DECISION

Donna Salyers' Fabulous-Furs, Inc. v. Fabfurs, Inc.

Claim Number: FA0405000268050

PARTIES

Complainant is Donna Salyers' Fabulous-Furs, Inc. (“Complainant”) represented by Kathryn E. Smith, of Wood, Herron & Evans, LLP, 2700 Carew Tower, 411 Vine Street, Cincinnati, OH 45202.  Respondent is Fabfurs, Inc. (“Respondent”) 252 Park, Malone, NY 12953.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <fabfurs.com>, registered with Network Solutions, Inc.

PANEL

The undersigned, Carlos Rodriguez-Garcia, certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 4, 2004; the Forum received a hard copy of the Complaint on May 10, 2004.

On May 6, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <fabfurs.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 May 11, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 1, 2004 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@fabfurs.com by e-mail.

A timely Response was received and determined to be complete on May 24, 2004. 

Furthermore, Complainant submitted a timely Additional Submission on June 1, 2004 which was considered. Respondent submitted an untimely Additional Submission on June 14, 2004 and Complainant submitted an untimely Second Additional Submission on June 14, 2004.  Neither of the untimely submissions were considered by the panelist as they did not comply with Supplemental Rule 7.

On June 3, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Carlos Rodriguez-Garcia as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

This Complaint is based upon Complainant Donna Salyers’ Fabulous-Furs, Inc.’s  (“Salyers”) ownership of a United States federal trademark registration which refers to the company’s primary identifier, FABULOUS-FURS, and its sales of “FABULOUS-FURS”-branded goods, and in particular imitation fur items, on its internet website, located at, in its catalogs, and in its retail store location in Covington, Kentucky.

In particular, Salyers owns U.S. Federal Trademark Registration No. 2,673,536 for the word mark, FABULOUS-FURS. The registration issued on January 14, 2003 for the following goods and services:

                International Class               Goods/ Services                    1^st Use in Commerce

                20                                           Pillows                                                                    1994

                25                                           Clothing, namely, coats, jackets, neck 1988

                                                                wraps, shawls, collars, muffs, ear muff, hats,

                                                                headbands, jackets, anoraks, raincoats,

                                                                parkas, wraps, vests, gloves, mittens and

                                                                mittens with attached ice scraper

                18                                           Pet clothing, namely, pet coats                             7/1/1994

                35                                           Retail stores, mail order catalog services             1988

                                                                and computerized online retail services in

                                                                the field of clothing and clothing accessories,

                                                                jewelry, toys, luggage, home furnishings,

                                                                pet accessories, sewing patterns, and throws

As a matter of background, Complainant Salyers markets a wide range of faux fur products and related accessories under its FABULOUS-FURS Mark.  Complainant’s product line includes faux fur coats, jackets, vests, throws, pillows, children’s clothing, faux fur fabrics for home-sewing projects, headwear, footwear, petwear, gloves, handbags, jewelry and other accessory items, home décor items, office accessories, and items for the bath and spa.  Complainant has one retail store location in Covington, Kentucky (directly across the Ohio River from downtown Cincinnati, Ohio). 

Complainant does extensive marketing on its online internet website, which is responsible for a significant volume of sales of Complainant also has a considerable catalog customer base for its catalog distribution.  Complainant has operated in the United States under the FABULOUS-FURS Mark since at least as early as 1988. Not surprisingly, Complainant’s customers often refer to the company and its products in shortened form as “Fab Furs”.

Furthermore, Complainant’s filed a supplemental submission which was considered.

B. Respondent

Mrs. Leena Hamilton, wife of respondent has been sewing fabric based fur also know as “faux fur” into blankets called throws and selling them to friends and family since March 2000.  She discovered a source for an incredible high-end faux fur while visiting her family in Sweden.  This French based fur made by TISSAVEL was of such high quality that it made the wholesale price three times more expensive than what was currently being used to make fur throws.  With good business acumen she realized that she could sell this fabric-based fur to people looking for a higher quality and wanting to do-it-themselves and also sell throws made-to-order.

On February 13, 2002 respondents decided to register the domain name FABFUR.COM that they created by compressing FABric FUR together and then added the plural FABFURS.COM. FABFURS.COM and FABULOUSFURS.COM are not similar and FABULOUSFURS is comprised of two generic words used widely on the Internet.

Respondents argue that they have shown that they built their business, registered FABFURS.COM and promoted it in good faith with the conviction that they are providing a unique source for high-end faux fur fabrics and products.

C. Additional Submission by Respondents

Regardless of the arguments presented by FABULOUS-FURS they argue that that they incorporated their business name in the State of New York as Fabfurs Inc and our domain name registered prior to the incorporation was completed in good faith. 

In their original response they never eluded to an industry standard naming faux fur as “fabric fur” as declared by DONNA SALYER of FABULOUS-FURS but repeatedly used “fabric based fur” throughout my response.  The name FABFURS was created using artistic license and the words “fabric” and “fur”.

A second supplemental respondent filing was not considered due to the fact that it was filed in an untimely fashion.

FINDINGS FACTUAL AND LEGAL GROUNDS

This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).

[a.]       The Respondent’s Domain Name Is Identical or Confusingly Similar to Complainant’s FABULOUS-FURS trademark.  ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).

As evidenced in the preceding paragraphs, Complainant has already demonstrated its ownership and use of the “FABULOUS-FURS” Mark, the registration it has obtained therefore, and the manner in which Complainant uses its FABULOUS-FURS Mark in  relation to the faux fur products it sells.  Complainant’s FABULOUS-FURS Mark is widely and well-known as a source of imitation fur products, in addition to a wide variety of decorative items containing faux animal print designs for the home, office, and bath.

The domain name which Respondent has registered, namely,  <FABFURS.com>, is confusingly similar to Complainant’s “FABULOUS-FURS” Mark and name.  ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i). 

The Respondent’s domain name, <FABFURS.com>, incorporates Complainant’s trademark and name in its entirety, albeit in a shortened form.  When a customer visits Respondent’s website, on which the Respondent markets a wide variety of imitation fur products, that customer would likely be confused as to the source of information and  products contained on Respondent’s website, and would likely be mislead relative to the source of the goods shown on Respondent’s website.

As noted above, Complainant first used its FABULOUS-FURS Mark in the  United States at least as early as 1988, and has been continuously selling faux fur clothing items and decorative items on a national basis since that time.  Complainant intends to use and is currently using, advertising, offering for sale, and selling in interstate commerce imitation fur products under its FABULOUS-FURS Mark, as well as faux fur throws, pillow covers, and numerous other decorative items. 

Complainant has invested a substantial amount of time, effort, and money developing the reputation of its FABULOUS-FURS Mark, and the goodwill associated therewith.  From such efforts, FABULOUS-FURS has become and is now widely known and recognized as the source of the goods marketed under the FABULOUS-FURS brand and Mark.  As a result, Complainant’s FABULOUS-FURS Mark is closely and universally associated with Complainant. 

Respondent’s domain name, namely, <FABFURS.com> so resembles Complainant’s FABULOUS-FURS Mark, as to be likely, if used in connection with the sale or advertisement of goods and/or services of Respondent, to cause confusion or  mistake or to deceive persons by creating the erroneous impression that Respondent’s  goods and/or services originate with or come from Complainant, or are endorsed by, or are sponsored by, or are connected in some way with Complainant.  As a result, the registration of the domain name <FABFURS.com> by Respondent is injurious to  Complainant.

Because of the widespread renown, use, promotion, distribution and  advertisement by Complainant of the FABULOUS-FURS Mark, and in particular,  Complainant’s FABULOUS-FURS Mark for imitation fur products, Respondent knew or should have known of Complainant’s rights in the FABULOUS-FURS Mark, and the valuable goodwill represented and symbolized by Complainant’s FABULOUS-FURS  Mark when it registered the domain name <FABFURS.com>.

Respondent’s adoption, registration, and contemplated use of the domain name  <FABFURS.com> is without the license or permission of Complainant.  Therefore, Respondent’s registration and contemplated use of the domain name  <FABFURS.com> infringes Complainant’s rights under the Federal Trademark Act, namely, 15 U.S.C. Section 1114, and 15 U.S.C. Section 1125(a)(1)(A) of the Lanham Act, and constitutes false advertising under 15 U.S.C. Section 1125(a)(1)(B) of the Lanham Act, and constitutes unfair competition in violation of 15 U.S.C. 1125(a).

[b.]       The Respondent Has No Known Rights Nor a Legitimate Interest In the FABFURS.com Domain Name

Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of this Complaint, because Respondent is not affiliated with, licensed by, in privity with, has not been given permission to use the mark by Complainant, and is not otherwise in any way connected with Complainant or its affiliates. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii).

Respondent did not seek to register the FABFURS.com domain name until February 14, 2002, and did not adopt or use the FABFURS mark until November 2002.  By this time, Complainant had been doing business under the FABULOUS FURS Mark for over a decade (since 1988, and on the internet since at least as early as 1996).  It strains credulity to believe that Respondent was unaware of Complainant and did not do a search of the internet and find Complainant’s website at prior to plunging into online sales of imitation fur products itself.  Even assuming that Fabfurs, Inc. was ignorant of the existence of a competitor with essentially the same name operating a few hundred miles to the south, Respondent has now been made aware of Complainant and its FABULOUS-FURS Mark. 

First, Fabfurs, Inc.’s application for federal registration of the FABFURS mark has been refused by the United States Patent and Trademark Office as of January 13, 2004 due to Complainant’s prior rights in the FABULOUS-FURS mark. Secondly, Fabfurs is on notice of Complainant’s by way of a  letter sent by Complainant’s counsel to Respondent in which Complainant asserts its  prior rights to the FABULOUS-FURS Mark.  These facts weigh against the intentions of Respondent to continue to offer goods under the FABFURS mark in good faith.  See America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that  "[I]t would be unconscionable to find a bona fide offering of services in a respondent’s  operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business").  See also Koala Web Design v. Patricia Rodrigues d/b/a Koala Web Design, FA0012000096333 (Nat. Arb. Forum Feb. 5, 2001) (finding that “After ten months of being well aware of Complainant’s existence and his claims that koalawebdesign.com infringed his rights, Respondent chose to register koalawebdesign.net.”  The domain was ordered to be transferred to Complainant.)

As further evidence of Respondent’s lack of legitimate business interest or purpose in obtaining the domain name <FABFURS.com>, the Panel should also consider the following:

            (i.)        Respondent has attempted to federally register its “FABFURS” mark with   the United States Patent and Trademark Office (“USPTO”), but its registration has been refused because of the mark’s confusing similarity to Complainant’s FABULOUS-FURS Mark and registration.  Notably, the U.S. Trademark Office refused to register Respondent’s mark because of a “likelihood of confusion with the mark in U.S. Registration No. 2673536” (the registration corresponding to Complainant’s FABULOUS-FURS Mark).  The Examining Attorney at the USPTO notes that the marks are “similar in sound, appearance, connotation and overall commercial impression”, and notes that “The applicant’s term FAB is merely a recognized abbreviation of ‘fabulous.’”  The Examining Attorney attaches a copy of the dictionary definition of the term “FAB”, which indicates that the term is slang for “Fabulous; wonderful.”

In its federal trademark application, Respondent, Fabfurs, Inc., sought to register its mark in connection with the following goods:  “Blanket throws, Fabric of imitation animal fur, Pillow shams, cases, covers, quilts.”  Respondent claims to have used its FABFURS mark on goods sold in interstate commerce since November 2002, which post-dates Complainant’s first date of use of the FABULOUS-FURS Mark in 1988 by some fourteen years.  

                        (ii.)       Respondent Fabfurs, Inc. is a direct competitor of Complainant in the faux fur goods market.  A copy of Respondent’s internet website located at is attached hereto as Exhibit E.  On its website, Respondent sells faux fur products of the same type offered by Complainant at its internet site,. 

Clearly, Respondent’s sole motivation in registering the <FABFURS.com> domain was for the purpose of diverting customers seeking Complainant’s legitimate internet website at which genuine FABULOUS-FURS branded goods are sold, and deceiving such customers into mistakenly believing that the site is one which is sponsored by or affiliated with Complainant.  Such use has not been held to be a bona fide offering of goods or services within the meaning of ICANN Policy ¶ 4(c)(i).  See Vapor Blast Mfg. Co. v. R & S Tech.,Inc. , FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Kosmea Pty Ltd v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark.)

Here, Respondent has registered FABFURS.com not for use in connection with a “bona fide offering of goods or services,” but to have consumers believe that Respondent and Complainant are in some way affiliated, and/or to prevent Complainant from registering the FABFURS.com domain for its own legitimate business use.

(iii.)      On April 21, 2004, counsel for Complainant sent a letter to Respondent to notify Respondent that its registration of the <FABFURS.com> domain name violated Complainant’s rights.  Respondent has not yet answered counsel’s letter.  Counsel’s letter further put Respondent on actual notice of Complainant’s prior use of the FABULOUS-FURS Mark, and of the potential for confusion which results from Respondent’s continued use of the FABFURS mark. 

[c.]       Respondent’s registration of the FABFURS.com domain name should be considered as having been registered and being used in bad faith.  

Generally, the Panel looks at “the totality of circumstances” to determine if Respondent’s bad faith is apparent.  See, e.g., Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

(i.)        Respondent’s registration of the FABFURS.com domain name appears to be with the explicit intent of diverting business away from Complainant, and/or to confuse customers who seek out Complainant’s business concern and/or Complainant’s goods or services on the internet.  By virtue of the ubiquitous nature of the internet, the public will inevitably be confused as to source, or as to the identity of the provider of services offered under same or essentially similar names.

(ii.)       Because Respondent is not affiliated with or connected in any way with Complainant, it is further believed that Respondent registered the domain name in bad faith.  Complainant believes that Respondent obtained the domain name for <FABFURS.com> merely for the purpose of exploiting the rights of Complainant, and/or to profit from “pirating” Complainant’s ability to use a version of its FABULOUS-FURS mark within the context of a “.com” domain name, and to frustrate Complainant’s business opportunities on the internet by diverting customers away from Complainant’s legitimate website. 

Whatever Respondent’s intent in registering the domain name, Respondent’s actions have disrupted Complainant’s business.  Respondent’s actions are injurious to Complainant because Respondent may attempt to attract, for Respondent’s own commercial gain, internet users to Respondent’s website or to some other on-line location owned or controlled by Respondent, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

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.

Complainant asserts that it has established rights in the FABULOUS-FURS mark through registration of the mark with the United States Patent and Trademark Office (Reg. No. 2,673,536, filed June 17, 1999, registered January 14, 2003).  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

The Panel finds that once a mark has been registered, the date in which the registrant’s rights in the mark are effective revert back to the date the application was filed with the United States Patent and Trademark Office.  See FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration). 

Moreover, Complainant states that it has used the mark in commerce since 1988.  The Panel finds that Complainant has established common law rights in the mark through use in commerce.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that Complainant has common law rights in the mark FISHTECH which it has used since 1982).

The Panel finds that the <fabfurs.com> domain name is confusingly similar to Complainant’s FABULOUS-FURS mark.  The only difference is the common abbreviation of the word “fabulous” and the omission of the hyphen, which do not significantly distinguish the domain name from the mark.  See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (stating that “[n]otwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for “Modern Props.” “Mod” cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning); see also Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar to the mark MICROSOFT because it incorporates the terms "microsoft" and/or "MS" a nickname for "Microsoft”); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark). 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <fabfurs.com> domain name be TRANSFERRED from Respondent to Complainant.

Carlos Rodriguez-Garcia, Panelist

Dated: June 28, 2004

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