WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Burlington Coat Factory Warehouse Corporation v. Naiyer Imam

Case No. D2000-0485

 

1. The Parties

1.1 Complainant is Burlington Coat Factory Warehouse Corporation, a corporation organized under the laws of the State of Delaware, U.S.A. ("Complainant"), with its principal place of business in Burlington, New Jersey, U.S.A. Respondent is Naiyer Imam, an individual residing in Roanoke, Virginia, U.S.A. Complainant is represented by counsel, Kennedy Covington Lobdell & Hickman, LLP.

 

2. The Domain Name and Registrar

2.1 The domain name which is the subject of this proceeding is "burlingtoncoatfactory.net" owned by Naiyer Imam. The domain name is registered with Network Solutions, Inc., Herndon, Virginia, U.S.A.

 

3. Procedural History

3.1 A hard copy of the Complaint was received by the WIPO Arbitration and Mediation Center ("Center") on May 25, 2000.

3.2 On May 26, 2000, a Request for Registrar Verification was sent to NSI.

3.3 On June 1-3, 2000, the Center received correspondence concerning a possible suspension of the proceedings while the parties considered a settlement of the dispute.

3.4 On June 13, 2000, the Complaint was notified.

3.5 On July 14, 2000, a Notification of Respondent Default was issued.

3.6 On July 18, 2000, the Administrative Panel was appointed.

 

4. Factual Background

4.1 The Complainantís BURLINGTON COAT FACTORY mark is a federally registered service mark in the United States (U.S. Service Mark Reg. No. 1,850,094) and is used in connection with retail clothing store services. Complainant and Complainantís wholly-owned subsidiary companies employ the BURLINGTON COAT FACTORY mark in over 280 stores located in 42 states of the United States.

4.2 In addition to this federal registration, the Complainantís BURLINGTON COAT FACTORY and BURLINGTON COAT FACTORY WAREHOUSE marks are also registered by Complainantís wholly-owned subsidiary companies in nine individual states of the United States, as indicated in the following table:

State

Mark

Date

Reg. No.

Massachusetts

Burlington Coat Factory Warehouse

06/30/1983

34114

Massachusetts

Burlington Coat Factory

06/30/1983

34113

Georgia

Burlington Coat Factory Warehouse

07/17/1981

S4474

Georgia

Burlington Coat Factory

07/17/1981

S4473

Iowa

Burlington Coat Factory

03/22/1984

5214

Iowa

Burlington Coat Factory Warehouse

03/22/1984

5213

Wisconsin

Burlington Coat Factory Warehouse

06/22/1983

Wisconsin

Burlington Coat Factory

06/22/1983

Ohio

Burlington Coat Factory Warehouse

06/14/1983

5001

Maryland

Burlington Coat Factory Warehouse

05/31/1991

2754

Maryland

Burlington Coat Factory

05/31/1981

2753

Indiana

Burlington Coat Factory Warehouse

06/14/1983

50095358

Indiana

Burlington Coat Factory

06/14/1983

50095357

Illinois

Burlington Coat Factory Warehouse

06/02/1981

49914

Illinois

Burlington Coat Factory

06/02/1981

49913

California

Burlington Coat Factory Warehouse

10/11/1991

39422

4.3 The Respondent is in default but did send an e-mail dated June 1, 2000, which stated: "If this is about revlon.net, please send me appropriate forms so that I can delete or transfer this to you. I am not interested in this. Naiyer"

 

5. Partiesí Contentions

A. Complainant

5.1 Complainantís BURLINGTON COAT FACTORY and BURLINGTON COAT FACTORY WAREHOUSE marks are distinctive and are widely recognized by consumers as being associated with Complainantís quality retail clothing store services. Complainantís BURLINGTON COAT FACTORY mark has been used in commerce in the United States since 1959, and has been used in interstate commerce in the United States since 1972. Complainantís BURLINGTON COAT FACTORY WAREHOUSE mark has been used in interstate commerce in the United States since 1972.

5.2 The domain name registered by Respondent is identical to Complainantís BURLINGTON COAT FACTORY mark and is confusingly similar to Complainantís BURLINGTON COAT FACTORY WAREHOUSE mark.

5.3 The Respondent has no right or legitimate interest in the domain name. The Respondent is not licensed to use Complainantís mark nor has Respondent been granted permission to use Complainantís mark. Respondent does not own or operate a Burlington Coat Factory Warehouse store. To the best of Complainantís knowledge, Naiyer Imam has never been commonly known by the "burlingtoncoatfactory.net" domain name. Further, Respondent has not been and is not involved in any good faith business employing the domain name, nor has the Respondent made any other good faith use of the domain name since its registration in December 1998. Respondent has failed to establish any web page or web site at the http://www.burlingtoncoatfactory.net URL.

5.4 Respondent is a classic cybersquatter, having registered numerous domain names corresponding to the federally registered trademarks of famous United States and international companies for the express purpose of selling those domain names to the famous companies, a purpose evidenced by Respondentís registering the domain names with the phrase ""domain4sale"" as the first part of the registrantís address field. There is no question that the Respondent registered and is using the "Burlingtoncoatfactory.net" domain name in bad faith.

5.5 First, the Respondent registered the "burlingtoncoatfactory.net" domain name with the specific intent of selling the domain name. When registering the domain name, the Respondent listed his address as ""domain4sale", 6185 Steeplechase, Roanoke, VA 24019." Respondentís listing of "domain4sale" indicates that Respondent never intended to make legitimate use of the domain name, but rather intended to prevent others Ė including the Complainant Ė from registering the name. The distinctiveness of the BURLINGTON COAT FACTORY mark fully supports the inference that that the Respondentís primary purpose in registering the domain name was to sell the domain name to the Complainant should the opportunity arise. Given Complainantís widespread and longstanding use of the BURLINGTON COAT FACTORY and BURLINGTON COAT FACTORY WAREHOUSE marks, the Complainant is the most likely (if not only) party that would be interested in buying the "burlingtoncoatfactory.net" domain name that Respondent offered for sale using the "domain4sale" legend. Registering a domain name with the intent to sell it to the rightful trademark owner has previously been recognized by a WIPO Administrative Panel as evidence of bad faith registration and use under the Policy. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D99-0001 (January 14, 2000).

5.6 Second, the Respondent has a pattern of cybersquatting conduct, having previously registered and offered for sale numerous domain names identical to the federally registered trademarks of internationally famous companies such as IZOD, LIZ CLAIBORNE, LONDON FOG, RED LOBSTER, PEPPERIDGE FARM, BEN & JERRYíS, HOWARD JOHNSONíS, ECKERD and SAKS FIFTH AVENUE. Respondent included the "domain4sale" legend in each of the highlighted domain registrations, indicating his offer of sale and his intent to sell the registrations, presumably to the trademark owners of the famous marks registered. Registration of numerous domain names incorporating the names or marks of famous companies for which the registrant could not reasonably make legitimate use of all names has previously been recognized by a WIPO Administrative Panel as evidence of both registrantís lack of legitimate interest and of bad faith registration and use under the Policy. See Nabisco Brands Co. v. Patron Group, Inc., WIPO Case No. D2000-0032 (February 23, 2000).

5.7 Third, the respondent has not made a good faith use of the domain name in any business since its registration in December 1998. Such non-use has previously been found to support an inference of bad faith registration and use under the Policy by WIPO Administrative panels. See American Vintage Wine Biscuits, Inc. v. Brown, WIPO Case No. D00-0004 (February 16, 2000) (An inference of bad faith use "is supported by the respondentís failure for a substantial period of time to make good faith use of the domain name for its business.") and Telstra Corp. v Nuclear Marshmallows, WIPO Case No. D2000-003 (February 18, 2000).

5.8 Finally, the fact that Respondent registered a domain name identical to a highly distinctive and widely recognized trademark supports an inference of Respondentís bad faith. This is not the case of a person innocently registering a domain name that happens to correspond to a descriptive word that is anotherís trademark. Rather, this is the case of a person that has intentionally registered numerous widely recognized trademarks for which the person could not possibly have any legitimate use. The only possible inference that can be drawn from such a practice is that the Respondent intended to block the rightful trademark owners from registering the domain names and then sell the names to the rightful trademark owners Ė an inference supported by Respondentís listing "domain4sale" in the registration data.

5.9 This evidence conclusively shows that (i) the "burlingtoncoatfactory.net" domain name registered by Respondent is identical or confusingly similar to Complainantís trademark; (ii) Respondent has no legitimate interest in respect to the domain name; and (iii) Respondent has registered and used the domain name in bad faith. Accordingly, Complainant respectfully requests transfer of the "Burlingtoncoatfactory.net" domain name to the Complainant.

B. Respondent

5.10 Respondent is in default and has thus made no contentions.

 

6. Discussion and Findings

6.1 Complainant must prove each of the following three elements set forth in the Uniform Domain Name Dispute Resolution Policy Paragraph 4(a), namely (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) 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. The Panel will now look at each one of the elements to determine if Complainant has met its burden of proof.

6.2 Complainant has asserted rights in the service marks BURLINGTON COAT FACTORY and BURLINGTON COAT FACTORY WAREHOUSE both at common law as well as through a registration in the U.S. Patent and Trademark Office and state registrations. The Panel finds that the service marks and the domain name are identical, and that the Complainant has proven service mark rights in such terms. Accordingly, the Panel finds that the Complainant has the requisite rights to object pursuant to Policy 4(a)(i).

6.3 There is no proof in the record of rights or legitimate interests of Respondent in the domain name pursuant to Policy 4(c). Accordingly, the panel finds that Complainant has met its burden of proof concerning Policy 4(a)(ii).

6.4 The last element in the proceeding is bad faith. Policy 4(b)(i) states "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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name" shall be evidence of the registration and use of a domain name in bad faith. In this proceeding, the record indicates that Respondent offered to sell the domain name to the highest bidder on its website and has registered other partiesí trademarks as domain names. Accordingly, the Panel finds that Respondent registered and is using the domain name in bad faith pursuant to Policy 4(a)(iii).

 

7. Decision

The Panel decides that the domain name "burlingtoncoatfactory.net" is identical or confusingly similar to the service marks of Complainant, that Respondent has no rights or legitimate interests in such domain name, and that the domain name in issue has been registered and is being used in bad faith.

The Panel hereby orders that the registration of the domain name "burlingtoncoatfactory.net" be transferred to Complainant, Burlington Coat Factory Warehouse Corporation.

 


 

Clark W. Lackert
Presiding Panelist

Dated: July 28, 2000