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Cool Cat Fashion B.V. v. Cool Kat [2005] GENDND 525 (2 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cool Cat Fashion B.V. v. Cool Kat

Case No. D2005-0385

1. The Parties

The Complainant is Cool Cat Fashion B.V., Houten, Netherlands, represented by Klos Morel Vos & Schaap, Netherlands.

The Respondent is Cool Kat, Campbell, California, United States of America, represented by Melvin L. Emerich, of the United States of America.

2. The Domain Name and Registrar

The disputed domain name <cool-kat.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2005. On April 13, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On April 14, 2005, Network Solutions, LLC 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 contact. 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 April 18, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2005. The Response was filed with the Center initially by email on May 5, 2005 .

The Center appointed John Swinson as the sole panelist in this matter on May 19, 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.

The language of the proceeding is English.

4. Factual Background

The Complainant is Cool Cat Clothing B.V. The Complainant has been operating for 25 years and is the owner of a large chain of numerous retail clothing shops in the Benelux and other European countries. The shops sell a wide range of COOL CAT branded clothing and accessories, focussing on the youth and teenage fashion markets.

The Complainant is the holder of various trademark registrations for the “COOL CAT” word mark, including in Europe, The Middle East and some parts of Asia. The Complainant is the holder of Benelux trademark registrations for the word and device marks using “COOL CAT” with the registered trademark numbers below, as evidenced by the copies of the searches annexed to the Complaint.

Registration Number	Classes
361690	18, 25 and 30	“Cool Cat” words and cat face figure with sunglasses
395097	16, 18 and 25	“Cool Cat” words
635375	18, 24 and 25	“Cool Cat” words with caricature letter “C”

In addition, the Complainant has a website at <coolcat.nl> through which it promotes its products and store locations and provides company information. The Complainant was registered as the owner of the domain name <coolcat.nl> on May 31, 1996.

The Respondent is an appliance repair business owned and operated by Michael (or Mike) Katz and trades under the name “Cool Kat Appliance Repair”. The Respondent’s business started on January 1, 2001, and the business operates in the state of California in the United States of America. The Respondent also sells clothes in conjunction with his repair business. Mr. Katz is the owner of a registered mark with the U.S. Patent and Trademark Office which features a cat face figure with sunglasses in connection with clothing (in International Class 25) which was registered on October 19, 2004 under registration number 2895478. This trademark is a logo only, and has no words, and is registered in Mr. Katz’s name. The Respondent’s website at the disputed domain name advertises the Respondent’s appliance repair business as well as the Respondent’s Cool Kat line of clothing.

The “WHOis” record search with Network Solutions, LLC shows that the disputed domain name is registered to the Respondent and the record for the disputed domain name was created on November 19, 2003.

The Complainant’s counsel sent the Respondent a ‘cease and desist’ letter requesting cancellation of the domain name on January 25, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to the COOL CAT trademark and tradename because it is pronounced the same, and the only differences between the disputed domain name and the Complainant’s word mark are the spelling of the word “cat” and the addition of the score between “cool” and “kat”. The Complainant also claims that Internet users are likely to mistakenly assume that the Respondent’s name is associated with the Complainant as the Respondent also uses a similar logo (the cat face figure with sunglasses) on its website at the disputed domain name in connection with the sale of clothing products and accessories.

In addition, the Complainant contends that the Respondent:

(a) has no legitimate interest in using a domain name that is similar to the COOL CAT (word) trademarks of the Complainant for reasons including, the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services and is attempting to trade off the fame and goodwill of the COOL CAT trademarks to draw attention to the website and clothing products at the disputed domain name;

(b) registered and is using the disputed domain name in bad faith as the Respondent is operating with the expectation that a certain percentage of visitors will misspell the address of the Complainant’s website and a visitor will think that the website operated under the disputed domain name is the official website of the Complainant or that the Respondent is an official dealer or distributor of the Complainant; and

(c) in a reply by the Respondent’s attorney to the ‘cease and desist’ letter sent by the Complainant’s counsel on January 25, 2005, offered the disputed domain name for sale for a disproportional amount of money, further evidencing bad faith on the part of the Respondent.

B. Respondent

In reply, the Respondent contends that he did not know of the marks owned by the Complainant prior to being notified by the Complainant, largely because the Complainant does not have a presence in the United States of America.

In addition, the Respondent contends that:

(a) the Respondent had the “Cool Kat” trademark specifically developed in the form of a logo to advertise his appliance repair business in 2000, the logo itself being developed by a graphic designer in California;

(b) the primary purpose of the Respondent’s website at the disputed domain name is to advertise the Respondent’s appliance repair business, and this is obvious from the layout of the website which promotes the sale of clothing and accessories as a secondary business to the Respondent’s main business of appliance repairs;

(c) a reason behind the Respondent choosing the name “Cool Kat Appliance repair” is the surname of Michael Katz;

(d) the Respondent spends 45-75 hours per week in the appliance repair business and has built a considerable reputation;

(e) the Respondent has not registered, nor is it using the disputed domain name in bad faith.

6. Discussion and Findings

In order to qualify for a remedy, the Complainant must make out the three elements set out in paragraph 4(a) of the Policy, namely:

(a) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(b) the Respondent has no rights or legitimate interests in respect of the domain names; and

(c) the domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

There are two elements that a Complainant must establish under paragraph 4(a)(i) of the Policy - that the Complainant has rights in a trademark or a service mark, and that the disputed domain name is identical or confusingly similar to the mark.

The Panel finds that the Complainant has established that it has valid registered rights in the “COOL CAT” word mark. The Panel also considers that the Complainant has provided strong evidence of extensive use of that mark in Europe, and consequential goodwill in the mark.

The only three differences between the disputed domain name and the Complainant’s “COOL CAT” mark are the addition of hyphen between “cool” and “kat”, the spelling of “cat” with a “k” and the addition of the top level domain “.com” suffix.

It is well established that the addition of the suffix “.com” is an irrelevant distinction that does not change the likelihood for confusion. See Microsoft Corporation v Amit Mehrotra WIPO Case No. D2000-0053, and InfoSpace.com, Inc. v Tenenbaum Ofer, WIPO Case No. D2000-0075.

The difference in “COOL CAT” and “Cool-Kat” is typographical only. The pronunciation is the same and there are only two minor differences in the spelling of the words. Only one letter out of seven is spelled differently. The addition of a hyphen or a score does not change the pronunciation or appearance. See Salomon Smith Barney Inc. v. Daniel Singer d/b/a Build Me a Website.com, WIPO Case No. D2000-1722.

The Panel considers “Cool-Kat” to be sufficiently similar to the Complainant’s “COOL CAT” word mark so as to give rise to the likelihood of confusion, at least until the Internet user has entered the disputed domain name URL into a web browser and been directed to the Respondent’s website at the disputed domain name.

Accordingly, the Panel finds that Paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Complainant contends that it has given no consent, license or other authorisation to the Respondent in relation to the registration of the disputed domain name. The Respondent further contends that the Respondent has no legitimate interest in the use of the disputed domain name and has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant.

Paragraph 4(c) of the Policy sets out three elements, any of which shall demonstrate the Respondent’s legitimate rights in the disputed name for the purposes of paragraph 4(a)(ii) of the Policy. One of these elements is that, before any notice of the dispute to the Respondent, the Respondent has used or demonstrated preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

The Respondent filed a response claiming it has a legitimate interest to use the disputed domain name and has been using the disputed domain name in connection with a bona fide offering of goods and services.

The Respondent asserts that before any notice to the Respondent of this dispute, the Respondent has used the disputed domain name in connection with the Respondent’s bona fide offering of goods and services, namely the appliance repair business the Respondent has operated since January 1, 2001 under the name of “Cool Kat Appliance Repair”. The Respondent further asserts that the appliance repair business is the Respondent’s primary business and that a considerable amount of time is spent conducting the business on a weekly basis.

The Panel visited the Respondent’s website at the disputed domain name on May 29, 2005. The website offers information in relation to the Respondent and the business including, the services provided and types of major appliances that are repaired by the Respondent and contact details. Details about the clothing and accessories of the Respondent displaying the registered design mark (logo) of the Respondent are also available on the Respondent’s website, although less prominently than information on the appliance repair business. On the Respondent’s website, it is clearly stated that the logo is owned by Cool Kat Appliance Repair. There is a page under the “about us” link on the website with the heading “ABOUT COOL KAT, THE APPLIANCE GUY” followed by “Hi, I’m Mike Katz” and a short work history. The address of the Respondent that appears on the website is Longfellow Avenue, Campbell, California, United States of America with a telephone number. The Panel searched online directories including Citysearch and found listed “Cool Kat Appliance Repair” with the same address and phone number that appears on the Respondent’s website.

The Respondent’s website also states that the Respondent is licensed by BEAR, the Bureau of Electronic and Appliance Repair, California. The Panel conducted a search of licensees on the BEAR website at “www.bear.ca.gov”. The results returned to the Panel show that Cool Kat Appliance Repair is a ‘major application repair’ license holder, the issue date of the license was October 15, 2002 and the business owner is listed as Michael Katz.

For these reasons, the Panel finds that there is evidence that the Respondent has and is demonstrating use of the disputed domain name in connection with a corresponding bona fide offering of goods and services. Accordingly, the Panel finds that Paragraph 4(a)(ii) of the Policy is not satisfied.

C. Registered and Used in Bad Faith

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

Evidence of offers to sell the domain name in settlement discussions is admissible under the Policy and may function as as evidence of bad faith. See CBS Broadcasting, Inc. v. Gaddoor Saidi WIPO Case No D2000-0243, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr WIPO Case No. D2000-1525.

The Complainant alleges that in the reply by the Respondent’s attorney to the ‘cease and desist’ letter sent by the Complainant’s counsel on January 25, 2005, the sale of the disputed domain name was offered to the Complainant for the amount of “$250,000.-Euros”. Evidence of this allegation or any other sale or settlement offers was not attached to the Complaint lodged by the Complainant. In the Response there is confirmation that sale amounts for the disputed domain name were discussed, although there is no confirmation of the amount claimed to have been stipulated by the Respondent. The Respondent does note in the Response that as considerable goodwill is attached to the Respondent’s business, and due to the disruption that would be caused to the Respondent’s business by the transfer of the disputed domain name, an offer of payment of US$1,500 would be insufficient.

As the Panel finds that there is evidence that the Respondent has a legitimate interest in the disputed domain name, the Respondent’s requirement for payment in return for transferring the disputed domain name does not constitute bad faith as the disputed domain name is a business asset of the Respondent. Therefore, the negotiations between the parties, on the evidence presented do not of themselves conclusively show bad faith on the part of the Respondent. See Etam, plc v Alberta Hot Rods WIPO Case No. D2000-1654, William Grant & Sons Limited v. Daniel Scotto WIPO Case No. D2000-1656 and General Machine Products Company, Inc. v. Prime Domains, NAF Case No. FA0001000092531; cf Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525.

The Complainant also claims that the Respondent registered and is using the disputed domain name in bad faith as the Respondent is operating its website with the expectation that a certain percentage of Internet users will misspell the address of the Complainant’s website and a visitor to the Respondent’s website will think that the website operated at the disputed domain name is the official website of the Complainant or that the Respondent is an official dealer or distributor of the Complainant. On the Panel’s viewing of the Respondent’s and Complainant’s website on May 29, 2005, the Panel notes that the overall look and feel of the two websites is considerably different, and on the Respondent’s website the displayed clothing and accessories are clearly connected with the Respondent’s appliance repair business. On this basis it is the Panel’s view that a visitor mistakenly visiting the website of the Respondent instead of the Complaint would not mistake the clothing and accessories of the Respondent for those of the Complainant.

The Complainant has shown evidence that its mark “COOL CAT” is used widely in European countries. However, no evidence of the “COOL CAT” trademark being registered in the US was submitted.

The Panel credits the Respondent’s contention that, as an exclusively American, and primarily appliance repair based business, it had neither actual nor constructive knowledge of the Complainant’s European clothing business and marks at the time the Respondent registered the disputed domain name. The Complainant’s mark is not registered in the United States of America, nor did the Complainant provide any evidence that its trademarks or tradename is otherwise known in that country. See VZ VermogensZentrum AG v. Anything.com WIPO Case No. D2000-0527 and Allocation Network GmbH v. Gregory, WIPO Case No. D2000-0016.

In short, there seems to be no bad faith by the Respondent. The Respondent has used a mark that relates to Mr. Katz’s name, which is not identical to the Complainant’s trademarks, and without any evidence that Mr. Katz would be aware of the Complainant or the Complainant’s trademarks. The Respondent has a credible story as to why he selected and used the disputed domain name. The Respondent does not seem to be a cybersquatter.

For these reasons the Panel finds that there is insufficient evidence to establish that Paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

For all the foregoing reasons, the Complaint is denied.

John Swinson
Sole Panelist

Date: June 2, 2005