National Arbitration Forum

 

DECISION

 

All About Blinds, LLC v. Blinds Acquisition, LLC c/o Jay Steinfeld

Claim Number: FA0707001029947

 

PARTIES

Complainant is All About Blinds, LLC (“Complainant”), represented by Trent Martinet, 1050 17th St., Ste. 1500, Denver, CO 80265.  Respondent is Blinds Acquisition, LLC c/o Jay Steinfeld (“Respondent”), 4660 Beechnut, Suite 218, Houston, TX 77096.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <allaboutblinds.com>, registered with Register.com, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Beatrice Onica Jarka as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 9, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 12, 2007.

 

On July 10, 2007, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <allaboutblinds.com> domain name is registered with Register.com, Inc. and that the Respondent is the current registrant of the name.  Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On July 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 13, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@allaboutblinds.com by e-mail.

 

A timely Response was received and determined to be complete on August 6, 2007.

 

A timely Additional Submission was received from Complainant on August 7, 2007 in compliance with The Forum’s Supplemental Rule 7.

 

A timely Additional Submission was received from Respondent on August 9, 2007 in compliance with The Forum’s Supplemental Rule 7.

 

On August 10, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant

 The Complainant contends that:

  • It uses the federally registered marks ALL ABOUT BLINDS LLC and ALL ABOUT BLINDS, A SOLUTION FOR EVERY WINDOW in association with its blinds and window covering business operated out of Omaha, NE under the mark and trade name “ All About Blinds,”
  • The disputed domain name <allaboutblinds.com> is substantially similar to the Complainant’s federally registered mark and trade name, in connection to which, since 2003, the Complainant has expanded substantial resources in developing goodwill for the consumers in the Complainant’s geographical region,
  • The Respondent has no legitimate rights to the disputed domain name and is using such domain name as a device to redirect potential consumers from the Complainant’s website to Respondent’s <blinds.com> website,
  • The Respondent is using the disputed domain name in bad faith in an attempt to intentionally attract for commercial gain Internet users to its <blinds.com> website, by creating a likelihood of confusion with the Complainant’s mark and trade name,
  • Despite the fact the Complainant sent many times correspondence to the Respondent trying to negotiate a purchase of the disputed domain name, the Respondent refused to accept reasonable purchase offers from Complainant.

 

B. Respondent

 The Respondent asserts in its Response that:

  • The Respondent has owned and operated the dispute domain since 1998, which predated the Complainant’s trademark registration by 5-6 years, and pre-dated Complainant’s ICANN claim by 9 years.
  • Complainant’s operation is a local retailer in Omaha, Nebraska and there are numerous local companies called “All About Blinds” or similar names in different states from USA, as:

1.      http://www.allaboutblinds.net/ Jacksonville, FL

2.      http://www.allaboutblindsandshutters.com/ Mesa, AZ

3.      http://blindsus.com/ (All About Blinds) Charlotte S.C.

4.      http://www.coveryourwindows.com  (All About Blinds) Durham, N.C

5.      http://allaboutblinds.hdwfg.com/sb.cn (All About Blinds Etc)

·                                                                                                        The Respondent is the largest online seller of window coverings in the world and in the United States under the <allaboutblinds.com> domain for over 9 years,

·                                                                                                        The fact that the <blinds.com> website appears prominently on search engines is simply evidence of Respondent’s substantial work over time in gaining search engine popularity for important keywords such as “blinds,”

·                                                                                                        The disputed domain name currently redirects to the <blinds.com> website because Respondent has determined at this moment, the website functionality on <blinds.com> is more useful for the consumer and helpful than the previous <allaboutblinds.com> site in providing information necessary to learn about blinds,

·                                                                                                        Complainant’s claims that Respondent is acting in bad faith, and has refused to accept reasonable purchase offers from Complainant in an effort to get as much money as possible for the sale of the domain name are false. The Respondent was ready and willing to sell the domain at a reasonable price if this would avoid legal costs and time but it was the Complainant that refused to consider anything more than the cost of the arbitration and legal process,

·                                                                                                        The Complaint was brought in bad faith, in an attempt of Reverse Domain Name Hijacking, and that it is abuse of the administrative proceeding.

 

 

C. Additional Submissions

Complainant Additional Submission

By the additional submission in this case, the Complainant further asserts that:

  • The Respondent has not operated <allaboutblinds.com> since 1998, but has used it as a hidden domain name to redirect consumers from other blinds retailers such as Complainant and to redirect consumers to Respondent’s <blindswholesale.com> or <blinds.com> websites. In this sense, the Respondent altered the screen shot contained in Exhibit 2 and Respondent’s annexed document “b,”  
  • Even though, the Complainant’s operation is headquartered in Omaha, Nebraska.  Nonetheless, the Complainant sells its goods and services to customers located throughout the United States,
  • Complainant offered Respondent $3,000 for the purchase of <allaboutblinds.com>, which was very reasonable under the circumstances,
  • As to Respondent’s assertion that Complainant is acting in bad faith, Complainant takes the position that Respondent has acted in bad faith since it has utilized a domain name substantially similar to Complainant’s marks and exactly the same as its trade name to redirect potential consumers over the Internet to its <blindswholesale.com> and <blinds.com> websites.

 

 

Respondent Additional Submission

Respondent hereby responds to Complainant’s Additional Submission dated August 7, 2007 as follows:

  • Respondent has not altered the screen shot contained in Exhibit 2 and Respondent’s annexed document “b” but it has simply labeling the exhibit as applying to the “All About Blinds” website,
  • Many websites operate on domain names that are not identical to their company name. Such as <flowers.com> (1-800-flowers), <toothpaste.com> (Crest, part of Procter and Gamble), <decoratetoday.com> (American Blinds), and countless others and the Respondent has the same conduct in using the disputed domain name,
  • There seems to be no record on <archive.org> of Complaint’s website.  Nor was Respondent able to find anything in indicating any measurable traffic to the site which is an indication that this is not a business that has been active on the web for any period of time. It is simply a local shop attempting to reverse-hijack Respondent’s domain which it has operated since 1998.

 

 

FINDINGS

Respondent had registered and has been using the disputed domain name at least 5 years before Complainant has registered the trademark similar to the disputed domain and has started to invest substantial goodwill in the said trademark and its trade name.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)   the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(3)   the domain name has been registered and is being used in bad faith.

 

 

                  Identical and/or Confusingly Similar

 

  1. Complainant’s rights in ALL ABOUT BLINDS LLC mark

The Panel finds that Complainant’s USPTO registration establishes rights in the ALL ABOUT BLINDS LLC mark in accordance with Policy ¶ 4(a)(i).  See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that the complainant’s registration of the AMERIDREAM mark with the USPTO established its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office established the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)). 

 

In addition, Complainant’s extensive investment in the ALL ABOUT BLINDS LLC mark, combined with the subsequent goodwill commensurate with such an investment, establishes secondary meaning in the mark pursuant to Policy ¶ 4(a)(i) and common law rights in the ALL ABOUT BLINDS LLC mark since September 13, 2003.  See Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark). See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark)

 

 

  1. The disputed domain name is confusingly similar with the ALL ABOUT BLINDS LLC Complainant’s mark.

 

The Panel finds that the disputed domain name is confusingly similar with a federally registered trademark of the Complainant, as it contains Complainant’s mark in its entirety, eliminates the “LLC” designation, and adds the generic top-level domain (“gTLD”) “.com.

It is the opinion of the Panel that Complainant’s establishment of rights in the mark need not to pre-date Respondent’s registration of the disputed domain name for the Complainant to successfully establish rights in the mark pursuant to Policy ¶ 4(a)(i).  See CMVY, Inc. v. Offshore Atlantic Yachts, Inc., FA 97308 (Nat. Arb. Forum, July 6, 2001); see also CDG v. WSM Domains, FA 933942 (Nat. Arb. Forum May 2, 2007) (holding that the Policy does not require a complainant’s rights in a mark to predate a respondent’s domain name registration in order to satisfy Policy ¶ 4(a)(i)); see also Javacool Software Dev. LLC v. Elbanhawy Inv., FA 836772 (Nat. Arb. Forum Jan. 2, 2007) (finding that registration of a domain name prior to a complainant’s trademark registration does not prevent a finding of identical or confusing similarity).

 

Rights or Legitimate Interests

 

The Panel is of the opinion that the registration and subsequent use of the disputed domain name for at least 5 years prior to Complainant’s USPTO registration indicates that its use is a bona fide offering of goods or services and a legitimate, fair use of the disputed domain name.  Respondent’s use of the disputed domain name constitutes a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) as it used the disputed domain name for selling windows covering starting with 1999.  See Russell & Miller, Inc. v. Dismar Corp., FA 353039 (Nat. Arb. Forum Dec. 20, 2004) (finding that the respondent used the <salesigns.com> domain name for a bona fide offering of goods or services, which was established by the respondent’s “longstanding involvement in the ‘sale sign’ market and its use of a descriptive domain name to further its competition in that market”); see also Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000) (stating that “[b]y September 1999, when first approached by the Complainant, the Respondent or its predecessors had used the <bankinternet.com> website for almost 4 years, thus demonstrating “a bona fide offering of goods and services”).

 

It is not relevant that Respondent has registered and has been using a domain name not identical with its own name, as it has registered the disputed domain name and it has been using it in connection to its field of activity, for the purpose of selling blinds long time before the Complainant started to invest in the all about blinds LLC mark and trade name.

 

 

Registration and Use in Bad Faith

 

Complainant failed to bring any proof that the disputed domain name was registered in bad faith, with actual knowledge about Complainant’s mark and trade name. The Panel considered in this sense Complainant’s assertions that only starting with 2003, it invested in the developing of goodwill of ALL ABOUT BLINDS LLC mark and trade name, while the disputed domain name has been registered in 1998.  Policy ¶ 4(a)(iii) is clear in stating that the disputed domain  name has to be both registered and used in bad faith and there is no indication that the Respondent has ever intended to register in bad faith the disputed domain name.  See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).

 

In addition, as the Panel found that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii), the Panel concludes that Respondent did not register the domain name in bad faith in accordance with Policy ¶ 4(a)(iii).  See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) (“Respondent's rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy ¶ 4(a)(iii).”); see also Pensacola Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (“Because the Panel has found that Respondent has rights and interests in respect of [sic] the domain name at issue, there is no need to decide the issue of bad faith.”).

 

Therefore it is the Panel’s opinion that there is no further need to question the bad faith use of the disputed domain name by Respondent as there is no bad faith registration of such domain name. 

 

 

Reverse Domain Name Hijacking

 

The Panel finds that Complainant has not engaged in reverse domain name hijacking through the filing of the present Complaint as Respondent failed to prove any bad faith of Complainant in filling this Complaint.  See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”).

 

DECISION

Based upon the above findings and conclusions, the Panel finds in favor of Respondent. Therefore, the relief requested by the Complainant pursuant to Paragraph 4(I) of the Policy is DENIED.  Respondent shall not be required to transfer to the Complainant the domain name <allaboutblinds.com>.

.

 

 

Beatrice Onica Jarka, Panelist
Dated: August 23, 2007

 

 

 

 

 

 

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