Complainants are Abercrombie & Fitch Trading Co., a corporation organized under the laws of the state of Ohio, United States of America and A & F Trademark, Inc., a corporation organized under the laws of the state of Delaware, United States.
The Respondent is Johnathan Smith, cheapabercrombie, New York, New York, United States.
The disputed domain name, <cheapabercrombie.com>, is registered with eNom, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2008. On November 24, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On November 24, 2008, eNom transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainants filed an amendment to the Complaint on December 2, 2008. The Center verified that the Complaint together with the amendment to the Complaint (hereinafter the Complaint and amendment thereto will be referred to as the “Complaint” satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 December 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 24, 2008.
The Center appointed M. Scott Donahey as the sole panelist in this matter on January 20, 2009. 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.
Complainants are the owners of numerous marks for ABERCROMBIE and ABERCROMBIE & FITCH. (Hereinafter Complainants will be referred to jointly and severally as “Complainant.”) Complainant is a prominent manufacturer of clothing for active lifestyles. Complainant first used the trademark ABERCROMBIE & FITCH in the United States as early as 1902 on clothing for men and women. Complainant currently operates over 350 retail shops under the mark ABERRCROMBIE & FITCH in the United States, the United Kingdom of Great Britain and Northern Ireland, and Canada. The sales of ABERCROMBIE & FITCH branded goods during the period 2003-2007 exceeded USD eight billion. During the years 2002-2007, Complainant spent over USD one hundred nine million in the marketing and promotion of the ABERCROMBIE and ABERCROMBIE & FITCH marks.
Complainant has over 550 trademark registrations for its ABERCROMBIE and ABERCROMBIE & FITCH trademarks in countries around the world, including the United States, the European Community, the United Kingdom, Germany, Italy, France, Taiwan, Province of China, Republic of Korea, Japan, People's Republic of China, Thailand, Vietnam, Indonesia, Hong Kong, SAR of China, India, Australia, Turkey, and Canada. Complaint, Annexes D and E.
Complainant operates web sites through the domain names <abercrombie.com> and <abercrombiekids.com> on which Complainant advertises and offers for sale clothing and accessories marketed under its ABERCROMBIE and ABERCROMBIE & FITCH trademarks.
On December 26, 2007, Respondent registered the disputed domain name. Respondent uses the disputed domain name to resolve to a web site on which Complainant's ABERCROMBIE & FITCH trademark is featured prominently and repeatedly and on which Respondent offers goods allegedly manufactured by Complainant which are alleged to be counterfeit and in no way connected with Complainant. On Respondent's web site, Respondent also offers for sale goods purportedly manufactured by Complainant's competitors.
Complainant has never authorized Respondent to use its marks for any purpose, nor is Respondent an authorized dealer or distributor of Complainant's goods. Respondent is not commonly known by the name “cheapabercrombie,” nor is it authorized to do business under that name.
Complainant sent Respondent a cease and desist letter on September 25, 2008. Respondent did not reply to this letter. Complaint, Annex H. The letter, sent to the address which Respondent listed in the WhoIs, was returned as undeliverable. However, an email transmission of the letter by Complainant did not bounce back as undeliverable, so delivery of the letter is presumed.
Complainant contends that the disputed domain name is confusingly similar to Complainant's ABERCROMBIE and ABERCROMBIE & FITCH trademarks, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to Complainant's contentions.
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.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) 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,
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
A domain name has been found to be confusingly similar to a mark where a common descriptive term has been appended to the mark as part of the domain name. Serta, Inc. v. Maximum Investment Corporation, WIPO Case No. D2000-0123 (<buyserta.com> and <buyaserta.com> held confusingly similar to the SERTA trademark). A domain name has also been found to be confusingly similar where a common term has been added to only a part of a trademark. Veuve Clicquot Ponsardin v. Net-Promotion, Inc., WIPO Case No. D2000-0347 (<champagnecliquot.com> and < champagne-cliquot.com> held confusingly similar to the VEUVE CLICQUOT trademark). Accordingly, the panel finds that the disputed domain name is confusingly similar to Complainant's ABERCROMBIE and ABERCROMBIE & FITCH trademarks.
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name (see Section 4 above), and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant's name is well known in the United States where Respondent regularly resides. It is impossible to believe that Respondent did not know of Complainant at the time it registered the disputed domain name. Moreover, use of the name to offer for sale goods allegedly manufactured by Complainant, but in reality counterfeit, is further evidence that Respondent registered the disputed domain name with full knowledge of Complainant and its business.
Respondent's use of Complainant's ABERCROMBIE trademark in its domain name was done for the purpose of attracting Internet users to the site. Respondent's prominent and repeated use of Complainant's ABERCROMBIE & FITCH trademark on its web site at the disputed domain name in order to entice Internet users to purchase counterfeit merchandise constitutes bad faith registration and use in violation of the Policy, paragraph 4(b)(iv). Lilly ICOS LLC v. Lei Lu, WIPO Case No. D2005-0436. Accordingly, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith.
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, <cheapabercrombie.com>, be transferred to the Complainant.
M. Scott Donahey
Dated: January 29, 2009