WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Refrigiwear, Inc. v. The Tannery

Case No. D2010-1474

1. The Parties

Complainant is Refrigiwear, Inc. of Dahlonega, Georgia, United States of America, represented by The Sladkus Law Group, United States of America.

Respondent is The Tannery of Cambridge, Massachusetts, United States of America.

2. The Domain Name and Registrar

The disputed domain name <refrigiwearusa.com> is registered with 1&1 Internet AG.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2010. On September 2, 2010, the Center transmitted by email to 1&1 Internet AG., a request for registrar verification in connection with the disputed domain name. On September 3, 2010, 1&1 Internet AG. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On September 8, 2010, Complainant filed with the Center an amendment to the Complaint.

The Center verified that the Complaint and amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 1, 2010.

The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on October 5, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant, Refrigiwear, Inc., is a leading maker of insulated industrial outwear. Since 1954, Complainant has been supplying a wide range of industries with insulated garments and accessories required to keep individuals warm, safe, and productive (Complaint Annex E). For the past five decades, Complainant has generated over USD 250 million in sales of its clothing products within the United States of America and internationally and has invested over USD 20 million to promote its products and business.

Complainant has over 46 trademark filings worldwide with over 12 registrations or applications pending in the United States For example, Complainant is the owner of United States Trademark Registration Nos. 0633681, 3221505, 3221504, and 3150046, all of which cover the mark REFRIGIWEAR, in whole or in part, as used on insulated clothing, including liners, jackets, coats, and parkas (Complaint, Annex D).

In 2006, Complainant attempted to expand its retail fashion sales in the United States by entering into an agreement with Respondent to sell certain Refrigiwear products on a trial basis. Complainant sold Respondent approximately ten dozen units of Refrigiwear parkas to be sold at its store in Cambridge, Massachusetts and through Respondent’s website “www.thetannery.com”.

The disputed domain name, <refrigiwearusa.com>, was registered on March 10, 2006.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the disputed domain name incorporates Complainant’s REFRIGIWEAR marks in their entirety and is virtually identical and confusingly similar to the trademarks owned by Complainant. The use of the letters “usa” is not a distinguishing feature, Complainant contends, and, in fact, leads to further confusion because Complainant is based in the United States but has a large international business, and Complainant’s foreign customers commonly refer to Complainant as “Refrigiwear USA.”

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant notes that Respondent is a clothing retailer located in the Boston/Cambridge, Massachusetts area that does business under the name “The Tannery” and has a website at “www.thetannery.com”. Respondent sells a variety of third-party outdoor clothing products. According to Complainant, “www.thetannery.com” website contains links to pages advertising the products sold at its store (Complaint, Annex G).

Complainant maintains that Respondent is not known by the REFRIGIWEAR marks and, in fact, is known as “The Tannery.”

Complainant submits that it entered into a relationship with Respondent with the expectation that its products would be sold by Respondent on a trial basis at its retail location and on “www.thetannery.com” website. According to Complainant, “[i]t is unorthodox business practice for a third party clothing retailer to set up separate websites under the brands of its clothing manufacturers and promote such clothing as if it is the manufacturer itself; such action is blatant trademark infringement.”

Complainant contends that it never authorized Respondent to register the disputed domain name or use Complainant’s marks. Complainant indicates that, after it became evident that its business relationship with Respondent was failing, Complainant terminated the relationship and ceased supplying its products to Respondent.

Finally, Complainant insists that the disputed domain name was registered and is being used in bad faith.

According to Complainant:

“Respondent’s continued ownership of the Domain Name is causing confusion between Respondent’s unauthorized ownership and use of the Domain Name and Complainant’s business. Due to Complainant’s international business and some of its international relationships, it is commonly known by its international distributors as Refrigiwear USA and such international distributors mistakenly go to Respondent’s website when searching for Complainant which thereby disrupts Complainant’s business because such customer does not actually get to the true Refrigiwear website. This diversion of Complainant’s business by Respondent is well established ownership of the Domain Name in bad faith.

Respondent is using the Domain Name for the sole purpose of diverting Complainant’s potential customers to Respondent’s 'refrigiwearusa.com' website. Respondent’s website conveys to the viewer the false impression of being the true 'Refrigiwear' corporate website, and on this forged website, the only identified retailer of the Refrigiwear products is 'The Tannery' with a link to Respondent’s Tannery website. Once the potential customer links to Respondent’s 'The Tannery' website it is now able to view not only the Refrigiwear products (which it has little to no stock), but the viewer is presented with other third party products sold by Respondent some of which are in direct competition with Complainant’s products. Respondent is using the age old 'bait and switch' tactic to lure customers to its site to sell them other products. This is clearly use of the Domain Name in bad faith causing harm to Complainant. [ . . . ]

Complainant submits that Respondent is using the Domain Name in bad faith by creating a false and misleading association with Complainant and by creating a website that specifically and intentionally copies the exact language and design of Complainant’s website used for the sole purpose of diverting Complainant’s customers and potential customers to a false 'Refrigiwear' website that then links the viewer to its website 'www.thetannery.com'. [ . . . ]

Respondent is not only causing initial interest confusion, it has violated Complainant’s trademark rights and copyrights all to the detriment of Complainant.”

Complainant further notes that it made several attempts to resolve the matter with Respondent via letters from counsel, email, and telephone (Complaint, Annex H). Respondent did not respond to any of the letters.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name, <refrigiwearusa.com>, is confusingly similar to the REFRIGIWEAR mark. The domain name incorporates the mark in its entirety adding only the descriptive term “usa” and the generic top-level domain “.com.” Previous panels have determined that domain names containing a complainant’s mark entirely while adding a descriptive term and the generic top-level domain (“gTLD”) “.com” are confusingly similar to the respective complainant’s marks. See Space Imaging LLC v. Brownell, AF-0298 (Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Kohler Co. v. Curley, NAF Claim No. FA 890812 (Mar. 5, 2007) (finding confusing similarity where the domain name <kohlerbaths.com> contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., NAF Claim No. FA 916991 (Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).

The Panel further determines that Complainant, through its long use and ownership of trademark registrations covering the REFRIGIWEAR mark, has rights in such mark and that the domain name is confusingly similar to such mark.

Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel rules that Complainant has satisfied its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. While the evidence establishes that, at one point in time, Respondent was authorized to sell REFRIGIWEAR products, the evidence further indicates that Complainant never consented to Respondent’s registration of a domain name incorporating Complainant’s mark.

Under such circumstances, and given the Panel’s finding on the issue of confusing similarity, it cannot be held that Respondent is using the disputed domain name in connection with a bona fide offering of goods and/or services. The evidence further indicates that Respondent is not commonly known by the disputed domain name and is not making either a fair or noncommercial use of the domain name.

Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Given the circumstances of this case, the Panel concludes that the disputed domain name was registered and is being used in bad faith. The evidence supports a determination that Respondent, through its use of the domain name, is intentionally attempting to attract, for commercial gain, internet users to its site by creating a likelihood of confusion as to the source or sponsorship of such site and/or of the goods and/or services found at such site, within the meaning of paragraph 4(b)(iv) of the Policy.

Respondent’s repeated failure to respond to the letters from Complainant’s counsel is further evidence of bad faith registration and use.

Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <refrigiwearusa.com> be transferred to Complainant.

Jeffrey M. Samuels
Sole Panelist
Dated: October 12, 2010