Glen Raven, Inc. v. Mr. Cruise
Claim Number: FA1301001480986
Complainant is Glen Raven, Inc. (“Complainant”), represented by Christopher Kelly of Wiley Rein LLP, Washington, D.C., USA. Respondent is Mr. Cruise (“Respondent”), Turkmenistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sunbrellacushions.org>, registered with GoDaddy.com, LLC (R91-LROR).
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 18, 2013; the National Arbitration Forum received payment on January 21, 2013.
On January 21, 2013, GoDaddy.com, LLC (R91-LROR) confirmed by e-mail to the National Arbitration Forum that the <sunbrellacushions.org> domain name is registered with GoDaddy.com, LLC (R91-LROR) and that Respondent is the current registrant of the name. GoDaddy.com, LLC (R91-LROR) has verified that Respondent is bound by the GoDaddy.com, LLC (R91-LROR) registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 11, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sunbrellacushions.org. Also on January 22, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant has used its flagship trademark, SUNBRELLA, in connection with performance fabrics since1959. Complainant holds multiple registrations with the United States Patent and Trademark Office (“USPTO”) for the SUNBRELLA mark (e.g., Reg. No. 709,110 registered December 27, 1960).
The <sunbrellacushions.org> domain name is confusingly similar to Complainant’s SUNBRELLA mark.
Respondent has never been commonly known as the <sunbrellacushions.org> domain name.
Complainant has not authorized Respondent’s use of the SUNBRELLA mark in any way. Respondent is not affiliated with Complainant.
Respondent’s <sunbrellacushions.org> domain name addresses a website containing information about Complainant’s SUNBRELLA fabrics.
Respondent was “fully aware” of Complainant’s rights in the SUNBRELLA mark at the time the <sunbrellacushions.org> domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns several trademark registrations with the USPTO for the SUNBRELLA mark.
Respondent registered the at-issue domain name after Complainant acquired rights in the SUNBRELLA mark.
Respondent is not affiliated with Complainant or authorized to use Complainant’s trademark.
Respondent’s <sunbrellacushions.org> domain name addresses a website containing information about Complainant’s SUNBRELLA fabrics.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
By owning one or more trademark registrations for the SUNBRELLA mark with the USPTO, Complainant conclusively demonstrates that it has rights in that mark for the purposes of Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Such is the case regardless of whether or not Respondent’s location (here Turkmenistan) is outside the jurisdiction of the domain name’s registrant. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <sunbrellacushions.org> domain name is confusingly similar to Complainant’s SUNBRELLA mark within the meaning of Policy ¶ 4(a)(i). The <sunbrellacushions.org> domain name incorporates Complainant’s SUNBRELLA mark in its entirety, simply adding the descriptive term “cushions” and the generic top-level domain, “.org.” These differences do nothing to differentiate the at-issue domain name from the SUNBRELLA mark. See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in respect of the at-issue domain name, Complainant’s prima facie showing acts conclusively.
Respondent has never been commonly known as <sunbrellacushions.org>. WHOIS information for the <sunbrellacushions.org> domain name lists the domain names registrant as “Mr. Cruise.” Furthermore, the record before the Panel contains no evidence that might otherwise tend to prove that Respondent is nevertheless commonly known by the at-issue domain name despite the contrary WHOIS indication. The Panel therefore concludes that Respondent is not commonly known by the <sunbrellacushions.org> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <sunbrellacushions.org> domain name resolves to a website containing information about Complainant’s SUNBRELLA fabrics. The website superficially appears to relate to a blog that discusses products made from Complainant’s SUNBRELLA-branded fabric, namely cushions. Using the confusingly similar at-issue domain name in this manner does not constitute a bona fide offering of goods or services pursuant to paragraphs Policy ¶4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii). See Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered is being used in bad faith. As discussed below, there is evidence from which the Panel may conclude, even absent any assertion by Complainant regarding the presence of Policy ¶4(b) circumstances, that pursuant to Policy ¶4(a)(iii) Respondent nonetheless acted in bad faith in registering and using the at-issue domain name.
Respondent was “fully aware” of Complainant’s rights in the SUNBRELLA mark at the time the <sunbrellacushions.org> domain name was registered. Respondent’s registration of a confusingly similar domain name featuring Complainant’s well known highly distinctive SUNBRELLA mark in combination with the related term “cushions,” could not conceivably have been done without Respondent’s prior knowledge of Complainant’s SUNBRELLA trademark. Registering and using an at-issue domain name with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sunbrellacushions.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 19, 2013
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