WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Frederick�s of Hollywood, Inc. v. Bob L. Reichenberg
Case No. D2002-0667
1. The Parties
The complainant is Frederick�s of Hollywood, Inc., a Delaware corporation, with its principal place of business in Hollywood, California, 90028, United States of America (the "Complainant"). The Complainant is represented by William A. Finkelstein of Alschuler Grossman Stein & Kahan, 1620 26th Street, Santa Monica, California 90404-4060, United States of America.
The respondent is Bob L. Reichenberg, an individual whose mailing address is registered as 4600-9th Street.north, St. Petersburg, Florida 33703, United States of America (the "Respondent").
2. The Domain Name and Registrar
The disputed domain name is (the "Disputed Domain Name"), registered with Network Solutions, Inc./VeriSign, Inc., 21355 Ridgetop Circle, Dulles, Virginia 20166, United States of America (the "Registrar").
3. Procedural History
On July 18, 2002, Complainant filed a complaint (the "Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center").
The Center verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Uniform Policy"), the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules"), and the WIPO Center Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Administrative Panelist (the "Panel") is satisfied that the Complaint satisfied the Rules and Supplemental Rules.
The Center issued a Request for Registrar Verification to Network Solutions, Inc./ VeriSign, Inc. on July 18, 2002, and received the Registrar�s response on July 22, 2002. The Registrar�s response indicated that the Disputed Domain Name was registered to Bob L. Reichenberg of 4600-9th Street.north, St. Petersburg, FL 33703, United States of America.
A Formal Notification of the Complaint and Commencement of the Administrative Proceeding (the "Commencement Notification") was communicated by the Center to the Registrar by email and the Respondent by post/courier, facsimile, and email on July 24, 2002. The Center received the returned Commencement Notification from Respondent�s postal address on August 1, 2002. The Panel has seen the facsimile receipt and email notice forwarded to Respondent and is therefore satisfied that the delivery of the Commencement of Notification is in conformity with the relevant requirements under Paragraph 2 and Paragraph 4 of the Uniform Rules and the relevant provisions of the Supplemental Rules.
The Center did not receive any response from Respondent on or before August 13, 2002, the last date for Respondent to submit a Response under Paragraph 5 of the Uniform Rules and the relevant provisions of the Commencement Notification. A Notification of Respondent�s Default (the "Default Notification") was communicated by the Center to Respondent by post/courier and email on August 16, 2002. The Panel is satisfied that the Default Notification was effectively delivered to Respondent as required by relevant provisions of the Uniform Rules and the Supplemental Rules.
Complainant has elected to designate a single-member Administrative Panel in accordance with Paragraph 3(b)(iv) of the Uniform Rules. By failing to submit a Response on time, Respondent has waived his right to designate a three-member Administrative Panel under Paragraph 5(b)(iv) of the Uniform Rules. Based on a Statement of Acceptance and Declaration of Impartiality and Independence, duly signed by the Panel on August 23, 2002, the Panel was duly appointed by the Center on the same day. A Notification of Appointment of Administrative Panel and Projected Decision Date was communicated by the Center to both Complainant and Respondent on August 23, 2002.
There have been no further submissions thereafter. The date scheduled for the issuance of the Panel�s decision is September 6, 2002.
4. Factual Background
Paragraph 5(e) of the Uniform Rules states, "[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the complaint."
Respondent has failed to submit a Response before the date of this decision, and in the absence of any exceptional circumstances, the Panel adopts here the following asserted facts in the Complaint as undisputed facts, and shall consider the following undisputed facts in the instant case:
(i) Complainant is the exclusive owner of the well-known FREDERICK�S ("Trademark") and FREDERICK�S OF HOLLYWOOD registered trademarks and service marks, widely used in connection with the sale of lingerie and other intimate apparel and clothing as well as a variety of related goods in the United States and other countries.
(ii) The Complainant owns many trademark registrations, including six U.S. federal trademark registrations for FREDERICKS, FREDERICKS.COM and FREDERICK�S OF HOLLYWOOD. All of these registrations, except for the most recent one for the mark FREDERICKS.COM, are incontestable under U.S. law (See 15 U.S.C. � 1065), meaning that they constitute conclusive evidence of Complainant�s exclusive right to use the mark for the identified goods or services, including lingerie items. Complainant also owns trademark registrations for the Trademark in Canada and France.
(iii) Complainant has owned and extensively used and promoted the FREDERICK�S trademark for over 55 years, with extensive American and international sales, marketing, advertising and publicity, much of it centered around Complainant�s lingerie products. The Trademark has become famous and is one of the most well-known trademarks in the United States apparel business. Consumers have come to recognize the Trademark and to associate it with Complainant�s unique and distinctive line of apparel, particularly women�s lingerie.
(iv) Complainant has approximately 175 retail stores throughout the United States using the Trademark, all selling lingerie and other apparel products. Complainant�s goods are also sold through its mail order catalogues and through its website. Large numbers of this catalogue are mailed annually throughout the United States, increasing the exposure of the Trademark. The Complainant has achieved many millions of dollars of sales since 1946, and coupled with its extensive publicity has developed valuable goodwill in the Trademark.
(v) The Complainant has a website at which features apparel offered by Complainant, including lingerie. The Disputed Domain Name, sends internet users to a website offering substantially similar services and products as those offered by Complainant.
5. Parties� Contentions
Complainant asserts:
(i) The Disputed Domain Name is confusingly similar to the Trademark. The only differences between the Complainant�s Trademark and the Respondent�s domain name are inconsequential: the domain name omits an apostrophe between the "k" and the "s," which is prohibited in domain names, and adds the generic word "lingerie." Because lingerie is the primary product which Complainant has been selling for over 55 years, and is covered by Complainant�s trademark registrations, the overall impression is of conceptual identity, and thus confusingly similar.
It is a well-accepted principle of trademark law that the mere addition of a descriptive or generic word to a well-known trademark is not sufficient to avoid consumer confusion or infringement. Confusion is highly likely given the fame of the Trademark and the extensive public exposure of the mark in connection with lingerie. It is extremely likely that an average member of the public could be confused and diverted to a website using Respondent�s Disputed Domain Name, reflexively thinking the domain name is associated with the Complainant. Complainant cites numerous cases where WIPO Administrative Panels have repeatedly found confusing similarity between domain names and marks in similar circumstances.
(ii) Respondent has no rights or legitimate interests with respect to the Disputed Domain Name. The Respondent has not received permission or license from the Complainant to use the Disputed Domain Name. Upon information and belief, the Respondent has no business or other reason for using Complainant�s Trademark. The Respondent is not commonly known by the name FREDERICK�S nor has he conducted any prior business under the name. Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name or the Trademark and is using the Disputed Domain Name for commercial gain by misleading and diverting the public searching for Complainant�s legitimate business and website, as well as by blocking Complainant from using an intuitive domain name incorporating its key product category.
Respondent is not and has not used the Disputed Domain Name, or a name corresponding to the Disputed Domain Name, in connection with a bona fide offering of goods or services. To the contrary, Respondent has made an illegitimate use, using the Disputed Domain Name, to automatically send users to a website offering women�s lingerie for sale. Accordingly, Respondent is in direct contravention of Paragraph 4(c)(ii) of the Policy.
(iii) Respondent has registered and is using the Disputed Domain Name in bad faith. Respondent has deliberately registered and used a domain name to which Respondent has no legitimate claim, that is confusingly similar, if not essentially identical to Complainant�s registered trademark. Since the mark incorporates the generic product category "lingerie," the product line most closely associated with Complainant�s famous and popular trademarks, it is inconceivable that Respondent accidentally or coincidentally conceived of the Disputed Domain Name.
Respondent�s true bad faith intentions are demonstrated by the fact that Respondent has brazenly used the Disputed Domain Name to send Internet users to a website offering substantially similar services and products to those offered by Complainant. Potential apparel customers are sent to a website, "Fantasy Fashion Mall," which prominently sells women�s lingerie, among other apparel and products mimicking Complainant�s style and image. The lingerie offered is substantially similar to what is offered by Complainant under Complainant�s trademark on its website, in its catalogue and in its stores.
This is blatant trademark infringement since potential customers of Complainant may stay at this website and purchase lingerie and other apparel, mistakenly thinking this site is affiliated in some way with Complainant. Even if customers realize this is not Complainant�s website, they may stay and purchase lingerie and other apparel from Respondent for a variety of reasons including time constraints, laziness or impatience. The results of this "initial interest confusion" render any attempt to use disclaimer notices ineffective. Thus by using the Disputed Domain Name for financial gain, Respondent is intentionally attempting to detour Internet users to a website selling competing merchandise by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation, or endorsement of the Registrant�s domain name and website to which traffic is diverted and products or services offered therein.
Respondent has registered and used the Disputed Domain Name primarily for the purpose of disrupting the business of Complainant. Respondent has engaged in cyberpiracy for the purpose of confusing Complainant�s potential customers and Respondent actions is also cybersquatting. If Complainant were to actively promote a domain name including its famous Trademark and the word "lingerie," the key product which it sells and for which it is best known, it is likely that it would lose customers to diversion as a result of Respondent�s activities.
Respondent has been unresponsive to Complainant�s attempts at communication. Respondent registered and is using the confusingly similar Disputed Domain Name, while under constructive notice of Complainant�s ownership of its trademarks. Respondent�s bad faith is amply demonstrated by his intentional choice of a well-known registered trademark in a domain name used to hijack Internet users looking for Complainant�s legitimate website and business by diverting them to a website offering substantially similar services and products to Complainant. Moreover, Respondent�s bad faith registration effectively prevents Complainant from reflecting that valuable mark in a corresponding domain name. Respondent takes unfair advantage of its confusingly similar Disputed Domain Name to disrupt Complainant�s business to its detriment.
The Respondent has not filed a Response. Pursuant to Paragraph 5(e) of the Uniform Rules, in the absence of a Response from the Respondent, "the Panel shall decide the dispute based on the complaint." The Panel will independently determine the merits of the Complaint on the basis of all evidence available.
6. Discussion and Finding
The Disputed Domain Name is confusingly similar to the trademark in which Complainant has rights.
Paragraph 4(a)(i) of the Uniform Policy asks whether the Disputed Domain Name is identical or confusingly similar to the trademarks in which Complainant has rights.
The Disputed Domain Name not only incorporates Complainant�s Trademark, which can be a source of confusion, but also combines the mark with a term that describes the primary product associated with Complainant�s trademark. Complainant rights in the United States to the FREDERICK�S trademark date back to 1946, and Complainant has had a registered trademark since 1958. Several of Complainant�s trademarks, including the trademark FREDERICK�S, have gained incontestable status under Section 15 of the United States Trademark Act (See 15 U.S.C. � 1065).
Complainant has for several decades been using its trademark primarily in the areas of women�s apparel, specifically lingerie. The Disputed Domain Name registered by Respondent, which combines Complainant�s trademark FREDERICK�S with the term "lingerie," could be seen as a reference to Complainant�s business of selling lingerie. Since Respondent is also selling lingerie on its website, confusion is likely between the Disputed Domain Name and the Trademark. The combination of the Trademark with a descriptive term referring to Complaint�s business, resulting in the Disputed Domain Name, only enhances the confusing similarity between the Disputed Domain Name and Complainant�s Trademark.
The Panel finds that Complainant has proved that the Disputed Domain Name is confusingly similar to Complainant�s Trademark under Paragraph 4(a)(i) of the Uniform Policy.
Respondent has no rights or legitimate interests with respect to the Disputed Domain Name
Paragraph 4(a)(ii) of the Uniform Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the Disputed Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name.
Although Respondent operates a website associated with the Disputed Domain Name that offers lingerie and other apparel for sale, which might otherwise represent a legitimate use, Respondent�s confusingly similar use of Complainant�s Trademark in the Disputed Domain Name transforms any such use into something other than bona fide offerings of goods or services. Without any evidence from Respondent, the Panel finds that Respondent chose to use Complainant�s trademark in its domain name, instead of the name displayed on its website, Fantasy Fashion Mall, in order to intentionally divert Complainant�s consumers to Respondent�s website.
Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for any domain name incorporating any of Complainant�s trademarks. Respondent�s site is clearly for profit in that Respondent sells intimate apparel and shoes. Respondent is not commonly known by the Disputed Domain Name. Accordingly, there is no evidence proving that Respondent has rights or a legitimate interest in the Disputed Domain Name, other than for the purpose of capitalizing on Complainant�s trademark rights.
The Panel therefore concludes that Complainant has proven that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name under Paragraph 4(a)(ii) of the Uniform Policy.
The Disputed Domain Name has been registered and is being used in bad faith
Paragraph 4(a)(iii) of the Uniform Policy inquires as to whether the Respondent has registered and is using the Disputed Domain Name in bad faith. Paragraph 4(b) states "the following circumstances, in particular but without limitation, � shall be evidence of the registration and use of a domain name in bad faith" (i) the domain name has been registered or acquired by a respondent primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the mark or a competitor of complainant for valuable consideration in excess of respondent�s out-of-pocket costs; (ii) respondent registered the domain name in order to prevent the owner of the mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to its website be creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement of respondent�s website or location.
The Panel finds untenable Complainant�s contention that under Paragraph 4(b)(ii) of the Uniform Policy, Respondent has engaged in a pattern of conduct associated with the registration of domain names in order to prevent trademark owners from reflecting their trademarks in corresponding domain names. Although Respondent has registered a domain name consisting of Complainant�s trademark and Complainant is unable to reflect its trademark in a name along with its most popular item (lingerie), there is no evidence that Respondent has engaged in such a "pattern of conduct."
The Panel finds untenable Complainant�s contention that under Paragraph 4(b)(iii) of the Uniform Policy, Respondent registered the Disputed Domain Name primarily for the purpose of disrupting Complainant�s business. Although Respondent appears to be a direct competitor of Complainant, there is no evidence that Respondent intended to or has disrupted Complainant�s business by registering the Disputed Domain Name and there is no evidence that Respondent intends to engage in activities, which directly or indirectly disrupt Complainant�s business, other than through Respondent�s use of Complainant�s Trademark in the Disputed Domain Name.
The Panel does find tenable Complainant�s contention that under Paragraph 4(b)(iv) of the Uniform Policy, Respondent has "intentionally attempted to attract, for commercial gain, Internet users ... by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement" through use of the Disputed Domain Name. Since the Respondent uses Complainant�s registered Trademark in the Disputed Domain Name, along with offering services in Complainant�s same line of business, consumers are likely to be confused as they may believe that Respondent operates a website operated or sponsored or otherwise affiliated with Complainant. The close resemblance of Respondent�s business to Complainant�s business increases the likelihood that the Respondent will divert consumers of the Complainants. (See Christie�s Inc. v. Tiffany�s Jewelry Auction, Inc., WIPO Case No. D2001-0075 (March 6, 2001). It is obvious to the Panel that Respondent believes the Trademark has goodwill and Respondent intends to exploit this goodwill by attracting potential customers to its website to buy lingerie and other apparel.
Respondent�s website disclaimer of affiliation with Complainant cannot cure the initial confusion generated through its Disputed Domain Name. (See The New York Times Company v. New York Services, WIPO Case No. D2000-1072, (December 5, 2000)). As stated in DaimlerChrysler Corporation v. Brad Bargman, WIPO Case No. D2000-0222, (May 29, 2000) "[D]isclaimers are not always read or understood, and potential customers may not notice or appreciate Respondent�s disclaimer."
Absent any explanation from Respondent to refute the evidence submitted by Complainant, the Panel finds evidence of bad faith, including Respondent trading on Complainant�s goodwill by diverting Internet users to another commercial site, and further including Respondent�s failure to respond to the Complainant�s communications or to file any response in these administrative proceedings.
The Panel therefore finds that Complainant has proved Respondent�s bad faith in registering and using the Disputed Domain Name under Paragraph 4(b)(iv) of the Uniform Policy.
7. Decision
In light of the foregoing, the Panel hereby determines that the Disputed Domain Name is confusingly similar to a well-known trademark in which Complainant has rights, that Respondent lacks rights to or a legitimate interest in the Disputed Domain Name, and that Respondent registered and used the Disputed Domain Name in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Uniform Policy, and Paragraph 15 of the Uniform Rules, the Panel hereby orders that the Disputed Domain Name be transferred to Complainant.
Timothy D. Casey
Sole Panelist
Dated: September 6, 2002
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