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WIPO Domain Name Decision: D2000-1792
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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Burlington Coat Factory Warehouse
Corporation v. Smartsoft, L.L.C. c/o Jan Knepper
Case No. D2000-1792
1. The Parties
Complainant is: Burlington Coat Factory Warehouse Corporation, a Delaware
corporation with its principal place of
business at 1830 Route 130 North,
Burlington, New Jersey 08016, U.S.A.
The Complainant is represented by: Alice Carmichael Richey, Esq.,
Brandon C. Fernald, Esq., and Michael A. Tobin, Esq. of Kennedy Covington Lobdell & Hickman,
LLP, Bank of America Corporate Center,
42nd Floor, 100 North Tryon Street, Charlotte, North Carolina 28202,
is: Smartsoft, LLC, an entity with an address at 88 Petersburg Road,
Petersburg, New Jersey 08170, U.S.A.
2. The Domain Names and
names in dispute are: <burlingtonmurderfactory.com>,
for the disputed domain names is: Dotster, Inc., 11807 N.E. 99th
Street, Suite 1100, Vancouver, Washington 98682, U.S.A.
3. Procedural History
is to be resolved in accordance with the Uniform Policy for Domain Name Dispute
Resolution (the Policy) and Rules (the Rules) approved by the Internet
Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the
World Intellectual Property Organization Arbitration and Mediation Center's
Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the
was filed on December 27, 2000. On
January 4, 2001 the Center requested that the Registrar Dotster, Inc. check and
report back on the registrant for the domain names <burlingtonmurderfactory.com>,
January 4, 2001, Dotster, Inc. reported back that the registrant for the
above-listed domain names was the Respondent, Smartsoft, LLC, contact person
Jan Knepper, at 88 Petersburg Road, Petersburg, New Jersey 08170, U.S.A.
On January 5,
2001 the Complaint was sent by registered mail and by e-mail to the Respondent
and this proceeding officially began.
The Respondent failed to file a response, and on January 25, 2001 was
declared in default.
Administrative Panel submitted a
Declaration of Impartiality and
Independence on February 6, 2001, and on February 8, 2001 the Center proceeded
to appoint the Panel.
finds the Center has adhered to the Policy and the Rules in administering this
was due by February 21, 2001, but the Center granted the Panel an extension
until March 1, 2001.
Complainant Burlington Coat Factory Warehouse Corporation is a clothing and
accessory retailer in the United States of America. It claims currently to operate more than 280 stores in 42 states
and to employ over 26,000 employees.
itself states that its product line,
notably its coats, includes clothing items made with animal fur. As a result, Complainant has been the target
of criticism for alleged cruelty to animals.
The Respondent has used the disputed domain names
(<burlingtonmurderfactory.com> etc.) to feature the animal protection
organization "Last Chance for Animals" and its web site
<skinnedpuppy.com>. In doing so,
it would appear the Respondent intends to criticize the Complainant for its manufacturing
Respondent also uses each of the
disputed domain name web sites to sell
domain name registrations as an agent of the registrar for the disputed domain
names in this Case, ie, Dotster, Inc.
there has been no correspondence between the Complainant and the
Respondent. Instead, the Complainant
has initiated this proceeding seeking the transfer of the disputed domain names.
5. The Parties' Contentions
- The disputed domain names are confusingly similar to Complainant's trademark.
- The Respondent has no
rights or legitimate interests in the disputed domain names. The Complainant has not given Respondent the
right to use the disputed domain names and the Respondent has never been
commonly known by the names.
- The Respondent wants
internet users to access the <skinnedpuppy.com> web site using the disputed domain names, while along the
way purchasing a domain name
registration with the registrar Dotster, Inc.
- The Respondent is
attempting to tarnish Complainant's Burlington Coat Factory and Burlington Coat
Factory Warehouse marks by registering the disputed domain names to associate
Complainant with murder, killing, death, blood, and the holocaust.
- Respondent registered the
disputed domain names in order to disrupt
the business of the Complainant.
- Respondent registered and
used the disputed domain names in bad faith because Respondent has used
Complainant's marks to attract on-line visitors for commercial gain.
did not file a response and is in default in this proceeding.
6. Discussion and Findings
In order for
the Complainant to prevail and have the disputed domain names transferred to
it, Complainant must prove the following
(the Policy, para 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
Burlington Coat Factory mark is a federally registered service mark in the
United States of America (U.S. Service Mark Reg. No. 1,850,094, dated August
16, 1994) and is used in connection with retail clothing store services. The Complainant has also registered the
Burlington Coat Factory Warehouse mark in nine (9) states in the U.S.,
including Massachusetts, Illinois and Georgia.
The Complainant claims it operates stores in forty-two (42) states in
the U.S. (Complaint, Annex 3).
The Policy at 4 a(i) does not tell us how to apply
the concept of "confusingly
similar", but this is not surprising given that it is often a matter of
common sense. Under this ad hoc or
common sense test, the Respondent's domain names are not confusingly similar to
the Complainant's marks. While search engines might pick up the mark
Burlington, the human navigator certainly would not think <burlingtonkillfactory.com> etc.
emanated from the Complainant. But the
Panel finds this hard and fast analysis is inadequate for the Case at hand
because the Respondent is not just showing a protest web page about the
Complainant: Respondent also is advertising to sell domain name registrations
for Dotster.com, and there is a further advertisement on the page for "Open
Directory Cool Site". Therefore,
the Respondent's motives are certainly commercial, perhaps even primarily
Many of the WIPO Center "protest and criticism" Cases have involved
the word "sucks" added to a well-known trademark. Some panels have
found the resulting domain names to be confusingly similar because internet
search engines pick up the trademark and cannot discern that the word "sucks"
is now commonly used for protest or criticism in English, especially American
English. The Panel does not believe these decisions accurately reflect the
current posture of U.S. courts. Instead, the Panel is more in sympathy with
a recent WIPO decision, Lockheed Martin Corporation v. Ron Parisi, WIPO
Case No. D2000-1015, January 26, 2001,where the Panel found "Lockheedsucks"
was not confusingly similar to "Lockheed". (Bally Total Fitness
v. Faber, 29 F. Supp. 2d 1161, C.D.Cal. 1998 involving the domain name <Ballysucks.com>
; Lucent Technologies, Inc. v. Lucentsucks.com, 95 F. Supp. 2d 528, 535, E.D.
Va. 2000; Shields v. Zuccarini, individually and t/a Cupcake City, 54 U.S.P.Q.,
2nd 1166, 89 F. Supp. 2d 634 (E.D.Pa. 2000).
As the court
in Bally Total Fitness found, many people use the internet not just to find
providers of goods and services but also
to search for critical information on the providers of these goods and services. The domain name owners of the criticism and protest sites necessarily
have to use the trademark owner's mark, paired with "sucks" or what
have you, to signal their presence on the internet. It is a fair use exception to confusingly similar trademark
As the Panel
in Lockheed supra found, the Panel
finds it is readily apparent that "Lockheedsucks" is intended to
criticize the company Lockheed and thus would not be a website run by Lockheed. The Panel also would like to
stress that in the WIPO Case Lockheed
supra and the three cited United States federal cases (Bally Total Fitness, Lucent
Technologies and Shields), the
courts made it clear on several occasions that for the use of a trademark to be not confusingly similar
within the protest or criticism fair use exception, the use must be genuine
protest or criticism, and must be
precedential framework in mind, the
Panel hopes to dig deeper than an ad hoc
examination for confusing similarity of the disputed domain names:
<burlingtondeathfactory.com>, <burlingtonbloodfactory.com>, and
<burlingtonholocaust.com>. The Panel
does not believe the public would confuse these sites as belonging to the
Complainant, but the Panel does strongly suspect the public would be confused
by Respondent's (apparent) protest/commercial use of Complainant's mark.
Complainant, the Panel finds it preferable to use the multi-step analysis
common in United States courts to flesh out the Policy at 4 a(i) and the
guidance on confusing similarity provided there. (the Complaint, pp. 11-13;Bally's Total Fitness; Lucent Technologies, supra). The goal is to derive a better idea of whether, on balance, more of the elements of confusing similarity are in favor of the Complainant or the Respondent.
of the mark: the Panel is satisfied the
Complainant's mark is well-known for selling coats and other clothing in the
United States (Complaint, Annexes 3 and 4).
This favors the Complainant.
(2) Proximity of the Goods: more
actually, similarity of the goods. Respondent's protest in favor of animals, whether real or assumed, and his
advertising and attempts to sell domain name registrations are not comparable
to the Complainant's apparel. This
favors the Respondent.
(3) Similarity of the marks: both Complainant and Respondent
are using Complainant's mark Burlington.
This favors the Complainant.
(4) Evidence of Actual Confusion: the Complainant does not
offer any except to say that web search engines looking for the Complainant
will also pull in the Respondent. The
Panel does not believe the public would think the Respondent was in any way
representing the Complainant, but the Panel believes the public looking for
protest or criticism Burlington sites will nonetheless be confused by the
Respondent's use of Complainant's mark
to try and sell them domain name registrations. This favors the Complainant.
Channels: Both Respondent and Complainant market on the internet. However, it is not apparent that the
internet is an important sales channel for the Complainant. The Panel finds this part of the test favors neither party.
(6) Consumer Sophistication and
Care Likely to Be Exercised: The
Complainant wants the public to buy its apparel, including items made of
fur. The Respondent apparently does not want the public to buy Complainant's fur
apparel; Respondent definitely wants to use the disputed domain names to sell
the public internet domain name subscriptions.
This part of the test does not
seem relevant to the Panel.
(7) Respondent's Intent in
Selecting the Domain Names: The Panel believes this particular part of the test is the most significant for our
Case. It is clear to the Panel that the
Respondent intended to use the disputed domain names to enhance its chances
of capturing internet traffic and
selling internet domain name subscriptions.
Any thoughts of criticizing Complainant's fur apparel and its relation
to the treatment of animals are, in the view of the Panel, secondary. The Panel finds this is true because the
Respondent has taken no trouble at all with formulating its own protests or
criticism. Respondent is content to
post at all five (5) domain websites the same minimally interactive page with
pictures of dogs and some type of
skinned carcasses with a notice that it has not been updated since
(8) Likelihood of Product Line Expansion: The Panel agrees with the Complainant that
this part of the test is not directly
applicable to our Case.
Like United States courts, the Panel finds this
eight (8) part test for confusing similarity is useful for balancing the pros and cons for allowing the Respondent to use a mark
belonging to the Complainant. The Panel
finds this test strongly points to a
finding that the Respondent's disputed domain names are deliberately
confusingly similar to the Complainant's mark. Although the Respondent clearly is trying to bring the marks into
the safe haven of protest and
criticism, the Panel can not allow this because Respondent is making a primarily
commerical use of the domain name
Legitimate Rights or Interests
Complainant has stated it did not give the Respondent permission to use its
mark. The Respondent is in default but,
as stated supra, the Panel can see from the record that the Respondent is
attempting to claim fair use for a non-commercial purpose (the Policy
4(c)(iii). As the Panel has already
found that the Respondent is making a commercial use of the disputed domain names, the Respondent
can not benefit from this provision .
finds the Respondent has no legitimate rights or interests in the disputed domain names.
Registered and Used in Bad Faith
finds the Respondent is using the disputed domain names to capture web traffic
in order to generate more prospective customers for its products. The veneer of a pretended fair use to
condemn Complainant for using animal fur appears to the Panel to be an attempt
by the Respondent to circumvent the Policy through deceit.
Thus, the Respondent's bad faith behavior is comparable to the many domain
name cases where the Respondents have infringed the Complainant's trademarks
in bulk, often with many misspellings and other variations, in order to generate
traffic to make money in contravention of the Policy at 4(b)(iv): "by
using the domain name, you have intentionally attempted to attract, for commercial
gain, internet users to your 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 your web site or location or of a product or
service on your web site or location." (cf. National Collegiate Athletic
Association v. Rosemary Giancola, WIPO
Case No. D2000-0836, November 28, 2000 involving many variations of "ncaa";
and Altavista Company v. Grandtotal Finances Limited et al., WIPO
Case No. D2000-0848, October 17, 2000 involving numerous registrations of
variations of "altavista"). The novel element here is that the Respondent
registered a string of supposed protest domain names to attract traffic and,
in posting a page with photos alleging cruel treatment to dogs, tried to provide
at least a fig leaf of protest to support the infringing domain names.
The Panel also
agrees with Complainant that Respondent was tarnishing Complainant's mark while
not making a fair use of the mark, in
violation of the Policy at 4
(c)(iii). In this regard, the Panel
need only cite the apparently gratuitous association of Complainant with the holocaust in order to
help Respondent sell domain name subscriptions.
Decision in this Case stems from its finding that the Respondent set out to
benefit from the protest and criticism safe havens allowed for using another
party's valid trademark. The Panel
found that, in adopting the Complainant's Burlington mark, the Respondent's
aims were not really to protest or to
criticize the Complainant and its use of
animal fur in manufacturing coats.
Instead, the Respondent was primarily interested in advertising and
selling internet domain names and exhibiting other advertising.
pursuant to ICANN Policy para 4(i) and Rule 15, the Panel finds the disputed
domain names are confusingly similar to the Complainant's service mark. The Panel also finds the Respondent has no
legitimate rights or interests in the names and registered and was using them
in bad faith. The Panel orders that the
registrar Dotster, Inc. transfer the domain names,
<burlingtondeathfactory.com>, <burlingtonbloodfactory.com>, and
<burlingtonholocaust.com> from the Respondent, Smartsoft, L.L.C., to the
Complainant, Burlington Coat Factory Warehouse Corporation.
Dennis A. Foster
Dated: March 1, 2001