WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
402 Shoes, Inc. dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie
Case No. D2000-1223
1. The Parties
1.1 The Complainant is 402 Shoes, Inc., dba Trashy Lingerie, a corporation organized under the laws of the State of Delaware, United States of America, having its principal place of business at 402 North La Cienega Boulevard, Los Angeles, California, United States of America.
1.2 The Respondents are Jack Weinstock, an individual giving an address at 553 North Pacific Coast Highway, Suite 222, Redondo Beach, California, United States of America, and Whispers Lingerie, an entity giving the same address.
2. The Domain Name and Registrar
The domain name at issue is <trashylingerie.com>, which domain name is registered with Network Solutions, Inc., based in Herndon, Virginia, United States of America.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on September 15, 2000, and the signed original together with four copies was received on September 18, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated September 18, 2000.
3.2 On September 22, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain name at in issue is registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrarís Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
3.3 On September 29, 2000, NSI confirmed by reply e-mail that the domain name at issue is registered with NSI, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a three-person Panel were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on October 5, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of October 24, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSIís confirmation. In addition, the complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
3.6 On October 24, 2000, the WIPO Center received an electronic copy of the Response, and on October 30, 2000, the WIPO Center received the Response in hard copy. On October 24, 2000, the WIPO Center transmitted to the parties an Acknowledgment of Receipt (Response).
3.7 On December 4, 2000, in view of the Complainant's designation of a three person Panel, the WIPO Center appointed Richard W. Page, Jeffrey M. Samuels, and M. Scott Donahey to serve as Panelists, with M. Scott Donahey to act as Presiding Panelist.
4. Factual Background
4.1 Complainant filed for registration of the trademark TRASHY LINGERIE in connection with clothing in the nature of lingerie with the United States Patent Office ("USPTO") on December 1, 1997, and the registration issued on November 30, 1999. Annex 3 attached to the Complaint shows date of first use of the mark as April 1977, and first use in commerce as April 1978.
4.2 Complainant filed for registration of the trademark TRASHY in connection with Ladies Lingerie and Dresses and related items with the United States Patent Office on October 12, 1979, and the registration issued on May 1, 1984. The registration was cancelled for failure to file the Section 8 Affidavit of Use on October 11, 1990. Response, Annex 1.
4.3 Complainant filed two applications for registration of the trademark TRASHY in connection with clothing, namely lingerie, with the United States Patent Office on January 4, 1999. The applications were abandoned on February 3, 2000, and June 2, 2000. Response, Annexes 5 and 6.
4.4 Complainant also maintains a web site at www.trashy.com. The domain name <trashy.com> was first registered on July 9, 1997. Response, Annex 3.
4.5 Complainant owns and operates a women's lingerie store, and is both a manufacturer and retailer of women's lingerie, swim suits, and related items. Complainant has operated under the name and utilized the mark TRASHY LINGERIE. Complainant offered evidence of the media exposure that it has received over the years.
4.6 On June 23, 1997, Respondent registered the domain name <trashylingerie.com>. Complaint, Annex 1.
4.7 Respondent is not a licensee of Complainant and is not otherwise authorized to Complainant's trademark. Respondent's business address is located less than eighteen miles from that of Complainant.
4.8 Respondent has not used the domain name at issue to resolve to a web site.
4.9 Counsel for Complainant sent letters to Respondent at the address given in Whois, demanding that Respondent cease its use of the domain name.
5. Partiesí Contentions
5.1 Complainant contends that Respondent has registered a domain name which is identical or confusingly similar to the trademark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith, by offering to transfer the domain name at issue for a payment in excess of Respondent's costs related to the domain name or in return for a link at the web site to Respondent's online lingerie store at www.whisperslingerie.com.
5.2 Respondent contends that TRASHY LINGERIE is a common descriptive term for "lingerie of a provocative nature," and as such, is subject to registration of a domain name in which any merchant of lingerie has a legitimate interest and that Respondent could not have registered the domain name in bad faith, since at the time of registration, Respondent was unaware of Complainant's business and that at that time Complainant had not applied for a registered trademark. Respondent also contends that Complainant has engaged in reverse domain name hijacking, since Complainant did not apply for a federal registration of the mark until after Respondent had registered the domain name at issue.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Since both the Complainant and Respondent are domiciled in the United States, and since United Statesí courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
It is clear that the domain name at issue <trashylingerie.com> is identical to the trademark in which the Complainant has rights. Credit Management Solutions, Inc. v. Collex Resource Management, ICANN Case No. D2000-0029. However, Respondent is challenging Complainant's right to the trademark, claiming either that 1) Complainant's mark was descriptive at the time that the trademark issued, or 2) Complainant's mark has since become merely descriptive. Respondent has submitted evidence that the term "trashy lingerie" is used generally to describe a particular type of lingerie, namely that which is openly sexually provocative.
The question as to whether a mark is or has become generic such that the Complainant should not be seen to have "rights" in respect of the mark used or and/registered has been presented to a number of Panels. The concurring opinion, filed herewith, notes the minority view in the existing decisions under the Policy regarding the propriety and the wisdom of analyzing defenses that Complainantís alleged trademark was or is descriptive or generic. The majority here adhere to the minority position that such defenses are beyond the purview of the Panel. We believe that the courts or regulatory authorities are better able to grapple with the question of the generic nature of words and phrases, and the acquisition of secondary meaning. In addition, the summary nature of the procedures under the Rules is not adequate to develop the proof necessary to make an informed decision on these issues. Therefore, the majority here accepts the registered trademark as prima facie evidence of the existence of the mark without analysis of Respondentís assertions that the TRASHY LINGERIE mark is descriptive or generic and without analyzing secondary meaning.
Complainant contends that Respondent has no rights or legitimate interest in respect of the domain name pursuant to the Policy paragraph 4(a)(ii).
Respondent has no relationship with or permission from Complainant for the use of the TRASHY LINGERIE mark.
The Policy paragraph 4(c) allows three nonexclusive methods for Respondent to demonstrate that it has rights or a legitimate interest in the domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent has offered no evidence in support of any of the three methods provided in the Policy paragraph 4(c).
On this basis, the Panel finds that Respondent has no rights or legitimate interest in the domain name pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondent registered and is using the domain name in bad faith in violation of the Policy paragraph 4(a)(iii). The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(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 that 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 web site 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 web site or location or of a product or service on your web site or location.
The Panel finds that the allegations of Complainant are insufficient to establish any of the four nonexclusive criteria set forth in the Policy paragraph 4(b).
The four criteria established by the Policy paragraph 4(b) are nonexclusive. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
One such factor is that Respondent has made no use of the domain name. Complainant alleges that Respondent has not developed any active web site at www.trashylingerie.com or made any other use of the domain name <trashylingerie.com>. Respondentís only response is that it was trying to "reorganize." This explanation is insufficient, and such failure to use a domain name in a bona fide manner has been found to constitute bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000); Leland Stanford Junior Univ. v. Zedlar Transcription & Translation, FA 0006000094970 (NAF July 11, 2000); Revlon Consumer Prods. Corp. v. Yosef, D2000-0468 (WIPO July 27, 2000) (citing cases where panel found inaction constitutes bad faith).
Therefore, the Panel finds that, independent of the four nonexclusive criteria in the Policy paragraph 4(c), Complainant has shown sufficient facts to support a finding that the domain name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).
Finally, the Panel finds that the evidence shows that Complainant, while not having applied for federal registration of the mark until after Respondent had registered the domain name at issue, had used the mark in commerce beginning in 1977. Accordingly, the Panel finds that Complainant has not engaged in reverse domain name hijacking.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <trashylingerie.com> be transferred to the Complainant.
Jeffrey M. Samuels Richard W. Page
Dated: January 2, 2001
I concur in the opinion of my learned colleagues, but would agree with the approach taken by the majority of Panels facing the question of whether a mark is or has become generic. The majority of Panels to which such a question has been directed have elected to answer it. I am aware of instances in which Panels have refused to consider such a question, as does the majority here, because it is beyond the purview of the Panel and because a Panel should not "second guess" a regulatory authority. As my learned colleagues in this case have noted, the summary nature of the procedures available does not lend itself to a thorough resolution of this issue.
While I fully agree with my colleagues that the Panel's role under the UDRP is necessarily narrow in scope, I also believe that forcing the Respondent to adjudicate this issue exclusively in an administrative proceeding, such as cancellation, might ultimately result in injustice to the Respondent. Should the Panel proceed on the assumption that the Complainant has rights in the mark, as we have done here, and thereafter find the three elements, which are required to be proved by the Complainant, as set out above, the domain name would thereafter be transferred to the Complainant. If Respondent proceeded to successfully cancel the mark in an administrative proceeding based on the fact that Complainant's mark was or had become generic, Complainant would be in possession of the domain name. To reacquire rights in the domain name, Respondent would have to become a complainant in a UDRP proceeding. However, Respondent could not show rights in any trademark and thus would necessarily fail to establish the first of the three elements which a UDRP complainant is required to prove: that the domain name at issue "is identical or confusingly similar to a trademark or service mark in which [a UDRP complainant] has rights." Policy, Para. 4(a)(i). Thus, Complainant would have obtained rights to a domain name to which Respondent should have been rightfully entitled.
Because of this potential injustice, and despite my agreement with my co-panelists that the courts or regulatory authorities are better able to grapple with the question of the generic nature of words and phrases and the acquisition of secondary meaning, I believe that as a practical matter and in the interest of justice, a Panel must proceed to a determination of the question presented.
In this case, Respondent argues that the mark TRASHY LINGERIE is a general descriptive term meaning "provocative lingerie." Respondent produces various references, which use the term 1. Curiously, Respondent attaches without annex number, two copies of Whispers Lingerie catalogs which includes pictures of models wearing lingerie which could be described by this descriptive term, but nowhere among the many pages is the allegedly descriptive term used.
Prior Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., ICANN Case No. D2000-0047. It is my belief that Respondent has not met its burden.
However, even had Respondent met its burden, Complainant could show that the mark has acquired a secondary meaning by having been used for so long and so exclusively by one merchant with reference to the particular article that in that trade and to the particular branch of the purchasing public, the word or phrase has come to mean that the article was the product of the merchant in question. Broadway Trading, LLC v. Gene Weissman, ICANN Case No. FA 94310.
Complainant has submitted video clips from national, international, and local television shows, which feature Complainant's business. At no time is complainant's mark used in a descriptive sense. "Trashy Lingerie" is universally used to refer to Complainant's business and product line in such phrases as "Trashy Lingerie, L.A.'s legendary intimate apparel shop," "L.A. - home to the infamous intimate apparel store, Trashy Lingerie," "One of Hollywood's most exclusive lingerie stores - Trashy Lingerie," and "We'll take you to Trashy Lingerie to show you where the hottest stars buy all their sexy lingerie." Annex 4 to the Complaint. The video clips from the television programs talk of the fame of the store and of the numerous celebrities who shop there. Complainant also lists movies in which its exclusive designer lingerie has appeared. Annex 5 to the Complaint. Annex 5 also includes excerpts from the June 7, 1999 issue of People Magazine, and the October 1999 issue of Playboy, the July 2000 issue of Vogue Japan Magazine, and the September 1998 issue of Jane Magazine, all of which uses the term "Trashy Lingerie" only to refer to Complainant's business. It is the Panel's opinion that even had Respondent established that "trashy lingerie" was a descriptive term," Complainant has established secondary meaning as the source of a particular line of goods, namely customized, designer intimate apparel.
Accordingly, I would find that Respondent has failed to prove that Complainant's mark is merely descriptive, and even if Respondent had carried its burden, Complainant has established that the mark has acquired secondary meaning.
For this reason, and for the reasons set out in the opinion of my distinguished co-panelists, I concur in the result.
M. Scott Donahey
Dated: January 2, 2001
1. A printout from www.redrival.com/gothism/makeup1.html ("[T]here are ways to wear trashy lingerie as outerwear, keeping the trashiness at an appealing and sexy level, and there are ways to wear trashy lingerie as outerwear simply to look, well, just plain TRASHY") (Annex 8 to Response); A printout from http://news.morningstar.com/news/MS/Article/0,1299,3289,00.html (I visited the mother ship of this trashy lingerie chain [Frederick's of Hollywood] while I lived in Hollywood . . . .") (Annex 9 to the Response); A printout from www.angelfire.com/ct/ako/artl.html ("'Well . . . I buy trashy lingerie. You can put that in if you want.'") (Annex 23 to the Response); A printout from www.beachnet.com/~apeiron/OTB14.HTM ("[S] he is carrying an armload of trashy lingerie . . . .") (Annex 24 to the Response); A printout from www.balloonhq.vom/faq/color.html ("black-white-red (I call them the trashy lingerie colors - its a color combo [sic] that people either love or hate)") (Annex 25 to the Response); A printout from www.salonmag.com/health/feature/1999/09/03/bikini/print.html ("[G]etting waxed is one of those hidden female pleasures, like wearing trashy lingerie under a business suit") (Annex 26 to the Response); A printout from www.brunching.com/features/reature-tangent.html (It was the kind of slip you might find on a good mannequin at a trashy lingerie store . . .") (Annex 27 to the Response) A printout from www.angelfire.com/or/mamatombstone/advice.html ("Next, you'll want to buy lots of trashy lingerie to use as outerwear.") (Annex 29 to the Response); A printout from www.tonights.com/diamond.html ("I have classy or trashy lingerie . . .")