WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc. and Abercrombie & Fitch Trading Co. v. Lee Summerlin
Case No. DTV2004-0002
1. The Parties
The Complainants are A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., and Abercrombie & Fitch Trading Co., all of New Albany, Ohio, United States of America, represented by Colucci & Umans of New York, New York, United States of America.
The Respondent is Lee Summerlin of Marietta, Georgia, United States of America.
2. The Domain Names and Registrar
The disputed domain names and (the "Domain Names") are registered with .tv Corporation International.
3. Procedural History
The Complaint was electronically filed with the WIPO Arbitration and Mediation Center (the "Center") on January 8, 2004. On January 9 2004, the Center transmitted by email to .tv Corporation International (".tv Corporation") a request for registrar verification in connection with the domain name . On January 15, 2004, an Amended Complaint was filed with the WIPO Arbitration and Mediation Center. On February 3, 2004, the Center transmitted by email to .tv Corporation a request for registrar verification in connection with and . On February 27, 2004, .tv Corporation 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, together with the Amended 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 March 1, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 31, 2004.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on April 15, 2004. 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
Complainant A & F Trademark, Inc. (herein "Abercrombie") is the owner of numerous United States trademark and service mark registrations (copies of which are annexed in the record) for the ABERCROMBIE & FITCH mark (the "ABERCROMBIE Marks"). Complainants, Abercrombie & Fitch Stores, Inc. and Abercrombie & Fitch Trading Co., are the exclusive licensees of A & F Trademark, Inc. for use of the ABERCROMBIE Marks in connection with the advertisement, promotion, offering for sale and sale of apparel and accessories for young men and women. Similarly, Abercrombie owns numerous foreign trademark registrations for its ABERCROMBIE Marks throughout the world (a listing is annexed in the record) in countries including: Argentina, Australia, Austria, Brazil, Canada, Denmark, Finland, France, Germany, Greece, Hong Kong, Hungary, Indonesia, Ireland, Israel, Italy, Japan, Jordan, Mexico, Nepal, Norway, Philippines, Portugal, Rumania, Russia, Singapore, South Africa, South Korea, Spain, Sweden, Switzerland, Taiwan, Turkey, Ukraine, United Kingdom, and Zimbabwe.
Abercrombie owns and operates over 500 Abercrombie & Fitch and Abercrombie retail stores throughout the United States in which it sells men's and women's clothing and accessories, including t-shirts, outerwear, sweatshirts, woven shirts, sweaters, jeans, khakis, shorts, sleepwear, underwear, baseball caps, belts, socks and other accessories, which are designed primarily to appeal to young men and women of college age. In addition, merchandise is offered for sale and sold through the A&F Quarterly and in the Abercrombie catalog, which have a worldwide circulation of over 5 million annually. In fiscal year 2002, alone, Abercrombie's sales exceeded US$1.5 billion. In addition, over the past several years, Abercrombie has expended in excess of US$30 million annually to advertise and promote its ABERCROMBIE & FITCH brand, including advertisements in magazines such as Rolling Stone, Vanity Fair, Men's Health, Interview, Maxim, Vogue and Elle.
Abercrombie is the registered owner of numerous domain names incorporating the ABERCROMBIE Marks such as, , , , , , and . And Complainants operate a website located at "www." in which they advertise, promote, provide company information, offer for sale and sell merchandise, namely clothing and accessories, in connection with the ABERCROMBIE Marks.
5. Parties' Contentions
A. Complainant
As a result of Complainants' promotion, advertisement and sale of its merchandise in connection with the ABERCROMBIE Marks, the marks have become famous, distinctive and well-known in the United States and abroad. Respondent has registered Domain Names which are virtually identical and confusingly similar to the ABERCROMBIE Marks.
Respondent has registered the Domain Names which incorporate the famous ABERCROMBIE & FITCH and ABERCROMBIE trademarks, and has established a website using the Domain Names to provide personal information and photographs of himself. Respondent has no legitimate interest in using the ABERCROMBIE Marks as his domain name, but is instead attempting to trade off of the fame and good will of the ABERCROMBIE Marks to draw attention to his personal website.
Respondent's Domain Names infringe Complainants' ABERCROMBIE Marks, which Complainants and their predecessors have been using in connection with the sale of apparel and accessories since 1892. Respondent's registration and use of the and domain names, which are virtually identical to Complainants' ABERCROMBIE Marks, are a clear and deliberate act of bad faith and an attempt to confuse the public. Respondent has no legitimate interest in the Domain Names and thus, it must be presumed that Respondent intends to benefit from the goodwill and fame associated with Complainants' ABERCROMBIE Marks and to divert business from the legitimate Abercrombie website.
On May 27, 2003, and again on June 23, 2003, Complainants' counsel sent a cease and desist letter via e-mail and FedEx to Respondent requesting that he transfer the domain name to Abercrombie on the grounds that Respondent's registration and use of that domain name infringed Complainants' trademark rights and was in violation of the Policy. Upon information and belief, after receiving Complainant's May 27, 2003, cease and desist letter and email and having been made aware of Complainants' objections to his use and registration of the domain name , Respondent then registered the domain name on June 10, 2003. Registration of the domain name in blatant disregard of Complainants' objections, as well as Respondent's failure to respond to Complainants' letters and his continued use of the Domain Names demonstrate that Respondent has no legitimate interests in the infringing and domain names and is continuing to act and use the infringing domain names in bad faith
In addition, Respondent has failed to comply with Paragraph 2 of the Uniform Domain Name Dispute Resolution Policy, adopted by ICANN, and incorporated by reference into the Registration Agreement. Specifically, Paragraph 2 provides that "By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant that: (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations." Respondent's registration and use of domain names which are virtually identical to Complainants' famous ABERCROMBIE Marks is further evidence of Respondent's bad faith.
B. Respondent
The Respondent did not reply to the Complainants' contentions.
6. Discussion and Findings
To have the disputed Domain Names transferred, the Complainants must prove each of the following (Paragraph 4(a) of the Policy):
(i) the disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed Domain Names; and
(iii) the disputed Domain Names have been registered and are being used in bad faith.
Because Respondent has defaulted in responding to Complainants' allegations, the Panel is directed to decide this proceeding on the basis of the Complaint (Paragraph 14(a) of the Rules), and the Panel may draw such inferences from the Respondent's default as the Panel finds appropriate (Paragraph 14(b) of the Rules).
A. Identical or Confusingly Similar
There are two requirements that a Complainant must establish under this paragraph: that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the mark. Complainants have satisfied both.
Complainants have invested a substantial amount of money and significant efforts in advertising and promoting the ABERCROMBIE Marks. As a result, Abercrombie has well-established rights in its marks. Likewise, Complainants have provided evidence that they are the registered owner of numerous domain names incorporating the ABERCROMBIE Marks such as, , , , , , and . Also, Complainants operate a website located at "www." for advertising, promoting, providing information, and selling merchandise, namely clothing and accessories, in connection with the ABERCROMBIE Marks. Respondent failed to contest any of these facts.
The domain names in dispute are and . The Complainants have established rights, numerous trademark registrations, and domain name registrations covering "abercrombie," "abercrombieandfitch," and "Abercrombie & Fitch." Therefore, apart from the gTLD suffix ".tv" forming part of the domain name, which does not have a relevant distinguishing function in determining whether a domain name is identical or confusingly similar, there is no difference between the Domain Names on the one hand, and the ABERCROMBIE Marks and Complainants' domain names on the other hand.
The Panel thus finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy inquires as to whether the Respondent has any rights or legitimate interests vested in the 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 been commonly known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name. The Panel agrees with Complainants' contention that Respondent has no rights or legitimate interests in the Domain Names.
Complainants allege there is no relationship between the parties giving rise to any license, permission, or other right by which Respondent could own or use the Domain Names incorporating the ABERCROMBIE Marks. Furthermore, according to Complainants there is neither evidence that Respondent has been commonly known by the Domain Names nor evidence that the Domain Names comprise the legal name of Respondent. Under paragraph 14(b) of the Rules, the Panel is permitted to draw the inference from Respondent's failure to respond, that Complainants are correct in the aforementioned assertions that Respondent has no rights or legitimate interest in the Domain Names, and it finds Complainants have established prima facie that Respondent lacks rights or legitimate interests. Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (December 4, 2000).
With regard to paragraph 4(c)(iii) above, Respondent has registered the Domain Names and has established a website using the Domain Names to provide personal information and photographs of himself. Respondent has no legitimate interest in using the ABERCROMBIE Marks as his Domain Name, but is instead attempting to trade off of the fame and good will of the ABERCROMBIE Marks to draw attention to his personal website. That Respondent uses the Domain Names to divert Internet users for its own benefit is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the Domain Names.
The Panel thus finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel finds that Respondent had actual knowledge of the Complainants' ABERCROMBIE Marks and domain names and its rights therein at the time he registered the Domain Names. This finding is based on the following uncontested facts: (i) the ubiquitous reputation of the ABERCROMBIE Marks and the Abercrombie website; (ii) the Domain Names comprise the ABERCROMBIE Marks and domain names; and (iii) the above finding that Respondent has no rights or legitimate interests in the Domain Names. More particularly, with regard to (i) above, insofar as Complainants' ABERCROMBIE Marks are federally registered and otherwise well known, it is very unlikely that when Respondent registered the Domain Names, he was not aware that he was infringing Complainants' trademark rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (April 18, 2000); Parfums Christian Dior v. Javier Garcia Quintas and C, WIPO Case No. D2000-0226 (May 17, 2000).
Respondent's bad faith use of the Domain Names consists, in part, of his using Domain Names that are virtually identical to Complainants' ABERCROMBIE Marks and registered domain names to confuse the public, benefit from the goodwill and fame associated with Complainants' ABERCROMBIE Marks, and divert the public from Abercrombie's website.
Further evidence of Respondent's bad faith is his handling of Complainants' cease and desist letters of May 27, 2003, and June 23, 2003. Attorneys for Complainants sent a cease and desist letter via e-mail and FedEx to Respondent requesting that he transfer the domain name to Abercrombie on the grounds that Respondent's registration and use of that domain name infringed Complainants' trademark rights and was in violation of the Policy. Complainants believe that after receiving the May 27, 2003 letter and email and having been made aware of Complainants' objections to his use and registration of the domain name , Respondent then registered the domain name on June 10, 2003. Registration of the domain name in blatant disregard to Complainants' objections demonstrates that Respondent registered and is using that domain name in bad faith. Young Genius Software AB v. MWD, James Vargas, Case No. D2000-0591 (August 7, 2000). Similarly, Respondent's failure to respond to Complainants' letters and his continued use of the Domain Names demonstrates Respondent's bad faith use of the Domain Names.
In addition, Respondent's failure to comply with Paragraph 2 of the Uniform Domain Name Dispute Resolution Policy, adopted by ICANN, and incorporated by reference into the Registration Agreement, is further evidence of bad faith. Specifically, Paragraph 2 provides that: "By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant that: (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations." Respondent's registration and use of the Domain Names which are virtually identical to Complainants' famous ABERCROMBIE Marks is further evidence of Respondent's bad faith.
The Panel thus finds that Complainant has satisfied 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 names and be transferred to the Complainant, A & F Trademark, Inc.
Harrie R. Samaras
Sole Panelist
Date: April 27, 2004
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