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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen
Case No. D2001-0900
1. The Parties
Complainants are A & F Trademark, Inc., a corporation of Delaware, USA, with a principal place of business in Wilmington, Delaware, and Abercrombie & Fitch Stores, Inc., a corporation of Delaware with a principal place of business in New Albany, Ohio, USA.
Respondent is Justin Jorgensen, an individual with address at 14622 Ventura Blvd., PMB #493, Sherman Oaks, CA 91403, USA. Respondent is proceeding pro se.
2. The Domain Name and Registrar
This dispute concerns the domain name <abercrombieandfilth.com>, whose registrar is Register.com, Inc.
3. Procedural History
The Complainant submitted a Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("UDRP Policy") implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, under the Rules for the UDRP Policy implemented by ICANN on the same date ("UDRP Rules"). The Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center"), by e-mail on July 16, 2001, and in hard copy on July 17, 2001.
On July 19, 2001, the Center received verification from the registrar that the registrant of the domain name is Justin Jorgensen, and not Rob J, as identified in the original Complaint. On July 23, 2001, the Center notified the Complainant of a deficiency in the Complaint. On July 31, Complainant amended its Complaint to add the correct Respondent contact information.
On August 2, 2001, the Center performed its check for compliance with formal requirements.
Also on August 2, 2001, the Center issued a Notification of Complaint and Commencement of Administrative Proceeding, forwarding the Complaint to the Respondent by courier and email. The hardcopy was returned as undeliverable on August 9, 2001. On August 14, 2001, Respondent provided an alternative mailing address. The Center re-sent the Notification to the new address on August 15, 2001. The Notification set the deadline for response to the Complaint as August 22, 2001.
On August 21, 2001, Respondent filed an electronic copy of his Response. The Center received a hardcopy of the Response on August 23, 2001. This Panel provided its Declaration of Impartiality and Independence to the Center and was duly appointed on August 28, 2001. The Center transmitted the case file to this Panel for review on the same date.
On September 10, 2001, this Panel requested additional time to complete its decision owing to a conflict with other litigation.
4. Factual Background
Complainant A & F Trademark, Inc. is the owner of a number of United States trademark registrations including Registrations: No. 951,410 for ABERCROMBIE & FITCH, registered in 1973; No. 1,178,609 for ABERCROMBIE & FITCH, registered in 1981; No. 2,061,284 for ABERCROMBIE & FITCH CO., registered in 1997, and No. 2,305,464 for ABERCROMBIE, registered in 2000 (the "Abercrombie Marks"). This Panel's own query of the records of the U.S. Patent and Trademark Office confirms that these registrations are active.
A & F Trademark, Inc. is also the owner of numerous foreign trademark registrations for the mark ABERCROMBIE & FITCH.
Respondent maintains a gay-oriented pornographic web site at www.abercrombieandfilth.com.
5. Parties’ Contentions
Complainants describe themselves as follows:
Abercrombie & Fitch Stores, Inc. is the exclusive licensee of A & F Trademark, Inc. for the various ABERCROMBIE service marks. Complaint, para. V.12(4).
Abercrombie & Fitch Stores, Inc. is a nationwide retailer of men’s and women’s casual clothing and has been since 1892. Abercrombie owns and operates approximately 160 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. Complaint, para. V.12(1).
Complainants assert that the Abercrombie Marks have become famous, distinctive and well-known both in the United States and abroad. Complainants’ Abercrombie Marks were famous at the time when Respondent registered the domain name on April 21, 2000. Complaint, para. V.12(7).
Complainants also operate a web site 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. Complainants’ www.abercrombieandfitch.com web site automatically hyper-links to Complainants’ www.abercrombie.com web site. Complaint para. V.12(7).
Complainants publish a quarterly catalog entitled the A&F Quarterly where Complainants advertise, promote, offer for sale and sell Abercrombie & Fitch clothing, cologne, and related accessories in connection with the Abercrombie Marks. Complaint para. V.12(5).
Complainants assert that they sent a cease and desist letter to Respondent by courier and e-mail on April 23, 2001. Complaint para. 12(8). Complainants sent a follow-up letter by courier and e-mail on May 4, 2001. On May 24, 2001, a second follow-up letter was sent via email, but was returned as undeliverable because of a permanent error. No response to these letters was received by Complainants. Complaint, para. V.12(8) - (10).
Complainants assert that Respondent maintains a pornographic web site at <www.abercrombieandfilth.com>. Complaint, para. V.12(8).
Complainants assert that Respondent's domain name abercrombieandfilth.com is virtually identical to Complainants' ABERCROMBIE & FITCH mark. Respondent has replaced the ampersand with "and". The word "filth" differs from FITCH by only two letters. Complaint, para. V.12(11).
Complainants also assert that Respondent has no rights or legitimate interest in the domain name. Complainants assert that Respondent is using the domain name to lure Internet users to his pornographic web site. Complainants are not aware of any trademark registrations owned by Respondent similar to the disputed domain name or to Complainant’s Abercrombie Marks. Complaint, para. V.12(13). Complainants do not license use of the Abercrombie Marks to third parties. Complaint, para. V.12(15).
Complainants assert that Respondent’s failure to provide accurate and complete name and contact information to the registrar is further evidence that Respondent has no legitimate rights in the domain name. Complaint, para. V.12(14).
Finally, Complainants assert that Respondent registered and is using the domain name in bad faith. Complainants assert that the provision of incomplete and inaccurate contact information to the registrar is evidence of bad faith. Complaint, para. V.12(16).
Complainants also assert that bad faith can be inferred from the famous and well-known status of Complainants’ marks and their use since 1892. Complaint, para. V.12(17).
Complainants further assert that Respondent’s use of the domain name in connection with a pornographic web site to disparage, dilute and tarnish Complainants’ Abercrombie Marks is evidence of bad faith. Complaint, para. V.12(18). Furthermore, links on Respondent’s web site to other pornographic web sites is evidence that Respondent is merely using the domain name to promote pornography and to lure Internet users to his web site. Complaint, para. V.12(19).
Complainants also assert that the inclusion of the term "filth" in the domain name dilutes and tarnishes Complainants’ marks. Complaint, para. V.12(20).
Complainants assert that Respondent’s failure to respond to any of Complainants’ correspondence demonstrates that Respondent is using the domain name in bad faith. Complaint, para. V.12(21).
Respondent asserts that the address formerly provided in the registration record was accurate, but because he used the alias "Rob J", mail was not forwarded. Respondent admits that he did not update his contact information with the registrar. Respondent also asserts that the non-activation of his e-mail address was an honest mistake. Response, section B.
Respondent asserts that the domain name is similar, but not confusingly similar to Complainant’s mark. Respondent asserts that "Abercrombie and Filth" is clearly a parody of Complainant and that the use of parody in adult material is not unusual. Respondent also asserts that his web site could not be confused with Complainant because he does not sell clothing, and that he has further added a disclaimer to his web site explaining his non-association with Complainant. Respondent further draws an analogy between his domain name and a third-party domain name, <abercrombieandfinch.com>, owned by a restaurant, and asserts that Internet users would not be confused as to the source of the web sites. Id.
Respondent asserts that the domain name is a combination of the name of his web site’s host character, BJ Abercrombie, and the word "filth" which is intended to signify the adult-oriented nature of his web site. Furthermore, the name Abercrombie is widely used, including in a number of domain names such as <abercrombieandkent.com> and <abercrombiemortgage.com>. Id.
In response to Complainant’s assertion that Respondent’s web site disparages, dilutes and tarnishes the Complainant’s marks, Respondent notes the sexually provocative nature of Complainant’s advertising and promotional materials, and asserts that Complainant’s reputation is not harmed by the nature of Respondent’s web site. Specifically, Respondent points to issues of Complainant’s A&F Quarterly that were marked with a label suggesting parental consent for readers under eighteen, an issue entitled "XXX," issues featuring interviews with stars of adult films, issues including partial or full nudity, and the political controversy surrounding Complainant’s advertising and promotional materials. Respondent asserts that Complainants are tarnishing and degrading their own image. Id.
6. Discussion and Findings
A. Applicable Policy Provisions
The UDRP Policy requires the Complainants to prove each of the following three elements in order to prevail in this proceeding:
1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
UDRP Policy, Section 4(a).
It is not sufficient to prevail that a Complainant prove only registration in bad faith; rather, the Complainant must prove both registration and use in bad faith. See World Wrestling Fed’n Entm’t, Inc. v. Bosman, Dispute No. WIPO Case No. D99-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.
However, the UDRP Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
i) Circumstances indicating that [the Registrant has] registered or 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 that Complainant, for valuable consideration in excess of 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] 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 [its] web site or location or of a product or service on [its] web site or location.
UDRP Policy, Section 4(b). These circumstances are non-inclusive, and the Panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.
The Respondent may demonstrate rights or legitimate interests to the domain name by any of the following, without limitation:
i) Before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii) You, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii) You are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
UDRP Policy, Paragraph 4.c.
B. Opinion of the Panel
Identity or Confusing Similarity
For purposes of the first element of UDRP, the comparison between a domain name and a trademark is made without reference to the content of the web site. For this element, the inclusion of a disclaimer on Respondent’s site is irrelevant.
Respondent advances an argument analogous to that often heard in the so-called "sucks" cases: namely, that the addition of the word "filth" dispels any confusing similarity. Some prior Panels have found that a domain name combining another’s mark with the word "sucks" was confusingly similar to a complainant’s mark, while other Panels have found such a domain name not confusingly similar to the mark. See, e.g., Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, WIPO Case No. D2000-1104 (wallmartcanadasucks.com is not confusingly similar); Lockheed Martin Corp. v. Parisi, WIPO Case No. D2000-1015 (lockheedmartinsucks.com is not confusingly similar); Direct Line Group Ltd. v. Purge I.T., WIPO Case No. D2000-0583 (directlinesucks.com is confusingly similar); ADT Servs. AG v. ADTSucks.com, WIPO Case No. D2001-0213 (adtsucks.com is confusingly similar).
Unlike a "sucks" domain name, <abercrombieandfilth.com> differs from Complainant’s ABERCROMBIE & FITCH mark by only two letters, the replacement of "tc" with "lt". The use of "and" instead of "&" is inconsequential. Not only does the domain name appear similar to Complainants’ mark, it differs in sound only in the last syllable. See 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:21 (a determination of confusing similarity requires consideration not only of meaning, but also of overall impression and pronunciation). For these reasons, this Panel finds that the domain name is confusingly similar to Complainants’ marks.
Respondent’s Rights or Legitimate Interests
With respect to the second element, the Panel addresses two issues: (1) whether Respondent, before any notice of the dispute, used, or made preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, UDRP Policy para. 4(c)(i); and (2) whether parody is a defense to the second element of the UDRP; and whether Respondent’s use of the domain name constitutes parody.
The Panel finds that Respondent made use of the domain name as a web site with adult content prior to receiving notice of the dispute, and that Complainant has not demonstrated Respondent’s adult-oriented web site is illegitimate per se.
However, using a domain name confusingly similar to Complainants’ marks to attract users to Respondent’s commercial site is not a bona fide offering of services. Respondent effectively is trading off the good will and reputation of Complainants’ marks. Thus, Respondent cannot claim the protection of sub-paragraph 4(c)(i) of the Policy.
We now turn to parody as a defense. While parody is not explicitly listed in the UDRP Policy, the circumstances listed in paragraph 4(c) are non-exclusive. Therefore, parody, in some circumstances, may be a defense.
This Panel believes no prior Panel or Court decision has attempted to create a workable test for when a domain name itself constitutes parody. Both as a basis for this Panel’s decision and as guidance for future Panels, we shall do so here. This Panel therefore establishes a two-step process for determining whether the domain name at issue constitutes a parody of the Complainant’s trademarks. In the first step, this Panel determines whether the domain name itself has the capacity to constitute parody. If the Panel can answer this question in the affirmative, it will then examine whether the Respondent’s use of that domain name, on its web site or otherwise, is consistent with its claim of parody.
"A parody must convey two simultaneous – and contradictory – messages: that it is the original, but also that it is not the original and is instead a parody." Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g Group., 886 F.2d 490, 12 U.S.P.Q.2d 1289, 1291-92 (2d Cir. 1989). In the context of domain names, the domain name itself, without reference to the content of the web site, must convey both of these separate messages. See, e.g., People of the Ethical Treatment of Animals v. Doughney, 2001 U.S. App. LEXIS 19028, at *14-15 (4th Cir. 2001) (stating that where the domain name is identical, it only conveys the first message and is therefore incapable of constituting parody). In the instant case, the domain name could potentially be seen to convey both messages, and so we proceed to the second step.
In the second step, we look to the content of Respondent’s web site to determine whether Respondent’s use of the domain name and of Complainants’ marks is consistent with its claim of parody. In order to constitute parody, the web site must poke fun at the goods or services associated with Complainants’ marks: use of another’s trademark to poke fun at something unrelated to Complainant’s mark is not parody. See, e.g., Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 42 U.S.P.Q.2d 1185 (9th Cir. 1997).
In his parody defense, Respondent points only to the domain name and does not direct the Panel to any parodic content on his web site. Upon reviewing the exhibits provided by both parties, this Panel finds that the overwhelming content of Respondent's web site promotes gay- oriented pornographic goods and/or services. From the print-outs provided by Respondent, other than the caption of the page which reads "Abercrombie and Filth.com", there is no content conceivably poking fun at Complainant.
According to printouts of Respondent's web site provided by Complainant, at an earlier date Respondent's web site included a photograph styled as a poster, incorporating the caption "Abercrombie & Filth." Arguably, this picture could be seen as a parody of Complainant. However, immediately below the picture is a prominent link to a pornographic web site and the page title appearing in the header consists of non-parodic content including an obscenity.
Parodying another’s marks to promote goods or services other than the parody itself – in contrast to use of the marks for the sake of the artistic work or parodic expression – weighs heavily against Respondent despite his contention that use of such parody is not uncommon in the adult entertainment industry. Cf. Dallas Cowboys Cheerleaders, Inc. v Pussycat Cinema, Ltd., 203 U.S.P.Q. 161 (2d Cir. 1979); L.L. Bean Inc. v. Drake Publishers Inc., 1 U.S.P.Q.2d 1753, 1757-58 (1st Cir. 1997) (distinguishing prior cases where defendants’ uses were commercial, and noting that, in using plaintiff’s mark in a two-page parody within a 100-page magazine, defendant did not use plaintiff’s mark on the front or back cover of the magazine and did not use it to identify or promote goods or services to consumers), cert. denied, 483 U.S. 1013 (1987).
Respondent asserts that Complainant’s catalogs and advertisements have been criticized for their own sexually provocative content, and that at least one web site exists which criticizes this content. This Panel finds it telling evidence of Respondent’s intent that his web site links not to other web sites criticizing (or even parodying) Complainant, but instead to commercial pornographic web sites. Respondent does not assert that these pornographic web sites contain critical or parodic content. This Panel infers from these links that Respondent’s motive was purely commercial.
In light of the above, the Panel finds that Respondent has no rights or legitimate interest in the domain name.
Bad Faith Registration and Use
By selecting, registering and using <abercrombieandfilth.com>, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of its web site and the products and/or services offered for sale on its web site. Respondent does not deny that he knew of Complainant’s marks at the time he registered the domain name. His argument that the domain name constituted a parody of Complainant requires that he had actual knowledge of Complainant’s marks. Respondent’s registration and use constitutes bad faith under the Policy. Para. 4(b)(iv).
Respondent’s failure to apprise the registrar of its current and accurate contact information is further evidence supporting a finding of bad faith.
Complainants additionally assert that Respondent’s use of the domain name is tarnishing Complainants’ marks. Respondent has set forth enough evidence to place this issue in dispute. Accordingly, the Panel does not reach this issue and rests its finding of bad faith on other grounds.
For the reasons stated hereinabove, and pursuant to Paragraph 4(i) of the UDRP Policy, and Paragraph 15 of the UDRP Rules, this Panel grants the remedy requested by Complainant in the Complaint, namely that the domain name <abercrombieandfilth.com> is hereby transferred to Complainant.
Jordan S. Weinstein
Dated: September 19, 2001