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Rockwool International A/S v. Ismail Tokoglu [2005] GENDND 355 (27 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fruit of the Loom, Inc. v. Desmond Ferros

Case No. D2004-1074

1. The Parties

The Complainant is Fruit of the Loom, Inc., located at Bowling Green, Kentucky, United States of America, represented by Clifford Chance LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Desmond Ferros, Edgware, Middlesex, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <fruit-of-the-loom.com> is registered with CSL Computer Service Langenbach GmBH d/b/a Joker.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2004. On December 20, 2004, the Center transmitted by email to CSL Computer Service Langenbach GmBH d/b/a Joker.com a request for registrar verification in connection with the domain name at issue. On December 22, 2004, CSL Computer Service Langenbach GmBH d/b/a Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Registrar further stated that the disputed domain name will remain under Registrar Lock throughout the proceeding. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 29, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2005.

The Center appointed Richard Tan as the Sole Panelist in this matter on January 26, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant avers that its FRUIT OF THE LOOM range of products has been sold in the United Kingdom and elsewhere for many years. The Complainant is the proprietor of numerous United Kingdom and Community Trademark registrations for its “FRUIT”, “FRUIT BRAND” and “FRUIT OF THE LOOM” trademarks and “FRUIT” devices consisting of representations of bunches of fruit and avers that, at all material times, the Complainant’s merchandise has carried the well-known “FRUIT OF THE LOOM” mark and its highly distinctive “FRUIT” devices.

The Complainant also claims to have advertised and promoted its products on a very substantial scale in particular on the Internet via websites using domain names incorporating “FRUIT OF THE LOOM”, such as ““www.fruitoftheloom.com” which has links to its United States of America websites, “www.fruit.com” and “www.fruitactivewear.com” which has links to all Fruit of the Loom international sites and its European website, “ww.fruitoftheloom.be””.

As a result of its activities, the Complainant avers that it has established a very substantial reputation and goodwill in its marks, which are well known within the meaning of Article 6bis of the Paris convention 1883.

In the United Kingdom, where the Respondent is located, the Complainant has existing registrations for the marks “FRUIT”, “FRUIT BRAND” and “FRUIT OF THE LOOM”, including but not limited, to:

1. Registration No. 790,243 for “FRUIT” device issued on April 29, 1959, for ‘Articles of clothing: pullovers, cardigans, sweaters, jackets, jeans (being articles of clothing), shirts, shorts, stockings, tights, panty hose, hats, caps, aprons and socks, all for wear, tracksuits being articles of sports clothing’ in Class 25.

2. Registration No. 790,245 for “FRUIT” brand issued on April 29, 1959, covering all goods in Class 25.

3. Registration No. 790,246 for “FRUIT OF THE LOOM” issued on April 29, 1959, covering all goods in Class 25.

4. Registration No. Registration No. 1,102,521 for “FRUIT OF THE LOOM and device” issued on October 6, 1978, for all goods in Class 25.

5. Registration No. 1,469,566 for “FRUIT OF THE LOOM (the original since 1951)” issued on July 4, 1991, for all goods in Class 25.

6. Registration No. 1,585,890 for “LIFE, LIBERTY & FRUIT OF THE LOOM”

7. Registration No. 115,563 for “FRUIT OF THE LOOM and device” issued on June 7, 1979, for ‘Handbags, satchels, travelling bags, pocket wallets, purses (not of precious metals or coated therewith), suitcases, attaché cases, brief-cases, duffel bags, make-up bags, shopping bags, carrier bags made of plastics materials, holdalls, beach bags’ in Class 18.

8. Registration No. 1,568,017 for “FRUIT OF THE LOOM and device” issued on April 7, 1994, for ‘Underwear, lingerie, thermal knit underwear, brassieres, panties, slips, camisoles and petti culottes, hosiery, leopard tights, articles of outer clothing, shirts, tee-shirts, sport and knit shirts, tank tops, crop tops, long sleeve tee-shirts, turtle neck shirts, sweatshirts, pants, sweatpants, jackets, socks, shorts’; all included in Class 25.

9. Registration No. 2,010,168 for “FRUIT” issued on February 6, 1995, for ‘Articles of clothing for men, women and children; underwear, lingerie, shirts, tee-shirts, sport and knit shirts, tank tops, crop tops, long sleeve tee-shirts, turtle neck shirts, sweatshirts, pants, sweatpants, jackets, socks, hosiery, leopard tights, shorts, thermal knitwear, brassieres, panties, slips, camisoles and petti culottes’; all included in Class 25.

The Complainant has also filed and obtained Community Trademark registrations for “FRUIT OF THE LOOM” and “FRUIT”.

The Respondent registered the disputed domain name on December 11, 2003. The disputed domain name resolves to a web page located at “www.europeanwear.com” which sells printable clothing including T-shirts, sweatshirts, baseball caps, children wear and underwear and contains the heading ‘Fruit of the Loom UK’ and the statement ‘Please do view our extensive range of clothing as we are sure you will find some similar clothing suitable to your requirements. We no longer supply fruit of the loom t-shirts but have a wide range of similar plain, unbranded t-shirts of high quality for printing and re-sell’.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

(a) that the disputed domain name <fruit-of-the-loom.com> is confusingly similar to the Complainant’s “FRUIT OF THE LOOM “ mark.

(b) that the Respondent has no rights or legitimate interest in respect of the disputed domain name and that use of the same by the Respondent would not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy since the Respondent does not offer FRUIT OF THE LOOM merchandise and that even if it did, it would not be bona fide.

The Complainant further avers that the Respondent was not commonly known by the disputed domain name, either as an individual or a business, and given the Complainant’s enormous reputation in its FRUIT OF THE LOOM name and trademark the Respondent could not rightfully do so. Further, the Complainant avers that the Respondent was using the disputed domain name to attract Internet users to its website in order to make a commercial gain.

(c) that the Respondent’s registration and use of the disputed domain name is in bad faith, as by registering the disputed domain name with knowledge of the Complainant’s rights in its FRUIT OF THE LOOM mark, it sought to use the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s FRUIT OF THE LOOM mark as to the source, sponsorship, affiliation and/or endorsement of the Respondent’s website which sells merchandise, albeit not Fruit of the Loom merchandise.

Furthermore, the Complainant argues that the registration of the disputed domain name was intended to prevent the Complainant from reflecting its mark in a corresponding domain name, and relies on evidence that shows that the Respondent has engaged in a pattern of such conduct.

The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent has not filed any Response.

6. Discussion and Findings

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:

(i) that the Registrant’s domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and

(ii) that the Registrant has no rights or legitimate interests in respect of the domain name; and

(iii) that the Registrant’s domain name has been registered and is being used in bad faith.

The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, Rule 5(e) provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint”. Rule 14(b) further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences” from the Respondent’s failure to comply with the Rules “as it considers appropriate”.

As the Respondent has not submitted a Response, and there having been no exceptional circumstances brought to the attention of the Panel, in accordance with paragraph 5(e) of the Rules, this Panel is entitled to decide the dispute based on the Complaint and to accept as true the factual averments of the Complaint for the purposes of these proceedings: Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

The Respondent’s default, however, does not lead to an automatic ruling in favour of the Complainant. The burden remains on the Complainant to establish, on a balance of probabilities, that it is entitled to a transfer of the domain name: World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Digital Vision, Ltd v. Advanced Chemill Systems, WIPO Case No. D2001-0827.

A. Identical or Confusingly Similar Domain Name

The Complainant has furnished prima facie evidence that it is the owner of a number of trademarks in respect of the mark “FRUIT OF THE LOOM”, and accordingly has rights in the same.

This Panel has no hesitation in finding that the disputed domain name <fruit-of-the-loom.com>, the relevant part of which is “fruit-of-the-loom”, is confusingly similar to the Complainant’s registered trademarks “FRUIT OF THE LOOM”. The use of hyphens to separate the individual words does not help to make the obvious similarity any less striking.

The Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s name and trademark, and that paragraph 4(a)(i) of the Policy has been satisfied.

B. Respondent’s Rights or Legitimate Interests in the Domain Name

The Complainant is also required under paragraph 4(a)(ii) of the Policy to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The onus is initially on the Complainant to establish a prima facie case, and once this has been done, the onus shifts to the Respondent to prove the contrary. See Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700.

The Complainant asserts that the Respondent was not commonly known by the disputed domain name prior to the registration of that name. The Complainant also relies on the fame of the “FRUIT OF THE LOOM” marks worldwide, and the registration of the “FRUIT OF THE LOOM” trademarks in the Respondent’s home country, the United Kingdom, prior to the registration of the disputed domain name in 2003.

These matters would clearly suggest that the Respondent has no rights or legitimate interests in the disputed domain name but, even in the absence of a Response, this Panel remains obliged to consider whether any of the (non-exhaustive) circumstances provided in paragraph 4(c) of the Policy are present to support a finding of the Respondent having rights or legitimate interests in respect of the disputed domain name, namely:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

If any of the above circumstances are established, the Registrant may be said to have rights to or legitimate interests in the domain name for the purposes of Paragraph 4(a)(ii) (see Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827), in which event, the Complaint must be denied.

In the absence of a Response, the Panel accepts that the purpose of the Respondent having registered the disputed domain name was to rely on the fame of the “FRUIT OF THE LOOM” mark to divert users to the Respondent’s website which essentially is a shopping portal where goods or services are either advertised or offered for sale to Internet users.

To establish that the Respondent has rights or legitimate interests in the disputed domain name under Paragraph 4(c)(i), the critical requirement is the Respondent’s use of the domain name in connection with a bona fide offering of goods or services.

The Panel concludes that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has no legitimate interest in using the FRUIT OF THE LOOM mark in a domain name that directs Internet users to a website where products other than those of the Complainant’s are offered for sale. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809 (finding no legitimate interest in use of CHANEL as part of domain name leading to a website selling various types of perfume). As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant and its products, its very use by a registrant with no connection to the complainant suggests “opportunistic bad faith”.

Since the Respondent has not filed a Response, the Panel would also infer that the Respondent has no trademarks or service marks identical to “FRUIT OF THE LOOM”. There is also no evidence to suggest that the Respondent has been commonly known by the disputed domain name.

Accordingly, paragraph 4(c)(ii) of the Policy does not apply.

Based on the information available to the Panel in the Complaint, there is nothing to suggest that the Respondent has any rights or legitimate interests in the disputed domain name. In the circumstances, the Panel finds that the Complainant has sufficiently discharged the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, further demonstrate that the disputed domain name has been registered and used in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”, namely:

(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Complainant asserts that given the fame of its “FRUIT OF THE LOOM” mark, there is no question that the Respondent had knowledge of the Complainant’s rights in the same when it registered the disputed domain name, and the Respondent was thus acting in bad faith. Further, it can be inferred that the Respondent used the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s famous “FRUIT OF THE LOOM” mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s website which essentially is a shopping portal where goods or services are either advertised or offered for sale to Internet users.

The Respondent has not submitted any evidence to rebut the Complainant’s claims.

Registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the Policy (see Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong, WIPO Case No. D2003-0408) (finding that the respondent registered the disputed domain name in bad faith because it was on notice of the complainant’s rights); Yahoo! Inc. v. Kelvin Pham (NAF FA0204000109699).

Further, registration of the Complainant’s well-known mark as a domain name could not have been for any plausible reason other than to trade on the goodwill of trademark owner: Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051), and this would evidence bad faith.

In the circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith by the Respondent within the meaning of paragraph 4(a)(iii) of the Policy.

The Complainant further alleges that the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct.

Moreover, the Respondent’s pattern of registering domain names containing other well-known trademarks owned by third parties, as evidenced in Annex E and F of the Complaint filed, is strong evidence that the Respondent has acted in bad faith pursuant to paragraph 4(b)(ii) of the Policy (see America Online v. John Zuccarini, WIPO Case No. D2000-1495; Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541). The Respondent has not submitted any evidence to rebut this claim.

Accordingly, the Panel finds that the conduct of the Respondent in the present case shows that the circumstances mentioned in paragraph 4(b)(ii) of the Policy are existing in this case.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <fruit-of-the-loom.com> be transferred to the Complainant.

Richard Tan
Sole Panelist

Dated: February 9, 2005