Glen Raven, Inc. v. lavith lavith
Claim Number: FA1601001658446
Complainant is Glen Raven, Inc. (“Complainant”), represented by Christopher Kelly of Wiley Rein LLP, District of Columbia, USA. Respondent is lavith lavith (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <awningsunbrella.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 27, 2016; the Forum received payment on January 28, 2016.
On January 28, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <awningsunbrella.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 February 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2016 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@awningsunbrella.com. Also on February 3, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On February 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Glen Raven, Inc. ("Complainant") is a leading manufacturer of fabrics sold in the piece. In 1959, Complainant adopted and commenced use of its flagship trademark - SUNBRELLA in connection with performance fabrics. SUNBRELLA brand fabrics were first used principally to manufacture awnings and marine products. As the popularity of SUNBRELLA has grown, the variety of its end uses also has continued to grow. Complainant's SUNBRELLA trademark is used for a wide array of residential and commercial shade applications, such as awnings, sunscreens, cabanas, tents and garden, patio and market umbrellas. Indeed, Complainant's SUNBRELLA brand fabric is the leading awning fabric in the United States. Complainant's SUNBRELLA fabrics also continue to be used for marine applications, including in the manufacture of sails, boat covers and tops, biminis, dodgers and enclosures. SUNBRELLA fabrics also are used for indoor furniture, rugs, automotive applications such as car covers and other vehicle accessories, bedding products, clothing, and bags, including travel bags, duffel bags and handbags.
Complainant directs much of its SUNBRELLA advertising to ordinary consumers. Complainant routinely purchases advertising for products marketed in connection with the SUNBRELLA mark in major newspapers throughout the United States and in leading magazines and trade journals.
Complainant also distributes promotional brochures, pamphlets, promotional videos, podcasts and point of purchase materials. Many products made from SUNBRELLA fabrics are sold through national retailers such as Target, Sears, Costco, Sam's Club, Home Depot, Lowes, Restoration Hardware, Crate & Barrel, L.L. Bean, Pottery Barn and Pier 1, through regional and local retailers, including a variety of specialty outlets, and are widely available on the Internet, including through such on-line only retailers as Amazon.com.
Complainant also maintains a prominent Internet presence through its principal website relating to SUNBRELLA brand fabrics found at <sunbrella.com>. Opposer's website is popular among consumers and trade and industry purchasers, among others, and receives thousands of visitors annually looking for information about SUNBRELLA brand fabrics. Complainant also owns, among others, the domain names <sunbrellas.com>, <sunbrella.net>, <sunbrella.org> and <sunbrella.info> ,which redirect users to the <sunbrella.com> domain and website. SUNBRELLA fabrics also are actively promoted through such social media venues as Facebook and Twitter.
Due to the renown of the SUNBRELLA brand, manufacturers enthusiastically tout their use of the fabric in their finished products. SUNBRELLA is advertised prominently at the point of sale. Complainant supplies pass-through hang tags, sew-on labels and other materials bearing the mark to its manufacturing customers to affix to their articles of finished merchandise containing SUNBRELLA fabric. Accordingly, SUNBRELLA fabrics have developed significant consumer recognition and consumers frequently base purchasing decisions on whether a product is made using SUNBRELLA fabric. Based on Complainant's extensive, exclusive and continuous use of its SUNBRELLA trademark, SUNBRELLA has come to be widely recognized among the consuming public as a designator of origin with respect to Complainant's fabrics.
Complainant is the owner of all right, title and interest in the following trademark registrations, which presently are valid and subsisting in law, issued by the United States Patent and Trademark Office:
• Registration No. 709,110 - SUNBRELLA for "fabrics for awnings, furniture, handbags and sportswear," registered on the Principal Register on December 27, 1960.
• Registration No. 2,966,133 - SUNBRELLA "PLUS" for "fabrics sold in the piece for use in producing awnings, sun and windscreens, tents, canopies, boat covers and tops, indoor and outdoor furniture and beach umbrellas," registered on the Principal Register on July 12, 2005.
• Registration No. 3, 118,723 - SUNBRELLA for "fabrics sold in the piece for use in producing awnings, sun and windscreens, tents, canopies, boat covers and tops, indoor and outdoor furniture and beach umbrellas," registered on the Principal Register July 25, 2006.
• Registration No. 3,652,524 - SUNBRELLA & Umbrella Logo for "fabrics sold in the piece for use in producing awnings, sun and windscreens, tents, canopies, boat covers and tops, indoor and outdoor furniture and beach umbrellas, area rugs, draperies, sheers, window treatments," registered on the Principal Register July 7, 2009.
• Registration No. 3,731,230 - SUNBRELLA & Umbrella Logo (color) for "fabrics sold in the piece for use i n producing awnings, sun and windscreens, tents, canopies, boat covers and tops, indoor and outdoor furniture and beach umbrellas, area rugs, draperies, sheers, window treatments," registered on the Principal Register December 29, 2009.
In addition to the renown of SUNBRELLA in the United States, the SUNBRELLA mark also is widely recognized abroad based on widespread sales and the popularity enjoyed by the brand around the world. Complainant's SUNBRELLA trademark, moreover, is registered in over 100 countries in addition to the United States.
Complainant regularly enforces its rights in the SUNBRELLA trademark. For example, Complainant has brought many federal trademark infringement suits and has prosecuted numerous opposition and cancellation proceedings in the U.S. Patent and Trademark Office before the Trademark Trial and Appeal Board. Complainant also routinely posts cease and desist demands, successfully terminating use of the SUNBRELLA name and other confusingly similar "brella" formative marks applied to a diverse array of products and services. Complainant also routinely challenges registration and use of domain names containing the SUNBRELLA name or other confusingly similar "brella" designations.
Complainant also enforces its rights in the SUNBRELLA trademark overseas. For example, Complainant successfully opposed or cancelled "brella" formative marks in Turkey, South Korea and the European Union. Complainant also prevailed upon the Barbados Hockey Association and the Trinidad & Tobago Hockey Federation to cease use of the SUNBRELLA name in connection with programs promoting field hockey in those countries. The strength and fame of the SUNBRELLA mark has been expressly recognized by tribunals in South Korea and China in recent actions where Complaint's rights in SUNBRELLA were enforced successfully against infringing marks. Moreover, several years ago, the local trademark office in Japan found Complainant's SUNBRELLA mark "famous."
Based on the extensive, exclusive and continuous use of SUNBRELLA by Complainant, the relevant consuming public has come to recognize and does recognize SUNBRELLA as being used by Complainant and to associate and identify SUNBRELLA with Complainant.
Complainant enjoys an exceedingly valuable reputation and goodwill symbolized by its SUNBRELLA trademark.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
A. RESPONDENT'S DOMAIN NAME IS CONFUSINGLY SIMILAR TO COMPLAINANT'S SUNBRELLA TRADEMARK
Respondent's domain name is confusingly similar to Complainant's SUNBRELLA trademark. The domain name incorporates Complainant's SUNBRELLA trademark in its entirety and simply adds the descriptive word AWNING, a common end use of Complainant's fabrics sold under the SUNBRELLA trademark. Not only does the presence of the word AWNING not distinguish Respondent' s domain name from Complainant's SUNBRELLA trademark, its use only increases the likelihood that consumers will believe that the domain name and website are sponsored by or otherwise associated with Complainant. The inclusion of the generic top-level domain ".com," moreover, does not differentiate Respondent's domain name from Complainant's SUNBRELLA trademark in any meaningful way. Nintendo of America, Inc. v. Lizmi, FA 94329 (Nat. Arb. Forum Apr. 20, 2000). SUNBRELLA is the dominant feature of Respondent's domain name. The similarity between Complainant's SUNBRELLA trademark and Respondent's domain name inevitably will cause Internet users to believe that an affiliation exists between Complainant and Respondent.
B. RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTEREST IN THE SUNBRELLA NAME OR THE <awningsunbrella.com> DOMAIN NAME
Respondent has no rights or legitimate interest either in the SUNBRELLA trademark or in the <awningsunbrella.com> domain name. Respondent has never used SUNBRELLA or the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; and has never been known commonly by the SUNBRELLA name. Moreover, at no time has Complainant authorized Respondent's use of SUNBRELLA in any way or for any purpose. Respondent, moreover, is not affiliated with Complainant.
C. <awningsunbrella.com> HAS BEEN REGISTERED AND IS BEING USED IN BAD FAITH
Complainant successfully advertises, promotes and markets its goods under the SUNBRELLA trademark and has established a high degree of fame and goodwill in the SUNBRELLA mark. Complainant, moreover, enjoys substantial sales of its SUNBRELLA brand products. Complainant long has utilized the Internet to offer, provide, and facilitate a variety of goods and services under its SUNBRELLA mark to all classes of purchasers. Complainant registered its <sunbrella.com> domain name on October 12, 1995, and has used that domain name continuously and extensively since that time.
It cannot be seriously argued that Respondent was unaware of Complainant's rights in the SUNBRELLA trademark at the time the <awningsunbrella.com> domain name was registered. Respondent’s registration of AWNINGSUNBRELLA.COM with full knowledge of Complainant's trademark rights is indicative of Respondent's bad faith intent in this case. Amber Smith v. Network Operations Center c/o Alberta Hot Rods, FA 0411000371622 (Nat. Arb. Forum January 13, 2005). Respondent, moreover, failed to answer Complainant's cease and desist letter. Respondent’s failure to answer Complainant’s demand letter further show s Respondent's bad faith registration of the domain name. See Kingston Tech. Corp v. c/o Askinkingston.com, FA 464,515 (Nat. Arb. Form Oct. 23, 2012).
Respondent' s domain name currently resolves to a website that appears to be a directory offering links to, among other things, establishments selling not only finished products containing Complainant's SUNBRELLA fabrics but also competing fabrics and competing finished products. It is entirely likely that consumers searching the Internet for information about SUNBRELLA fabrics or products featuring SUNBRELLA fabrics have gone to Respondent' s website in the belief that it is sponsored or endorsed by Complainant and ultimately purchased a competing fabric and/or finished product containing a competing fabric. Respondent's domain name diverts traffic from Complainant's website or other authorized websites causing disruption to Complainant's business activities. Respondent's actions constitute bad faith registration and use of the subject domain name. See, e.g., Tesco Pers. Fin. Ltd v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 19, 2007). Respondent registered and is using a domain name it knows is confusingly similar to Complainant's SUNBRELLA mark, further evidencing Respondent's bad faith in this case. See Household Int' l, Inc. v. Cyntom Enters., FA 95784 (Nat. Arb. Forum Nov. 7, 2000). Respondent willfully and deliberately is trading on and likely is profiting from the goodwill associated with Complainant's SUNBRELLA mark. Complainant, for the foregoing reasons, requests that the Panel order the domain name transferred to Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
PRELIMINARY ISSUE – CONSENT TO TRANSFER
The Forum received correspondence from Respondent in which Respondent appears to consent to the transfer of the <awningsunbrella.com> domain name, saying, “Hi.. we have spent some money on it. Just clear it and get it transferred in your name. Nothing more we can say on thi[s].” This Panel prefers to go through the traditional analysis and is under no obligation to acknowledge any such non-conforming document.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(f), 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.”).
Complainant has rights in the SUNBRELLA mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 709,110, registered on December 27, 1960). Registration of a mark with a governmental authority is sufficient to prove rights under Policy ¶ 4(a)(i). Complainant need only prove it has rights somewhere and does not need to prove it has rights in (i) Respondent’s jurisdiction or (ii) Complainant has superior rights to Respondent. Therefore, Complainant has adequately proven its rights in the SUNBRELLA mark under Policy ¶4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark).
Complainant claims Respondent’s <awningsunbrella.com> domain name is confusingly similar to the SUNBRELLA mark because it contains the entire mark, along with the word “awning” and the gTLD “.com.” The word “awning” is descriptive of Complainant’s business operations, and, therefore, irrelevant to a Policy ¶ 4(a)(i) analysis. A TLD (whether a gTLD or ccTLD) must be disregarded under a Policy ¶ 4(a)(i) analysis because all domain names are required to have a TLD. The <awningsunbrella.com> domain name is confusingly similar to the SUNBRELLA mark. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶4(a)(i) is satisfied).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not commonly known by the <awningsunbrella.com> domain name and Respondent is not authorized to use the SUNBRELLA mark. The updated available WHOIS information lists “lavith lavith” as Registrant. Respondent has not provided any information to suggest it is known by the disputed domain name. There is simply no evidence which would support a finding Respondent is commonly known by the <awningsunbrella.com> domain name under Policy ¶4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant claims Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the <awningsunbrella.com> domain name to resolve to a dynamic parking page, which contains links to Complainant’s competitors. A dynamic parking page with links to competitors does not constitute (i) a bona fide offering of goods or services under Policy ¶ 4(c)(i) or (ii) a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this particular dynamic parking page to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Furthermore, Respondent registered the disputed domain name using a privacy service. The real owner was only revealed after this Proceeding was instituted. This means Respondent has done nothing to publicly associate itself with the disputed domain name. Respondent cannot have acquired any rights simply by registering the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent uses the <awningsunbrella.com> domain name in bad faith to disrupt Complainant’s business operations by hosting competitive links and has provided a snapshot of the resolving website. This is sufficient evidence Respondent uses the <awningsunbrella.com> domain name in bad faith according to Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant claims Respondent uses the <awningsunbrella.com> domain name in bad faith because the resolving website hosts competitive links, allowing Respondent to profit through trading on Complainant’s goodwill. Once again, this evidence is sufficient to find Respondent uses the <awningsunbrella.com> domain name in bad faith according to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant claims Respondent registered the <awningsunbrella.com> domain name in bad faith because it actually knew of Complainant’s rights in the SUNBRELLA mark. Certainly the parking page’s dynamic link algorithm could provide links to Complainant’s competitors (which suggests the link between the disputed domain name and Complainant’s marks were pretty clear). It seems clear Respondent registered the <awningsunbrella.com> domain name in bad faith. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
Finally, Respondent registered the domain name using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith. Respondent has done nothing to rebut that presumption. For this reason alone, the Panel is comfortable finding bad faith registration and use of the disputed domain name.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <awningsunbrella.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, March 1, 2016
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