WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chromalloy Men�s Apparel Group, Inc. v. Burch & Hatfield Formal Shops, Inc.
Case No. D2000-1046
1. The Parties
The Complainant is Chromalloy Men�s Apparel Group, Inc., a corporation organized in the State of Delaware, United States of America (USA), with place of business in Hackensack, New Jersey, USA.
The Respondent is Burch & Hatfield Formal Shops, Inc., with place of business in Northport, Alabama, USA.
2. The Domain Name(s) and Registrar(s)
The disputed domain name is "".
The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) The Complainant initiated the proceeding by the filing of a complaint by e-mail received by the WIPO Arbitration and Mediation Center ("WIPO") on August 14, 2000, and by courier mail received by WIPO on August 16, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On August 23, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc. (with the Registrar�s Response received by WIPO on August 24, 2000). On August 24, 2000, WIPO completed its formal filing compliance requirements checklist.
(b) On September 1, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail.
(c) Respondent�s response was received by WIPO via e-mail on September 20, 2000, and via courier mail on September 22, 2000. Respondent also transmitted the response to Complainant.
(d) On September 26, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On September 27, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
(e) On September 28, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by October 11, 2000. On September 28, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.
(f) On October 2, 2000, WIPO transmitted by e-mail to the Panel a Reply to Respondent�s Response sent by e-mail from Complainant to WIPO. On October 2, 2000, WIPO also transmitted by e-mail to the Panel an objection from Respondent to WIPO�s forwarding of Complainant�s Reply to the Panel, and requesting that if the Panel did accept the Reply, that Respondent be given ten days in which to file its own response. On October 2, 2000, the Panel notified the parties that since it had received no request for leave to file a supplemental submission from Complainant, that it was not in a position to act on the Reply transmitted to it from WIPO, nor on Respondent�s views and request.
(g) On October 4, 2000, Complainant transmitted to the Panel (and Respondent and WIPO) a request for leave to file, and for the Panel�s acceptance, of a Reply to Respondent�s Response.
(h) On October 5, 2000, the Panel notified the parties (and WIPO) by e-mail that it would accept and consider Complainant�s Reply to Respondent�s Response, and that Respondent had leave until midnight October 15, 2000 to file a response to that Reply.
(i) On October 6, 2000, WIPO advised the parties and Panel that the revised date for the Panel�s decision was October 20, 2000.
(j) On October 13, 2000, Respondent transmitted its Response to Complainant�s Reply to the Panel (and Complainant and WIPO) via e-mail (with hard copy also transmitted).
The Panel has not received any further requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
Complainant acquired the domain name "" from a licensee of one of its product lines and became registrant of that name on or before October 4, 1999 (Complaint, Annex H). Complainant�s licensee, Dessy Creations, registered the "" domain name on March 4, 1997 (Complaint, Annex D). Complainant alleges that its licensee initially registered the domain name on its behalf (Complaint, para. 12(1)), and also that "Ownership of the �TUXEDOS4U.COM� domain name registration was placed in Complainant�s name on or before October 4, 1999" (Declaration of Robert Bennet).
Complainant has submitted a copy of a letter dated June 2, 1997 to "Dear Valued Customer" which stated:
"Men�s Apparel Group is pleased to announce the development of our exciting new website, �TUXEDOS4U.COM�. In addition to being able to view all of Men�s Apparel Group�s tuxedo lines, we have designed the website complete with a STORE FINDER. The STORE FINDER lets the formal wear customer locate the specialists whom [sic] carry their favorite tuxedos by After Six, Oscar de la Renta or Raffinati. We hope that you and your customers find TUXEDOS4U.COM a helpful tool in choosing Men�s Apparel Group�s formal wear.
�
Robert Bennet
President" (Complaint, Annex E)
Complainant asserts that "Indeed, Respondent received the letter" (Declaration of Bennet). There is no evidence submitted to support this assertion, other than Complainant�s indication that an apparent mass mailing including Respondent was sent out (Complaint, para. 12(1)). Respondent denies receipt and knowledge of the subject letter (Affidavit of Craig S. Burch).
Complainant maintains a website with address at "www.". Neither the "www." Internet address nor the "" domain name appears on Complainant�s home page (Complaint, Annex J). The "www." web address has appeared following Complainant�s street address at the bottom at least of two web pages accessable from Complainant�s home page, and as part of Complainant�s contact information in an advertisement in "Brides" magazine (id., Annex G). At present, Complainant�s website does not appear to contain any reference to the "" domain name (Panel�s on-line review of October 20, 2000).
On July 31, 2000, Complainant submitted an application for registration of the service mark "TUXEDOS4U" to the U.S. Patent and Trademark Office (USPTO), claiming a date of first use "as early as March 1997" (Complaint, Annex I). The application was submitted in Class 2, covering "Dissemination of advertising for others in the field of clothing via a global network". The supporting use in commerce documentation submitted by Complainant to the USPTO is similar to that submitted in this proceeding. Respondent�s search indicates that Complainant�s application has been assigned serial number 76099649, in International Class 35, and that the application has not yet been assigned to an examiner (Response, Annex E).
On June 12, 2000, Complainant (through its counsel) sent a cease and desist demand to Respondent (Letter from Marc Lieberstein to David Burch of June 12, 2000, Complaint, Annex K). On June 23, 2000, Respondent (through its counsel) sent a counter-cease and desist demand to Complainant, based on Respondent�s (apparent) registration of the disputed domain name ("") prior to Complainant�s registration of the "tuxedos4U.com" domain name (Letter from Bert M. Guy to Marc Lieberstein and Robert Bennett [sic] of June 23, 2000, id., Annex M).
Complainant�s president, Robert Bennet, has submitted a sworn affidavit in which he states that two customers mistakenly reached Respondent�s website when trying to reach Complainant�s website (Affidavit of Bennet, at para. 8).
Complainant provides its tracking data that indicates its website has received between 140,000 and 210,000 page views per month since January 2000 (Reply to Respondent�s Response, Annex P) .
According to the registrar�s verification response to WIPO, dated August 24, 2000, "Burch & Hatfield Formal Shops" is the listed registrant of the domain name "TUXEDO4U.COM". The Administrative Contact is "Kramer, Steve". A Network Solutions� WHOIS database search indicates that the record of registration was created on February 27, 1999, and that the record was last updated on March 1, 2000 (Complaint, Annex A).
Respondent maintains a website at Internet address "www.". That website displays the "www." address in large type directly below Respondent�s trade name on its home page and on other web pages, as well as with Respondent�s retail store street addresses (Response, Annexes F and J).
The designer of Respondent�s web site, Robert Lassers (of the firm "Exposites" of Lake Forest California", also listed as the firm of Respondent�s Administrative Contact for the disputed domain name), has submitted a sworn affidavit stating, inter alia: "I personally assisted Burch & Hatfield Formal Shops, Inc. ("Burch & Hatfield") in developing their Internet web site and choosing the domain name TUXEDO4U.COM. My main contact with Burch & Hatfield was Mr. Craig Burch. "Burch & Hatfield first considered using BURCHANDHATFIELD.COM as their Internet domain name. "Exposites recommended that Burch & Hatfield not use BURCHANDHATFIELD.COM for their domain name because the spelling for Burch could be a problem and it is long. We also considered BOWTIES.COM. "Exposites assisted Burch & Hatfield in choosing a domain name that is easy for the customer to remember and states Burch & Hatfield�s business when listed in advertising with the company name. At no point during the discussions, was anyone with Burch & Hatfield or Exposites aware of any Internet domain name for TUXEDOS4U.COM. "Neither Dessy Creations nor Men�s Apparel Group, Inc. was ever mentioned during the discussions about choosing a domain name for Burch & Hatfield. "The purpose for developing the www. site and registering the TUXEDO4U.COM domain name was to advertise Burch & Hatfield�s business through the Internet. "Burch & Hatfield has continuously maintained a web site at the domain name TUXEDO4U.COM since at least February 27, 1999. "Burch & Hatfield has maintained its registration of the domain name TUXEDO4U.COM continuously since at least February 27, 1999." (Affidavit of Robert Lassers, Response, Annex B)
Respondent�s president, Craig Burch, has submitted an affidavit indicating that he was unaware of Complainant�s (or its licensee�s) domain name prior to registration of the disputed domain name, and that he did not receive the "Dear Valued Customer" letter of June 2, 1997 to which Complainant has referred.
The Service Agreement in effect between Respondents and Network Solutions subjects Respondents to Network Solutions� dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)).
5. Parties� Contentions
A. Complainant
Complainant contends that it has trademark rights in the "TUXEDOS4U" name based on its use in commerce on the Internet and in bridal magazine and catalogue advertising since March 1997. Complainant asserts that potential customers associate that mark with Complainant as a provider of services on the Internet. Complainant asserts that such services include offering "its advertising services to formal wear and evening shops across the United States" (Complaint, para. 12).
Complainant contends that the disputed domain name, "TUXEDO4U.COM" is confusingly similar to its "TUXEDOS4U" trademark. Complainant contends that Respondent registered the disputed name subsequent to Complainant�s acquiring rights in its mark, and subsequent to its beneficial registration through its licensee of the "TUXEDOS4U.COM" domain name.
Complainant alleges that Internet users are likely to be confused by Respondent�s use of the disputed domain name, and that actual confusion has already occurred.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because Complainant has not authorized Respondent to use its mark, and is not making legitimate non-commercial or fair use of the mark.
Complainant alleges that Respondent has registered and used its mark in bad faith because it intended to use Complainant�s mark to divert Internet users to its own website, and to disrupt Complainant�s business.
Complainant requests that Respondent�s registration of the disputed domain name be cancelled (Complaint, para. 13).
B. Respondent
Respondent concedes that the domain names "TUXEDOS4U.COM" and "TUXEDO4U.COM" are similar.
Respondent contends that Complainant has no trademark or service mark rights in "TUXEDOS4U". Respondent contends that "TUXEDOS4U" does not identify a source of services, but merely functions as an Internet address. Respondent contends that Complainant�s "TUXEDOS4U.COM" website does not serve as a source of any goods or services. Respondent contends that even as to Complainant�s "Store Finder" service, independent retailers do not pay to be listed by Complainant. Respondent contends that Complainant�s website is used to promote Complainant�s branded products that bear no relation to "TUXEDOS4U".
Respondent asserts that it has rights and legitimate interests in the disputed domain name, "TUXEDO4U.COM". Respondent indicates that it is the largest men�s formal wear chain in Alabama and Mississippi, that it has been in business since 1964, and that before it knew of Complainant�s domain name or of this dispute, it used the disputed domain name in connection with the bona fide offering of goods and services.
Respondent contends that it did not register the disputed domain name in bad faith. It contends it had no knowledge of Complainant�s "TUXEDOS4U.COM" domain name when it registered the disputed domain name, that its choice of the disputed domain name was derived independently, that Complainant (as a manufacturer of formal wear) and Respondent (as a retailer of formal wear) are not in the same channels of trade, and do not compete. Respondent asserts that it would derive no commercial benefit from Internet user confusion with Complainant�s domain name.
Respondent alleges that Complainant�s asserted "TUXEDOS4U" mark combines a generic product name with "4U.COM", and submits evidence that such formulation is a common choice among domain name registrants. As such, Respondent itself would logically choose such a formulation in selecting its domain name.
Respondent asserts that Complainant�s initiation of this proceeding is frivolous, as is its belated submission of an application for trademark registration with the USPTO, that this proceeding was initiated to harass and intimidate Respondent, and that this proceeding has led Respondent to great expense and loss of time. Respondent requests that the Panel make a determination that Complainant has engaged in reverse domain name hijacking.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion 1. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this proceeding, Respondent has furnished a detailed Response to the Complaint in a timely manner. There is no issue as to whether Respondent received adequate notice of these proceedings.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent�s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
In this proceeding, Complainant has failed to establish the first element necessary to prove that Respondent has engaged in abusive domain name registration. The Panel determines that Complainant has not established rights in the trademark or service mark "TUXEDOS4U". In light of this determination, the Panel need not consider whether the domain name "" is identical or confusingly similar to Complainant�s alleged mark. Nor need the Panel consider whether Respondent has rights or legitimate interests in "", nor whether Respondent�s registration and use of the disputed domain name was in bad faith.
Complainant has failed to demonstrate that it has rights in "TUXEDOS4U" as a trademark or service mark. Complainant has not registered the mark at the USPTO. The submission of an application for registration of a mark does not establish a presumption of rights in that mark 2. Registration of a mark is not a precondition to a finding of rights in that mark within the meaning of paragraph 4(a)(i) of the Policy. However, a party asserting common law rights in a mark carries the burden of demonstrating distinctiveness or secondary meaning 3.
Complainant�s asserted mark consists of a generic or common descriptive term ("TUXEDOS") combined with an alphanumeric formulation ("4U") commonly used as an abbreviation for the phrase "for you" 4. Substantial evidence would be required to demonstrate consumer or Internet user association between Complainant�s asserted mark and Complainant as a source of products or services so as to establish secondary meaning and trademark rights in favor of Complainant 5.
Complainant�s evidence of use of its asserted mark is not sufficient to persuade the Panel of trademark or service mark rights in "TUXEDOS4U". Complainant has submitted one form letter sent to buyers or potential buyers of its differently trademarked clothing product lines in mid-1997, announcing its intention to launch a website. The home page of the website identified by the "www." Internet address does not display the asserted mark. To the extent the "www." address has appeared elsewhere on Complainant�s website, this was as part of Complainant�s general contact information (including street address) 6.
Although Complainant has presented evidence that its website is fairly frequently visited by Internet users, this does not establish that Internet users draw a connection between "TUXEDOS4U" and Complainant as a source of goods or services. Internet users may well visit Complainant�s website because its domain name is generic or commonly descriptive, or because the trademarked product lines advertised on Complainant�s website are identified by search engines through metatags and keywords. Complainant has presented no evidence that Internet users or customers have sought to find it because they identify "TUXEDOS4U" as its trademark or service mark 7.
Trademark registration is not a precondition to a finding of rights in a mark. As here, however, where the asserted mark is a combination of a generic term and an abbreviation for a common phrase, the party asserting common law rights bears a substantial burden of proving distinctiveness and secondary meaning. Complainant has not carried this burden.
Complainant has failed to establish trademark or service mark rights in "TUXEDOS4U" for purposes of satisfying Paragraph 4(a)(i) of the Policy. The Panel having determined that Complainant has not adequately demonstrated rights in a trademark or service mark, its inquiry is at an end. The Panel rejects Complainant�s claim of abusive domain name registration against Respondent, and denies its request that the Panel ask the registrar to cancel Respondent�s registration of the domain name "".
The Panel denies Respondent�s request for a determination that Complainant has engaged in reverse domain name hijacking within the meaning of Paragraph 15(e) of the Policy. For the Panel to make such a serious determination would require further probing into Complainant�s motivations in initiating this proceeding. Such an inquiry might more appropriately be undertaken in a court setting.
7. Decision
Complainant, Chromalloy Men�s Apparel Group, Inc., has failed to establish trademark or service mark rights in "TUXEDOS4U" for the purposes of satisfying Paragraph 4(a)(i) of the Policy. The Panel therefore rejects its claim of abusive domain name registration against Respondent, Burch & Hatfield Formal Shops, Inc., and denies its request that the Panel ask the registrar to cancel the domain name "".
Frederick M. Abbott
Sole Panelist
Dated: October 20, 2000
Footnotes:
1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
2. An application creates a presumption of use contingent on subsequent registration.15 USCS � 1057(c).
3. See, e.g., Century 21 Real Estate v. Billy Sandlin, 846 F.2d 1175 (9th Cir. 1988).
4. Annex C to Respondent�s Response to Complainant�s Reply identifies, for example, "", "", "", "", "", "", "" and a number of other registered domain names using generic terms in combination with "4u" (and this list is limited to domain names involving clothing).
5. See, e.g., Mil-Mar Shoe v. Shonac, 75 F. 3d 1153 (7th Cir. 1996).
6. Complainant�s website does not presently appear to make use of the asserted mark at any point (see Factual Background). However, the difference between using the asserted mark as part of general address information, and not using the asserted mark for any purpose, is not material to the Panel�s decision.
7. Complainant has submitted an affidavit indicating that two customers found Respondent�s website when searching for Complainant�s website. There is no indication as to the Internet search and addressing procedure being used by the two customers stated to have become confused.
Full & Egal Universal Law Academy