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, 42^nd 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. 99^th 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., 2^nd 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.

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.