Generic Top Level Domain Name (gTLD) Decisions

DECISION

G&K Services, Inc. v. Jacky Ho

Claim Number: FA0212000137096

PARTIES

Complainant is G&K Services, Inc., Minnetonka, MN (“Complainant”) represented by Richard A. Kempf, of Maslon Edelman Borman & Brand.  Respondent is Jacky Ho, Wanchai, HONG KONG (“Respondent”) represented by Chan & Kong, Solicitors.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <gkfashion.com>, registered with Register.com, Inc.

PANEL

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

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 16, 2002; the Forum received a hard copy of the Complaint on December 16, 2002.

On December 16, 2002, Register.com, Inc. confirmed by e-mail to the Forum that the domain name <gkfashion.com> is registered with Register.com, Inc. and that the Respondent is the current registrant of the name.  Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 December 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 9, 2003 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@gkfashion.com by e-mail.

A timely Response was received and determined to be complete on January 9, 2003.

On January 15, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the domain name at issue is confusingly similar to Complainant’s trademarks; that Respondent has no rights or legitimate interest with respect to the domain name at issue; and that Respondent is using the domain name at issue in bad faith.

B. Respondent

The Respondent contends that the domain name at issue is not identical or confusingly similar to Complainant’s trademark; that the Respondent should be considered as having rights in the domain name at issue; and that the domain name at issue should not be considered as having been registered and used in bad faith.

FINDINGS

The Complainant is engaged in the business of uniform rental services with on-site garment control services, direct sale and custom-logo apparel, cleanroom garments and process control services for high technology companies, and dust control products and

servcies.

The Complainant holds 8 trademarks containing "GK" or G&K" in connection with the goods and services it provides.  The "G&K" mark was first registered in 1984, and the "GK" mark was first registered in 1993.

The Respondent is an employee of a company now known as G.K. Corporate Fashion.  It appears from the evidence presented that this company began in 1989 under the name of Great Kingdom, which was changed to Great Kingdom Uniform Manufacturing Company in 1991.  Through the years, the company has acquired other entities and restructured, and said company is now known as G.K. Corporate Fashion Limited, and is engaged in the business of manufacturing uniforms for government and business.

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 and/or Confusingly Similar

The domain name at issue is confusingly similar to Complainant’s trademarks, as merely adding the term "fashions" to the mark does not make the domain name unique.  See 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).

In addition, a reasonable person attempting to access Complainant’s website could become confused as to the source or sponsorship of the domain name at issue, as both Complainant and Respondent conduct business within the same industry.

Rights or Legitimate Interests

The domain name at issue was registered on June 15, 2001, just a month after the Respondent’s employer changed its name from Fullgreat Limited to G.K. Corporate Fashion Limited.  The name GK Fashions does not appear to have been registered with any authorities or governmental bodies.  The domain name registration does not contain any information regarding the entity known as GK Fashions, and was made in the personal name of the Respondent.  In addition, the website appears to be a shell, as when one of the product categories on the home page is accessed each page states "This Section Under Construction."  It would appear that the Respondent is not using the website in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use.  See Sears, Roebuck and Co. v. Hanna Law Office, D2000-0669 (WIPO Sept. 8, 2000) (finding that the Respondent has no rights in the domain name because (1) the Respondent did not use the domain name in connection with a bona fide offering of goods and services, (2) the Respondent was not commonly known by the mark, and (3) the Respondent was not using the domain name in connection with a noncommercial purpose).

Registration and Use in Bad Faith

As both Complainant and Respondent are engaged in the same type of business, a review of the evidence presented suggests that Respondent registered the domain name at issue to attract, for commercial gain, Internet users to its website by creating a likelihood as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.  See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

DECISION

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted.   Accordingly, for all of the foregoing reasons, it is ordered that the domain name <gkfashion.com> be transferred from the Respondent to the Complainant.

Honorable Paul A. Dorf (Ret.) Panelist
Dated:  February 5, 2003

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