WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Burlington Coat Factory WarehouseCorporation v. Smartsoft, L.L.C. c/o Jan Knepper
Case No. D2000-1792
1. The Parties
TheComplainant is: Burlington Coat Factory Warehouse Corporation, a Delawarecorporation with its principal place of�business at 1830 Route 130 North,�Burlington, New Jersey 08016, U.S.A.�The Complainant is represented by: Alice Carmichael Richey, Esq.,Brandon C. Fernald, Esq., and Michael A. Tobin, Esq. of� Kennedy Covington Lobdell & Hickman,LLP, Bank of� America Corporate Center,42nd Floor, 100 North Tryon Street, Charlotte, North Carolina 28202,U.S.A.
The Respondentis: Smartsoft, LLC, an entity with an address at 88 Petersburg Road,Petersburg, New Jersey 08170, U.S.A.�
2. The Domain Names andRegistrar
The domainnames in dispute are: ,, ,, .
The registrarfor the disputed domain names is: Dotster, Inc., 11807 N.E. 99thStreet, Suite 1100, Vancouver, Washington 98682, U.S.A.��
3. Procedural History
This disputeis to be resolved in accordance with the Uniform Policy for Domain Name DisputeResolution (the Policy) and Rules (the Rules) approved by the InternetCorporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and theWorld Intellectual Property Organization Arbitration and Mediation Center'sSupplemental Rules for Uniform Domain Name Dispute Resolution (the Center, theSupplemental Rules).
The Complaintwas filed on December 27, 2000.� OnJanuary 4, 2001 the Center requested that the Registrar Dotster, Inc. check andreport back on the registrant for the domain names ,, ,,� and.
Also onJanuary 4, 2001, Dotster, Inc. reported back that the registrant for theabove-listed domain names was the Respondent, Smartsoft, LLC, contact personJan Knepper, at 88 Petersburg Road, Petersburg, New Jersey 08170, U.S.A.
On January 5,2001 the Complaint was sent by registered mail and by e-mail to the Respondentand this proceeding officially began.�The Respondent failed to file a response, and on January 25, 2001 wasdeclared in default.
TheAdministrative Panel submitted a�Declaration of� Impartiality andIndependence on February 6, 2001, and on February 8, 2001 the Center proceededto appoint the Panel.
The Panelfinds the Center has adhered to the Policy and the Rules in administering thisCase.
This Decisionwas due by February 21, 2001, but the Center granted the Panel an extensionuntil March 1, 2001.
4.�Factual Background
TheComplainant Burlington Coat Factory Warehouse Corporation is a clothing andaccessory retailer in the United States of America.� It claims currently to operate more than 280 stores in 42 statesand to employ over� 26,000 employees.
Complainantitself states that its� product line,notably its coats, includes clothing items made with animal fur.� As a result, Complainant has been the targetof criticism for alleged cruelty to animals.�The Respondent has used the disputed domain names( etc.) to feature the animal protectionorganization "Last Chance for Animals" and its web site.� In doing so,it would appear the Respondent intends to criticize the Complainant for its manufacturingmethods.
But theRespondent also uses each of� thedisputed domain name web sites to� selldomain name registrations as an agent of the registrar for the disputed domainnames in this Case, ie, Dotster, Inc.
Apparentlythere has been no correspondence between the Complainant and theRespondent.� Instead, the Complainanthas initiated this proceeding seeking the transfer of� the disputed domain names.
5.� The Parties' Contentions
Complainant's Contentions:
- The disputed domain names are confusingly similar to Complainant's trademark.
-� The Respondent has norights or legitimate interests in the disputed domain names.� The Complainant has not given Respondent theright to use the disputed domain names and the Respondent has never beencommonly known by the names.
- The Respondent wantsinternet users to access the web site using� the disputed domain names, while along theway purchasing a domain� nameregistration with the registrar Dotster, Inc.
- The Respondent isattempting to tarnish Complainant's Burlington Coat Factory and Burlington CoatFactory Warehouse marks by registering the disputed domain names to associateComplainant with murder, killing, death, blood, and the holocaust.
- Respondent registered thedisputed domain names in order to disrupt�the business of� the Complainant.
- Respondent registered andused the disputed domain names in bad faith because Respondent has usedComplainant's marks to attract on-line visitors for commercial gain.
The Respondentdid not file a response and is in default in this proceeding.
6. Discussion and Findings
In order forthe Complainant to prevail and have the disputed domain names transferred toit, Complainant must prove the following�(the Policy, para 4(a)(i-iii):
- the domain name isidentical or confusingly similar to a trademark or service mark in which theComplainant has rights; and
- the Respondent has norights or legitimate interests in respect of the domain name; and
- the domain name wasregistered and is being used in bad faith
Identical or Confusingly Similar
Complainant'sBurlington Coat Factory mark is a federally registered service mark in theUnited States of America (U.S. Service Mark Reg. No. 1,850,094, dated August16, 1994) and is used in connection with retail clothing store services.� The Complainant has also registered theBurlington Coat Factory Warehouse mark in nine (9) states in the U.S.,including Massachusetts, Illinois and Georgia.�The Complainant claims it operates stores in forty-two (42) states inthe U.S. (Complaint, Annex� 3).
The Policy at 4 a(i) does not tell us how to applythe concept of� "confusinglysimilar", but this is not surprising given that it is often a matter ofcommon sense.� Under this ad hoc orcommon sense test, the Respondent's domain names are not confusingly similar tothe Complainant's marks. While search engines might pick up the markBurlington, the human navigator certainly would not think� etc.emanated from the Complainant.� But thePanel finds this hard and fast analysis is inadequate for the Case at handbecause the Respondent is not just showing a protest web page about theComplainant: Respondent also is advertising to sell domain name registrationsfor D, and there is a further advertisement on the page for "OpenDirectory Cool Site".� Therefore,the Respondent's motives are certainly commercial, perhaps even primarilycommercial.
Many of� the WIPO Center "protest and criticism" Cases have involved the word "sucks" added to a well-known� trademark.�� Some panels have found the resulting domain names to be confusingly similar because internet search engines pick up the trademark and cannot discern that the word "sucks" is now commonly used for protest or criticism in English, especially American English.� The Panel does not believe these decisions accurately reflect the current posture of�� U.S. courts.� Instead, the Panel is more in sympathy with� a recent WIPO decision, Lockheed Martin Corporation v. Ron Parisi, WIPO Case No. D2000-1015, January 26, 2001,where the Panel found "Lockheedsucks" was not confusingly similar to "Lockheed". (Bally Total Fitness v. Faber, 29 F. Supp. 2d 1161, C.D.Cal. 1998 involving the domain name ; Lucent Technologies, Inc. v. L, 95 F. Supp. 2d 528, 535, E.D. Va. 2000; Shields v. Zuccarini, individually and t/a Cupcake City, 54 U.S.P.Q., 2nd 1166, 89 F. Supp. 2d 634 (E.D.Pa. 2000).�
As the courtin Bally Total Fitness found, many people use the internet not just to findproviders of� goods and services but alsoto search for critical information on the providers of� these goods and services.� The domain name owners of� the criticism and protest sites necessarilyhave to use the trademark owner's mark, paired with "sucks" or whathave you, to signal their presence on the internet.� It is a fair use exception to confusingly similar trademarkinfringement.��
As the Panelin Lockheed supra found, the Panelfinds it is readily apparent that "Lockheedsucks" is intended tocriticize the company Lockheed and thus would not be a website run by Lockheed. The Panel also would like tostress that in the WIPO Case Lockheedsupra and the three cited United States federal cases (Bally Total Fitness, LucentTechnologies and Shields), thecourts made it clear on several occasions that for the use of� a trademark to be not confusingly similarwithin the protest or criticism fair use exception, the use must be genuineprotest or� criticism, and must benoncommercial.���
With thisprecedential framework in mind,� thePanel hopes to dig deeper than an ad hoc�examination for confusing similarity of the disputed domain names:, ,, , and.� The Paneldoes not believe the public would confuse these sites as belonging to theComplainant, but the Panel does strongly suspect the public would be confusedby Respondent's (apparent) protest/commercial use of� Complainant's mark.
Like theComplainant, the Panel finds it preferable to use the multi-step analysiscommon in United States courts to flesh out the Policy at 4 a(i) and theguidance on confusing similarity provided there. (the Complaint, pp. 11-13;Bally's Total Fitness; Lucent Technologies, supra).� The goal is to derive a better idea of� whether, on balance, more of� the elements of� confusing similarity are in favor of� the Complainant or the Respondent.�
(1) Strengthof� the mark: the Panel is satisfied theComplainant's mark is well-known for selling coats and other clothing in theUnited States (Complaint, Annexes 3 and 4).�This favors the Complainant.
(2) Proximity of the Goods: moreactually, similarity of� the goods.� Respondent's protest in favor of� animals, whether real or assumed, and hisadvertising and attempts to sell domain name registrations are not comparableto the Complainant's apparel.� Thisfavors the Respondent.
(3) Similarity of� the marks: both Complainant and Respondentare using Complainant's mark Burlington.�This favors the Complainant.
(4) Evidence of� Actual Confusion: the Complainant does notoffer any except to say that web search engines looking for the Complainantwill also pull in the Respondent.� ThePanel does not believe the public would think the Respondent was in any wayrepresenting the Complainant, but the Panel believes the public looking forprotest or criticism Burlington sites will nonetheless be confused by theRespondent's use of� Complainant's markto try and sell them domain name registrations.� This favors the Complainant.
(5) MarketingChannels: Both Respondent and Complainant market on the internet.� However, it is not apparent that theinternet is an important sales channel for the Complainant.� The Panel finds this part of� the test favors neither party.
(6) Consumer Sophistication andCare Likely to Be Exercised:� TheComplainant wants the public to buy its apparel, including items made offur.� The Respondent apparently does� not want the public to buy Complainant's furapparel; Respondent definitely wants to use the disputed domain names to sellthe public internet domain name subscriptions.�This part of� the test does notseem relevant to the Panel.
(7) Respondent's Intent inSelecting the Domain Names: The Panel believes this particular part of� the test is the most significant for ourCase.� It is clear to the Panel that theRespondent intended to use the disputed domain names to enhance its chancesof� capturing internet traffic andselling internet domain name subscriptions.�Any thoughts of criticizing Complainant's fur apparel and its relationto the treatment of animals are, in the view of the Panel, secondary.� The Panel finds this is true because theRespondent has taken no trouble at all with formulating its own protests orcriticism.� Respondent is content topost at all five (5) domain websites the same minimally interactive page withpictures of� dogs and some type ofskinned carcasses with a notice that it has not been updated sinceJanuary,� 2000.�
(8) Likelihood of� Product Line Expansion:� The Panel agrees with the Complainant thatthis part of� the test is not directlyapplicable to our Case.
Like United States courts, the Panel finds thiseight (8) part test for confusing similarity is useful for balancing� the pros and cons for� allowing the Respondent to use a markbelonging to the Complainant.� The Panelfinds this test strongly points to a�finding that the Respondent's disputed domain names are deliberatelyconfusingly similar to the Complainant's mark. �Although the Respondent clearly is trying to bring the marks intothe safe haven of� protest andcriticism, the Panel can not allow this because Respondent is making a primarilycommerical use of� the domain namewebsites.
Legitimate Rights or Interests
TheComplainant has stated it did not give the Respondent permission to use itsmark.� The Respondent is in default but,as stated supra, the Panel can see from the record that the Respondent isattempting to claim fair use for a non-commercial purpose (the Policy4(c)(iii).� As the Panel has alreadyfound that the Respondent is making a commercial use of� the disputed domain names, the Respondentcan not benefit from this provision .
The Panelfinds the Respondent has no legitimate rights or� interests in the disputed domain names. Registered and Used in Bad Faith
The Panelfinds the Respondent is using the disputed domain names to capture web trafficin order to generate more prospective customers for its products.� The veneer of a pretended fair use tocondemn Complainant for using animal fur appears to the Panel to be an attemptby the Respondent to circumvent the Policy through deceit.���
Thus, the Respondent's bad faith behavior is comparable to the many domain name cases where the Respondents have infringed the Complainant's trademarks in bulk, often with many misspellings and other variations, in order to generate traffic to make money in contravention of� the Policy at 4(b)(iv): "by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of� your web site or location or of a product or service on your web site or location." (cf. National Collegiate Athletic Association v. Rosemary Giancola, WIPO Case No. D2000-0836, November 28, 2000 involving many variations of "ncaa"; and Altavista Company v. Grandtotal Finances Limited et al., WIPO Case No. D2000-0848, October 17, 2000 involving numerous registrations of� variations of� "altavista").� The novel element here is that the Respondent registered a string of� supposed protest domain names to attract traffic and, in posting a page with photos alleging cruel treatment to dogs, tried to provide at least a fig leaf� of protest to support the infringing domain names.���
The Panel alsoagrees with Complainant that Respondent was tarnishing Complainant's mark whilenot making a fair use of� the mark, inviolation of� the Policy at 4(c)(iii).� In this regard, the Panelneed only cite the apparently gratuitous association of� Complainant with the holocaust in order tohelp Respondent sell domain name subscriptions.
7. Decision
The Panel'sDecision in this Case stems from its finding that the Respondent set out tobenefit from the protest and criticism safe havens allowed for using anotherparty's valid trademark.� The Panelfound that, in adopting the Complainant's Burlington mark, the Respondent'saims were not really to protest or� tocriticize the Complainant and its use of�animal fur in manufacturing coats.�Instead, the Respondent was primarily interested in advertising andselling internet domain names and exhibiting other advertising.�
Therefore,pursuant to ICANN Policy para 4(i) and Rule 15, the Panel finds the disputeddomain names are confusingly similar to the Complainant's service mark.� The Panel also finds the Respondent has nolegitimate rights or interests in the names and registered and was using themin bad faith.� The Panel orders that theregistrar Dotster, Inc. transfer the domain names,, ,, , and from the Respondent, Smartsoft, L.L.C., to theComplainant, Burlington Coat Factory Warehouse Corporation.����������
Dennis A. Foster
Sole Panelist
Dated: March 1, 2001
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