Edwin Company, Limited v. Fiorucci
Furniture
Claim Number: FA0412000393032
PARTIES
Complainant
is Edwin Company, Limited (“Complainant”)
represented by Louis S. Ederer of Torys LLP, 237 Park
Avenue, New York, NY 10017. Respondent
is Fiorucci Furniture (“Respondent”)
represented by Rajiv Jain of The Law Offices of Rajiv Jain, 30481 Marbella Vista, San Juan Capistrano, CA 92675.
The
domain name at issue is <fiorucci.com>,
registered with Moniker Online Services,
Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Hon.
Nelson A. Diaz as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
28, 2004; the National Arbitration Forum received a hard copy of the Complaint
on January 3, 2005.
On
December 28, 2004, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain name <fiorucci.com> is registered with Moniker Online Services,
Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified
that Respondent is bound by the Moniker Online Services, Inc. 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
January 5, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of January 25,
2005 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@fiorucci.com by e-mail.
An
e-mail response was received from the Respondent on January 25, 2005. However, it was deemed deficient in that it
was not received in hard copy format, or in accordance with the Rule 5(b). Despite Respondent’s deficient submission,
it will be considered by the Panel.
On
January 31, 2005, the Forum received a timely Additional Submission from
Complainant pursuant to the Forum’s Supplemental Rule 7.
On
February 7, 2005, the Forum received a timely Additional Submission from
Respondent, entitled Respondent’s Reply, pursuant to the Forum’s Supplemental
Rule 7.
On
February 11, 2005, the Forum received an Additional Submission from
Complainant, entitled Complainant’s Sur-Reply Statement, which was untimely as
it was received after the deadline for submission. Despite Complainant’s untimely submission, it will be considered
by the Panel.
On February 8, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Hon. Nelson A. Diaz as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
asserts that it has trademark interests in the name FIORUCCI, and that the
disputed domain name is identical and/or confusingly similar to Complainant’s
mark. Complainant further asserts that
Respondent is not using the disputed domain name in connection with a bona fide
offering of goods and services.
Finally, Complainant asserts that the disputed domain names were
registered and are being used by Respondent in bad faith.
B.
Respondent
In
response, Respondent asserts, among other things, that the term “Fiorucci” is
generic as a common Italian surname.
Respondent further asserts that its online furniture business is
distinguishable from the goods associated with Complainant’s trademark rights
in the word FIORUCCI. Respondent
additionally asserts that it has a legitimate interest in the disputed domain
name because it registered the domain after it had been abandoned by
Complainant. Finally, with respect to
registration and use in bad faith, Respondent asserts that it has not
registered the disputed domain name in bad faith.
C.
Additional Submissions
Complainant
On
January 31, 2005, the Forum received an Additional Submission from Complainant
that was considered by the Panel.
Arguing against Respondent’s assertion that “Fiorucci” is generic,
Complainant contends that its FIORUCCI mark has achieved worldwide fame and
brand recognition synonymous with fashionable products. Moreover, Complainant contends that its mark
has achieved secondary meaning as evidenced by several U.S. trademark
registrations accepting such allegations.
Complainant further alleges that Respondent does not even appear to be
in business and has no rights or legitimate interests in the infringing domain
name as a result. Complainant cites to
a plethora of evidence questioning whether Respondent is a legitimate existing
business at all. Finally, Complainant
asserts that Respondent is in a scheme to maintain the disputed domain name on
behalf of Compana LLC, the prior registrant, thereby evidencing bad faith. Complainant believes that Compana LLC is set
up to scan for expiring domain names which have a good search engine position
and have many daily hits. If the domain
name becomes available, Compana LLC will register it to the highest
bidder. In early November 2004,
Respondent acquired the registration from Compana LLC.
Respondent
The
Panel also considered Respondent’s Reply in which it contends that
Complainant’s trademark rights in the FIORUCCI mark are limited to those goods
and services associated with the mark and that Respondent’s furniture business
is separate and distinct from Complainant’s fashion business. Respondent contends that it chose the
“Fiorucci” name for its association with Italy and the surname of its Italian
supplier. Respondent attached a
Complaint which it filed in California State Court asserting a claim against
Complainant for Invalid Trademark on the basis that the term “Fiorucci” is
generic.
Complainant
The
Panel further considered Complainant’s Additional Submission entitled
Complainant’s Sur-Reply Statement.
Ultimately, Complainant contends that Respondent has engaged in a scheme
to deny Complainant its rights in the infringing domain name and to frustrate
the policies and procedures of ICANN.
Based upon an apparent typo in Respondent’s State Court Complaint,
Complainant alleges that it uncovered an elaborate scheme between Compana LLC,
Respondent and Respondent’s counsel, Mr. Rajiv Jain, to deprive trademark
holders of their rightful domain names.
Complainant further offered additional evidence that Fiorucci Furniture
does not exist as a legitimate business entity, specifically, an investigative
report detailing numerous unsuccessful attempts to contact the company by mail,
phone, and in person.
FINDINGS
Complainant Edwin Company, Limited, is a
Japanese corporation with a principal place of business in Tokyo, Japan. Complainant is the owner of numerous United
States federal trademark registrations for the FIORUCCI mark. As a result of Complainant’s longstanding
and extensive use and promotion of the FIORUCCI mark, Complainant’s FIORUCCI
brand has come to be associated with apparel, footwear and fashion
accessories.
In or about January 2001, Complainant,
through its U.S. licensee, registered <fiorucci.com> and used the
domain name in connection with the opening of a Fiorucci store in New York
City. Due to financial difficulties,
the U.S. licensee allowed the <fiorucci.com> domain name
registration to lapse. Thereafter,
Compana LLC purchased and registered the <fiorucci.com> domain
name. In July 2004, Complainant’s
counsel sent Compana LLC a cease and desist letter informing Compana of
Complainant’s rights in the Fiorucci mark.
Compana responded that it had not infringed Complainant’s FIORUCCI
mark. Shortly thereafter, in November
2004, Compana sold its registration of <fiorucci.com> to
Respondent.
Respondent is the current registrant of
the domain name <fiorucci.com>, which is registered with Moniker Online Services, Inc. Respondent uses the <fiorucci.com>
domain name for its furniture selling business, Fiorucci Furniture.
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 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 Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights;
(2)
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.
Respondent’s
Reply was deemed deficient in that it was not received in hard copy format in
a timely manner, or in accordance with
the Rule 5(b). Further, Complainant’s
Sur-Reply Statement was similarly untimely as it was received after the
deadline for submission. Nonetheless,
in fairness to the parties and in the interest of having the matter fully
adjudicated on the merits, the Panel in its discretion elects to consider the
deficient and untimely materials. See
Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002)
(“Ruling a Response inadmissible because of formal deficiencies would be an
extreme remedy not consistent with the basic principles of due
process.")
Complainant asserts that it has established rights
in the FIORUCCI mark through numerous registrations with the
United States Patent and Trademark Office (Reg. No. 1,654,781 issued August 27,
1991; Reg. No. 1,264,655 issued January 24, 1984; Reg. No. 1,434,384 issued
March 24, 1987; Reg. No. 1,131,105 issued February 19,1980; Reg. No. 1,543,126
issued June 6, 1989; Reg. No. 1,260,314 issued December 6, 1983; and Reg. No.
2,656,765 issued December 3, 2002).
Moreover, Complainant states that it has, through its predecessors, used
the mark in commerce since 1967 for a wide variety of goods and services. In addition, Complainant owns two European
Community trademarks, four Canadian trademarks and four Australian
trademarks. See Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption). Moreover,
Complainant argues that it has used the mark in commerce since the early 1970’s. In addition to the presumption of
distinctiveness created by federal trademark registration, the Panel finds that
Complainant has established common law rights in the mark through use in
commerce. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17,
2000) (finding common law rights in a mark where its use was continuous and
ongoing, and secondary meaning was established).
Complainant
further avers that the disputed domain name is identical to Complainant’s
FIORUCCI mark because the domain name fully incorporates the mark and merely
adds the generic top-level domain name (“gTLD”) “.com.” See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar).
In
its Additional Submission, Complainant contends that its FIORUCCI mark is not
generic, but is the surname of its founder, and is protectable as a trademark
and domain name. Finding that Complainant’s
FIORUCCI mark is not generic, the Panel determines that Respondent’s disputed
domain name, identical to Complainant’s mark, excludes Respondent from
incorporating Complainant’s mark in its domain name. See McCarthy on Trademarks and Unfair Competition, § 13:2
(4th ed. 2002) (stating that secondary meaning grows
out of long association of the name with the business, and thereby becomes the
name of the business as such; is acquired when the name and the business become
synonymous in the public mind; and submerges the primary meaning of the name as
a word identifying a person, in favor of its meaning as a word identifying that
business); see also Shakur
Info Page v. Shakur (In re Estate of Tupac Shakur), AF-0346 (eResolution
Sept. 28, 2000) (finding that a “person may acquire such a reputation in his or
her own name as to give rise to trademark rights in that name at common
law”). Under the circumstances,
Complainant has met its burden by offering ample evidence that Respondent’s
domain name is identical or confusingly similar to a mark in which Complainant
has rights.
Complainant
claims that Respondent is not authorized or licensed to register or use a
domain name that incorporates Complainant’s FIORUCCI mark. Moreover, Complainant argues that Respondent
is not commonly known by the <fiorucci.com> domain name and therefore lacks rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See also RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶
4(c)(ii) "to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail"); see
also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where Respondent was not commonly known by the mark and
never applied for a license or permission from Complainant to use the
trademarked name).
Additionally,
Complainant alleges that Respondent is appropriating Complainant’s FIORUCCI mark to passively hold the <fiorucci.com> domain name. Complainant has offered compelling evidence that Respondent does
not legitimately offer goods or services, which Respondent has failed to
rebut. Specifically, Complainant
questioned the absence of business records for Fiorucci Furniture with the
California Secretary of State, the “610” area code (for the Philadelphia
suburbs) associated with the web site, the address listed on the web site is
for a post office box, and the
inability to contact any business representatives after repeated attempts. Despite posting a site at the <fiorucci.com> domain, Respondent has not convinced the Panel that it is anything
more than a place holder, as Complainant’s evidence is persuasive that
Respondent does not legitimately offers goods or services in connection with
the site. Ultimately, the Panel finds
that Respondent is not making a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept.
18, 2000) (finding that prior to any notice of the dispute, Respondent had not
used the domain names in connection with any type of bona fide offering of
goods and services); see also Melbourne
IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or
legitimate interests in the domain name where there is no proof that Respondent
made preparations to use the domain name or one like it in connection with a
bona fide offering of goods and services before notice of the domain name
dispute).
Complainant
contends that Respondent’s registration of the disputed domain name, a domain
name that incorporates Complainant’s mark and deviates only with the addition
of a gTLD, suggests that Respondent knew of Complainant’s rights in the
FIORUCCI mark. Thus, the Panel
determines that Respondent chose the disputed domain name based on the
distinctive qualities of Complainant’s mark and therefore registered the domain
name in bad faith pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively.”).
Complainant, through its U.S. licensee,
utilized the disputed domain from its inception until in or about January 2002
and inadvertently did not renew the registration. As a result, Complainant asserts that Respondent intentionally
registered the <fiorucci.com> domain name, which contains in its entirety
Complainant’s FIORUCCI
mark. Moreover, Respondent has failed
to offer any persuasive evidence that it legitimately markets bona fide goods
or services since the disputed domain name was registered. Complainant raised numerous questions and
much doubt regarding Respondent’s legitimacy as a business. Despite several opportunities to do so,
Respondent failed to present any evidence to persuade the Panel that it is in
fact using the <fiorucci.com> domain name in connection with a
legitimate business.
Finding that Respondent did not offer any evidence to
the contrary, the Panel determines that Respondent’s registration due to
Complainant’s oversight is evidence of bad faith registration and use pursuant
to Policy ¶ 4(a)(iii). See InTest Corp. v. Servicepoint, FA
95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has
been previously used by Complainant, subsequent registration of the domain name
by anyone else indicates bad faith, absent evidence to the contrary); see
also BAA plc v. Spektrum Media Inc.,
D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took
advantage of Complainant’s failure to renew a domain name).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fiorucci.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Nelson A. Diaz, Panelist
Dated: February 22, 2005
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