WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Forth & Towne (Apparel) LLC v. Michelle Tostado
Case No. D2006-1369
1. The Parties
The Complainant is Forth & Towne (Apparel) LLC, of San Francisco, California, United States of America, represented by Fross Zelnick Lehrman & Zissu, United States of America.
The Respondent is Michelle Tostado, of Newark, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <forthandtowne.biz> is registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2006. On October 26, 2006, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On October 27, 2006, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on November 3, 2006. The Center verified that the Complaint, together with the amendment to 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 November 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2006.
The Center appointed Gary J. Nelson as the sole panelist in this matter on January 3, 2007. 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 uses the FORTH & TOWNE name and trademark for a chain of retail stores offering apparel and accessories for women over the age of 35. Complainant is owned by the Gap, Inc. which operates other retail clothing stores such as Gap, Banana Republic and Old Navy.
Complainant is the owner of a variety of trademark registrations for the FORTH & TOWNE trademark. Complainant has registered the FORTH & TOWNE trademark in the United States, the European Community and in Benelux (i.e., Belgium, Netherlands and Luxemburg).
The contested domain name appears to have been registered on April 26, 2005. The corresponding website appears to be a standard place-holder automatically supplied by the Registrar.
5. Parties’ Contentions
The parent company of Complainant, Gap, Inc., announced its intent to launch a new line of stores under the FORTH & TOWNE trade name and trademark on April 21, 2005.
Respondent registered the contested domain name on April 26, 2005.
In August, 2005, Complainant opened four FORTH & TOWNE stores in Chicago and one in New York. Additional FORTH & TOWNE stores were opened in 2006 in Los Angeles, San Francisco, Houston and Atlanta, with additional store openings planned for San Diego, Santa Barbara and Seattle.
Complainant states that since 2005, millions of dollars of retail sales have been made under the FORTH & TOWNE trademark and advertising/promotional expenditures exceed USD8 million.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s FORTH & TOWNE trademarks in which the Complainant has rights, and the establishment of Complainant’s trademark rights pre-date the registration of the contested domain name by Respondent.
Complainant contends that Respondent has no rights or legitimate interests in the contested domain names.
Complainant contends that Respondent registered and is using the contested domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “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.”
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no right or legitimate interest in the contested domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has registered several FORTH & TOWNE trademarks with the United States Patent and Trademark Office. The filing date for some of these registrations precedes the registration date of the contested domain name (i.e., February 16, 2005 versus April 26, 2005). Accordingly, the Panel finds that Complainant has established rights in the FORTH & TOWNE trademark pursuant to Paragraph 4(a)(i) of the Policy. See Janus Int’l Holding Co. v. Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
The Panel finds that Respondent’s <forthandtowne.biz> domain name is confusingly similar to Complainant’s FORTH & TOWNE marks because it incorporates the entirety of the “forth” and “towne” portions of Complainant’s mark and merely replaces the “&” symbol with the word “and.” This minor modification is insufficient to rebut a proper claim of confusing similarity.
Similarly, the addition of a generic term such as the generic top-level domain name, “.biz,” is not sufficient to create a distinct domain name capable of overcoming a claim of confusingly similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).
The Panel finds that Complainant has proven the requirement of Policy, Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interest in the contested domain name.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that the Respondent lacks rights of legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221 (finding that respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no legitimate interest in the contested domain names).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the <forthandtowne.biz> domain name, or that it is commonly known by any name incorporating the phrase “forth and towne.” In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interest could be found where (1) Respondent is not a licensee of Complainant; (2) Complainant’s rights in its related trademarks precede Respondent’s registration of the contested domain name; and (3) Respondent is not commonly known by the domain name in question. The Panel notes that all three of these conditions apply to the present case.
Respondent maintains a passive and undeveloped website at “www.forthandtowne.biz”. Respondent’s failure to develop an active website corresponding to the <forthandtowne.biz> domain name is further evidence supporting the conclusion that Respondent has no right or legitimate interest in this domain name. See Pharmacia & Upjohn AB v. Romero, WIPO Case No. D2000-1273 (finding no rights or legitimate interest where respondent failed to submit a response to the Complaint and made no use of the domain name in question); See also Melbourne IT Ltd. v. Stafford, WIPO Case No. D2000-1167 (finding no rights or legitimate interest in the disputed domain name where there is no proof that Respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and Respondent is not commonly known by the disputed domain name).
The Panel finds that Complainant has proven the requirement of Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the contested domain name in bad faith.
Respondent has registered the <forthandtowne.biz> domain name which corresponds to a passive website. This fact is evidence that Respondent registered and is using this domain name in bad faith. See Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260 (finding bad faith where respondent made no use of the domain name in question and there are no other indications that respondent could have registered and used the domain name in question for any non-infringing purpose). See also Red Bull GmbH v. Harold Gutch, WIPO Case No. D2000-0766 (finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use).
The Panel also finds that Respondent likely chose the disputed domain name with full knowledge of Complainant’s rights in the FORTH & TOWNE trademark. Respondent’s awareness of Complainant’s FORTH & TOWN trademark may be inferred since the contested domain name was registered within days of Complainant’s public announcements that it planned to open FORTH & TOWNE retail outlets.
The Panel finds that Complainant has proven the requirement of Paragraph 4(a)(iii) of the Policy.
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 name, <forthandtowne.biz>, be transferred to the Complainant.
Gary J. Nelson
Dated: January 17, 2007