eResolution | Decision 0959

The Complainant is Peerless Clothing Inc of 8888 Pie-IX Blvd., Montreal, Quebec, H1Z 4J5, Canada

The Respondent is Ivy Brooks of 5 Burlington Square, Burlington, Vermont, 05401, USA

The domain name in dispute is �peerlessclothing.com� (�the Peerless Domain Name�).

The electronic version of the Complaint form was filed on-line through eResolution�s Website on 26 July 2001. The hardcopy of the Complaint Form and Annexes were received on 26 July 2001. Payment was received on 26 July 2001.

Upon receiving all the required information, eResolution�s clerk proceeded to:

- Verify the Registrar�s Whois Database and confirm all the essential contact information for
Respondent;

The inquiry led the Clerk�s Office of eResolution to the following conclusions: the Registrar is Register.com, the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.

An email was sent to the Registrar by eResolution Clerk�s Office to obtain confirmation and a copy of the Registration Agreement for 27 July 2001. The requested information was received on 29 July 2001.

The Clerk then proceeded to send to the Respondent a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN�s Rules for Uniform Domain Name Dispute Resolution Policy (�the Rules�).

The Clerk�s Office fulfilled all its responsibilities under paragraph 2(a) of the Rules in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on 30 July 2001. This date is the official commencement date of the administrative proceeding.

The Complaint, official notification and all the annexes were sent via registered mail with proof of service, to the Respondent. According to the Canada Post tracking system, all were delivered.

The Respondent did not submit a Response either via eResolution�s website or a signed version.

On 22 August 2001, the Clerk�s Office contacted me, and requested that I act as panelist in this case.

On 24 August 2001, I accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On 24 August 2001, the Clerk�s Office forwarded a user name and a password to me, allowing me to access the Complaint Form, the Response Form, and the evidence through eResolution�s Automated Docket Management System.

On 24 August 2001, the parties were notified that I had been appointed and that a decision was to be, save exceptional circumstances, handed down on 7 September 2001.

The Complainant, a Canadian company, is a clothing manufacturer, operating in the clothing industry since 1917, under the name of �Peerless Clothing�. The registered business name of the Complainant in English is �Peerless Clothing Inc� and in French is �Les V�tements Peerless Inc�.

The Complaint refers to the Canadian trademark �Peerless�, registration number TMA373575. This was registered on 21 September 1990 for use in conjunction with �Men�s clothing, namely: suits, pants, sport jackets, vests whether sold together or otherwise, overcoats and topcoats�. The trademark is registered in the name of Vetements Peerless Clothing Inc of the same address as the Complainant. It is not stated in the Complaint what relationship Vetements Peerless Clothing Inc has with the Complainant, but from the similarity of names and the fact that both companies have the same address it can be assumed that they are associated companies within the same group.

The Respondent is Ivy Brooks. It is unclear whether Ivy Brooks is itself a legal entity, although this information is not necessary for the purposes of this Decision. Since May 1999, the Respondent has been the registered holder of the Peerless Domain Name.

- The Peerless Domain Name and the Complainant�s trademark are confusingly similar.

- The Complainant has been operating in the clothing industry since 1917 under the name of
�Peerless Clothing�. The Respondent also operates in the clothing industry but under the name
of �Ivy Brooks� and not under any name resembling �Peerless�.

(b) The Respondent has no rights or legitimate interests in the Peerless Domain Name

- The Respondent holds no business names or trademarks in the name of �Peerless�.

-   When contacted by the Complainant, the Respondent admitted having no legitimate business
    use or plan for the Peerless Domain Name. The Respondent indicated that �it might, at some
    point, be a good link to our web site� and that it had a desire to potentially use the domain
    name as a link� in the future.

-   The Respondent has been a customer of the Complainant since 1997 and has therefore
    been aware of the Complainant�s name and trademark before registration of the Peerless
    Domain Name.

- The Respondent seeks financial benefit from the registration of the Peerless Domain Name.

-   The Respondent has commented that it �will be happy to further discuss the rights� to the
    Peerless Domain Name and this comment constitutes a clear attempt to extort financial
    compensation from the Complainant.

- The Peerless Domain Name was registered on 7 May 1999 and renewed on 1 March 2001

- On 21 June 2001, the Respondent was not actively using the Peerless Domain Name.

- Following the case of Ccom.com, failure to make bona fide use of a domain name during a
two-year period following registration constitutes bad faith use of the name.

- On 22 June 2001, the attorneys for the Complainant wrote to the Respondent and requested
the transfer of the Peerless Domain Name to the Complainant.

- On 22 June 2001, the Respondent activated the Peerless Domain Name, using it as a link to
its www.ivybrooks.com site.

-   The Respondent�s decision to activate the Peerless Domain Name after the letter from the
    Complainant�s attorneys indicates that the use by the Respondent of the Peerless Domain
    Name was not for business reasons.

- The Respondent only started to use the Peerless Domain Name after notice of the dispute,
which is evidence of bad faith.

The Rules state that �A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable� (Rule 15 (a)).

Under paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (�the Policy�), a complainant in a domain name dispute must prove

(i) that the domain name is identical or confusingly similar to a trademark or service mark in
which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

Are the domain names identical or confusingly similar to the Complainant�s trademark?

The Peerless Domain Name is not identical to the Complainant�s trademark as it contains the additional word �clothing�, not contained in the trademark.

As to the questions of whether the domain name is confusingly similar to the trademark, I been referred to the cases of Smokymountainknife.net et al (eResolution Case No. AF-0230) and Nandos.com (WIPO Administration and Mediation Case no. D2000-0225). In Smokymountainknife.net et al, the Panelist stated that to establish whether the contested domain name and the trademark in question are �confusingly similar� requires �merely � a lexical or alphabetic comparison� of the two rather that �a full showing of likelihood of confusion�. In Nandos.com, the Panelist, referring to General Electric Co. v. General Electric Co. Ltd. [1972] 1 WLR 729, stated that �the overall test if one of impression of confusion in the mind of the person making the decision�.

Following either of these cases, in my view, the Peerless Domain Name is confusingly similar to the Complainant�s trademark. The confusion is inevitably increased by

(a) the fact that the Peerless Domain Name is identical to the Complaint�s business name; and

(b)   the fact that, in June 2001, the Respondent linked the Peerless Domain Name to its website
       offering clothing for sale, which could easily be mistaken by internet users for a website
       sponsored by or representing the Complainant.

Paragraph 4(c) of the Policy sets out the following, non-exhaustive, circumstances which will be evidence demonstrating legitimate interests to the domain name:

-   Before notice to the respondent of the dispute, the respondent�s use of, or demonstrable
    preparations to use, the domain name or a name corresponding to the domain name was in
    connection with a bona fide offering of goods and services; or

- the respondent has been commonly known by the domain name, even if he has acquired no
trademark or service mark rights; or

-   the respondent is making a legitimate non-commercial or fair use of the domain name, without
    intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or
    service mark at issue.

In my view the Complainant has demonstrated that the Respondent has satisfied none of the above circumstances. Furthermore, in failing to submit a Response, the respondent has failed to show any other circumstances which might evidence any legitimate interests in respect of the Peerless Domain Name.

Only on 22 June 2001 did the Respondent activate the Peerless Domain Name, creating a link to its own �ivybrooks.com� website. This followed telephone calls and e-mails from the Complainant requesting transfer of the Peerless Domain Name to the Complainant. In such circumstances, the Respondent�s use of the Peerless Domain Name before notice to the Respondent of the dispute was not in connection with a bona fide offering of goods and services.

The Respondent has not been commonly known by the Peerless Domain Name. I have reviewed the contents of the website to which both domain names www.peerlessclothing.com and www.ivybrooks.com resolve and can see no reference to �Peerless� or �Peerless Clothing�.

I have been referred by the Complainant to the case of Kidskitchen.com (National Arbitration Forum Case No. FA0006000095066), in which the Panelist based his decision that the respondent had no rights or legitimate interests in the domain name at issue on the fact that the respondent owned no federal or state trademark registrations identical or similar to the complainant�s mark. Whilst I do not accept that this fact may always be conclusive evidence of the absence of any rights or legitimate interest, I do consider that it will often be strong evidence of this.

In my view, the Respondent is now using the domain name to misleadingly divert consumers. If internet users seeking information on the Complainant and its products type �peerlessclothing.com�, they are not led to a website giving information on the Complainant but to the Respondent�s website, which has no reference to �Peerless� or the Complainant.

The Respondent�s e-mail to the Complainant of 16 March 2001 states that the Peerless Domain Name was registered because �it might, at some point, be a good link to our website�. This confirms to me that the use of the Peerless Domain Name by the Respondent is clearly intended to mislead consumers and attract internet users to the Respondent�s website through the Complaint�s name and trademark.

Para. 4(b) of the Policy sets out the following circumstances that shall be, without limitation, evidence that domain name has been registered and used in bad faith:

The primary purpose of registering or acquiring the domain name is to sell, rent or otherwise
transfer the registration to the complainant who is the owner of a trademark or service mark or
to a competitor of the complainant for valuable consideration in excess of the documented
out-of-pocket costs directly related to the domain name; or

The respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in the corresponding domain name, provided that respondent has engaged in such conduct; or

The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, internet users to the respondent�s website 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 the respondent�s website or of a product or service on that website.

I am not satisfied that either the first or second circumstance above has been adequately shown to apply in this case. However, the facts do, in my opinion, suggest bad faith on the part of the Respondent under the third and fourth categories.

With regard to the first circumstance, the Complainant has argued that, in the Respondent�s reply to the letter from the Complainant�s attorneys of 22 June, the Respondent stated that it �will be happy to further discuss the rights� to the Peerless Domain Name and this constitutes a clear attempt to extort financial compensation from the Complainant. This contention carries some conviction but, as I have not been provided with a copy of the Respondent�s reply containing this wording and I reach no conclusion on this point.

With regard to the second circumstance, I note that the Complainant owns the domain name
�peerless-clothing.com�, which clearly reflects the trademark �Peerless�. Therefore, the Respondent has not been able to prevent the Complainant from reflecting its trademark in a corresponding domain name. Again, whilst logic suggests that it is probable that the Respondent has registered the Peerless Domain Name with the intention of preventing the Complainant from so reflecting its trademark, I have no evidence to support that contention.

The Complainant has referred me to the case of Ccom.com (WIPO Arbitration and Mediation Center Case No. D2000-0119), where the majority of the Panel decided that the respondent had constructive notice of the complainant�s trademark in that it could have easily carried out a trademark search. Accordingly, a person registering a trademark as a domain name has constructive notice of the mark.

The Complainant argues that constructive notice of a trademark leads to the conclusion that registration of the domain name is in bad faith. I do not accept this. In Ccom.com, the Panel majority stated that the respondent�s conduct in that case did not bring it within any of the illustrations of bad faith registration and use set out in paragraph 4(b) of the Policy. The finding of bad faith was based on all the facts of that case taken together.

With regard to the third circumstance, although it appears that the Respondent and the Complainant operate in the same industry, there has been no direct evidence produced to me that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.However, as the Respondent has been a customer of the Complainant since 1997, and therefore fully aware of the nature of the Complainant�s business, I can see no reason why the Respondent would register the Peerless Domain Name without some intention of disrupting this business.

As regards the fourth circumstance, there is clear evidence that, by using the Peerless Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to the Respondent�s website, by creating a likelihood of confusion with the Complainant�s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent�s website or of a product or service on that website. The confusion created by the similarity of the Peerless Domain Name with the Complainant�s name and trademark will inevitably result in internet users accessing the Respondent�s website by means of the Peerless Domain Name under the misapprehension that the Complainant is affiliated with the Respondent, its website and the products offered on this website.

I find, therefore, that the Peerless Domain name is being used by the Respondent in bad faith.

(i) the domain name �peerlessclothing.com� is confusingly similar to the trademark of the
Complainant;

(ii) the Respondent has not registered nor is using the domain name �peerlessclothing.com� for
any legitimate reason; and

Accordingly, the domain names �peerlessclothing.com� shall be transferred from the Respondent to the Complainant and shall not be further used by the Respondent.

(s) Julian D M Lew

London

September 7, 2001

Presiding Panelist