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ADMINISTRATIVE PANEL DECISION

Fashion Seal Corporation v. LaPorte Holdings, LLC

Case No. D2005-0435

1. The Parties

The Complainant is Fashion Seal Corporation, Las Vegas, Nevada, United States of America, represented by Weingram & Associates, P.C., United States of America.

The Respondent is LaPorte Holdings, LLC, Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <fashionsealuniforms.com> is registered with NameKing.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2005. On April 25, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On April 25, 2005, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 13, 2005. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Respondent of the Complaint, and the proceedings commenced on May 17, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2005. The Respondent did not submit a response. Accordingly, the Center notified the Respondent’s default on June 9, 2005.

The Center appointed John R. Keys, Jr. as the sole panelist in this matter on June 20, 2005. 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, through its parent company, Superior Uniform Group, is engaged in the business of marketing and selling uniform apparel and accessories in the United States of America and Canada through sales representatives, catalogues and the Internet.

Complainant and its predecessors in interest have used the trademark FASHION SEAL UNIFORMS in commerce continuously since 1940 in connection with industrial, hotel, restaurant, medical, and hospital uniforms, aprons, blouses, boots, caps, coats, coveralls, dresses, gloves, gowns, jackets, pinafores, robes, shirts, skirts, smocks, suits, and trousers.

The mark FASHION SEAL UNIFORMS & Design, Registration No. 833,395, was registered August 8, 1967, in the United States and renewed August 8, 1987, for industrial, hotel, restaurant, medical, and hospital uniforms, aprons, blouses, boots, caps, coats, coveralls, dresses, gloves, gowns, jackets, pinafores, robes, shirts, skirts, smocks, suits, and trousers. The mark consists of the words “Fashion Seal Uniforms” written in cursive script.

On May 11, 2001, the FASHION SEAL UNIFORMS mark was assigned to Complainant.

Complainant also owns by assignment the following trademarks and, through its parent company, has used the marks in commerce since the dates of first use alleged in the registrations:

FASHION SEAL DISPOSABLES, Registration No. 867,946, renewed April 8, 1989, for medical, hospital and professional uniforms, aprons, blouses, boots, caps, coats, dresses, gloves, gowns, jackets, capes, pinafores, robes, shirts, skirts, smocks, suits, and trousers.

FASHION SEAL TRENDS, Registration No. 2,100,161, registered September 23, 1997, for catalog services featuring health care and commercial uniforms and portions of uniforms and portion of uniforms, and hospital gowns and medical drapings.

FASHION SEAL TRENDS, Registration No. 2,100,162, registered September 23, 1997, for catalogs featuring health care and commercial uniforms and portions of uniforms and portion of uniforms, and hospital gowns and medical drapings.

FASHION SEAL HEALTHCARE, Registration No. 2,224,221, registered February 16, 1999, for medical, hospital and professional uniforms, aprons, blouses, boots, caps, coats, dresses, gloves, gowns, jackets, capes, pinafores, robes, shirts, skirts, smocks, suits, and trousers.

Complainant also owns the following U.S. trademark applications:

FASHION SEAL & Design, Serial No. 78/450,389, filed July 14, 2004, for apparel.

FASHION SEAL & Design, Serial No. 78/450,398, filed July 14, 2004, for catalog sales relating to apparel.

FASHION SEAL HOSPITALITY, Serial No. 78/334,568, filed December 1, 2003, for apparel (Notice of Allowance issued).

Complainant, through its predecessors in interest, has achieved an outstanding reputation in the marketplace, with sales volume exceeding $137 million in 2003 and $143 million in 2004.

Complainant and its parent corporation, Superior Uniform Group, have expended considerable effort and resources to promote and defend the FASHION SEAL UNIFORMS mark.

The FASHION SEAL UNIFORMS trademark is well-known throughout the industry for quality uniforms and accessories for healthcare, food service, industrial, commercial and professional staff.

Complainant’s parent company, Superior Uniform Group, is the registrant and owner of the domain name <fashionseal.com> and operates a website under that domain name to promote its goods under the FASHION SEAL UNIFORMS trademark and other marks incorporating the term FASHON SEAL.

Respondent LaPorte Holdings LLC registered the disputed domain name <fashionsealuniforms.com> on December 6, 2003.

The immediate prior registrant of the disputed domain name was LaPorte Holdings, Inc. The original registrant of the disputed domain name was Horoshiy, Inc., with an address at Curacao, Netherlands Antilles.

The <fashionsealuniforms.com> website contains advertisements and links to various third-party websites not sponsored by or affiliated with Complainant and links to sites featuring products, including various types of uniforms, sold by Complainant’s competitors.

Respondent did not reply to a cease and desist letter dated September 3, 2004.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name, <fashionsealuniforms.com>, is identical to or confusingly similar to Complainant’s registered trademark FASHION SEAL UNIFORMS, Registration No. 833,395. The words used in the disputed name are identical to the words of the registered mark.

There is no legal significance to the fact that the domain name deletes the spaces between words while the trademark has spaces between the words; that the domain uses lower case letters while the trademark has initial capitals; or that the domain name uses words only while the trademark uses stylized letters.

Complainant further contends that the disputed domain name and Complainant’s trademark are confusingly similar and that consumers would relate the disputed domain name to Complainant’s registered mark.

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because, first, there is no evidence of Respondent’s use of, or intent to use, the disputed domain name in connection with any bona fide offering of goods or services.

Second, Respondent does not own a trademark or service mark registration for a mark that is identical, similar or in any way related to the disputed domain name or Complainant’s registered trademark.

Third, “Fashion Seal Uniforms” is not a personal name, nor is Respondent known to the public by that name.

Fourth, Complainant has not licensed or authorized Respondent to use the FASHION SEAL UNIFORM mark or the <fashionsealuniform.com> domain name.

Fifth, Respondent is not using the disputed domain name in a legitimate non-commercial or fair use manner with no intention of commercial gain.

Complainant contends that the domain name was registered and is being used in bad faith, because, first, Respondent registered the domain name with full knowledge of Complainant’s reputation and its ownership of the FASHION SEAL UNIFORMS trademark.

Second, the disputed domain name is being used with a website that links to third-party websites not affiliated with or sponsored by Complainant and featuring the products of Complainant’s competitors.

Third, the disputed domain name is being used to divert Internet users to Respondent’s own website for financial gain.

Fourth, Respondent intentionally attempted to attract Internet users to Respondent’s website for financial gain 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 Respondent’s website.

Fifth, the use of the domain name to misdirect users to other unrelated websites with advertisements and commercial links is not a bona fide use and does not constitute a legitimate interest in the domain name.

Finally, Complainant contends that Respondent LaPorte Holdings LLC is actually an alter ego for one Henry Chan, who has been found in a number of WIPO UDRP cases to have registered domain names incorporating others’ trademarks in bad faith. The repeated transfers of the domain name registration are evidence of intent to conceal the true identity of the owner of the domain name registration.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Respondent has not answered the Complaint, and the Panel thus first addresses the question of whether Respondent has been given adequate notice of the proceeding. The evidence in the record supports that the Center notified Respondent of the Complaint by courier delivery and e-mail. The Panel concludes that the Center discharged its responsibility to serve the Respondent.

Where the Respondent does not respond to the Complaint, the Panel must decide the dispute based upon the Complaint. Rules paragraph 5(e), paragraph 14(a). The Panel is to decide the Complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the Panel deems applicable. Rules, paragraph 15(a). Under paragraph 14(b) of the Rules, Respondent’s failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate.”

Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(iii) Respondent’s domain name has been registered and is being used in bad faith.

The Panel considers these elements in order.

A. Identical or Confusingly Similar

Complainant has established that it has well established rights of long standing, traceable as far back as 1940, in the trademark FASHION SEAL UNIFORMS. Complainant owns the current registration of that mark on the Principal Register of the United States, which establishes a presumption of validity under U.S. law.

Respondent’s domain name is identical to Complainant’s trademark. The words themselves are exactly the same. The minor differences that exist are not legally significant for purposes of comparing the trademark and the domain name. As Complainant notes, there is no legal significance to the deletion of spaces between the terms or to the lower case spelling of the domain name. These differences are determined by technical requirements and are common practice. CBS Broadcasting, Inc. v. Worlwide Webs, Inc., WIPO Case No. D2000-0834. The domain name’s use of all lower case letters is not significant because domain names are not case sensitive. Id. The domain name’s addition of the generic top-level domain name “.com” is insignificant, because such a gTLD is required of a registrant and does not identify a specific provider of goods or services. Id.

The fact that the registered trademark uses stylized letters and the domain name does not also is not legally significant, because domain names are not able to incorporate such stylized features. Id.

Even if the noted differences were sufficient to render the name and the mark not identical, the two are still confusingly similar. The Panel concludes that the words “fashion seal uniforms” are likely to cause the purchasing public to assume mistakenly that Respondent’s goods or services “originate from the same source as, or are associated with, the goods” in Complainant’s registered trademark. Id. The trademark and the disputed domain name thus are confusingly similar.

Complainant has established the first element of its case.

B. Rights or Legitimate Interests

Respondent did not answer the Complaint and has not, therefore, made any showing that it has rights or legitimate interests in respect of the domain name. The failure to respond supports an inference that Respondent does not have legitimate interests in the domain name to defend.

There is nothing in the existing record to demonstrate that Respondent has any rights or legitimate interests in the domain name. The record indicates that Respondent is not using the domain name in connection with a bona fide offering of goods or services. Respondent is using Complainant’s mark to operate a website that advertises goods and links to websites that have nothing whatsoever to do with Complainant’s goods and services. In fact, the site links to sponsored sites of third parties who actually appear to be direct competitors of Complainant. This site thus appears to be intended to use Complainant’s own mark misleadingly to try to divert business away from Complainant to its competitors. The use of a domain name to direct users to other, unconnected websites is not a bona fide offering of goods or services giving rise to a legitimate interest. Lowen Corporation d/b/a/ Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430; AltaVista Company v. Andrew Krotov, WIPO Case No. D2000-1091.

The fact that Respondent’s use of the name is infringing on Complainant’s trademark further supports the conclusion that this is not a bona fide offering and that Respondent does not have legitimate interests in the domain name. Hoffmann-La Roche Inc. v. Eric Kaiser a/k/a eDrugNet, WIPO Case No. D2003-0721.

Complainant has established the second element of its case, that Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Respondent’s registration of the domain name with clear knowledge of Complainant’s longstanding use and registration of the FASHION SEAL UNIFORMS trademark is evidence of bad faith registration.

Further, paragraph 4(b)(iv) of the Policy specifies that there is evidence of bad faith where the Respondent is using the domain name to “attract for commercial gain, Internet users to [its] website . . . by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website . . ..” This is what Respondent is doing. Respondent’s use of a domain name identical or confusingly similar to the trademark of another to capture users and divert them to unconnected websites and to the websites of competitors of the trademark owner represents use of the domain name in bad faith. Lowen Corporation d/b/a/ Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430; AltaVista Company v. Andrew Krotov, WIPO Case No. D2000-1091.

This Panel will also take note, as others have, that there is a burgeoning collection of WIPO UDRP cases finding bad faith registrations on the part of one Henry Chan. See e.g. Lowen Corporation d/b/a/ Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430, and cases cited therein. There are other cases in which a respondent called Horoshiy, Inc. has been linked directly to Henry Chan. Pearson Education, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0942; Medco Health Solutions, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0625. Henry Chan has also been linked to a respondent called LaPorte Holdings, Inc.; Krome Studios Pty, Ltd. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0707.

In the present case, the original registrant of the domain name was Horoshiy, Inc. and the prior registrant was LaPorte Holdings, Inc. The present registrant is LaPorte Holdings LLC. Complainant alleges, not unreasonably based on the evidence, that LaPorte Holdings LLC is an alter ego of Henry Chan. Given the foregoing and the fact that Respondent here has not come forward to answer or refute the allegations, the Panel finds it a reasonable inference that Henry Chan is behind LaPorte Holdings LLC and that this case thus represents but another entry on the growing list of Henry Chan bad faith registrations.

Finally, the pattern of changing the name of the registrant would appear also to be an attempt to conceal the true ownership of the domain name which itself constitutes evidence of bad faith. Marian Keyes v. Old Barn Studios Ltd., WIPO Case No. D2002-0687.

Complainant has established the requisite third element of its case. The domain name was registered and is being used in bad faith.

7. Decision

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

John R. Keys, Jr.
Sole Panelist

Dated: June 30, 2005