German fashion house wins 'escada.us'

In Escada AG v Andy Tran, one of the first cases to be heard under the Uniform Domain Name Dispute Resolution Policy involving the top-level country-code '.us', National Arbitration Forum panellist Alan Limbury has transferred the domain name 'escada.us' to the German fashion house Escada. Limbury held that Tran had no legitimate interest in the domain name and had registered it in bad faith.

Tran was using the disputed domain name to promote his company Northwest Bakery, which is based in Seattle, Washington. Escada contended that his registration and use of 'escada.us' infringed its rights in its Escada AG trade name and ESCADA trademark.

Tran argued that he had a legitimate interest in the domain name since 'escada' has at least two generic meanings: (i) 'escada' is Portuguese for 'staircase' or 'ladder', and (ii) 'ESCADA' is used as an acronym for 'electronic supervisory control and data acquisition'. Tran contended that he had registered the disputed domain name with the latter meaning in mind.

Limbury held that as the word 'escada' was neither part of Tran's personal name, nor the name of his company or of any of its products, he did not have rights or a legitimate interest in the domain name. Limbury rejected Tran's contentions regarding the generic meanings of 'escada' because (i) the Portuguese meaning of 'escada' has nothing to do with his business (the manufacture and supply of baked goods), and (ii) there was no evidence, other than his bare assertions, that he intended to use the domain name in the field of electronic supervisory control and data acquisition.

Limbury also concluded that the domain name had been registered and was being used in bad faith. He pointed out that Escada is a well-known company which is also affiliated with companies in Seattle. As Tran is based in that city, he knew or should have known of Escada's registration and use of the ESCADA mark prior to registering the domain name. In addition, Limbury based his finding of bad faith on the fact that Tran had also registered the domain 'movado.us', which had been held to infringe the trademark rights of a separate party. Accordingly, Limbury ordered the transfer of 'escada.us'.

Stefan Abel, Bardehle Pagenberg Dost Altenburg Geissler Isenbruck, Munich