WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ZAFRILLA, S.L v. Adam Brush
Case No. D2006-0407
1. The Parties
The Complainant is Zafrilla, S.L, Yecla, Murcia, Spain, represented by Abril Abogados, Spain.
The Respondent is Adam Brush, New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2006. On April 3, 2006, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On April 4, 2006, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April�26,�2006. The Response was filed with the Center on April 24, 2006.
The Center appointed Mr. David Charles Langrigge Perkins as the sole panelist in this matter on May 10, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
4.1 The Domain Name in Issue
The domain name in issue, , was registered on July�24,�2001.
4.2 Complainant’s DESTROY Trademarks
4.2.1 The Complainant has registered trademarks, principally in Class 25, for the word mark DESTROY; DESTROY with logo in the form of what appears to be a finger print; DESTROY with the same logo but also including the words “Boots & Shoes”; DESTROY with the same logo but also including the words “by Zafrilla”; DESTROY with stylised letter “D” in an oval logo; and the word mark ROAD DESTROY. These are hereafter referred to as “the DESTROY trademarks”.
4.2.2 The earliest of the DESTROY word marks was registered in 1990.
4.2.3Complainant’s DESTROY trademarks are now registered in 111 countries. Prior to the date of the Respondent’s registration of the domain name in issue (July�24,�2001) the Complainant had already obtained 90 registrations for its DESTROY trademarks.
4.2.4 The first of the Complainant’s US DESTROY trademarks was filed in 1996.
4.3 The Complainant’s Business
4.3.1 The Complainant sells under the DESTROY trademarks a range of footwear and clothing, which they say includes T-shirts, sweat shirts, jeans, shirts, belts and hats.
4.3.2 Complainant’s first sales of clothing under the DESTROY trademarks were in 1991. Complainant’s first sales of DESTROY branded goods into the United States of America were in 1999. These would appear to have been boots and shoes.
4.3.3 Complainant has exhibited advertisements for its DESTROY branded goods dating from 1997. These depict principally boots and shoes but also handbags, wallets, sunglasses, wrist watches, belts and clothing.
4.3.4 Complainant has exhibited at the main international shoe events in Las Vegas: D�sseldorf, New York, Milan and Madrid and also at other International Trade Fairs.
4.3.5 As to the recognition of its DESTROY brand, the Complainant has exhibited the results of Google searches against “Destroy Shoes Spain” and “Destroy by Zafrilla”.
4.4 Complainant’s DESTROY domain names
4.4.1 Complainant is the registrant of the following domain names
, created, February 5, 1998
, created, August 27, 2001
, created, July 4, 2002
, created, March 28, 2006
4.4.2 The extract from Complainant’s current home pages appear to depict boots, shoes and handbags under the DESTROY trademarks.
4.5 The Respondent’s Business
4.5.1 The Respondent’s business is the production and sale of printed T-Shirts and men’s clothing. The Respondent explains that he started this activity while still at the University of Delaware, when he registered the domain name in dispute in July 2001. At that time, he was merely giving away the printed T-shirts as gifts to friends.
4.5.2 Then, after graduating from University in 2002, the Respondent set up in business producing and selling printed T-shirts and by mid 2002 says he had established his first line of such T-shirts.
4.5.3 Respondent’s first website using the domain name in issue was launched in January 2003, according to the Wayback Machine section of the Internet Archive.
4.5.4 The Response also exhibits an extract from Paypal, which records the Destroy Clothing business as having been created in August 2001. Paypal appears to be a service providing prospective purchasers with information about the seller before making payment for goods.
4.5.5 Respondent has provided illustrations of the way in which he uses the Destroy Clothing name and brand. The word DESTROY is predominant with the word CLOTHING as a subset in less prominent lettering.
5. Parties’ Contentions
A. Complainant
5.A.1 Complainant seeks transfer of the domain name in issue on the basis that the Complaint satisfies the requirements of paragraph 4(a) of the Policy: those requirements are set out in paragraph 6.1 below.
5.A.2 Complainant maintains that it has rights in the DESTROY trademarks by virtue of the facts set out in paragraphs 4.2 and 4.4 above.
5.A.3 Complainant asserts that the domain name in issue, “clothing” is identical to the DESTROY trademarks, since the suffix “clothing” is not a distinguishing feature.
5.A.4 Complainant maintains that the domain name in issue is also confusingly similar to the DESTROY trademarks. In that respect Complainant refers to Respondent’s application to register DESTROY CLOTHING and device as a US trademark for T-shirts, other clothing and accessories in Class 25. This is App. 78/291779 dated August 25, 2003. By letter dated January 29, 2004, the Complainant’s counsel put the Respondent on notice of its three existing US DESTROY trademarks and requested withdrawal of the US trademark application and cesser of use of the DESTROY CLOTHING mark and the domain name in issue.
5.A.5 Complainant contends that the Respondent implicitly acknowledged confusing similarity by (1) abandoning the US trademark application; (2) offering to use DESTROY DESIGN as an alternative; (3) subsequently in March 2004 applying to register D STAR CLOTHING and logo; and (4) advising the Complainant’s US trademark attorneys by email dated June 14, 2004 “… that we are in the process of transitioning our brand name to D Star Clothing… .” Abandoning the US App. 78/291779 apparently followed objection from the US Patent and Trademark Office [USPTO] that the DESTROY CLOTHING mark was too similar to the Complainant’s three (3) prior DESTROY trademark registrations in the US and was consequently likely to cause confusion or mistake or to deceive.
5.A.6 Complainant says that the Respondent has no rights to or legitimate interests in the domain name in issue, since the Respondent cannot bring himself within any of the circumstances set out in paragraph 4(c) of the Policy. In particular, the Complainant maintains that the Respondent did not use, or make demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services before being put on notice of this dispute.
5.A.7 As noted in paragraph 5.A.5 above, notice of this dispute was contained in the cease and desist letter from the Complainant’s attorneys dated January 29, 2004. In that respect, Complainant relies on two (2) statements by the Respondent. First, the statement on the Respondent’s website:
“Though our earliest works go back to our college days, hand printing t-shirts in the basement of an abandoned warehouse, we didn’t really pursue making a living in the fashion world until late 2004.”
and, second, the Respondent’s reply of March 8, 2004 to the letter of January 29, 2004 in which the Respondent said:
“Firstly, I would like to let you know that we are still an extremely small company and you would honestly be wasting your time by attempting to perform any legal action against our company, as we haven’t made anything just yet.” [Emphasis added]
From these, the Complainant maintains there is no evidence of bona fide use by the Respondent of the domain name in issue prior to being put on notice of this dispute. According to the Complainant, no use was made by the Respondent of the domain name from the date it was registered (July 2001) until its first use in relation to clothing in 2004, after the Respondent was notified of the Complainant’s prior rights in the DESTROY trademarks by both the USPTO and by the Complainant’s attorneys.
5.A.7 Further, the Complainant relies on the fact that its DESTROY trademarks were registered worldwide before the domain name in issue was created in July 2001, [see, paragraph 4.2.3 above] and that the Respondent must be deemed to have had constructive knowledge of those prior registrations at that date. Furthermore, by July 2001 the Complainant had been selling its DESTROY branded products for a decade [see, paragraph 4.3 above].
5.A.8 The Complainant says there is no evidence of the Respondent being commonly known by the domain in issue, so that rights to and legitimate interests in the domain name in issue cannot arise under paragraph 4(c)(ii) of the Policy.
5.A.9 As to paragraph 4(c)(iii) of the Policy, the Complainant’s case is that the Respondent’s use of the domain name in issue cannot be legitimate or fair use, since such use has not been authorized by the Complainant. The Complainant cites Six Continents Hotels, Inc. v. Georgetown, WIPO Case No. D2003-0214, but that case is concerned with “nominative fair use”and is not, in the Panel’s view, of relevance to the facts of this present dispute.
5.A.10 With regard to paragraph 4(a)(iii) of the Policy, the Complainant relies on paragraphs 4(b)(i) and (iv) of the Policy. The two requirements of paragraph 4(a)(iii) are that the domain name has been registered and is being used in bad faith. The Complainant points to the Respondent’s email of June 14, 2004, to its US attorneys as evidence of his having registered the domain name in issue primarily for the purpose of selling it to the Complainant trademark owner for valuable consideration in excess of the out of pocket costs directly related to the domain name. That letter reads:
“Hello Nicholas
I am writing to you in regards to your certified letter I received today for the use of the mark Destroy Clothing. I just wanted to inform you that we are in the process of transitioning our brand name to D Star Clothing which we recently filed as a separate trademark application for. We are going to be operating our website under a different name and if your client is concerned about being used in the future, he can feel free to make me an offer for the name.
Sincerely,
Adam Brush” [Emphasis added]
5.A.11 The Complainant also relies on the assertion that no use was made by the Respondent of the domain name in issue for almost three (3) years between registration in July 2001, and first use in late 2004 after having been put on notice earlier that year by both the USPTO and by the Complainant’s attorneys of the Complainant’s prior rights in the DESTROY trademarks.
5.A.12 As to paragraph 4(b)(iv) of the Policy, the Complainant asserts that the Respondent, by using the domain name in issue, has intentionally attempted to attract for commercial gain, Internet users to his website, by creating a likelihood of confusion with the DESTROY trademarks as to the source sponsorship, affiliation or endorsement of that website or of the Respondent’s products on that website. First, the Complainant says that the Respondent’s t-shirts come within the scope of the goods in Class 25 for which the DESTROY trademarks are registered.
5.A.13 Second, by the date of creation of the domain name in issue the Complainant’s goods and brand were well known [see, paragraphs 4.2 and 4.3 above]. The Respondent had constructive notice of the DESTROY trademarks at the time the domain name was registered, if not actual notice.
5.A.14 As to continued use in bad faith, the Complainant relies on the Respondent’s continuing use of the domain name in issue despite (1) being put on notice of the Complainant’s prior rights in DESTROY trademarks and (2) the Respondent’s assurance of his intention to cease using the mark Destroy Clothing [see, the letter reproduced in paragraph 5.A.10 above].
5.A.15 The Complainant says, in effect, it is inevitable that Internet users seeking the Complainant and its products will go to the Respondent’s website believing them to be affiliated or otherwise connected. This is because of (1) the similar products; (2) the use of the suffix “clothing” in a much less prominent form than DESTROY; (3) the position taken by the USPTO that “Destroy Clothing” and “Destroy” are so similar as to be likely to cause confusion, mistake or deception [paragraph 5.A.5 above]; and (4) exhibiting in February 2006 DESTROY CLOTHING branded products at a London Trade Fair despite the cease and desist letters from the Complainant’s Spanish and US attorneys asserting infringement by the Respondent of the DESTROY trademarks.
5.A.16 The Complainant summarises its case under paragraph 4(b)(iv) of the Policy in the following terms:
“If Respondent continues to use and infringe upon the DESTROY marks in its Domain Name: (a) consumers will be confused, misled and deceived as to the source and origin of Respondent’s goods; (b) the distinctive value and reputation of the DESTROY marks will be diluted, impairing the value of Complainant’s intangible property; (c) Respondent will continue to benefit from the goodwill and commercial value enjoyed by Complainant in its marks; and (d) Complainant will suffer from the permanent loss of substantial revenues should visitors to Respondent’s website or purchasers of Respondent’s goods be dissatisfied and believe that there is in fact some affiliation between Respondent and Complainant.”
5.B Respondent
5.B.1 Respondent says that his Destroy Clothing mark is neither identical nor confusingly similar to the Complainant’s DESTROY trademarks. He never uses the prefix DESTROY without the suffix CLOTHING and that suffix is sufficient to distinguish the domain name in issue from the Complainant’s DESTROY trademarks.
5.B.2 Furthermore, the Respondent’s products [namely, T-shirts and men’s clothing] are not the same as the Complainant’s products [namely, women’s shoes]. Still further if one enters the word DESTROY into a search engine such as Google, it will not identify the Respondent’s website / products. To get to the Respondent’s website it is necessary to enter into the search engine its distinctive “Destroy Clothing” name in full.
5.B.3 As to demonstrating his rights to and legitimate interests in the domain name in issue, the Respondent demonstrates that the Complainant is incorrect in asserting that no use was made of that domain name in relation to a website until after he (the Respondent) had been put on notice of the Complainant’s prior DESTROY trademarks. The Respondent points to use of the domain name in relation to its DESTROY CLOTHING home page in January 2003: paragraph 4.5.3 above. The first cease and desist letter from the Complainant was in January 2004: paragraph 5.A.6 above.
5.B.4 Further, the Respondent says that he had never heard of the Complainant until that first cease and desist letter in January 2004, and that the Complainant’s presence for its goods sold under the DESTROY trademarks is slight even today. In short, the Respondent says that he registered and made use of the domain name in issue in connection with the bona fide offering of t-shirts before receiving any notice from the Complainant of this dispute: see, paragraph 4(c)(i) of the Policy.
5.B.5 As to demonstrating good faith registration and use of the domain name in issue, the Respondent repeats that at the time when that domain name was registered (July 2001) he had no knowledge of the Complainant or of its DESTROY trademarks or products sold under the DESTROY brand.
5.B.6 As to the offer to sell the domain name made in his letter of June 14, 2004 – the full text of which is set out in paragraph 5.A.10 above – the Respondent says:
“The fact is that they were constantly threatening me through emails and letters and I jokingly, though probably not appropriately, stated that if they were that concerned with me using the domain that “He can feel free to make me an offer for the name”. I accept that it was in bad taste but in no way shows that I acquired the name in bad faith.”
The Respondent denies that he acquired the domain name in issue for the purpose of selling it to the Complainant.
5.B.7 As to using the domain name and mark – see, paragraphs 5.A.5 and 5.A.10 above – the Respondent says that at one time he acquired that domain name but later decided to let it expire.
5.B.8 Far from registering the domain name in issue for the purpose of disrupting the Complainant’s business or in order to prevent the Complainant from using its DESTROY trademarks in a corresponding domain name, the Respondent says that the domain names ; .org; .us; .info; .name; and .biz are all apparently available. From this, the Respondent says it is apparent that the Complainant has no real interest in the domain name in issue. The Complainant’s motive, the Respondent says, is to shut down his emerging business without cause, and this justifies a holding against the Complainant of reverse domain name hijacking.
6. Discussion and Findings
6.1 The Policy paragraph�4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
i. that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii. that the Respondent has no rights or legitimate interests in respect of the domain name; and
iii. that the domain name has been registered and is being used in bad faith.
6.2 As stated above, the Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights to or legitimate interests in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall, be evidence of the registration and use of a domain name in bad faith.
6.4 Identical or Confusingly Similar
6.4.1 The domain in issue, , is self-evidently not identical to the Complainant’s DESTROY trademarks.
6.4.2 It is, however, in the Panel’s view confusingly similar, the suffix being no more than descriptive of the goods [e.g. t-shirts and men’s clothing] sold under the “Destroy Clothing” brand featured on the Respondent’s website to which the domain name in issue resolves. Also, the Complainant’s DESTROY trademarks are registered in Class 25, which includes clothing, As to that, the Respondent indicates that the Complainant sells only women’s shoes [paragraph 5.B.2]. Although the illustrations of its DESTROY products provided with the Complaint do not appear to include clothing, in addition to boots, shoes, belts, handbags and sunglasses, the Complainant asserts that it sells, inter alia, t-shirts and other clothing under its DESTROY trademarks [paragraph 4.3.1. above].
6.4.3 The Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.
6.5 Rights or Legitimate Interests
6.5.1 The Complainant has not licensed or otherwise authorised the Respondent to use its DESTROY trademarks. Those trademarks were extensively registered worldwide by the date when the domain name in issue was registered (July 2001) and the Complainant had been selling its products under and by reference to the DESTROY trademarks (including, to some extent in the United States from 1999) for some ten (10) years.
6.5.2 As against that, the Respondent says that he had no knowledge of the Complainant or its DESTROY trademarks until first being put on notice of this dispute in 2004. So, the Respondent says his use of the domain name in issue before that date – he claims first commercial use from early 2003 – was a bona fide offering of goods and brings him under paragraph 4(c)(i) of the Policy.
6.5.3 The question is whether a use can be bona fide in circumstances where, absent actual knowledge of the Complainant’s trademarks, constructive knowledge applies. When creating a domain name, the registrant should be aware that registration will not provide security over prior existing trademarks. Accordingly, it would be sensible first to check that the proposed domain name will not conflict with any such prior trademarks. Had the Respondent taken this precaution in July 2001 when creating the domain name in issue he could have found some 90 registrations of the DESTROY trademarks worldwide, including three (3) in his home country (the USA) covering the class of goods (i.e. clothing) in which he was interested.
6.5.4 What potentially amounts to trademark infringement cannot be converted to being bona fide for the purposes of the Policy simply because the Respondent chooses to ignore the possibility of there being prior third party trademarks identical to the dominant part of the proposed domain name. Accordingly, in the Panel’s view the Respondent cannot bring himself within paragraph 4(c)(i) of the Policy.
6.5.5 Nor can the Respondent’s use of the domain name in issue after being put on notice of the Complainant’s confusingly similar DESTROY trademarks constitute legitimate or fair use. It follows that the Respondent cannot bring himself within paragraph 4(c)(iii) of the Policy either.
6.5.6 The Respondent does not rely on paragraph 4(c)(ii) of the Policy. Since the Respondent cannot bring himself within paragraph 4(c) of the Policy or show other rights to or legitimate interests in the domain name in issue, the Complaint satisfies the requirements of paragraph 4(a)(ii) of the Policy.
6.6 Registered and Used in Bad Faith
6.6.1 Where a respondent fails to show rights to or legitimate interests in a domain name under paragraph 4(a)(ii) of the Policy, it often follows that he will have difficulty in establishing registration and use in good faith.
6.6.2 The fact that, en passant, the Respondent offered to sell the domain name in issue to the Complainant by his email of June 14, 2004, [see, paragraph 5.A.10 above] does not on its own, in the Panel’s opinion, amount to a circumstance falling within paragraph 4(b)(i) of the Policy. Nevertheless, it is a factor to be considered when assessing bad faith, the circumstances set out in paragraph 4(b) of the Policy being by way of example, not by way of limitation of the factors evidencing bad faith.
6.6.3 Nor does the Panel consider that the Respondent registered the domain name in issue for the purposes of preventing the Complainant from reflecting its DESTROY trademarks in a corresponding name, whether as part of a course of conduct or otherwise. Consequently, paragraph 4(b)(ii) does not apply.
6.6.4 Similarly, the Complainant cannot make out a case under paragraph 4(b)(iii) of the Policy, there being no evidence that the Respondent registered the domain name in issue primarily for the purpose of disrupting the Complainant’s business.
6.6.5 But, given the Panel’s finding that the domain name in issue is confusingly similar to the Complainant’s DESTROY trademarks [paragraph 6.4.2 above], coupled with the Panel’s finding that – despite cease and desist letters from the Complainant’s attorneys and a finding of likelihood of confusion by the USPTO – the Respondent has continued to use that domain name, the inference must be that the Respondent had the intent required by paragraph 4(b)(iv) of the Policy.
6.6.6 Although the Complainant has not brought evidence of actual confusion, the Respondent’s apparent refusal to acknowledge that the domain name in issue is likely to cause confusion with the Complainant’s worldwide trademark rights in the DESTROY mark strongly indicates use of the domain name in bad faith.
6.6.7 Accordingly, the Panel finds that the Complainant has also satisfied the two requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: May 17, 2006
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