WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., and Abercrombie & Fitch Trading Co., Inc. v. Chad Nestor
Case No. D2003-0260
1. The Parties
The Complainants in this administrative proceeding are: A & F Trademark, Inc., a Delaware corporation with its principal office in New Albany, Ohio; Abercrombie & Fitch Stores, Inc., an Ohio corporation with its principal office in New Albany, Ohio; and Abercrombie & Fitch Trading Co., Inc., an Ohio corporation with its principal office at New Albany, Ohio, all in the United States of America. The Complainants are represented in this proceeding by Frank J. Colucci, Esq. of Colucci & Umans in New York, New York, the United States of America.
The Respondent is Chad Nestor, an individual residing in St. Paul, Minnesota, the United States of America.
2. The Domain Name and Registrar
The disputed domain name is <aberzombie.com>.
The registrar for the disputed domain name is Domain Bank, Inc., of Bethlehem, Pennsylvania, the United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 4, 2003. On April 7, 2003, the Center transmitted by email to the registrar Domain Bank.Inc., a request for registrar verification in connection with the domain name in dispute. Also on April 7, 2003, the registrar sent an email with its verification response to the Center confirming that the Respondent is listed as the registrant, the registration is subject to the Policy, 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 this proceeding began on April 8, 2003. In accordance with the Rules, paragraph 5 (a), the due date for the Response was set at April 28, 2003, the date on which the Center in fact received the Response.
The Center appointed Dennis A. Foster as Sole Panelist on May 8, 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.
4. Factual Background
The Complainants have been retailers of casual clothing since 1892. The Complainants own and operate Abercrombie & Fitch retail stores and Abercrombie Children retail stores and sell their casual clothing under the registered trademarks and service marks of Abercrombie & Fitch, Abercrombie & Fitch Co. and Abercrombie.
The Respondent registered the disputed domain name on February 17, 2000. On February 6, 2002, counsel for the Complainants sent a cease and desist letter to the Respondent alleging that the disputed domain name, <aberzombie.com>, violated the Complainantsí trademark rights and demanding the transfer of the disputed domain name to the Complainants (Complaint Exhibit 11).
On February 19, 2002, the Respondent sent a response to the Complainantsí counsel stating that he would not "cease and desist" (Complaint Exhibit 12).
5. The Partiesí Summarized Contentions
The Complainantsí Contentions
- The Complainants are the owners of numerous United States and foreign trademark registrations for the Abercrombie and Abercrombie & Fitch trademarks.
- The Complainants are the registrants for the domain names <AF1892.com>, <abercrombie.com> and <abercrombieandfitch.com> (Complaint Exhibit 7).
- The Complainants also operate a web site at "www.abercrombie.com" where they advertise, promote, offer company information, and sell clothing and accessories using the Abercrombie marks. The Complainantsí "abercrombieandfitch.com" web site automatically hyper-links to the Complainantsí Abercrombie web site (Complaint Exhibit 8).
- The Respondent is currently selling t-shirts that feature the word "Aberzombie" at the disputed domain name <aberzombie.com>. The Respondentís web site also features photographs of the Complainantsí models, which have been misappropriated from the Complainantsí catalog and web site. The Respondent is using these photographs to promote and advertise the sale of the Respondentís merchandise. The photographs on the Respondentís web site have been altered to mock and disparage the Complainantsí trademark and their merchandise (Exhibit 10).
- The disputed domain name <aberzombie.com> is virtually identical to the registered Abercrombie and Abercrombie & Fitch trademarks. The only difference between the Respondentís domain name and the Complainantsí registered trademarks is that the Respondent has replaced the "cr" in Abercrombie with a "z". Thus, the disputed domain name <aberzombie.com> is confusingly similar to the Complainantís Abercrombie and Abercrombie & Fitch registered trademarks.
- Upon information and belief, the Respondent does not own any state or federal trademark registration for the word Aberzombie. Furthermore, the Respondentís name is Chad Nestor, and neither Chad nor Nestor are remotely similar to the word Aberzombie.
- The Respondent only began to use the word Aberzombie to sell and promote his t-shirt business. The purpose of the Respondentís domain name and web site business is to compete with the Complainants by selling t-shirts that feature the word Aberzombie, and to disparage and dilute the Abercrombie marks. The Respondent obviously chose the disputed domain name to capitalize on, and profit from, the good will and fame of the Complainantsí Abercrombie marks.
- The Respondentís web site clearly establishes that the Respondent had knowledge of the Complainantsí famous Abercrombie marks prior to his registration of the disputed domain name.
- The Respondent clearly is using the disputed domain name in commerce to compete with the Complainants in a manner that disparages and dilutes the fame and goodwill of the Complainantsí Abercrombie marks.
- The Respondentís claim that he is making fair use of the domain name is wrong because the Respondent is not using the name in a descriptive manner. Rather, the Respondent is using the disputed domain name to sell the same merchandise as the Complainants in a manner that dilutes and disparages the distinctive nature of the Complainantsí Abercrombie marks.
- The Respondent is using the disputed domain name to profit from the Complainantsí famous mark to sell t-shirts that are virtually identical to the Complainantsí t-shirts. The Respondentís t-shirts feature the word Aberzombie across the front in a font style substantially similar to the font style used on the Complainantsí t-shirts, which feature its Abercrombie trademark across the front as well.
- The Respondentís web site clearly establishes that the Respondent was aware of the Abercrombie and Abercrombie & Fitch trademarks when he registered the disputed domain name on April 17, 2000.
- The Respondent registered the disputed domain name with the intent to divert customers, who would purchase the Complainantsí merchandise, to purchase instead the Respondentís merchandise.
- The Respondent continues to use the disputed domain name in bad faith despite a letter from the Complainantsí stating that his use of the disputed domain name violates the Policy.
- The disputed domain name <aberzombie.com> should be transferred to the Complainants.
The Respondentís Contentions
- All photographs on the disputed domain name web site were purchased from Wonderfile, a third party, royalty-free, stock photography company located in Chicago, Illinois. The photographs used are not the property of the Complainants, nor do they depict the Complainantsí models or merchandise. A receipt for these photographs (including each photographís corresponding identification number) is attached (Response Exhibit 1).
- The Complainants (in their Complaint Exhibit 10) have literally added text to the printout of the Respondentís home page, which makes it appear as though the text is a part of the Respondentís web site, when in fact it is not.
- The Complainants assert that the only difference between the Complainantsí domain name and the Respondentís is the change from the Complainantsí "cr" to the Respondentís "z". While this is certainly true, the Complainants conveniently miss the fact that this difference creates an entirely new word with its own independent meaning, and is not simply a deliberate misspelling used to cause confusion.
- The word "Zombie" is universally known as a being who is under the spell of another. More specifically, Websterís Dictionary defines it as "a supernatural power through which a corpse supposedly is brought to a state of trance-like animation and made to obey the commands of the person exercising the power."
- The Respondentís web site is a clear and obvious parody, which makes no attempt to cause brand confusion to internet users. The disputed domain name, <aberzombie.com>, is distinctive, and not confusingly similar to the Complainantsí trademarks.
- It is readily apparent to anyone who visits the disputed domain name web site because of the humorous photographic images, copywriting, and general content that it is in no way affiliated with, or endorsed by the Complainants.
- The web site at the disputed domain name, <aberzombie.com>, has been actively promoted and running continuously for 3 years.
- It is agreed that the Respondent knew of the Complainantsí Abercrombie mark when it registered the disputed domain name as it is obviously intended to be a parody of the Complainantsí web site.
- The target market of the Respondent is quite disparate from that of the Complainants.
- The font style used on the Respondentís t-shirts has been in common use for decades and is not the property of the Complainants (Response Exhibit 4).
- The Complainantsí request for transfer should be denied.
6. Discussion and Findings
In order for the Complainants to prevail and have the disputed domain name, <aberzombie.com>, transferred to them, the Complainants must prove the following (the Policy, paragraphs 4 (a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainants have exhibited proof of registration of the following United States trademarks: Abercrombie, trade and service mark no. 2,305,464 dated January 4, 2000, for retail clothing and services; Abercrombie & Fitch Co. service mark no. 2,061,284 for retail clothing store services dated May 13, 1997; Abercrombie & Fitch trademark no. 951, 410 for clothing dated January 23, 1993; and Abercrombie & Fitch service mark no. 1,178,609 dated November 17, 1981, for retail store and mail order services (Complaint Exhibit 4). At Exhibit 5, the Complainants also have shown the Panel that these same marks are registered all over the world, including in Argentina, Australia, Canada, China, France, South Africa and Saudi Arabia.
It is obvious that the disputed domain name, <aberzombie.com>, is not identical to any of the Complainantsí trademarks and, in fact, the Complainants do not contend this. Rather, the Complainants contend that the disputed domain name <aberzombie.com> is confusingly similar to the Complainantís Abercrombie trademark. Many Policy decisions have established that a slight change in spelling the Complainantís trademark usually leads to a finding of confusing similarity (see for example The Vanguard Group, Inc. v. Lorna King, WIPO Case No. 2002-1064, January 20, 2003, where it was found that the disputed domain name <vanguar.com>, even without the final "d", was confusingly similar to the Complainantís "Vanguard" trademark).
However, while it is true that aberzombie is phonetically and visually similar to the Complainantsí Abercrombie, there is a vast difference in meaning. Abercrombie (as is Fitch) is a surname used as a trademark. But as the Respondent argues, the word "zombie" is a distinct English word meaning, among other things, a corpse or creature that is under the control of some kind of force or spell (see any recent edition of Websterís Unabridged Dictionary). Although "zombie" preceded by "aber" might call to mind the Complainantsí marks, especially in the context of the Respondentís business of selling t-shirts, the Panel finds that the public would not confuse the Respondent for the Complainants, and thus Abercrombie and Aberzombie are not confusingly similar. This of course also means that Aberzombie is not confusingly similar to the Complainantsí Abercrombie & Fitch trademark.
In a similar vein, a previous panel formulated the following instructive guidance regarding confusing similarity:
In determining confusing similarity between a domain name that incorporates several terms or trademarks, a mere visual comparison is a simplistic test. The touchstone in determining confusing similarity is whether the combination of terms used in a domain name has the potential to mislead unsuspecting users. Telstra Corporation Limited v.Kids@m-a-i-l.com, WIPO Case No. D2003-0169, April 23, 2003.
The Panel finds that the Complainants have failed to show that the disputed domain name, <aberzombie.com>, is confusingly similar to the Complainantsí marks that include the word Abercrombie. Since the Policy requires that the Complainants prove Policy paragraphs 4(a)(i-iii) inclusively, the Panel does not need to examine whether the Respondent has legitimate rights and interests in the disputed domain name, or whether it was registered and is being used in bad faith.
Reverse Domain Name Hijacking
In Section D. (15) of the Response, the Respondent requests that the Panel find that the Complainants initiated this proceeding in bad faith and that they thus are attempting Reverse Domain Name Hijacking per the Rules at paragraph 15(e). The Panel does not agree with the Respondent: the disputed domain name <aberzombie.com> is visually and phonetically quite close to the Complainantsí Abercrombie trademark. Thus, even though the Panel has found the Respondentís contentions more persuasive in this proceeding, the Panel finds the Complainantís have brought a serious case.
The Panel has found that the Complainants failed to show that the disputed domain name, <aberzombie.com>, is confusingly similar to the Complainantsí Abercrombie and Abercrombie & Fitch trademarks.
Therefore, pursuant to Policy paragraph 4(i) and Rule 15 of the Rules, the Panel orders that the disputed domain name, <aberzombie.com>, remain registered to the Respondent, Chad Nestor.
Dennis A. Foster
Dated: May 24, 2003