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Generic Top Level Domain Name (gTLD) Decisions |
Michael Smith Custom Clotheirs, Inc.
d/b/a The Custom Shop d/b/a Myshirtmaker.com v. Ramani Custom Attire
Claim Number: FA0204000109575
PARTIES
The
Complainant is Michael Smith Custom
Clothiers, Inc. d/b/a The Custom Shop d/b/a Myshirtmaker.com, Toledo, OH
(“Complainant”) represented by Richard
G. Martin, of MacMillan, Sobanski
& Todd, LLC. The Respondent is Kris Ramani Ramani Custom Attire, New
York, NY (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <customshirtshop.com>,
registered with Register.com.
PANEL
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge has no known conflict
in serving as Panelist in this
proceeding.
Anne
M. Wallace, Q.C. as Panelist.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on April 12, 2002; the Forum received
a hard copy of the
Complaint on April 16, 2002.
On
April 12, 2002, Register.com confirmed by e-mail to the Forum that the domain
name <customshirtshop.com> is
registered with Register.com and that the Respondent is the current registrant
of the name. Register.com has verified
that Respondent is bound by the Register.com 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
April 16, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 6, 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@customshirtshop.com by e-mail.
A
timely Response was received and determined to be complete on May 3, 2002.
On May 23, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace as Panelist.
RELIEF
SOUGHT
Complainant
requests that the domain name be transferred from the Respondent to the
Complainant.
PARTIES’
CONTENTIONS
A. Complainant
In addition, the Complainant is the owner
of the following relevant domain names used in connection with its business:
Domain Name Listed Registrant Created
thecustomshirtshop.com Michael Smith March 9, 2001
thecustomshop.com The
Customshop.com, Inc. April 17,
2000
customshop.com The
Customshop.com, Inc. April 20,
2000
customshirt.com The
Customshop.com, Inc. April 17,
2000
The
Complainant, Michael Smith Custom Clothiers, Inc., dba The Custom Shop, and
Myshirtmaker.com, is located in Toledo, Ohio and has
been engaged in the
business of selling custom-made clothing since 1984. The company operates
multiple store locations, sells through
a network of sales representatives, and
maintains an online website.
The Complainant
purchased the major assets of TheCustomShop.com, Inc. on July 10, 2001, from
the Bankruptcy Trustee appointed by the
Federal Bankruptcy Court for the
Southern District of Texas, Houston Division.
The purchased
assets included TheCustomShop.com, Inc.'s corporate name and all of its
trademarks, service marks, trade names and logos.
Furthermore, the Complainant
acquired all computer hardware, software, intangible property, or intellectual
property relating to
the web site of TheCustomShop.com, Inc.
Prior to filing for bankruptcy protection
and having its assets sold to Complainant, TheCustomShop.com, Inc. operated
over 50 stores
across the United States and maintained a website at <thecustomshop.com>. TheCustomShop.com, Inc. and its predecessors had been in
business since 1937 and had developed substantial clientele and good will
in
their trademarks.
A number of the
flagship stores operated by TheCustomShop.com, Inc. were located in New York
City and surrounds, including stores
on Wall Street, Broadway, Lexington
Avenue, Fifth Avenue, and Madison Avenue; three stores on Long Island; and two
stores in New
Jersey. Prior to the March 13, 2000 bankruptcy filing, the
company’s New York area stores had developed a substantial and loyal customer
trade. New York City area clientele were in the habit of visiting the various
stores and also ordering via the company website.
The Wall Street store of
TheCustomShop.Com, Inc. was located within walking distance of the Respondent’s
place of business. Complainant
believes that the Respondent was well aware of
the TheCustomShop.Com, Inc., its various stores in the New York City area,
certainly
the nearby Wall Street store, the substantial and loyal customer base
of Complainant, and the good will that had been developed by
Complainant since
1937.
When TheCustomShop.com, Inc. filed for
bankruptcy on March 13, 2001, all stores were temporarily closed, including the
stores in the
New York City area. The website was taken off line temporarily,
pending disposition of the assets of the company through bankruptcy
proceedings. A trustee was appointed for the benefit of creditors.
On July 2,
2001, approximately four months after TheCustomShop.com, Inc. filed for
bankruptcy protection, the Respondent registered the domain name <customshirtshop.com>. The domain
name <customshirtshop.com> was
registered by Respondent after the registrations by Complainant of <thecustomshirtshop.com> (March 9, 2001), <thecustomshop.com> (April 17, 2000), <customshop.com> (April 20, 2000) and <customshirt.com> (April 17, 2000).
Respondent registered the domain name
<customshirtshop.com> while
the stores and website of TheCustomShop.Com, Inc. were temporarily closed and
under the jurisdiction of the Bankruptcy Trustee,
and only eight days before
the auction of the assets by the bankruptcy court in Texas.
Respondent admitted to Complainant in a
personal conversation prior to the bankruptcy auction that Respondent was aware
of the bankruptcy
of TheCustomShop.Com, Inc. and the date of the auction of its
assets.
Complainant believes that Respondent was
aware of the Complainant and its substantial business trade and good will prior
to registering
the domain name <customshirtshop.com>.
Complainant believes Respondent intentionally registered the confusingly
similar domain name <customshirtshop.com>
to capitalize on the business clientele and good will of the Complainant and to
divert the customers of the Complainant to the Respondent’s
business.
Complainant contacted Respondent in
August 2001 to request that Respondent cease its use of the domain name. After
several attempts,
Complainant’s counsel eventually reached Respondent by
telephone on December 3, 2001. Mr. Ramani agreed at that time that he would
transfer the domain name to Complainant. Eventually, however, Respondent
advised Complainant by way of a letter of February 6, 2002
that Respondent
would not be transferring or selling the domain name to Complainant.
The domain name <customshirtshop.com> is not similar to the Respondent’s trade
name, Ramani Custom Attire. The Respondent is not generally known by the domain
name. However,
the Respondent’s domain name <customshirtshop.com> is essentially identical to, and
confusingly similar to, Complainant’s trademarks, trade name, and previously
registered Internet
domain names.
The Respondent’s domain name
customshirtshop.com is confusingly similar to the Complainant’s trademark THE CUSTOM SHOP, to the Complainant’s
trade name CUSTOM SHOP, INC., and to
the Complainant’s domain names <thecustomshirtshop.com>,
<thecustomshop.com>, <customshop.com>, and <customshirt.com>.
Prior to registering the domain name on
July 2, 2001, the Respondent had no rights or legitimate interests in respect
of the domain
name <customshirtshop.com>.
Neither Respondent nor his company,
Ramani Custom Attire, has been known commonly by the domain name <customshirtshop.com>.
On information and belief, Respondent was
aware of the trademarks, trade name, domain names, and previous New York store
trade of
the Complainant prior to his registration of the domain name <customshirtshop.com>.
Respondent’s commitment to transfer the
domain name to Complainant evidences his knowledge that Complainant’s rights in
the mark and
domain name were superior to Respondent’s rights.
Respondent’s use of the domain name <customshirtshop.com> is commercial
and is done with the intent of misleading and diverting consumers to his
website. Respondent’s attempts to stall the
transfer of the domain name to
Complainant until after the holidays indicates his intent to capitalize on the
good will of the Complainant
as long as possible.
Respondent is not making a legitimate
noncommercial or fair use of the domain name.
Complainant contends the domain name was
registered and is being used in bad faith, as evidenced by the following:
The
domain name <customshirtshop.com>
is not related to the trade name Ramani’s Custom Attire. The domain name is
very closely related to, and confusingly similar to,
the Complainant’s
trademarks, trade name, and domain names.
The Respondent indicated repeatedly that there would not
be a problem with him over the domain name. Ultimately, however, the Respondent
simply stalled for time to capitalize on the heavy selling season around the
holidays.
The Respondent placed a disclaimer on its website,
indicating that it is aware of the likelihood of confusion created by its use
of
the domain name. The disclaimer was placed “below the horizon” on the
website so that it is not immediately visible to visitors to
the website.
The Respondent
indicated to the Complainant that the Respondent was free to sell the domain
name but that he decided not to sell it
to the Complainant. This conduct
indicates that the Respondent would be willing to sell the domain name to the
Complainant for a
fee considerably in excess of Respondent’s out-of-pocket
expense in acquiring the domain name. Complainant also believes that the
Respondent wishes the Complainant to believe that the domain name could be sold
to a competitor of Complainant, in order to inflate
the price received by the
Respondent.
By using the domain name, Respondent has intentionally
attempted to attract, for commercial gain, Internet users to Respondent’s web
site by creating “initial interest confusion” and/or a likelihood of confusion
with the Complainant’s marks as to the source, sponsorship,
affiliation, or
endorsement of Respondent’s web site or of a product or service on Respondent’s
web site. Such conduct is further
evidence of bad faith.
By using the domain name, Respondent intends to create
and capitalize on initial interest confusion among web browsers.
By using the domain name, Respondent is violating the
rights of the Complainant in the mark, is diluting the distinctive character
of
the mark and its overall selling power, is engaging in deceptive and unfair
trade practices under Lanham Act Section 43(a), and
is in violation of the
Anti-cybersquatting Consumer Protection Act found at Section 43(c) of the
Lanham Act.
B. Respondent
Respondent denies most of Complainant’s
allegations. Respondent says that the communications between Respondent and
Complainant were
initiated by Complainant for the purpose of coercing and
intimidating Respondent into giving up its rights in the domain name.
Respondent contends that
it had a legitimate interest in the domain name <CUSTOMSHIRTSHOP.COM>
even prior to its registration since it was literally descriptive of the
business of Respondent, the making and selling of custom
made shirts.
Respondent is known for its business of making and selling custom made shirts
which is reflected in its domain name
<CUSTOMSHIRTSHOP.COM>.
Respondent Ramani Custom
Attire is the registered owner of the disputed domain name: <CUSTOMSHIRTSHOP.COM>
which is currently in use by Respondent, said registrar record was created July
2, 2001 and Respondent’s use of the domain name in
connection with its
legitimate business promotion commenced immediately thereafter.
Complainant acquired the
major assets of TheCustomShop.com, Inc., including TheCustomShop.com, Inc.’s
corporate name and associated
trademarks from the Bankruptcy Trustee appointed
by the Federal Bankruptcy Court for the Southern District of Texas, Houston
Division
on July 10, 2001.
Complainant owns
trademark registrations for THE CUSTOM SHOP for goods and services including
jewelry, neckties, shirts, trousers,
sweaters, suits, blazers, pants and
blouses and retail clothing store services. Complainant’s registered trademark
THE CUSTOM SHOP
is not limited to shirts but includes a variety of other goods
including neckties, trousers, sweaters, suits, blazers, pants, blouses,
jewelry
and retail clothing store services. Complainant owns no trademark registrations
for CUSTOM SHIRT SHOP which is the domain
name in dispute.
Respondent’s domain name
<CUSTOMSHIRTSHOP.COM>, registered July 2, 2001, is not identical
or confusingly similar to Complainant’s registered trademarks THE CUSTOM SHOP
which
are registered for a variety of clothing goods and and retail clothing
store services.
Respondent’s domain name
<CUSTOMSHIRTSHOP.COM> is not the same as, and is materially different
from, Complainant’s business name MICHAEL SMITH CUSTOM CLOTHIERS, INC. or any
of its alternate dba names THE CUSTOM SHOP or MYSHIRTMAKER.COM.
Respondent’s domain name
<CUSTOMSHIRTSHOP.COM> is literally descriptive of Respondent’s
business which includes the design, manufacture and sale of custom made shirts.
Respondent’s domain name
<CUSTOMSHIRTSHOP.COM> was registered and is being used in good
faith by Respondent to promote and market its business of designing, marketing
and selling
custom made shirts.
Respondent’s domain name
<CUSTOMSHIRTSHOP.COM> is directly related to Respondent’s trade
and business of designing, marketing and selling custom made shirts.
Complainant’s
communications with Respondent were coercive in nature and were intended to
intimidate Respondent into giving up its
valuable intellectual property rights
in disputed domain name.
Respondent has no
intention of selling, renting or otherwise transferring the domain name
registration to the Complainant or anyone
else.
Complainant, by commencing
this arbitration proceeding, is guilty of Reverse Domain Name Hijacking.
Complainant seeks by
this arbitration proceeding to deprive Respondent of the use of its lawfully
obtained and valuable intellectual
property rights in the disputed domain name by
making wild and unsupported allegations of improper conduct and motives against
Respondent.
Complainant seeks by
this arbitration proceeding to extend unlawfully and improperly trademark
rights associated with its trademarks
THE CUSTOM SHOP to cover Respondent’s
domain name <CUSTOMSHIRTSHOP.COM> which is materially different
from and not confusingly similar to Complainant’s trademarks THE CUSTOM SHOP.
Complainant’s
allegations of improper conduct by Respondent are convoluted and contradictory
to the extent that they acknowledge that
Respondent’s domain name is in actual
commercial use in its web site yet assert that Respondent is cyber squatting.
Complainant’s
allegations of improper conduct by Respondent are also contradictory to the
extent that they both acknowledge that Respondent’s
web site bearing the
disputed domain name carries a disclaimer, yet allege that Respondent’s use of
its domain name is done with
the intent of misleading and diverting consumers
to his website.
Complainant’s
allegations of improper conduct by Respondent are false, unfounded and
speculative and are entirely based on conjecture
by Complainant as to
Respondent’s motive and intent regarding its use of its lawfully obtained
domain name.
FINDINGS
I have found that the disputed domain name is
confusingly similar to Complainant’s registered trademarks, that Respondent has
no rights
or legitimate interests in respect of the domain name, and that
Respondent has registered and is using the domain name in bad faith.
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
There is no question of Complainant’s rights in
the trade mark THE CUSTOM SHOP. While these rights still rested in the
bankruptcy
trustee at the time of registration of the domain name by Respondent,
as of the date of acquisition of the assets of the bankruptcy,
they became the
property of the Complainant.
The domain name <customshirtshop.com>
is confusingly similar to Complainant’s mark because it incorporates the
entirety of Complainant’s mark and merely adds the generic
term “shirt”
in-between “custom” and “shop.” The
addition of a generic term to another’s mark does not create a distinct mark
capable of overcoming a claim of confusing similarity.
The evidence before me
establishes that Complainant’s mark, THE CUSTOM SHOP has acquired sufficient
distinctiveness that merely adding
the word shirt to the mark is insufficient
to take the domain name out of the realm of the confusingly similar.
Complainant succeeds on the first element.
Rights or Legitimate Interests
While I have noted and considered all of
Respondent’s arguments set out above, the Complainant’s arguments in this case
are more compelling.
Applying the tests set out in Policy 4(c) to this case, I
find that Respondent does not have rights or legitimate interests in the
domain
name.
Respondent knew about The Custom Shop and knew
that the business was in bankruptcy. Respondent also knew that the assets in
the hands
of the trustee were to be sold at auction on July 10, 2001. Eight
days before the sale, Respondent registered the domain name. Hence,
Respondent
knew about the rights of others in the name before Respondent’s registration
and use of the name.
While in the absence of Complainant’s marks, one
might argue that the domain name contains generic words only which are arguably
descriptive
of Respondent’s business, the registered, well-known marks
combining those words make the mark sufficiently distinctive to defeat
that
argument.
Knowing of the existence of the mark and the
fact the mark would be sold to a competitor within a few days, Respondent
registered
the domain name. The logical inference from this evidence is that
Respondent registered the name to capitalize on the goodwill attached
to THE
CUSTOM SHOP mark. That being the case, I conclude that Respondent was not using
the name on connection with a bona fide offering
of goods or services.
Respondent has never been commonly known by the
domain name.
Respondent is not making a legitimate
noncommercial or fair use of the domain name and in fact is using the domain
name exclusively
for commercial purposes in competition with the Complainant.
For these reasons, Complainant succeeds on the
second element.
Registration and Use in Bad Faith
The
allegations of bad faith in this case relate to Policy 4(b)(iii) and (iv); i.e.
whether Respondent registered the domain name
primarily for the purpose of
disrupting the business of a competitor, and whether by using the domain name,
Respondent intentionally
attempted to attract, for commercial gain, Internet
users to Respondent’s web site by creating likelihood of confusion with
complainant’s
mark as to the source, sponsorship, affiliation or endorsement of
the web site or of a product or service on the web site.
The
evidence before me establishes that Respondent knew about The Custom Shop’s
rights in the THE CUSTOM SHOP mark when it registered
the disputed domain name.
Respondent knew these rights were being sold shortly by the bankruptcy trustee.
Respondent knew that the
business was in bankruptcy and that its websites were
not up and running. Complainant invites me to conclude that Respondent
therefore
seized the opportunity to benefit from Internet user confusion and
registered the disputed domain name to capitalize on that confusion.
In circumstances
such as this, where it is clear that Respondent chose a mark it knew to be
similar to another, one can infer intent
to confuse. I find therefore, that
Respondent’s intent in registering the domain name was to cause confusion
between its business
and the Complainant’s business, in the hopes of commercial
gain. The proximity in time of the bankruptcy auction and the registration
of
the domain name is no coincidence. Respondent knew that Complainant had taken
steps toward purchase of the valuable assets of
the bankrupt, including the
intellectual property. Respondent knew about THE CUSTOM SHOP mark. Respondent
decided to register the
domain name and operate a web site to capitalize on the
familiarity of customers with that mark. These circumstances amount to bad
faith under the policy.
I do not accept that the use of a disclaimer on
the web site is sufficient to take this case out of the realm of bad faith. The
likelihood
of confusion arises with the name itself. Once a user has entered
Respondent’s competing web site, Respondent’s intention to use
the confusion to
attract users to its web site is realized.
In
light of my findings, I need not deal with Respondent’s claim of reverse domain
name hijacking.
DECISION
I find in favor
of the Complainant in this case and order that the domain name <customshirtshop.com>
be transferred to Complainant.
Anne M. Wallace, Q.C. , Panelist
Dated: June 3, 2002
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