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Generic Top Level Domain Name (gTLD) Decisions |
Phat Fashions, LLC v. Christopher McBrown
Claim Number: FA0204000110866
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, Fort Worth, TX (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <2phatapparel.com>, registered
with Verisign - Network Solutions, 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.
Hon. Charles A. Kuechenmeister (Ret.) is
the Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (“the Forum”) electronically on April 25, 2002; the
Forum received
a hard copy of the Complaint on April 25, 2002.
On May 1, 2002, Verisign - Network
Solutions, Inc. confirmed by e-mail to the Forum that the domain name <2phatapparel.com> is registered
with Verisign - Network Solutions, Inc. and that the Respondent is the current
registrant of the name. Verisign -
Network Solutions, Inc. has verified that Respondent is bound by the Verisign -
Network Solutions, 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 May 1, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting
a deadline of May 21, 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@2phatapparel.com by e-mail.
A timely Response was received and
determined to be complete on May 20, 2002.
On May 24, 2002, Complainant timely filed
an additional submittal.
On June 11, 2002,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Charles A. Kuechenmeister (Ret.)
as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of numerous
trademark registrations for the mark PHAT and variations thereof, including
U.S. Trademark No.
2,372,748 for PHAT, which represents a first use as of
December 31, 1992, covering wearing apparel.
Registration of this mark was issued August 1, 2000.
Complainant has invested substantial
time, effort and money developing its trademarks and goodwill associated
therewith.
In November of 1999, Respondent attempted
to register the mark 2PHAT PRAISING HIM AT ALL TIMES with the U.S. Patent and
Trademark
Office (USPTO). Complainant
entered that proceeding as an opposer, giving Respondent actual knowledge of
its use of the mark PHAT and its opposition
to any other person, including
Respondent, using that mark.
Respondent's application was published for opposition on January 30,
2001. Complainant's opposition papers
were filed on February 20, 2001.
Respondent registered <2phatapparel.com> on or about
January 26, 2001.
The domain <2phatapparel.com> is identical to or confusingly similar
with Complainant's PHAT trademark.
Respondent has no right or legitimate
interest with respect to <2phatapparel.com>. Respondent is not licensed or authorized by
Complainant to use the PHAT mark or any variation thereof, and Respondent is
not known
by the name PHAT or any variation thereof.
Respondent uses the mark PHAT to market
its own wearing apparel products, thus competing directly with Complainant
using Complainant's
mark PHAT.
Respondent maintains his registration of and is using <2phatapparel.com> in connection
with and as a part of its efforts to compete with Complainant.
Respondent is using <2phatapparel.com> with the intent to secure commercial gain
and to divert Complainant's customers to a competing website.
B. Respondent
Respondent, doing business as 2Phat
Apparel Co., also known as 2Phat Praising Him At All Times, commenced business
operations in November
1998. The
assumed name for both 2PHAT and PRAISING HIM AT ALL TIMES was filed in Texas in
November 1998.
As used by Complainant, PHAT is a
mainstream slang word used in and synonymous with the hip-hop culture. It stands for "pretty hot and
tempting" and means sexy or cool.
Respondent uses PHAT as an abbreviation
for "praising him at all times" with the "2" denoting
giving God double
praise. The drawings
used by these parties in connection with their respective marketing efforts are
dramatically different. For example,
the drawing displayed with Respondent's use of PHAT shows a pair of praying
hands surrounded with the words "praising
him at all times." Because of this it is very unlikely that
there will be any confusion between the Complainant's use of PHAT and that of
Respondent.
In addition to Respondent, many other
people have registered trademarks using the mark PHAT.
Further, there are many domain names
registered by persons other than the Complainant, which represent clothing or
apparel and contain
the mark PHAT. The
Response lists examples in each of these categories.
C. Additional Submission by Complainant.
Respondent's bad faith is further
demonstrated by its registration of other infringing "PHAT" domain
names, including <2phatfashions.com>,
the day after Complainant served
Respondent with a copy of the Complaint in these proceedings.
Complainant's Federal Trademark
registrations give it the exclusive rights to use the mark PHAT, regardless of
whether "phat"
is used in the vernacular. Complainant has federally recognized rights in the mark PHAT.
FINDINGS AND DISCUSSION
Paragraph 15(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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.
Identical or Confusingly
Similar Policy ¶ 4(a)(i).
Complainant is the owner of numerous
trademark registrations with the U.S. Patent and Trademark Office for the PHAT
(Reg. No. 2,372,748),
BABY PHAT (2,240,881) and PHAT FARM (2,429,559) marks,
among others. Complainant commenced business operations in the clothing and
apparel business in 1992 and has expanded its undertaking worldwide pursuing
numerous international trademark registrations. Based
on the extensive
foregoing registrations, its rights to the PHAT mark are well-established.
Respondent's reference to the use, and
indeed registration of PHAT and variations of it by others, and his assertion
that Complainant
does not have exclusive rights to PHAT are misplaced. Policy paragraph 4(a)(i) does not require
that a Complainant have exclusive rights to the name, only that it have some
rights. Complainant's U.S. trademark
registrations confer upon it sufficient rights to PHAT for the purposes of this
proceeding.
Respondent’s <2phatapparel.com> domain name is confusingly similar in
sound, appearance, meaning and overall commercial impression to Complainant’s
PHAT mark. The addition of a number to
the mark fails to detract from the overall influence of PHAT in the domain name
and will lead to confusion
among Internet users. See 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 Omnitel Pronto Italia S.P.A. v.
Carlo Dalla Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the
contested <omnitel2000.com> domain name is confusingly similar to the
OMNITEL
trademark).
Likewise, the addition of an
industry-specific word, such as “apparel,” implies an obvious relationship to
Complainant’s retail business,
thereby confusing users searching for its
website. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the Respondent’s domain name combines the Complainant’s
mark
with a generic term that has an obvious relationship to the Complainant’s
business); see also Marriott Int’l v. Café au lait, FA
93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain
name <marriott-hotel.com> is confusingly similar
to Complainant’s
MARRIOTT mark); see also Slep-Tone Entm't
Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar.
13, 2000) (stating that “likelihood of confusion is further increased by the
fact that the Respondent
and [Complainant] operate within the same industry”).
Respondent's assertion that no confusion
will result because of the dramatically different associations and cultural
contexts in which
the parties use PHAT, i.e.,
secular/hip-hop vs. religious, is
also misplaced. Confusion will exist in
the mind of an Internet user seeking wearing apparel associated with the PHAT
mark regardless of the different
cultural associations intended subjectively by
the parties in connection with their use of that mark.
Based upon the foregoing, the Panel finds
and determines that <2phatapparel.com>
is identical or confusingly similar to the mark PHAT, in which Complainant
has rights.
Rights
or Legitimate Interests Policy ¶ 4(a)(ii).
Respondent asserts that his business
venture making a bona fide offering of goods or services using a variation of
PHAT as early as
November 1998 confers upon him a right or legitimate interest
in respect of <2phatapparel.com> pursuant
to Policy ¶4(c)(i). Respondent's proof
in this regard, however, consists only of an unsupported allegation that he
"commenced business operations"
under the name "2PHAT Apparel
Co.," a/k/a "Praising Him at all Times," in November 1998 and
that he registered
both as assumed names in the State of Texas at that same
time. Had he registered that name in
Texas and had he been using the 2PHAT name in connection with a bona fide
offering of goods and services
there would be ample corroborating evidence of
it. No such evidence was tendered.
Although Complainant has the ultimate burden
of persuasion on all elements of the case, it is incumbent upon Respondent to
offer at
least some evidence of right or legitimate interest in respect of the
domain name if any he has. See AT&T Corp. v. Domains by Brian Evans,
D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests
where Respondent alleged that it intended to use the
domain name
<attweb.com> for a company called “At the Web” but failed to provide any
evidence as to the existence of the company).
On the evidence presented, the Panel is satisfied that the Respondent
has no right or legitimate interest in respect of <2phatapparel.com>.
Having determined this element of the
case upon evidentiary grounds, the Panel does not address Complainant's
contention that constructive
notice of Complainant's USPTO application for a
tradename including PHAT before November 1998 precludes Respondent as a matter
of
law from being able to have made a bona fide offering of goods and services
under another variation of PHAT at that time.
Registration and Use in
Bad Faith
Policy ¶ 4(a)(iii).
Respondent’s registration and use of <2phatapparel.com> creates the
impression that Respondent’s website is related to Complainant’s PHAT
mark. The addition of an
industry-specific word, such as “apparel,” creates a false association in the
minds of Internet users. This
demonstrates bad faith use and registration under Policy ¶4(b)(iv). Respondent had constructive knowledge of
Complainant’s PHAT mark covering wearing apparel when it registered <2phatapparel.com> in January
2001, and he has had actual knowledge of it since the very next month, when
Complainant filed an opposition statement
to his application to register 2PHAT
PRAISING HIM AT ALL TIMES. He
nevertheless initiated and has continued his registration and use of <2phatapparel.com> to promote the
sale of his wearing apparel products. See Net2phone Inc. v. Netcall SAGL,
D2000-0666 (WIPO Sept. 26, 2000) (finding constructive notice as a result of
Complainant’s widespread promotional efforts, coupled
with diversion from
Complainant’s site to Respondents for competing commercial gain, is sufficient
evidence of bad faith registration
and use).
Respondent is intentionally attempting to attract Complainant’s
customers by creating a likelihood of confusion with Complainant’s
mark. See TM
Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001)
(finding bad faith where Respondent used the domain name, for commercial gain,
to intentionally
attract users to a direct competitor of Complainant); see also Busy Body, Inc. v. Fitness Outlet,
Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent
attempted to attract customers to its website, <efitnesswholesale.com>,
and created confusion by offering similar products for sale as Complainant).
In its Additional Submission Complainant
points out that the day after Respondent was served with the Complaint in this
matter, Respondent
registered other infringing “phat” domain names, including
<2phatfashions.com>. Respondent
has thus demonstrated a bad faith pattern of registering the PHAT mark at
issue, continually infringing on Complainant's
PHAT mark. In addition to underscoring its use of <2phatapparel.com> to attract
users to its website, this conduct also evidences bad faith registration and
use under Policy ¶4(b)(ii) in that Respondent
appears to be attempting to
prevent Complainant from registering domain names reflecting its PHAT
mark. See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb.
Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶4(b)(ii) by
registering multiple domain names
that infringe upon others’ famous and
registered trademarks); see also
Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple
domain names in a short time frame indicates an intention to prevent the mark
holder from using its mark and provides evidence
of a pattern of conduct).
Based upon the foregoing, the Panel finds
and determines that the Respondent registered and is using <2phatapparel.com> in bad faith.
DECISION
Based upon the foregoing Findings and
Discussion, the relief sought in the Complaint as to <2phatapparel.com> is granted. The domain-name <2phatapparel.com> is ordered transferred to
Complainant.
Honorable Charles A. Kuechenmeister
(Ret.)
Dated:
June 21, 2002
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