Burlington Coat Factory Warehouse Corporation v. Smartsoft, L.L.C.

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

The

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,

U.S.A.

The Respondent

is: Smartsoft, LLC, an entity with an address at 88 Petersburg Road,

Petersburg, New Jersey 08170, U.S.A.

2. The Domain Names and

Registrar

The domain

names in dispute are: <burlingtonmurderfactory.com>,

<burlingtonkillfactory.com>, <burlingtondeathfactory.com>,

<burlingtonbloodfactory.com>, <burlingtonholocaust.com>.

The registrar

for the disputed domain names is: Dotster, Inc., 11807 N.E. 99th

Street, Suite 1100, Vancouver, Washington 98682, U.S.A.

3. Procedural History

This dispute

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

Supplemental Rules).

The Complaint

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>,

<burlingtonkillfactory.com>, <burlingtondeathfactory.com>,

<burlingtonbloodfactory.com>, and

<burlingtonholocaust.com>.

Also on

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.

The

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.

The Panel

finds the Center has adhered to the Policy and the Rules in administering this

Case.

This Decision

was due by February 21, 2001, but the Center granted the Panel an extension

until March 1, 2001.

4.

Factual Background

The

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.

Complainant

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

methods.

But the

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.

Apparently

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

Complainant's 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.

The Respondent

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

Complainant's

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

commercial.

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

infringement.

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

noncommercial.

With this

precedential framework in mind, the

Panel hopes to dig deeper than an ad hoc

examination for confusing similarity of the disputed domain names:

<burlingtonmurderfactory.com>, <burlingtonkillfactory.com>,

<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.

Like the

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.

(1) Strength

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.

(5) Marketing

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

January, 2000.

(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

websites.

Legitimate Rights or Interests

The

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 .

The Panel

finds the Respondent has no legitimate rights or interests in the disputed domain names.

Registered and Used in Bad Faith

The Panel

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.

7. Decision

The Panel's

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.

Therefore,

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,

<burlingtonmurderfactory.com>, <burlingtonkillfactory.com>,

<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

Sole Panelist

Dated: March 1, 2001

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