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Phat Fashions, LLC v. Internet Max [2000] GENDND 766 (26 July 2000)

National Arbitration Forum

DECISION

FORUM FILE NO: FA0006000095040

Phat Fashions, LLC

COMPLAINANT

vs.

Internet Max

RESPONDENT

The above-entitled matter came on for an administrative hearing on July 26, 2000 before the undersigned on the Complaint of Phat Fashions, LLC, "Complainant", against Internet Max, "Respondent". There was representation on behalf of Complainant. There was no representation on behalf of Respondent. Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Names: "phatthreads.com" and "phatclothes.com"

Domain Name Registrar: OpenSRS.com.

Domain Name Registrant: Internet Max.

Date Complaint Filed: June 20, 2000.

Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a) and Rule 4(c): June 27, 2000.

Due date for a Response: July 17, 2000. Respondent did submit a response to the Complaint.

Remedy Requested: Transfer of the domain names to Complainant.

After reviewing the Complaint and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to the Respondent in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified OpenSRS.com, the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced.

From the information submitted, it appears that the Respondent originally registered the domain name "phatthreads.com" with OpenSRS.com on or about May 19, 2000. Respondent registered the domain name "phatclothes.com" with OpenSRS.com on or about April 4, 2000. By such registration, the Respondent agreed to resolve any dispute regarding his domain name through ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACT

1. Complainant Phatt Fashions LLC is the proprietor of several lines of designer fashionwear, including PHAT THREADS, PHAT FARM and BABY PHAT.
2. Phat Fashions commenced business operations in 1992 and has achieved a highly visible position in the urban segment of the fashion market due to the high quality of its products.
3. Phat Fashions is the owner of registered trademarks and service marks with the United States Patent and Trademark Office including the following:

A-PHAT THREADS

B-PHAT FARM

C-BABY PHAT

4. Phat Fashions has registered those trademarks and service marks in other countries throughout the world.
5. Phat Fashions has been using its family of PHAT trademarks on clothing for over eight years and has operated a retail store selling clothing and fashion accessories under the service mark PHAT FARM for seven years.
6. Phat Fashions has spent considerable amounts advertising and promotion its family of PHAT marks.
7. Phat Fashions products have been featured in the New York Times, New York Daily News, People Magazine, Forbes, Harper's Bazaar, Elle Magazine the The New Yorker.
8. Phat Fashions owns an Internet registration for "phatfarm.com" and has a fully operational web site accessible through that domain name.
9. The domain name "phatthreads.com" is identical to Phat Fashions' registered trademark PHAT THREADS and confusingly similar to other registered marks in Phat Fashions' family of PHAT marks.
10. The domain name "phatclothes.com" is confusingly similar to Phat Fashions' registered trademark PHAT THREADS and other registered marks in Phat Fashions' family of PHAT marks.
11. Respondent has never been known by the domain names "phatthreads.com" and "phatclothes.com" and offers no bona fide goods or services in connection with said domain names.
12. Respondent does not have any trademark or servicemark rights in the disputed domain names.
13. Respondent is offering the disputed domain names for sale to the highest bidder at the web site Great Domains.com.
14. In connection with his offer to sale the names, Respondent advertises that the domain name is "a great name for a clothes company" and is "a good domain name for an online clothes store, fashion site, clothes tip, new fashion designer, and such. Page gets traffic from name alone!".
15. With respect to each of the disputed domain names, the Respondent encourages potential buyers to "make an offer", with the minimum bid being $300.00.
16. The minimum bid price is in excess of the $10 annual registration fee charged by OpenSRS.com.

On October 24, 1999, the Internet Corporation for Assigned Names and Numbers ("ICANN") adopted the Uniform Domain Name Dispute Resolution Policy which sets forth the elements that a complainant must prove to show that a respondent has registered and used a domain name in bad faith. Specifically, the complainant must prove each of the following:

1. Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the domain name;
3. Respondent has registered and is using the domain name in bad faith.

It is the opinion of the undersigned, that Complainant has met the burden of proof with respect to each of the above elements for the following reasons:

1 - The disputed domain names are identical or confusingly similar to Complainant's registered trademarks in which the Complainant has rights.

2 - The Respondent has no right or legitimate interest in the disputed domain names. Specifically, the domain names have not used by the Respondent for a bone fide offering of goods or services nor has the Respondent been commonly known by such names.

3 - The Respondent has registered the names in bad faith. Section 4(b) of the ICANN Uniform Domain Name Dispute Policy provides that evidence of bad faith registration and use can consist of the following circumstances:

1. circumstances indicating that the Respondent has registered or 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 the complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
2. the respondent has 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 the respondent has engaged in a pattern of such conduct; or
3. the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
4. by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site 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 respondent's web site or location or of a product of service on the respondents web site or location.

The circumstances of this case permit a finding that the Respondent registered the disputed domain names primarily for the purpose of selling, renting or otherwise transferring the registrations to Phat Fashions' competitors or potential competitors of Phat Fashions or to Phat Fashions, for valuable consideration in excess of the costs directly related toe the disputed domain names.

CONCLUSION

The undersigned certifies that he has acted independently and has no know conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:

1. The domain name "phattreads.com" is identical to Complainant's registered service mark.
2. The domain name "phatclothes.com" is confusingly similar to Complainant's registered service mark.
3. Respondent has no right or legitimate interests in said names.
4. Respondent registered, acquired and uses the disputed domain names in bad faith primarily for the purpose of selling, renting or otherwise transferring the registrations to Phat Fashions' competitors or potential competitors or to Phat Fashions for valuable consideration in excess of costs directly related to the disputed domain names.

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(I), it is decided as follows:

The undersigned directs that the domain names "phatthreads.com" and Phatclothes.com" registered by Respondent Internet Max be transferred to the Complainant Phat Fashions, LLC.

Dated: July 26, 2000, by Judge Daniel B. Banks, Jr., Arbitrator.