WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc.

Case No. D2003-0172

 

1. The Parties

The Complainants are A & F Trademark, Inc. of New Albany, Ohio, United States of America, as well as Abercrombie & Fitch Stores, Inc. and Abercrombie & Fitch Trading Co., Inc., both of New Albany, Ohio, United States of America, all represented by Colucci & Umans of the United States of America ("the Complainants").

The Respondent is Party Night, Inc., c/o Peter Carrington of Amsterdam, The Netherlands ("the Respondent").

 

2. The Domain Names and Registrars

The disputed domain names <abercronbieandfitch.com>, <abrecombieandfitch.com> and <abocrombie.com> ("the Domain Names") are registered with Key-Systems GmbH dba domaindiscount24.com ("the Registrar").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 3, 2003, (e-mail version) and March 5, 2003, (hardcopy). On March 5, 2003, the Center transmitted by email to the Registrar (Key-Systems GmbH dba domaindiscount24.com) a request for registrar verification in connection with the domain names at issue. On March 7, 2003, the Registrar 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 March 11, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on April 1, 2003.

The Center appointed Alain Strowel as the sole panelist in this matter on April 14, 2003. 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.

Amendment of a Complaint to include additional domain names without filing a separate Complaint together with a Petition for Consolidation

On April 14, 2003, the Center informed the Panel that it had come to the Complainantsí attention that the Respondent had registered a third domain name, namely <abocrombie.com>, and that the Complainants were asking whether it would be possible for them to amend the complaint to include this domain name. The Center replied to the Complainants that the Rules do not explicitly provide for a Complaint to be amended, after the commencement of proceedings, to include additional domain names. Accordingly, the Center transmitted the request to the Panel, stating that it was at the discretion of the Panel to consider the request in accordance with Rules, paragraph 10.

On April 22, 2003, the Panel informed the Center that, in these specific circumstances, it accepted that the Complaint be amended to include one additional domain name. It reasoned as follows. To the Panelís best knowledge, there was no case-law on additional Complaints. However, there was case-law on consolidation, in accordance with Policy, paragraph 4 (f) and Rules, paragraph 10 (e), of separately filed Complaints against different Respondents, e.g. AT&T Corp v. May Halabi and All Time Talk Cellular, Case Nos. D2002-0569 and D2002-0606. In terms of procedure, such a consolidation required the Complainant to file a Petition for Consolidation. The issue seemed accordingly to be whether acceptance of an additional Complaint to include additional domain names should be subject to the Complainant filing a separate Complaint together with a Petition for Consolidation.

The Panel ruled that an additional Complaint may be accepted without the Complainant filing a separate Complaint together with a Petition for Consolidation, where:

(i) the additional Complaint is clearly liable to be consolidated with the principal Complaint; the additional and principal Complaints are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings (to put it in the terms of Council Regulation (EC) No 44/2001 of December 22, 2000, on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, Article 28.3); and furthermore

(ii) the additional Complaint is not only based on, but its resolution is also supported by, mutatis mutandis exactly the same legal and factual grounds as the principal Complaint; in more trivial words, this is a sort of "copy & paste" test to be carried out by the Panel; and finally

(iii) the additional Complaint complies with the Schedule of Fees under the ICANN UDRP Policy; an upgrade (if any) in the "1 to 5", "6 to 10" and "more than 10" thresholds has given rise to an adjusting payment.

In the case in point, all three tests were satisfied. Consequently, the Panel accepted that the Complaint be amended to include an additional domain name, namely <abocrombie.com>.

On April 29, 2003, the Panel issued Procedural No. 1 and notified the Parties, that upon review of the Complainantsí request to amend the Complaint to include a third domain name, namely <abocrombie.com>, the Administrative Panel had determined that not later than May 7, 2003, the Complainants should provide the Center with an amended Complaint to include the additional domain name and that not later than May 17, 2003, the Respondent might provide a Response to the amended Complaint.

As a result of the above, the Panel set May 28, 2003, as the new date for rendering the decision, in accordance with Paragraph 15(b) of the Rules.

Finally, the language of this proceeding is English, being the language of the Registration Agreement applicable to the disputed Domain Names.

 

4. Factual Background

The Complainants, Abercrombie and their predecessors, are a retailer of menís and womenís casual clothing and have been since 1892. Abercrombie owns and operates approximately 480 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. Complainant, A & F, is the owner of the following United States trademark registrations: (1) ABERCROMBIE, Registration No. 2,305,464; (2) ABERCROMBIE & FITCH CO., Registration No. 2,061,284; (3) ABERCROMBIE & FITCH [Panelís note: Trade Mark], Registration No. 951, 410, and (4) ABERCROMBIE & FITCH [Panelís note: Service Mark], Registration No. 1,178,609 (the "Abercrombie Marks"). Complainant, A & F, is also the owner of numerous foreign trademark registrations for the ABERCROMBIE & FITCH Trademark in more than twenty countries, yet not in the Benelux. Complainant, Abercrombie, is the exclusive licensee of A & F for use of the Abercrombie Marks.

Complainant, A & F, is the registrant for the domain names <af1892.com>, <abercrombie.com> and <abercrombieandfitch.com>. Complainants operate a website 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" website automatically resolves to Complainantsí "www.abercrombie.com" website. Complainants also operate a childrenís website located at "www.abercrombiekids.com".

On November 21, 2002, Complainants sent Respondent a cease and desist letter which was refused on November 27, 2002, because the address provided by the Respondent is a hotel. A follow-up letter via e-mail dated December 6, 2002, remained unanswered.

 

5. Partiesí Contentions

A. Complainant

(i) The Complainants contended that Respondentís domain names <abercronbieandfitch.com>, <abrecombieandfitch.com> and <abocrombie.com> were confusingly similar to Complainantsí Abercrombie Marks as the former were virtually identical to the latter. The Complainants moreover argued that the Respondent had registered the domain names as intentional misspellings of Complainantsí registered ABERCROMBIE Marks.

(ii) The Complainants further contended that the Respondent did not have any legitimate rights in the <abercronbieandfitch.com>, <abrecombieandfitch.com> and <abocrombie.com> domain names as the Respondent was only using the domain names to lure Internet users to pornographic websites. The Complainants moreover argued that the Respondent does not own any relevant trademark registrations and that the Complainants have priority of use of the Abercrombie Marks and do not license use of the Abercrombie Marks to third parties.

(iii) The Complainants finally contended that the Respondent had registered and was using the domain names <abercronbieandfitch.com>, <abrecombieandfitch.com> and <abocrombie.com> in bad faith. This contention was based on the following arguments:

- The Respondent had deliberately submitted, and failed to correct, inaccurate information to the Registrar for the registrant and administrative contact listing.

- Since the Abercrombie Marks are famous and well-known marks and have been in use since 1892, the Respondent was most likely aware of the Abercrombie Marks when he registered the domain names. In this respect, the Complainants claimed that their promotion, advertisement and sale of their merchandise in connection with the Abercrombie Marks since 1892 had caused the Abercrombie Marks to become famous, distinctive and well-known both in the United States and abroad and that their Abercrombie Marks were famous at the time when the Respondent registered the domain names on November 10, 2002. No evidence, e.g. in the form of market surveys, substantiated this claim for worldwide fame.

- The Respondent was using the domain names in connection with pornographic websites, which disparage, dilute and tarnish the goodwill and fame of Complainantsí ABERCROMBIE Marks.

- The Respondent had hyperlinked the domain names to a series of websites which mouse trap Internet users.

- The Respondent had failed to respond to Complainantsí two letters and final e-mail.

- Moreover, numerous corporate plaintiffs have also filed administrative proceedings against the Respondent with WIPO to recover domain names that are confusingly similar to their famous trademarks. In each administrative proceeding, the panelist decided that the Respondent had registered and used the domain names in bad faith, and therefore, transferred the infringing domain names to the Complainants. According to the Complainants, those cases clearly established that the Respondent had engaged in a pattern of cybersquatting.

B. Respondent

The Respondent did not reply to the Complainantsí 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.

Paragraph 4(b) of the Policy provides non-exclusive criteria for evidencing bad faith registration and use of a domain name. Paragraph 4(c) of the Policy provides non-exclusive criteria for demonstrating a registrantís right or legitimate interests in a domain name.

Because the Respondent has defaulted in providing a Response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the Complaint (Paragraph 14(a) of the Rules), and the Panel may draw such inferences from the Respondentís default as the Panel finds appropriate (Paragraph 14(b) of the Rules).

A. Identical or Confusingly Similar

As regards confusing similarity, a crucial issue is whether the appropriate test for such a requirement under the Policy is confined to a literal comparison of the challenged domain names and conflicting mark or further involves a source confusion analysis (akin to that of the Court of Justice of the European Communities in trademark matters). In three extremely well-documented and well-thought-out decisions (The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, <vanguar.com>, being the most relevant to the present facts; the two others being Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499, <bradfordbingley.com> and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787, <bmwdealer.com>) learned Panelist Bradley J. Freedman took the first view for the four following reasons:

"1. The language of Policy paragraph 4(a) should be interpreted in a purposive manner consistent with the Policyís remedial nature and objective Ė to prevent the extortionate behavior known as "cybersquatting".

2. The language of Policy paragraph 4(a) does not invoke a likelihood of confusion test, as contrasted with Policy paragraph 4(b)(iv) which expressly refers to a "likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [the registrantís] website or location or of a product or service on [the registrantís] website or location" as an indication of bad faith domain name registration and use.

3. The Policy is international and, in the absence of express language, it is inappropriate to import into Policy paragraph 4(a) a test that may not exist under all national trademark laws.

4. The procedure contemplated by the Policy is not well suited to the kinds of factual issues presented by a conventional source confusion analysis. In particular, the Policy is intended to be a relatively quick and inexpensive process, panels must make factual determinations based upon written submissions and documentary evidence, complainants have no right of reply without the panelís permission, and parties are often not represented by counsel."

This Panel shares the view that the appropriate test for confusing similarity under the Policy is confined to a literal comparison of the challenged domain name and conflicting mark. Alternatively, the Panel would apply the "initial interest confusion" doctrine (see below as to bad faith and Policy Paragraph 4(b)(iv)).

The conflicting marks are notably ABERCROMBIE & FITCH and ABERCROMBIE. Complainant, A & F, has shown that it owns trademark registrations for the ABERCROMBIE & FITCH Trademark in more than twenty countries, including the United States of America, yet not in the Benelux. Complainant, A & F, has also shown that it owns the ABERCROMBIE trademark in the United States of America. Complainant, Abercrombie, is the exclusive licensee of A & F for use of the Abercrombie Marks.

The disputed domain names are <abercronbieandfitch.com>, <abrecombieandfitch.com> and <abocrombie.com>. "When comparing a disputed domain name and a trademark, the addition of the ".com" suffix is irrelevant for determining whether the domain name is identical or confusingly similar to the trademark. Rather, one looks to the second-level domain for such a determination, since the ".com" suffix is merely descriptive of the registry services and is not an identifier of a source of goods or services" (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, <vanguar.com>).

The literal comparison is straightforward. In the case in point, both visual (misspelling) and aural (pronunciation) similarity arises.

As for visual similarity, the first domain name <abercronbieandfitch.com> is virtually identical to the ABERCROMBIE & FITCH trademark, as the only difference between them is that the letter "m" in ABERCROMBIE has been replaced with its younger sister, the letter "n". Secondly, the domain name <abrecombieandfitch.com> is also virtually identical to ABERCROMBIE & FITCH trademark. The Respondent has merely changed the letters "er" after the "b" to "re"; the Respondent has also completely left out the letter "r" after the letter "c". Thirdly, the domain name <abocrombie.com> is also virtually identical to Complainantsí ABERCROMBIE trademark (as well as <abercrombie.com> domain name and website). The Respondent has merely changed the letters "er" after the "b" in ABERCROMBIE to "o".

Although the disputed domain names are not wholly identical to the conflicting trademarks, the former represent such close alterations of the latter that they constitute misspellings. Strictly speaking, it is not even relevant at this stage that the misspellings be intentional. However, the practice of intentional misspelling is classic and it is often referred to as "typo-squatting". This has been defined as "the registration of domain names that are identical to popular website domain names except for slight differences that may occur as a result of common keyboarding or spelling errors in order to misdirect Internet users to the mis-labeled website" (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, <vanguar.com>). "Typo-squatting" has been disapproved of in numerous WIPO decisions (for a recent example involving the same Respondent, see Lanco, Inc., Lane Bryant, Inc. and Charming Shoppes, Inc. v. Party Night, Inc. c/o Peter Carrington, WIPO Case No. D2003-0173, <laynbryant.com>, citing e.g. Telstra Corp. Ltd. V. Warren Bolton Consulting Pty. Ltd., WIPO Case No. D2000-1293; Playboy Enterprises International Inc. v. SAND WebNames-For Sale, WIPO Case No. D2001-0094; see also the references cited in The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, <vanguar.com>). A spectacular example remains the ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848, where the unbridled imagination of the principal Respondent and its affiliated companies had coined no less than fifty misspellings for Altavista.

As for aural similarity, the second and third derived Domain Names <abrecombieandfitch.com> and <abocrombie.com> moreover share the same pronunciation as the corresponding Abercrombie Marks, just like in e.g. the Lane Bryant v. <laynbryant.com> case involving the same Respondent (Lanco, Inc., Lane Bryant, Inc. and Charming Shoppes, Inc. v. Party Night, Inc. c/o Peter Carrington, WIPO Case No. D2003-0173, <laynbryant.com>).

Accordingly, the Panel finds that the Respondentís domain names <abercronbieandfitch.com>, <abrecombieandfitch.com> and <abocrombie.com> are confusingly similar to the Complainantsí ABERCROMBIE & FITCH and ABERCROMBIE trademarks.

B. No Rights or Legitimate Interests

The second element required by Paragraph 4(a) of the Policy Ė the registrant has no legitimate rights or legitimate interests in the domain name Ė requires the Complainant to prove a negative proposition, which can be particularly difficult.

Again, reference can be made to learned Panelist Bradley J. Freedman:

"A number of panels have held that the burden on a complainant regarding the second element is necessarily light, because the nature of the registrantís rights or interests, if any, in the domain name lies most directly within the registrantís knowledge. Other panels have held that once the complainant makes a prima facie showing that the registrant does not have rights or legitimate interest in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name" (See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, <vanguar.com>, citing several references for each proposition).

In a recent case involving the same Respondent, the Panel found that:

"As the Respondent did not file a Response to the Complaint and has no obvious connections with the Domain Name, it is sufficient for Complainants to prima facie show that the Respondent has no rights or legitimate interests in the Domain Name" (See Lanco, Inc., Lane Bryant, Inc. and Charming Shoppes, Inc. v. Party Night, Inc. c/o Peter Carrington, WIPO Case No. D2003-0173, <laynbryant.com>, citing <sachsen-anhalt.com> Land Sachsen-Anhalt v. Skander Bouhaouala, WIPO Case No. D2002-0273; <volvovehicles.com> Volvo Trademark Holding AB v. Nicklas Uvelov, WIPO Case No. D2002-0521).

In an older case involving a similarly profiled Respondent, the Panel found that:

"The sheer number of domain names similar to the marks of celebrities that Zuccarini has registered Ė and the arbitral and judicial findings against him Ė are sufficient to establish a prima facie case that he does not have rights or legitimate interests in respect of <nicholekidman.com> and <nicolekidmannude.com>" (See Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415).

In this connection, recent cases found against the Respondent Party Night, Inc., c/o Peter Carrington include: Lanco, Inc., Lane Bryant, Inc. and Charming Shoppes, Inc. v. Party Night, Inc. c/o Peter Carrington, WIPO Case No. D2003-0173, <laynbryant.com>; AT&T Corp. v. Peter Carrington/ Party Night Inc., WIPO Case No. D2003-0114, <atttws.com>, Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Night Inc., WIPO Case No. D2002-1128, <sonyeriksson.com>, <sonyerisson.com>, <sonyericson.com> and <sonyerricsson.com>, as well as the seven references provided by the Complainants.

Moreover, the Complainants have shown and the Panel has verified that the Respondent is only using the domain names <abercronbieandfitch.com>, <abrecombieandfitch.com> and <abocrombie.com> for vaunting pornography or quackery. Respondentís websites located at "www.abercronbieandfitch.com", "www.abrecombieandfitch.com", and "www.abocrombie.com" hyperlink to "http://amaturevideos.nl/hanky-panky-party.html" and "http://yes-yes-yes.com/". The first site is said to contain "sexually-oriented adult content which may include visual images and verbal descriptions of nude adults, adults engaging in sexual acts, and other audio and visual materials of a sexually-explicit nature". The second site offers everything to pills for weight loss and against hair loss. Then, upon closing the second site, the Internet user is locked into a series of "mouse trappings" to other websites: "http://mp3messenger.com/" and "http://prescription-drugs.org/". The latter notably peddles "doctor tested and approved penis enlargement pills". Thus, the Respondent is only using the domain names to lure Internet users to those sordid websites.

Finally, the Complainants do not license use of the Abercrombie Marks to third parties.

Thus, the Complainants have shown a prima facie case that the Respondent does not have rights or legitimate interests

Paragraph 4(c) of the Policy nevertheless provides non-exclusive criteria for demonstrating a registrantís right or legitimate interests in a domain name:

(i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;

(ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) the registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainantís mark.

In the case in point, the Respondent in default has demonstrated no such circumstance. The Panel is unaware of any evidence showing the Respondentís use of the disputed domain names, or any names corresponding to the domain names, in connection with any bona fide offering of goods or services at any time. There is no evidence demonstrating that the Respondent has ever been commonly known by the disputed domain names. No evidence has been forwarded to the Panel establishing that the Respondent is making a legitimate non-commercial or fair use of the domain name (see CIMCITIES LLC v. Party Night Inc., WIPO Case No. D2002-0613, where <accessaltanta.com> hyperlinked to gambling sites).

Instead, the Respondent diverts consumers Ė though probably not misleadingly, and hypothetically not for commercial gain Ė and, in any event, blatantly disparages, dilutes and tarnishes the Complainantsí marks and their goodwill.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed Domain Names.

C. Registration and Use in Bad Faith

Finally, the Complainants must prove that the disputed Domain Names have been registered and are being used in bad faith.

Policy paragraph 4(b) provides that the following circumstances "in particular but without limitation," are deemed to be evidence of bad faith:

(i) circumstances indicating that the registrant has registered or has 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 its 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 Website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation or endorsement of its Website or location or of a product or service on its Website or location.

The Panel finds that item (iv) must be construed flexibly and applies to the case.

In part, this Panel follows a similar, though not identical, line of reasoning as that in The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, <vanguar.com> (see also the references cited).

As for knowledge and intention, there is no direct evidence that the Respondent knew of the Complainants or their Abercrombie Marks, or intended to use the disputed domain names to confuse and divert Internet users. Nevertheless, the Respondentís knowledge and intention may be determined by common sense inferences from circumstantial evidence (see the references cited in the Vanguard case).

The Panel finds that the Respondent knew of the Complainantsí famous Abercrombie Marks, based upon the following circumstances (similar to the Vanguard case): (a) there is no apparent connection or relationship between the disputed domain names and the Respondent or its websites or its contents (casual clothing not being connected with sex materials or pills); (b) there is no other apparent legitimate justification for the Respondentís registration and use of the disputed domain names for its websites; (c) the Respondent has not denied any knowledge of the Complainants or their trademarks; and (d) the disputed domain names are a confusingly similar misspelling of the Complainants <abercrombie.com> and <abercrombieandfitch.com> domain names.

In addition, the Panel draws an adverse inference from three elements: (i) the fact that the Respondent had deliberately submitted (at the time of registering), and failed to correct (at the time of using), inaccurate information to the Registrar for the registrant and administrative contact listing; and (ii) the Respondentís failure to provide any explanation or rationale for its use of the disputed domain names for its websites; and more importantly (iii) the Respondentís past involvement in at least ten WIPO administrative proceedings for typo-squatting Ė all of which have directed that the domain name(s) at stake be transferred. Recent cases found against the Respondent Party Night, Inc., c/o Peter Carrington include: Lanco, Inc., Lane Bryant, Inc. and Charming Shoppes, Inc. v. Party Night, Inc. c/o Peter Carrington, WIPO Case No. D2003-0173, <laynbryant.com> (itself citing <nestlesusa.com> Société des Produits Nestlé SA v. Peter Carrington, c/o Party Night Inc., WIPO Case No. D2002-0954; <big5sportingoods.com> Big 5 Corp. v. Peter Carrington and Party Night Inc., WIPO Case No. D2002-0897; <attboadband.com>, <attbradband.com> AT&T Corp. v. Peter Carrington/ Party Night Inc., WIPO Case No. D2002-0931); and AT&T Corp. v. Peter Carrington/ Party Night Inc., WIPO Case No. D2003-0114, <atttws.com>, Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Night Inc., WIPO Case No. D2002-1128, <sonyeriksson.com>, <sonyerisson.com>, <sonyericson.com> and <sonyerricsson.com>, as well as the seven references provided by the Complainants. This clearly shows that the Respondent has engaged in a pattern of cybersquatting, and more specifically "typo-squatting", othersí (often well-known) trademarks.

However, unlike the Vanguard case, the Panel does not found its decision on such grounds as that (a) the Complainantsí famous Abercrombie Marks are well-known and specific to the Complainant in connection with casual clothing; and (b) the Complainantsí <abercrombie.com> and <abercrombieandfitch.com> domain names and related websites have received substantial publicity. Indeed, Complainants claimed that their promotion, advertisement and sale of their merchandise in connection with the Abercrombie Marks since 1892 had caused the Abercrombie Marks to become famous, distinctive and well-known both in the United States and abroad and that their Abercrombie Marks were famous at the time when the Respondent registered the domain names on November 10, 2002. First, no evidence, e.g. in the form of market surveys, substantiates this claim for worldwide fame. Secondly, nothing indicates that the Abercrombie Marks are famous and/or advertised in the Benelux, where the Respondent is located; indeed, the Abercrombie Marks have apparently not even been registered in the Benelux. Thus, the Respondentís knowledge and intention cannot be proven on these grounds.

As for likelihood of confusion (through diversion of Internet traffic to the Respondentís websites), this Panel follows the "initial interest confusion" doctrine applied against the same Respondent in the Sony Ericsson case:

"The confusion caused by the Respondent is "initial interest confusion" and the Panel does not believe that Internet users who have visited the Respondentís site would be likely to be confused into believing that it was the Complainantsí site. In the view of the Panel, however, and in line with other decided "typosquatting" cases under the Policy, the deliberate creation of initial interest confusion and the consequent diversion of Internet traffic is sufficient to establish bad faith on the Respondentís part." (See Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Night Inc., WIPO Case No. D2002-1128, <sonyeriksson.com>, <sonyerisson.com>, <sonyericson.com> and <sonyerricsson.com>)

As for commercial gain, the Panel finds that the Respondent draws some gain from its websites. Although there is no hard evidence, it is well known that many websites generate revenue from click-through advertising, by directing traffic to other websites, and other online marketing techniques. In the absence of any reply by the Respondent, the Panel finds that the Respondentís website generates revenue for the Respondent in that manner (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, <vanguar.com> and the other references cited).

Accordingly, the Panel finds that the disputed Domain Names have been registered and are being used in bad faith.

 

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 <abercronbieandfitch.com>, <abrecombieandfitch.com> and <abocrombie.com> be transferred to Complainant

A & F Trademark, Inc.

 


 

Alain Strowel
Sole Panelist

Date: May 28, 2003