Escada AG v. Andy Tran a/k/a Northwest
Bakery Inc.
Claim Number: FA0207000117029
PARTIES
Complainant
is Escada AG, Aschheim Bei Munchen,
GERMANY (“Complainant”) represented by Barbara
A. Solomon Esq., of Fross Zelnick
Lehrman & Zissu, PC. Respondent
is Andy Tran d/b/a Northwest Bakery Inc.,
Seattle, WA, USA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <escada.us>,
registered with Go Daddy Software, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Alan
L. Limbury Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 24, 2002; the Forum received a hard copy of the
Complaint on July 24, 2002.
On
July 24, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain name <escada.us> is
registered with Go Daddy Software, Inc. and that the Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with the usTLD Dispute
Resolution Policy adopted and approved on February 21, 2002 by the United
States Department of Commerce (the “Policy”).
On
August 5, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 26,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@escada.us by e-mail.
A
timely Response was received and determined to be complete on August 26, 2002.
Complainant’s
additional submissions were received on August 27, 2002.
On September 13, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Alan L. Limbury
Esq., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant is one of the world’s leading
fashion and couture companies, manufacturing and selling in 56 countries
clothing, jewelry, footwear, cosmetics, accessories and fragrances under the
trademark ESCADA, which it has used since 1976. In the United States, ESCADA
branded products are available in over 30 freestanding Escada boutiques and in
more than 180 other retail locations. In Washington State, where Respondent is
located, ESCADA brand clothing is sold at a freestanding Escada boutique in
Seattle and in several retailers located throughout the State. There is also extensive advertising of the
ESCADA brand name in the Seattle area.
Complainant is the registrant of the
domain names <escada.com> and <escada.com.au>. The
<escada.com> website went live on March 14, 1996 and averages 45,000 hits
per month.
Complainant owns an extensive worldwide
portfolio of registrations for the trademark ESCADA and for marks which
incorporate that word, including fourteen registrations in the United States,
two of which are for the word ESCADA alone: Nos. 1,219,137 dated July 7, 1982
for leather and leather imitations, trunks, bags, purses, wallets and key
cases, and 1,574, 202 dated January 2, 1990 for cosmetics. These are incontestable
under US law, thus constituting conclusive evidence of Complainant’s exclusive
rights in the ESCADA mark. Registration 2,293,698 ESCADA and design, dated
November 16, 1999 is for jewelry, handbags, opera bags, trunks, wallets,
footwear, ties and scarves.
The
disputed domain name is identical or confusingly similar to Complainant’s
ESCADA trademark. Respondent has no rights or legitimate interests in the
domain name, which has been registered in bad faith. Respondent is also owner
of the domain name <movado.us> which suggests a pattern of cybersquatting
and creates an inference of bad faith registration. Respondent had
constructive, if not actual notice of Complainant’s ESCADA mark.
In
response to a “cease and desist” letter, Respondent advised that in Portuguese
ESCADA means “staircase” or “ladder” and that ESCADA is an acronym for
“electronic supervisory control and data acquisition.” However, Respondent offered no proof that
his use or intended use of the disputed domain name refers to these
meanings. Respondent also stated he can
use the disputed domain name for naming his business. Yet his business name is Northwest Bakery
Inc. Respondent provided no evidence
that he has a business to which the ESCADA mark is or could be relevant nor
that he operates a business under or is known by that name.
Respondent
stated that companies use the name ESCADA in the U.S. However, Complainant is not aware of any companies using ESCADA
as a trade name, nor has Respondent identified any. According to Trademark Access there are no federal trademark
registrations or pending applications for the mark ESCADA other than
Complainant’s.
To
date there has been no use of the disputed
domain name nor has Respondent provided evidence of any demonstrable
preparations to use it in connection with a bona fide offering of goods or
services. Mere personal assertions of
plans to use a domain name in the future in an unspecified manner are
insufficient to create legitimate interests.
Respondent
has not been commonly known by the name ESCADA. Respondent is not making any non-commercial or fair use of the
domain name. There is no relationship
between Complainant and Respondent that would give rise to any license,
permission or other right by which Respondent could own or use any domain name
incorporating Complainant’s famous and federally registered trademark
ESCADA.
The
fact that the disputed domain name was registered long after the ESCADA mark
became famous, after Complainant had obtained numerous U.S. federal trademark
registrations for the mark and after Complainant had established a worldwide
Internet presence further establishes Respondent’s lack of legitimate
interests.
Respondent’s
argument that ESCADA has a meaning in Portuguese or may be an acronym for a
category of software does not establish legitimate interests in the domain name
since these “definitions” do not appear to have any relevance to Respondent, to
his proposed personal use of the domain name or to his registration of the
domain name.
The
fact that Respondent has registered as a domain name more than one federally
registered trademark that he does not own suggests a pattern of cybersquatting and
creates an inference of bad faith registration.
Bad
faith also can be found from the fact that Respondent registered without
authorization a domain name identical to Complainant’s famous and federally
registered mark.
As
a domiciliary of the U.S., Respondent was, as a matter of law, on constructive
notice of Complainant’s exclusive rights in the ESCADA mark and name prior to
his registration of the disputed
domain name: 15 U.S.C. §1072.
Given Complainant’s presence in the Seattle area as well as Complainant’s
advertising and marketing campaigns nationwide, Respondent likely was on actual
notice of the ESCADA mark before registering the domain name. Registration under these circumstances
constitutes bad faith.
Respondent
alleged in his registration application his intent to make personal use of the
name. There is no legitimate basis for
making personal use of the disputed
domain name where Respondent has no connection with Complainant. By taking that domain name, Respondent will
not only have prevented Complainant from reflecting its federally registered
trademark in a domain name in violation of usTLD Policy ¶ 4(b)(ii), but any use
by Respondent will violate usTLD Policy ¶ 4(b)(iv).
B.
Respondent
Respondent’s
full name is Truong Duy Tran. His nickname is Andy. In 1987 he graduated from
the University of Washington with the degree of B.Sc. in Electrical
Engineering. Since 1992 he has been President of Northwest Bakery. Since 1990
he has been the proprietor in Washington State of the registered trade name Image
Fine Jewelry. On April 24, 2002 he
registered the disputed domain name under his nickname.
The
ESCADA mark has been registered by the General Electric Company.
The
word is generic. In Portuguese ESCADA means stairs, staircase, ladder or
escalator.
An
online Yellow Pages search at <YP.net> (“America’s Local Yellow Pages”)
reveals use of the word “Escada” in connection with numerous businesses,
including 19 apparel and accessory stores, 1 auto repair service and garage, 1
engineering and management service, 1 general merchandise store, 3 personal
services, 1 social service and 3 wholesale trade – nondurable goods.
In
the field of Information Technology, SCADA is an acronym for Supervisory
Control And Data Acquisition, a category of software application program for
process control, the gathering of data in real-time from remote locations in
order to control equipment and conditions.
It is used in power plants and in oil and gas refining, telecommunications,
transportation and water and waste control.
SCADA systems include hardware and software components. The hardware gathers and feeds data into a
computer that has SCADA software installed.
The computer then processes the data and presents it in a timely
manner. SCADA also records and logs all
events into a file stored on a hard disk or sends them to a printer. SCADA warns when conditions become hazardous
by sounding alarms.
ESCADA
– Electronic (or Networking or Wireless) Supervisory Control And Data
Acquisition is an application of SCADA for use via the Internet, networking or
wireless.
Given
Respondent’s degree in electrical engineering, SCADA is one of Respondent’s
professional fields. He is working on
an application of SCADA via wireless network and plans to use the disputed domain
name to distribute his software.
As
the owner of Image Fine Jewelry since 1990, if Respondent decides in the future
to sell MOVADO watches, he will contact the MOVADO company for permission to
use the domain name <movado.us>
since this would be of mutual benefit.
C.
Additional Submissions by Complainant
Respondent
disputes neither Complainant’s ownership of trademark registrations in the mark
ESCADA nor Complainant’s common law rights.
General
Electric Company merely owns an intent to use application for the mark ESCADA
in respect of computer hardware and software.
This does not give General Electric rights nor lessen the strength of
Complainants rights in the ESCADA mark. Nor does General Electric’s pending
application provide to Respondent any basis for registering or obtaining any
rights in the disputed domain name.
Respondent
has not shown that ESCADA is a common term for any particular goods, business
or service.
As
to the businesses that use the ESCADA mark, the 19 references Respondent found
to apparel and accessory stores are Complainants own boutiques and
outlets. Similarly the listings he
found under “General Merchandise Stores” and “Wholesale Trade” refer to
Complainant. Thus, Respondent cannot
prove that there is any recognized third party use of ESCADA that would give
him legitimate rights to the disputed domain name. Moreover, the fact that there may be minimal third party use of
ESCADA does not mean either that Complainant’s mark is not protectable or that
the Respondent has a right to use Complainant’s federally registered trademark.
Respondent’s
mere personal assertions that he plans to use the disputed domain name in the
future are insufficient to create any legitimate rights.
Respondent
has wholly failed to address the evidence of bad faith. His explanation for registering the domain
name <movado.us> makes it clear that he is not authorized by Movado and
has never received permission to use the MOVADO trademark.
Respondent’s
failure to undertake an appropriate investigation of the scope and extent of
rights that Complainant has in the ESCADA mark constitutes bad faith
registration and maintenance of the domain name.
Respondent’s
argument that ESCADA is an acronym for a type of software that he intends to
provide and that therefore his domain name registration is not in bad faith is
unpersuasive. Despite his admission
that he graduated in 1987, Respondent clearly has never realized his proposed
business under the name ESCADA nor has he provided any evidence of any demonstrable
preparation to use the disputed domain name.
Moreover, registration of Complainant’s ESCADA marks put Respondent on
constructive notice as a matter of law.
FINDINGS
Complainant has established all elements
necessary to entitle it to transfer of the disputed domain name.
DISCUSSION
Paragraph 15(a) of the Rules for the usTLD Dispute
Resolution Policy (the “Rules”) instructs this 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.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1) the domain name registered by the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights;
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered in bad faith or is being used in bad faith.
Identical and/or Confusingly Similar
Complainant clearly has federally
registered, incontestable United States trademark rights in ESCADA in
connection with the goods in respect of which the mark is registered. The
disputed domain name is identical to Complainant’s mark. The “.us” top-level
domain (“TLD”) is inconsequential.
Complainant has established this element
of its case.
Rights or Legitimate Interests
Complainant is one of the world’s top ten
fashion houses. It has used its mark since 1976. Respondent has no connection
with Complainant and was not authorized by Complainant to use its mark nor to
register the disputed domain name. Respondent’s personal name does not
incorporate the name ESCADA. Respondent is doing business as Northwest Bakery
Inc. These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or
legitimate interest in the disputed domain name on the part of Respondent. The evidentiary burden therefore shifts to
Respondent to show by concrete evidence that it does have rights or legitimate
interests in that name. See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) and the cases
there cited.
The meaning of the word escada in
Portuguese has nothing to do with Respondent or Respondent’s bakery business
and cannot establish legitimate rights. See Kvaerner ASA v. Tele og
Media Consult, D2001-0809 (WIPO Sept. 12, 2001).
General Electric Company’s application to
register in the United States the mark ESCADA for electronic and network based
supervisory control and data acquisition equipment gives that company no
trademark rights. See Aspen Grove,
Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001); see also Spencer Douglass MGA v. Absolute Bonding
Corp., D2001-0904 (WIPO Sept.5, 2001).
More relevantly, it neither deprives Complainant of its trademark rights
nor confers any rights or legitimate interests upon Respondent.
The acronym SCADA in the field of
information technology and the common practice of using the letter “e” as a
prefix to denote electronic delivery afford Respondent the possibility of
demonstrating legitimate interests in the disputed domain name. Even
perfunctory preparations have been held to suffice for this purpose: See Shirmax Retail Ltd. v. CES Mktg.
Group, Inc., AF-0104 (eResolution Mar. 20, 2000); see also Lumena s-ka
zo. o. v. Express Ventures Ltd., FA 94375 (Nat. Arb. Forum May 11, 2000); see
also Royal Bank of Canada v. Xross, AF-0133 (eResolution May 19, 2000).
However, Respondent’s bare assertion of intent to use the disputed domain name
in this field is insufficient. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Complainant has established this element
of its case.
Registration and Use in Bad Faith
In SportSoft Golf, Inc. v. Hale
Irwin’s Golfers’ Passport, FA 94956 (Nat. Arb. Forum July 11, 2000), a
finding of bad faith was made where Respondent “knew or should have known” of
the registration and use of the trademark prior to registering the domain name.
See Marriott Int’l, Inc. v. John Marriot, FA 94737 (Nat. Arb. Forum June
15, 2000); see also Canada Inc. v. Sandro Ursino, AF-0211 (eResolution
July 3, 2000); see also Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com,
FA 95037 (Nat. Arb. Forum July 20, 2000).
Respondent has a closer than usual
association with the jewelry trade because since 1990 he has been the owner of
the trade name Image Fine Jewelry. Complainant sells jewelry, among
other things. It has outlets in Washington State, where Respondent is located.
It advertises in that State. It operates a popular website at
<escada.com>. It is one of the top ten fashion houses in the world. These
circumstances point strongly to the conclusion that Respondent knew or ought to
have known of Complainant’s mark before he registered the disputed domain
name. Respondent has not asserted lack
of such knowledge. Further, Complainant’s incontestable U.S. trademark
registrations put Respondent on constructive notice of the ESCADA mark as a
matter of U.S. law: 15 U.S.C. §1072.
In registering the domain name <movado.us>, Respondent
has admitted doing so without the permission of the owner of the MOVADO
trademark and without any present intent to use that domain name. The Panel
infers from these circumstances and the common field of jewelry in which
Complainant, Respondent and the Movado Company engage, that Respondent adopted
a similar attitude towards the ESCADA mark when he registered the disputed
domain name.
When considering all the circumstances,
the Panel finds that Respondent either knew or should have known of
Complainant’s ESCADA trademark before he registered the disputed domain name.
In line with the cases cited above, the Panel finds that the disputed domain
name was registered in bad faith. See Fuji Photo Film Co., Ltd. v. RG
names, FA 112598 (Nat. Arb. Forum June 11, 2002); see also Victoria’s
Secret et al v. Sherry Hardin, FA 96694 (Nat. Arb. Forum March 31, 2001).
Complainant
has established this element of its case.
Pursuant to paragraph 4(i) of the Policy,
the Panel requires that the domain name <escada.us> be transferred
to Complainant.
Alan L. Limbury Esq., Panelist
Dated: September 23, 2002
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