4(b) provides various circumstances that establish both bad faith registration and use, the list is non-exhaustive. Panels are permitted to scrutinize the “totality of circumstances” in determining whether Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).

Circumstances indicate that Respondent had knowledge of Complainant’s PHAT mark prior to seeking registration of the infringing domain name. As stated, Respondent was familiar with Complainant’s rights in the PHAT family of marks because Complainant contested Respondent’s attempted registration of the “2Phat” phrase at a USPTO hearing. Additionally, Complainant had previously filed a UDRP action against Respondent in an attempt to prevent a similar infringing use of the <2phatapparel.com> domain name. Lastly, Complainant’s PHAT family of marks enjoy the trademark protection afforded by the USPTO’s Principal Register, which confers constructive notice on all those wishing to make an infringing use out of the mark, or any confusingly similar variation thereof. Respondent’s registration of a domain name, despite preexisting knowledge of Complainant’s rights, evidences bad faith registration under Policy ¶ 4(a)(iii). See Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also Paws, Inc. v. Odie, FA 96206 (Nat. Arb. Forum Jan. 8, 2001) ("Given the uniqueness and the extreme international popularity of the [ODIE] mark, the Respondent knew or should have known that registering the domain name in question would infringe upon the Complainant's goodwill").

Respondent’s bad faith use of the <2phatfashions.com> domain name is illustrated by its opportunistic and diversionary use of the domain name. It is evident that Respondent is attempting to ensnare unsuspecting Internet users who falsely believe some affiliation or sponsorship exists between Complainant’s mark and Respondent’s clothes. Because of the fame associated with Complainant’s PHAT family of marks and Respondent’s use of a confusingly similar domain name to offer identical goods, Respondent’s use of the domain name constitutes opportunistic bad faith under Policy ¶ 4(b)(iv). See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the website without permission).

Therefore, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <2phatfashions.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated: October 10, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/1430.html