WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Gordon Rahschulte
Case No. D2001-0901
1. The Parties
Complainants are A & F Trademark, Inc., a corporation of Delaware, USA, with a principal place of business in Wilmington, Delaware, and Abercrombie & Fitch Stores, Inc., a corporation of Delaware with a principal place of business in New Albany, Ohio, USA.
Respondent is Gordon Rahschulte, an individual with an address in Arlington Heights, Illinois, USA.
2. The Domain Name and Registrar
This dispute concerns the domain name <abercrombiefitch.com>, whose registrar is Network Solutions, Inc.
3. Procedural History
The Complainant submitted a Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("UDRP Policy") implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, under the Rules for the UDRP Policy implemented by ICANN on the same date ("UDRP Rules"). The Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center"), by e-mail on July 16, 2001, and in hard copy on July 17, 2001. On July 24, 2001, the Center performed its check for compliance with formal requirements.
On July 24, 2001, the Center issued a Notification of Complaint and Commencement of Administrative Proceeding, forwarding the Complaint to the Respondent by courier and email. The hardcopy was returned as undeliverable on August 10, 2001. A copy of the Complaint was also communicated to the registrar, Network Solutions, Inc., as well as to ICANN. The Notification set the deadline for Response to the Complaint as August 13, 2001.
No Response was received from Respondent, and on August 22, 2001, the Center issued a Notification of Respondent Default. This Panel provided its Declaration of Impartiality and Independence to the Center and was duly appointed on August 28, 2001. The Center transmitted the case file to this Panel for review on the same date.
On September 10, 2001, this Panel requested additional time to complete its decision owing to a conflict with other litigation.
4. Factual Background
Complainant A & F Trademark, Inc. is the owner of a number of United States trademark registrations including Registrations: No. 951,410 for ABERCROMBIE & FITCH, registered in 1973; No. 1,178,609 for ABERCROMBIE & FITCH, registered in 1981; No. 2,061,284 for ABERCROMBIE & FITCH CO., registered in 1997, and No. 2,305,464 for ABERCROMBIE, registered in 2000 (the "Abercrombie Marks"). This Panel's own query of the records of the U.S. Patent and Trademark Office confirms that these registrations are active.
A & F Trademark, Inc. is also the owner of numerous foreign trademark registrations for the mark ABERCROMBIE & FITCH.
5. Partiesí Contentions
Complainants describe themselves as follows:
Abercrombie & Fitch Stores, Inc. is the exclusive licensee of A & F Trademark, Inc. for the various ABERCROMBIE service marks. Complaint, para. V.12(4).
Abercrombie & Fitch Stores, Inc. is a nationwide retailer of menís and womenís casual clothing and has been since 1892. Abercrombie owns and operates approximately 160 ABERCROMBIE & FITCH retail stores and ABERCROMBIE CHILDREN retail stores and sells its casual clothing under the registered trademarks and service marks of ABERCROMBIE & FITCH, ABERCROMBIE & FITCH CO. and ABERCROMBIE. Complaint, para. V.12(1).
Complainants also operate a web site at www.abercrombie.com, where Complainants advertise, promote, offer company information, offer for sale and sell merchandise, namely, clothing and accessories, in connection with the Abercrombie Marks. Complainantsí "www.abercrombieandfitch.com" web site automatically hyper-links to Complainantsí "www.abercrombie.com" web site. Complaint para. V.12(7).
Complainants assert that their promotion, advertisement and sale of their merchandise in connection with the Abercrombie Marks since 1892 has caused the Abercrombie Marks to become famous, distinctive and well-known both in the United States and abroad. Complaint para. V12(7)(a).
Complainants assert that they sent a cease and desist letter to Respondent on April 23, 2001. This letter was returned as undeliverable for the reason that the addressee no longer resided at the address. Complaint para. 12(8). Two follow-up letters were sent by e-mail and FedEx in May 2001. No response to these letters was received by Complainants. Complaint, para. V.12(9) - (10).
Complainants assert that Respondent maintains an "Under Construction" web page at "www.abercrombiefitch.com". Complaint, para. V.12(11).
Complainants assert that Respondent's domain name <abercrombiefitch.com> is identical to Complainants' ABERCROMBIE & FITCH mark because domain names cannot include ampersands. Complaint, para. V.12(12).
Complainants also assert that Respondent has no rights or legitimate interest in the domain name because Respondentís name does not incorporate the domain name; Complainants are unaware of any trademark registrations owned by Respondent for ABERCROMBIE marks; Complainants are unaware of any holding out by Respondent to the public as Abercrombie Fitch; and Complainants are not aware of any instances where Respondent has sold any products or services in connection with the <abercrombiefitch.com> domain name. Complaint, para. V.12(13).
Finally, Complainants assert that Respondent registered and is using the domain name in bad faith. Complainants assert that bad faith can be inferred from the famous and well-known status of Complainantsí marks and their use since 1892. Complainants assert that Respondentís failure to respond to any of Complainantsí correspondence demonstrates that Respondent is using the domain name in bad faith. Furthermore, Complainants assert that Respondents failure to update his contact information in the WhoIs database and failure to use the domain name for more than an "Under Construction" page show that Respondent is using the domain name in bad faith. Complaint, para. V.12.(17) - (19).
Respondent did not submit a Response to the Complaint.
6. Discussion and Findings
A. Applicable Policy Provisions
The UDRP Policy requires the Complainants to prove each of the following three elements in order to prevail in this proceeding:
1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
UDRP Policy, Section 4(a).
As has been pointed out by previous Panels, it is not sufficient to prevail that a Complainant prove only registration in bad faith; rather, the Complainant must prove both registration and use in bad faith. See World Wrestling Fedín Entmít, Inc. v. Bosman, WIPO Case No. D99-0001; Ellenbogen v. Pearson, WIPO Case No. D2000-0001.
However, the UDRP Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [the Registrant has] registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) [the Registrant has] 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 [the Registrant has] engaged in a pattern of such conduct; or
(iii) [the Registrant has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the Registrant has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] web site or location or of a product or service on [its] web site or location.
UDRP Policy, Section 4(b). These circumstances are non-inclusive, and the Panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.
The Respondent may demonstrate rights or legitimate interests to the domain name by any of the following, without limitation:
(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 non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
UDRP Policy, Paragraph 4.c.
B. Opinion of the Panel
Where a Respondent is in default, the Panel may draw such inferences as it considers appropriate. UDRP Rules, para. 14(b).
Regarding element one, the Panel finds that the domain name is confusingly similar to Complainantís ABERCROMBIE & FITCH mark. The absence of an ampersand, a character that cannot be incorporated in a domain name, does not defeat the confusing similarity of the domain name to Complainantsí marks.
With respect to the second element, the Panel finds that Complainant has met its burden of production in showing that Respondent has no rights or legitimate interests in respect of the domain name. From the Respondentís failure to file a Response or to respond to any of Complainantsí communications, and from Respondentís apparent non-use of the domain name, the Panel infers that Respondent has no rights or legitimate interest in the domain name.
With regard to the third element, the Panel declines to infer bad faith from Respondentís failure to respond to Complainantsí correspondence alone. Silence, without more, cannot prove that Respondent acted in bad faith.
However, at the time Respondent registered the domain name, Respondent had constructive, if not actual, notice of Complainantsí rights to its marks. The Panel therefore infers that Respondent registered the domain name in bad faith.
Upon considering all the circumstances of a case, use of a domain name in bad faith may be inferred from the passive holding of a domain name that is confusingly similar to a third partyís mark. See, e.g., Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515 (Sep. 13, 2000); Telstra Corp. v. Nuclear Marshmallows, WIPO Case No D2000-0003 (Feb. 18, 2000).
Based upon the reputation of Complainantís mark, Respondentís failure to provide any evidence of actual or contemplated good faith use, and Respondentís provision of incomplete or inaccurate contact information in the WhoIs record, the Panel concludes that Respondent has used the domain name in bad faith.
For the reasons stated hereinabove, and pursuant to Paragraph 4(i) of the UDRP Policy, and Paragraph 15 of the UDRP Rules, this Panel grants the remedy requested by Complainant in the Complaint, namely that the domain name <abercrombiefitch.com> is hereby transferred to Complainant.
Jordan S. Weinstein
Dated: September 17, 2001