DECISION

Sweetface Fashion Company, LLC and Andy Hilfiger v. Len Molden

Claim Number: FA0202000104947

PARTIES

Complainant is Sweetface Fashion Company, LLC and Andy Hilfiger, New York, NY (“Complainant”) represented by Benjamin K. Semel, of Pryor, Cashman, Sherman & Flynn, LLP.  Respondent is Len Molden, Vancouver, British Columbia, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <SWEETFACEFASHIONS.COM>, <SWEETFACEFASHION.COM>, <JLOFASHION.COM>, <JLOFASHIONS.COM>, <JLOBYJENNIFERLOPEZ.COM>, <JENNIFERLOPEZFASHION.COM>, <JLOSPORTSWEAR.COM>,<JLOSWIMWEAR.COM>, <JLOSHOES.COM>,<JENNIFERLOPEZFASHIONS.COM>,

<ANDYHILFIGERFASHION.COM>,  <ANDYHILFIGERFASHIONS.COM> and <SWEETFACEFASHIONS.NET>, which are registered with GKG.net.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on February 19, 2002; the Forum received a hard copy of the Complaint on February 21, 2002.

On February 26, 2002, GKG.net confirmed by e-mail to the Forum that the domain names <SWEETFACEFASHIONS.COM>, <SWEETFACEFASHION.COM>, <JLOFASHION.COM>, <JLOFASHIONS.COM>, <JLOBYJENNIFERLOPEZ.COM>,  <JENNIFERLOPEZFASHION.COM>, <JLOSPORTSWEAR.COM>,  <JLOSWIMWEAR.COM>, <JLOSHOES.COM>,  <JENNIFERLOPEZFASHIONS.COM>, <ANDYHILFIGERFASHION.COM>,  <ANDYHILFIGERFASHIONS.COM>  and

<SWEETFACEFASHIONS.NET> are registered with GKG.net and that the Respondent is the current registrant of the name.  GKG.net has verified that Respondent is bound by the GKG.net 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 February 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 18, 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@SWEETFACEFASHIONS.COM, postmaster@SWEETFACEFASHION.COM,

postmaster@JLOFASHION.COM, postmaster@JLOFASHIONS.COM,

postmaster@JLOBYJENNIFERLOPEZ.COM, postmaster@JENNIFERLOPEZFASHION.COM,

postmaster@JLOSPORTSWEAR.COM, postmaster@JLOSWIMWEAR.COM,

postmaster@JLOSHOES.COM, postmaster@JENNIFERLOPEZFASHIONS.COM,

postmaster@ANDYHILFIGERFASHION.COM, postmaster@ANDYHILFIGERFASHIONS.COM,

postmaster@SWEETFACEFASHIONS.NET by e-mail.

A timely Response was received and determined to be complete on March 4, 2002.

On March 15, 2002, an Additional Submission was received from the Complainant.  On March 15, 2002, an Additional Reply was received from the Respondent.

On March 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations:

Complainant has rights in the marks contained within the disputed domain names.  The domain names in issue are identical to or confusingly similar to those marks.  Respondent has no rights to or legitimate interests in the marks in question.  Respondent acted in bad faith in registering and using the marks.

B. Respondent makes the following points in response:

Complainant failed to show a right in the marks contained within the domain names in issue.  Respondent maintains that he created these domain names “without any knowledge of any company intending to do business as such.”   Respondent then urges that “Jennifer Lopez is a recognizable public figure … [and that her] popularity is a cultural one, and as such, she is subject to public scrutiny.” Respondent states that he “is making a legitimate noncommercial or fair use of the domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks or service marks at issue.”  The Respondent maintains that his business is “a legitimate consumer information site regarding fashions Jennifer Lopez sells.” He states: “She uses her enormous cultural appeal to earn money, yet consumers need to be able to get opinions from others who bought products from her.”  His site includes a disclaimer, Respondent urges, and bad faith should not be considered.

C. Complainant’s additional supplement responded to Respondent by producing

additional copies of the Complainant’s registration papers in Canada, the United States, Australia and Santo Domingo.

D. Respondent’s additional response suggested that Complainant still had not met the burden “beyond a reasonable doubt,” which is not applicable in domain name disputes.

FINDINGS

Complainant established in this proceeding that it has rights in the marks contained in their entirety within the disputed domain names.

Complainant in this case is Sweetface Fashion Co., LLC, which states that it is the owner of the Sweetface Fashion Co., a trade name, which also is the exclusive licensee of the trademarks “J. Lo by Jennifer Lopez” and “Jennifer Lopez” for women’s clothing and related accessories.  Andy Hilfiger is President of Sweetface and the owner of trademark rights in his own name.

Complainant presented copies of trademark applications and grants of applications from the United States, Canada, Australia and Santo Domingo that satisfy the Panel that Complainants have legal and common law rights in the use of their own company names and as licensee of Ms. Lopez and Mr. Hilfiger’s names in business. 

Complainants promote and distribute a line of fashions for the well-known entertainer Jennifer Lopez.

Respondent submitted no information to show a claim of right to the marks in issue.

Respondent seems to urge that because he did not find these domain names registered under the Complainant’s marks that he was free to register them and make use of them. 

Respondent also seems to suggest that the site he created is a public information site and that it is therefore free from constraints that might be applied to those seeking in infringe upon or compete with the Complainant’s ownership rights in the marks, legal or at common law.

Respondent submitted no evidence in support of Respondent’s position that Complainant had failed to meet the burden imposed in domain name disputes.  Respondent submitted no evidence in support of any claim by Respondent to have an interest in the Complainant’s names, marks or business operations. 

Further, Respondent submitted no evidence to suggest that the domain names currently function as a public forum for those who have purchased Jennifer Lopez fashions to discuss or exchange information about them.  He presented one email from a “Maria” asking where Jennifer Lopez fashions could be purchased in Chicago.  Respondent provided his response to that request, which gives rise to an inference that Respondent is using the domain name in a manner that suggests to the innocent Internet user that he is an agent of Ms. Lopez.

 

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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) 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 to and/or Confusingly Similar

Complainant contends that it has established rights in SWEETFACE FASHION CO. because it has used it as its trade name continuously and exclusively since March 2001.

Additionally, Complainant contends that it has established rights in J. LO BY JENNIFER LOPEZ and JENNIFER LOPEZ because it is the exclusive licensee of these trademarks, for which several trademark applications have been filed around the world. Finally, Complainant contends that it has rights in the ANDY HILFIGER name because it has continuously used the name as its trade name since 1997.  Complainant contends that <SWEETFACEFASHIONS.COM>, <SWEETFACEFASHION.COM>, and <SWEETFACEFASHIONS.NET> domain names are confusingly similar to its SWEETFACE FASHION CO. trade name. 

The Panel may find that the above disputed domain names are confusingly similar to Complainant’s mark because they incorporate the dominant part of Complainant’s mark and merely add a generic top-level to create the domain name or add and delete letters. These additions and deletions do not create distinctive domain names such as would defeat a claim of confusing similarity.  Respondent’s deletion of the “co.” in Complainant’s trade name and Respondent’s addition of an “s” in two of the three disputed domain names similarly do not create distinctive domain names such as would defeat a claim of confusing similarity.  See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the Complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s “Wellness International Network”).

The Panel may find that <JLOBYJENNIFERLOPEZ.COM> is identical to Complainant’s J. LO BY JENNIFER LOPEZ mark because it incorporates Complainant’s mark in its entirety, deleting the spaces and the period, and adds a generic top-level domain name to Complainant’s mark.  See Hannover Ruckversicherungs-Aktiengesellschaft v. Hyungki Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name ROBOHELP.COM is identical to complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark).

The Panel may find that <JLOFASHION.COM>, <JLOFASHIONS.COM>, <JLOSPORTSWEAR.COM>, <JLOSWIMWEAR.COM> and <JLOSHOES.COM> are confusingly similar to Complainant’s J. LO BY JENNIFER LOPEZ mark because they incorporate the dominant part of Complainant’s mark, with the addition of generic words that describe Complainant’s products along with a generic top-level domain name.  The Panel may also find that <ANDYHILFIGERFASHION.COM> and <ANDYHILFIGERFASHIONS.COM> are confusingly similar to Complainant’s ANDY HILFIGER trade name because they incorporate Complainant’s name in its entirety and merely add the term “fashion(s)”, which describes Complainant’s industry and products.  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); see also WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark); see also Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term). 

Respondent takes the position that <JENNIFERLOPEZFASHION.COM>, <JLOSPORTSWEAR.COM>,<JLOSWIMWEAR.COM>, <JLOSHOES.COM>, <JENNIFERLOPEZFASHIONS.COM>, <JLOFASHION.COM>  and  <JLOFASHIONS.COM> “bear no resemblance whatsoever” to Complainant’s marks.  Respondent contends that as a result, they do not infringe on Complainant’s J. LO BY JENNIFER LOPEZ or JENNIFER LOPEZ marks.  Further, Respondent urges that Complainant has not proved sufficient use to obtain common law rights in SWEETFACE FASHION CO. and that, therefore, the disputed domain names reflecting this mark are not confusingly similar to a mark in which Complainant has rights.  See Powrachute Inc. v. Buckeye Indus., AF-0076 (e-Resolution, May 30, 2000) (dismissing a Complaint where complainant failed to contend, provide evidence, or give arguments to the effect that it had either a registered trademark or service mark in POWRACHUTE or any similar name, or that it had a common law trademark in the name).

Complainant in this case is Sweetface Fashion Co., LLC, which attested that it is the owner of the Sweetface Fashion Co. trade name and that it is the exclusive licensee of the trademarks “J. Lo by Jennifer Lopez” and “Jennifer Lopez” for women’s clothing and related accessories.  Complainant further attested that Andy Hilfiger is President of Sweetface and the owner of trademark rights in his own name. Respondent submitted no information to suggest to the Panel that these statements are not true and Respondent failed to show any claim of right in Respondent to the marks in issue.  Complainant presented sufficient evidence of ownership rights to satisfy the Panel. 

The Panel finds that ICANN Policy ¶ 4(a)(i) requiring a showing of “confusing similarity” has been satisfied.

Rights to or Legitimate Interests

Complainant established in this proceeding that it has rights to and legitimate interests in the marks contained within the disputed domain names. Complainant further contends that Respondent, known as Len Molden, is not commonly known by any of Complainant’s trade names or by any of the disputed domain names, and that, therefore, Respondent cannot satisfy Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Complainant further contends that Respondent’s unauthorized use of the disputed domain names to advertise links to competing websites is not a bona fide offering of goods pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Nat’l Collegiate Athletic Assoc. v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell complainant’s goods without complainant’s authority, as well as others’ goods is not bona fide use); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from the Complainant's site to a competing website); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

Respondent contends that he registered <SWEETFACEFASHIONS.COM>, <SWEETFACEFASHION.COM>  and <SWEETFACEFASHIONS.NET> domain names without any knowledge of Complainant’s marks.

Respondent further urges that he has rights and legitimate interests in the disputed domain names because he is using them for the noncommercial purpose of disseminating consumer information about the clothing line to the public, and that his conduct therefore satisfies Policy ¶ 4(c)(ii) and (iii).  See Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that Respondent has rights in the <missionsuccess.net> domain name where she was using the domain name in connection with a noncommercial purpose). Respondent has not supported these contentions with proof that satisfies the Panel that his domain name sites serve as a public forum or that Respondent’s intent in the first instance was to create a public forum.

The Panel finds that Policy ¶ 4(a)(ii) requiring a showing that Respondent has “no rights or legitimate interests” in the domain names in issue has been satisfied.

Registration and Use in Bad Faith

Complainant urges that Respondent acted in bad faith in registering and using the disputed domain names. Complainant urges that Respondent would have had to have been aware of Complainant’s SWEET FACE FASHION CO., ANDY HILFIGER, and the J. LO BY JENNFER LOPEZ marks in order to register them all at the same time.  The record supports this contention.  It is highly unlikely that anyone outside the actual parties who hold an interest would register these particular combinations of unique domain names without prior knowledge of the entities and persons involved. Respondent concedes that he and a worldwide population of fans knows about the entertainer Jennifer Lopez. Respondent must have been aware that Sweet Face Fashion Company, managed by Andy Hilfiger, promoted the fashion line called “J. LO by Jennifer Lopez.” Respondent makes the subjective statement in this proceeding that he did not; but reason persuades the Panel that Respondent knew or constructively knew this information.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith).

Complainant contends that Respondent’s attempts to sell the disputed domain names for $8,000 each is evidence of bad faith pursuant to Policy ¶ 4(b)(i).  See Nabisco Brands Co. v. The Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (finding that the Respondent registered and used the domain names to profit where Respondent offered to sell the domain names for $2,300 per name); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs); see also America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith).

Respondent argues that the Complainant came looking for him to buy the domain names.  The Panel agrees that the communications submitted in this proceeding show that Complainant contacted the Respondent to determine what had to be done to obtain the domain names. The Panel believes that Respondent suggested the amount.

Complainant also maintains that Respondent has engaged in a pattern of registering infringing domain names and that Respondent registered these domain names in order to prevent Complainant from using them.  This conduct also permits findings of bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii).

Complainant further urges that Respondent registered the disputed domain names primarily for the purpose of disrupting Complainant’s business.  Respondent’s site contains advertisements for commercial sites that sell fashion and beauty products that compete with those of Complainant, and that therefore Respondent’s use of the disputed domain names to attract Internet users to the competing websites is evidence of bad faith pursuant to Policy ¶ 4(b)(iii) See Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

Complainant further maintains that Respondent is attempting to attract for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the sponsorship, source, and affiliation of Respondent’s site.  This also supports findings of bad faith pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

The Panel may find that Respondent does not need to use Complainant’s marks and that Respondent does not have the right to use Complainant’s marks in order to provide an information site for Complainant’s products.  See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent can accomplish his stated purpose of providing news and information about State Farm without the use of State Farm’s trademark in a name).

Respondent contends that it was contacted by Complainant’s agent in September 2001, and asked, what it would it take for the domain names to be transferred. After Respondent quoted a price, Complainant refused the offer, but still attempted to have the disputed domain names transferred to it.  The Panel may find that without evidence that Respondent registered the disputed domain name primarily for the purpose of selling it, or offering it for sale, that the mere fact that Respondent agreed to sell the domain names for a given price does not constitute bad faith pursuant to Policy ¶ 4(b)(i). The cases contain some support for this position.  See LifePlan v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000) (finding that “the mere offering [of the domain name for sale], without more, does not indicate circumstances suggesting that Respondent registered the domain name primarily for the purpose of selling…the domain name to the Complainant”).  Here, the mere fact of a responsive offer to sell the domain names does not stand alone as the sole proof of bad faith. Respondent offers nothing to suggest that the mere fact that he responded to a request to sell the domain names with an offer to sell them for $7,000 or $8,000 per domain name in anyway excuses Respondent’s other bad faith conduct in registering and using domain names containing marks Respondent knew belonged to others. Further, Respondent offered no proof that he spent $7,000 in registering and developing these domain names.

Respondent further argues that the legal disclaimer Respondent provides on its sites indicates that it is not affiliated with any fashion company, including Complainant’s business, and that therefore, its use of the disputed domain names is not in bad faith pursuant to Policy ¶ 4(b)(iv). There is some support in the cases for this position. See Al-Anon Family Group Headquarters Inc. v. Reid, D2000-0232 (WIPO June 5, 2000) (refusing to find bad faith where Respondent conspicuously informs viewers that his site is not affiliated with Complainant and alternatively finding that such a disclaimer is evidence of good faith on the part of Respondent which precludes any determination that Respondent intentionally attempted to attract Internet users to his website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website).  Respondent has not shown proof that the site acts as a public forum and he cannot avoid the other evidence of bad faith involved in his conduct.

 

Respondent in addition contends that each of Respondent’s websites contains links officially authorized by Complainant to sell fashions online, such as: <www.macys.com> and <drjays.com>.   The Panel does not find this to be persuasive evidence that Respondent acquired rights in that manner.

The Panel finds that Policy ¶ 4(b)(iv) has been satisfied.

DECISION

Having found that Complainants have made the necessary showing to be entitled to the requested relief, it is therefore ORDERED that the domain names in issue, <SWEETFACEFASHIONS.COM>, <SWEETFACEFASHION.COM>,

<JLOFASHION.COM>, <JLOFASHIONS.COM>, <JLOBYJENNIFERLOPEZ.COM>,  <JENNIFERLOPEZFASHION.COM>,

<JLOSPORTSWEAR.COM>,  <JLOSWIMWEAR.COM>,

<JLOSHOES.COM>,  <JENNIFERLOPEZFASHIONS.COM>,

<ANDYHILFIGERFASHION.COM>,  <ANDYHILFIGERFASHIONS.COM>  and

<SWEETFACEFASHIONS.NET>, be transferred from Respondent to Complainant.

 

Hon. Carolyn Marks Johnson, Panelist
Dated: March 26, 2002.

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