WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Frederick�s of Hollywood, Inc. v. Damian Macafee
Case No. D2002-0626
1.The Parties
The Complainant is Frederick�s of Hollywood, Inc. (the "Complainant") of 6608 Hollywood Boulevard, Los Angeles, California 90028, United States of America.
The Respondent is Damian Macafee (the "Respondent") of 69 Charlotte St., London, W1P 1LA, United Kingdom.
2.The Domain Name and Registrar
The Domain Name the subject of the Complaint is (the "Domain Name").
The Registrar with which the Domain Name is registered is BulkR, Inc. of 10 East Baltimore Street, Suite 1500, Baltimore, MD 21202, United States of America.
3.Procedural History
The World Intellectual Property Organization Center (the "Center") received an e-mail copy of the Complaint on July 11, 2002, and a hard copy of the Complaint on July 5, 2002. An acknowledgement of Receipt of Complaint was sent by the Center on July 8, 2002.
On July 8, 2002, a Request for Registrar Verification was transmitted to the Registrar requesting it to:
(1) confirm that a copy of the Complaint was sent to the Registrar by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Rules"), Paragraph 4(b);
(2) confirm that the Domain name is registered with the Registrar;
(3) confirm that the Respondent is the current registrant of the Domain name;
(4) provide full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) that are available in the Registrar�s WHOIS database for the Domain Name registrant, technical contact, administrative contact and billing contact, for the domain name;
(5) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the Domain Name;
(6) indicate the current status of the Domain Name, and
(7) confirm the language of the registration agreement.
On July 8, 2002, the Registrar confirmed by reply e-mail that the Domain Name is registered with it and that the Respondent was the current registrant of the Domain Name. The Registrar also confirmed the Respondent�s address and that the Respondent was listed as the Administrative, Technical and Billing Contact, providing e-mail and telephone details. The Registrar also forwarded the requested WHOIS details and confirmed that the Policy applies to the domain name at issue. The Registrar also confirmed that the language of the registration agreement is English.
The Registrar also confirmed that the Respondent has submitted in his Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the Domain Names.
On July 12, 2002, the Center completed a Formal Requirements Compliance Checklist, verifying that the Complaint satisfied the formal requirements of the Policy. It is apparent that there was such compliance.
On July 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Complaint Notification") and the Complaint (without exhibits) was transmitted by e-mail to the Respondent. The Complaint Notification and the enclosed documentation were also forwarded to the Respondent by courier.
As no response was filed within the time specified by paragraph 5 of the Rules, on August 2, 2002, the Center gave the Respondent formal Notification of Respondent Default.
The Complainant elected to have the dispute determined by a single-member Administrative Panel in accordance with paragraph 3(b)(iv) of the Rules.
The Administrative Panel appointed consists of Dr Annabelle Bennett SC (the "Panelist"). On August 12, 2002, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from the Panelist, the Center notified the parties of the appointment of the Panelist.
4.Factual Background
The following facts are asserted by the Complainant in the Complaint and are not disputed. The Panel finds these facts are proved.
The Complainant is the exclusive owner of the well-known and valuable "Frederick�s of Hollywood" registered trade mark and service mark and the "Frederick�s of Hollywood" trade name. The "Frederick�s of Hollywood" trade mark is widely used by the Complainant on and in connection with the sale of quality intimate apparel and other clothing as well as a variety of related goods, both in the United States of America and internationally.
The US registered trade marks owned by the Complainant are as follows:-
Mark
Reg. No.
Reg. Date
Goods
FREDERICK�S OF HOLLYWOOD
1627771
12.11.90
Retail store and mail order services in the fields of clothing, personal items, cosmetics and toiletries.
FREDERICK�S OF HOLLYWOOD
1674329
02.04.92
Aprons, gowns, lingerie, blouses, boas, bodyshirts, bodysuits, boots, brassieres, briefers, chemises, coats, coveralls, corsets, culottes, dresses, dusters, foundation garments, fur capes, fur coats, fur neck pieces, fur pieces, garter belts, garters, girdles, half slips, hosiery, housecoats, jackets, jerseys, jumpsuits, nightgowns, pajamas, panties, pantsuits, panty hose, paste-on bras, peignoir sets, petticoats, playsuits, robes, shirts, shorts, shoes, skirts, slacks, slippers, slips, stoles, suits, sweaters, swimsuits, under shorts and waist cinchers.
FREDERICK�S
(stylized)
664746
07.22.58
Women�s and girls� dresses, brassieres, foundation garments, panties, garter belts, hosiery, nightgowns, robes, chemises, et al.
FREDERICK�S
1051548
10.26.76
Retail store and mail order services in the fields of clothing, personal items, cosmetics and toiletries.
FREDERICK�S
1055867
01.11.77
Perfume, skin lotion, nail enamel, nail polish, cream and body massage cream.
FREDERICK�S
1058525
02.08.77
Aprons, gowns, lingerie, blouses, boas, body shirts, bodysuits, boots, brassieres, briefers, chemises, coats, coveralls, corsets, culottes, dresses, dusters, foundation garments, fur capes, fur coats, fur neck pieces, fur pieces, garter belts, garters, girdles, half slips, hosiery, housecoats, jackets, jerseys, jumpsuits, nightgowns, pajamas, panties, pantsuits, panty hose, paste-on bras, peignoir sets, petticoats, playsuits, robes, shirts, shorts, shoes, skirts, slacks, slippers, slips, stoles, suits, sweaters, swimsuits, under shorts and waist cinchers.
FREDERICK�S.COM
2403596
11.14.00
Computerized online retail store services featuring clothing, lingerie, undergarments, accessories for men and women, hairpieces and wigs, loungewear, active wear, hosiery, slippers, shoes, boots, swimwear and beachwear.
The Complainant also owns trade mark registrations for "Frederick�s of Hollywood" and "Frederick�s" in France, Canada and Taiwan, details of which were provided with the Complaint. The earliest date of international registration of the "Frederick�s of Hollywood" trade mark is in Taiwan in 1991, although the "Frederick�s" trade mark was registered internationally as early as 1968 in France.
The Complainant has owned and extensively used and promoted the "Frederick�s of Hollywood" trade mark for over 55 years, with extensive American and international sales, marketing, advertising and publicity. The "Frederick�s of Hollywood" trade mark is associated by consumers with the Complainant�s distinctive line of apparel, particularly women�s lingerie. The Complainant�s goods are sold through its well known mail order catalogues, as well as through retail stores and, most recently, through its website. As a result, the "Frederick�s of Hollywood" trade mark is a well-known trade mark in the apparel business in the United States and internationally.
The Complainant has achieved many millions of dollars of sales since 1946 so that, coupled with its extensive publicity, valuable goodwill has developed in respect of the "Frederick�s of Hollywood" trade mark.
The Complainant has approximately 175 retail stores using the "Frederick�s of Hollywood" trade mark, throughout the United States. This includes its flagship store on the famous Hollywood Boulevard in Hollywood, California. The building in which this store is located is a well known Hollywood landmark which is viewed and visited by thousands of international tourists each year.
The Complainant�s catalogue of its products is also very well known. Large numbers of this catalogue are regularly mailed throughout the United States and internationally, increasing the exposure of the trade mark. Each year a large dollar volume of sales is generated as a result of catalogue sales. The Complainant included in its Complaint copies of the 1963 and 2002 catalogue covers featuring the "Frederick�s of Hollywood" trade mark.
The Complainant also has a website "" at which the trade mark, service mark and trade name "Frederick�s of Hollywood" features prominently. A copy of the web page was included with the Complaint.
The Domain Name (being a mis-spelling of "Frederick�s of Hollywood") sends internet users to a web site offering substantially similar services and products to those offered by the Complainant. A copy of the Respondent�s website was included with the Complaint. The Respondent�s website displays advertisements for women�s lingerie and a downloadable lingerie catalogue, among other apparel and products. The lingerie offered on the Respondent�s website is substantially similar to that which is offered by the Complainant under its trade mark on its website, in its catalogue and in its stores.
5. Parties� Assertions
A.The Complainant
The Complainant asserts that the Domain Name should be transferred to it as it is able to satisfy all three conditions provided in paragraph 4(a) of the Policy.
Paragraph 4(a)(i):
The Complainant asserts that the Domain Name is identical to or confusingly similar to trade marks in which it has rights. The registration numbers of the Complainant�s US trade and service marks and the goods or services in respect of which they are registered, are detailed above.
The Complainant referred to Disney Enterprises, Inc. v. John Zuccarini, Cupckae City and Cupcake Patrol, WIPO Case No. D2001-0489, in which the test of confusing similarity is stated to be confined to a consideration of the disputed domain name and the relevant trade mark. "Essential" or "virtual" identity is sufficient to establish a confusing similarity.
The Complainant also referred to a number of other WIPO Panel decisions in which mis-spellings or near-spelling variants and phonetic identity have been held to be confusingly similar: see for example B Inc. v. Cost Net Domain Manager, WIPO Case No. D2001-0970; Estee Lauder Inc. v. , WIPO Case No. D2000-0869 and Metabolife International v. Robert Williams, WIPO Case No. D2000-0630.
The only differences between the Domain Name and the "Frederick�s of Hollywood" trade mark is that the Domain Name does not have a second "e" in "Frederick�s" and the apostrophe between the "k" and the "s" is omitted. However, use of an apostrophe is prohibited in domain names. Virtual identity can be established between the Domain name and the "Frederick�s of Hollywood" trade mark, such that a conclusion of confusing similarity arises.
The Domain Name is phonetically, visually and conceptually identical to the Complainant�s "Frederick�s of Hollywood" trade mark, thus making is confusingly similar.
The Complainant also asserts that internet users are likely to mis-spell "Frederick�s" as "Fredricks" when typing the name, or that internet users will mistakenly enter to the Domain Name when attempting to find and patronize the Complainant�s popular business, thus allowing the Respondent to exploit any confusion arising from the inherent similarity between the Domain Name and the "Frederick�s of Hollywood" trade mark.
The Complainant asserts that this is a clear case of intentional "typo-piracy", being a deliberate attempt to attract or divert internet users who make a common error or spelling mistake in their internet search: Estee Lauder Inc. v. , WIPO Case No. D2000-0869.
Paragraph 4(a)(ii):
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and relies upon the following assertions:-
(1) The Respondent has not received any permission or license from the Complainant;
(2) Upon information and belief, the Respondent has no business or other reason for using the Complainant�s "Frederick�s of Hollywood" trade mark or its mis-spelled version.
(3) The Respondent is not commonly known by the name "Frederick�s of Hollywood" or the mis-spelt version, and
(4) The Respondent has not conducted any prior business under the name "Frederick�s or Hollywood" or the mis-spelt version, in connection with the bona fide offering of goods or services. Instead the Respondent has made an illegitimate use of the Domain Name to automatically send users to a website offering woman�s lingerie for sale. The lingerie offered on the Respondent�s website is substantially similar to that offered by the Complainant on its website, in its catalogue and in its stores.
Paragraph 4(a)(iii)
The Complainant asserts that the Respondent registered and is using the Domain Name in bad faith and relies upon the following assertions:-
(1) By using the Domain Name for apparent financial gain the Respondent is intentionally attempting to detour internet users to a website with competing merchandise by creating a likelihood of confusion with the Complainant�s "Frederick�s of Hollywood" trade mark as to the source, sponsorship, affiliation or endorsement of the Domain Name.
(2) The Respondent is attempting to appropriate the goodwill of the Complainant, by redirecting internet traffic intended for the Complainant: B Inc v. Cost Net Domain Manager, WIPO Case No. D2001-0970, Novus Credit Services, Inc v. Personal, WIPO Case No. D2000-1158 and The NASDAQ Stock Market, Inc v. Seventh Summit Ventures, WIPO Case No. D2001-1497.
(3) The Respondent has used the Domain Name primarily for the purpose of disrupting the Complainant�s business in at least two ways. The first being "typo-piracy" (see above under Paragraph 4(a)(i) submissions) and the second being "typo-squatting". If the Complainant were to actively promote a domain name including its famous trade mark "Frederick�s of Hollywood", which it considers would be a desirable strategy, due to the distinct possibility of misspellings it is likely that it would lose customers to diversion as a result of the Respondent�s activities.
(4) The Respondent has been unresponsive to the Complainant�s communications.
(5) The Respondent has registered and used the Domain Name confusingly similar to the Complainant�s domain name while under constructive notice of the Complainant�s ownership of its trade marks. The Respondent�s bad faith is demonstrated by his intentional use of a well-known registered trade mark within the Domain Name, to hijack internet users looking for the Complainant�s legitimate website and business and by diverting them to a website offering products and services substantially similar to the Complainant�s products and services.
(6) The Complainant also asserts that the Respondent�s bad faith registration of the Domain Name effectively prevents it as the legitimate owner of the "Frederick�s of Hollywood" trade mark, from effectively reflecting that valuable mark in a corresponding domain name, thus further disrupting the Complainant�s business to its detriment. If the Domain Name is not transferred to the Complainant there will be a continuing likelihood of confusion by the public and resulting harm to the Complainant�s business, reputation and valuable trade mark and trade name rights.
B.The Respondent
No Response was received from the Respondent.
6. Discussion and Findings
Identical or Confusingly Similar Domain Name (paragraph 4(a)(i))
The Domain Name in issue is . The relevant part of the Domain Name is "fredricksofhollywood". The Domain Name incorporates a slight mis-spelling of the trade mark "Frederick�s of Hollywood". The Administrative Panel is satisfied that this part of the Domain Name is identical to or confusingly similar to the trade mark "Frederick�s of Hollywood" registered in the name of the Complainant.
Respondent�s Rights or Legitimate Interests in the Domain Name (paragraph 4(a)(ii))
The Complainant submitted substantial evidence of its registration of the "Frederick�s of Hollywood" trade mark since 1990, with the related trade marks "Frederick�s" being registered since 1958 and "Frederick�s.com" being registered since 2000. Further, the Complainant�s "Frederick�s of Hollywood" and related trade marks have become well known through over 55 years of extensive use.
The Complainant also submitted evidence in support of its assertion that the Respondent can have no legitimate rights or interests in respect of the Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
Domain Name Registered and Used in Bad Faith (paragraph 4(a)(iii))
For the Complainant to satisfy this requirement it must prove bad faith in registration as well as bad faith in use of the Domain Name. Bad faith registration alone is an insufficient ground for obtaining a remedy under the Policy: (Telstra Corporation Limited v. Nuclear Mushrooms, WIPO Case No. D2000-0003).
The Complainant relies upon six grounds in support of its assertion that the Respondent has both registered and used the Domain Name in bad faith. These six grounds are detailed in paragraph 5A above and the facts supporting these grounds are detailed in paragraph 4 above.
The Panel takes all these matters into account and, in the absence of any response from the Respondent, the Panel finds that the Complainant has established that the Domain Name has been registered and is being used in bad faith.
7.Decision
The Panel decides that
(i) the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name, and
(iii) the Domain Name has been registered and is being used in bad faith by the Respondent.
Accordingly, the Panel decides that the Complainant has proven each of the elements in paragraph 4(a) of the Policy. The Panel requires the Domain Name to be transferred to the Complainant.
Dr Annabelle Bennett SC
Sole Panelist
Dated: August 22, 2002
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