The Men's Wearhouse Inc. v. Brian Wick
d/b/a Defaultdata.com
Claim Number: FA0208000117861
PARTIES
Complainant
is The Men's Wearhouse Inc.,
Houston, TX (“Complainant”) represented by Mark
N. Mutterperl, of Fulbright &
Jaworski, L.L.P. Respondent is Defaultdata.com, Denver, CO
(“Respondent”) represented by Brian Wick.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <suitwarehouse.com>,
registered with eNom.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 2, 2002; the Forum received a hard copy of the
Complaint on August 5, 2002.
On
August 7, 2002, eNom confirmed by e-mail to the Forum that the domain name <suitwarehouse.com> is registered
with eNom and that the Respondent is the current registrant of the name. eNom has verified that Respondent is bound
by the eNom registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
August 8, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 28,
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@suitwarehouse.com by e-mail.
An
electronic copy of Respondent’s argument was timely received on August 30,
2002; however, the Exhibits to this Response were received after the deadline
for response. Notwithstanding this
non-compliance with ICANN Supplemental Rule 5(a), the Panel will consider the
Response and Exhibits thereto.
On September 10, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name <suitwarehouse.com>
be transferred from Respondent to Complainant.
Respondent requests that the Complaint be dismissed and that Complainant be found acting in “bad faith in
attempting to usurp the generic and common use” of <suitwarehouse.com> .
PARTIES’ CONTENTIONS
A.
Complainant
The
<suitwarehouse.com> domain
name is identical or confusingly similar to Complainant’s service mark THE SUIT
WAREHOUSE and its pending service mark application for THE SUIT (MAN LOGO)
WAREHOUSE.
Respondent
has no rights or legitimate interests in the <suitwarehouse.com>domain name.
Respondent
registered and used the domain name in bad faith.
B.
Respondent
FINDINGS
Since 1973, Complainant, The Men’s
Wearhouse, Inc., has operated as a retailer of men’s and boy’s clothing in the
United States. Complainant owns a
federal service mark registration for THE SUIT WAREHOUSE issued by the USPTO on
June 5, 2001, for use with retail clothing store services. (Reg. No.
2,458,708). The register shows that “No
claim is made to the exclusive right to use ‘warehouse’, apart from the mark as
shown.” Complainant also owns an
application for THE SUIT (MAN LOGO) WAREHOUSE filed with the USPTO on June 6,
1997, for use with retail clothing store services. (Application serial number
75/304,358). As of July 10, 2002, the
USPTO had completed its review of the application and Complainant expects
registration to issue in due course. In
this application, Complainant has disclaimed “Suit” and “Warehouse.”
On December 19, 2001, Respondent, Brian
Wick d/b/a DefaultData.com, registered the domain name <suitwarehouse.com>. Respondent uses the domain name <suitwarehouse.com>
to automatically redirect Internet users to his web site
<defaultdata.com> where Mr. Wick posts his views on cybersquatting and
the American legal system.
Respondent has engaged in a pattern of
registering domain names of law firms and Fortune 500 companies in connection
with content similar to that appearing on <suitwarehouse.com>. Numerous cases have been filed against
Respondent, most of which have resulted in transfer awards of the domain names
in question to the trademark or service mark owners.
Numerous
unrelated businesses use the words “Suit Warehouse” on the Internet.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
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 and is being used in bad faith.
“Suit” and “Warehouse” are generic terms.
See Pet Warehouse v. Pets.Com, Inc., D2000-0105 (WIPO Apr. 13, 2000)
(“Pet” and “Warehouse” are generic).
Other decisions have found similar “warehouse”-formative marks to be
generic. See Mil-Mar Shoe v. Shonac, 75 F. 3d 1153,
1160 (7th Cir. 1996) (the term “warehouse” as used in the sense of a
retail store is common or generic; trademark protection refused for the term
“Warehouse Shoes”, while also indicating that “Shoe Warehouse” provides an even
clearer example of two generic terms that could not be subject to trademark
protection); see also Warehouse
Foods, Inc. v. Great Atlantic and Pacific Tea Co., 223. U.S.P.Q. 892 (N.D.
Fla. 1984) (denying trademark protection to “Warehouse Foods” on grounds that
the two generic words in combination were in themselves a generic designation);
see also The Golf Warehouse v. Golf Warehouse FA 94419 (Nat. Arb. Forum May 9, 2000)
(decision in favor of the
Respondent regarding <golfwarehouse.com>).
Complainant
owns a federal service mark registration for THE SUIT WAREHOUSE mark; however,
Complainant disclaimed the exclusive right to use “warehouse” apart from the
mark. Complainant also owns an
application for THE SUIT (MAN LOGO) WAREHOUSE mark but Complainant disclaimed
“Suit” and “Warehouse.” The effect of
the disclaimer is that the applicant claims only the whole composite mark and
not the particular portion(s) disclaimed. See Salem Five Cents Savings Bank
v. Direct Fed. Credit Union, FA 103058 (Nat. Arb. Forum Feb. 15, 2002); see
also McCarthy on Trademarks and Unfair
Competition (3d ed. 1992) at
x 19.20 1. The validity of the
mark is to be determined by viewing the trademark as a whole and not just the
words “Suit Warehouse.” See Lone
Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 41 U.S.P.Q.2d 1896, 1902 (11th
Cir. 1997).
Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning. See Pet Warehouse v. Pets.Com, Inc., supra. Complainant is entitled to this presumption as to its service
mark THE SUIT WAREHOUSE; however, the presumption does not apply to “Suit
Warehouse” which is less than the whole mark.
To the extent Complainant has any rights pertinent to the disputed
domain name, those rights must arise from its common law rights. As a consequence, Complainant has the burden
of showing secondary meaning for its claimed service mark, assuming that the
name is not generic. See Pet
Warehouse v. Pets.Com, Inc.,
supra. Complainant has failed to
establish that the words “Suit Warehouse,” apart from the registered service
mark as a whole, have acquired a secondary meaning such that the relevant
public exclusively associates the words with Complainant as a source of
services. Pet Warehouse v. Pets.Com,
Inc., Id.
Furthermore, the words “Suit Warehouse”
are not exclusively associated with Complainant. See Winchester
Props., LLC v. DefaultData.com, FA 97114 (Nat. Arb. Forum June 22, 2001)
(“Respondent has shown that the word ‘Winchester’ alone is used by entities
other than Complainant.” The domain
name <winchestercc> is not identical or confusingly similar to
Complainant’s mark, Winchester Country Club, nor is it a mark in which
Complainant can claim rights or interests.); see also CRS Tech. Corp. v.
Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (“concierge is not
so associated with just one source that only that source could claim a
legitimate use of the mark in connection with a website.”).
Therefore, Complainant has failed to establish exclusive
rights in the service mark “Suit Warehouse” for the purposes of satisfying
Paragraph 4(a)(i) of the Policy. Since
Complainant has not submitted sufficient evidence to establish protectable
rights in the domain name <suitwarehouse.com>, the issues of
rights or legitimate interests and bad faith need not be addressed.
Complainant has
not engaged in reverse domain name hijacking within the meaning of ICANN Rule
15(e). Although Complainant has not
demonstrated its exclusive right to the domain name, neither has it evidenced
bad faith by initiating these proceedings.
DECISION
The claim is denied for failure to
establish Policy ¶ 4(a)(i) and the requested relief is DENIED.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: September 16, 2002
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