Glen Raven, Inc. v. Mustafa Yaman / Yaman Branda
Claim Number: FA1609001695155
Complainant is Glen Raven, Inc. (“Complainant”), represented by Christopher Kelly of Wiley Rein LLP, District of Columbia. Respondent is Mustafa Yaman / Yaman Branda (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sunbrella.xyz>, registered with FBS Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 23, 2016; the Forum received payment on September 26, 2016. The Complaint was received in both Turkish and English.
On September 27, 2016, FBS Inc. confirmed by e-mail to the Forum that the <sunbrella.xyz> domain name is registered with FBS Inc. and that Respondent is the current registrant of the name. FBS Inc. has verified that Respondent is bound by the FBS Inc. 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 October 3, 2016, the Forum served the Turkish language Complaint and all Annexes, including a Turkish language Written Notice of the Complaint, setting a deadline of October 24, 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@sunbrella.xyz. Also on October 3, 2016, the Turkish language 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 November 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
PRELINARY ISUE: LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Turkish, thereby making the language of the proceedings in Turkish. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Turkish language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant made the following contentions.
Policy ¶ 4(a)(i)
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). Respondent’s <sunbrella.xyz> domain name is identical or confusingly similar to the SUNBRELLA mark because it contains the mark combined with only the generic top-level domain (“gTLD”) “.xyz.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <sunbrella.xyz> domain name as Respondent is not affiliated with Complainant or otherwise permitted to use the SUNBRELLA mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website constitutes an inactive use.
Policy ¶ 4(a)(iii)
Respondent uses the <sunbrella.xyz> domain name in bad faith because the resolving website constitutes an inactive use. Respondent registered the <sunbrella.xyz> domain name in bad faith because it did so with constructive or actual knowledge of Complainant’s rights in the SUNBRELLA mark based upon its registration and fame, as well as a Trademark Claims Notice received by Respondent during the registration process.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant Is a United States company engaged in the business of a leading manufacturer of fabrics.
2. Complainant has registered the SUNBRELLA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 709,110, registered on December 27, 1960).
3. Respondent registered the <sunbrella.xyz> domain name on July 29, 2016.
4. The disputed domain name does not resolve to an active website.
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(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 (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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant claims rights in the SUNBRELLA mark through its registration with the USPTO (e.g., Reg. No. 709,110, registered on December 27, 1960) for use with fabrics for awnings, furniture, umbrellas and other goods. Complainant has provided this registration, along with related USPTO registrations and registrations in Turkey, in Exhibit A. Accordingly, the Pane finds that Complainant has rights in the SUNBRELLA mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).).
The second issue that arises is whether the disputed <sunbrella.xyz> domain name is identical or confusingly similar to Complainant’s SUNBRELLA mark. Complainant alleges that Respondent’s <sunbrella.xyz> domain name is identical or confusingly similar to the SUNBRELLA mark because it contains the mark combined with only the gTLD “.xyz.” Accordingly, the Panel finds the <sunbrella.xyz> domain name identical to the SUNBRELLA mark. See Kellog North America Company v. Private Registration, FA 1613347 (Forum June 2, 2015) (finding that the <kelloggs.xyz> domain name is identical to the complainant’s KELLOGG’S mark under Policy ¶ 4(a)(i)).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SUNBRELLA mark in its entirety and to use it in its domain name;
(b) Respondent registered the disputed domain name on July 29, 2016;
(c) The domain name does not resolve to an active website;
(d) Complainant submits that Respondent engaged in the aforementioned activities without the permission or authority of Complainant and has adduced evidence to that effect which the Panel accepts.
(e) Complainant contends that Respondent is not commonly known by the <sunbrella.xyz> domain name as Respondent is not affiliated with Complainant or otherwise permitted to use the SUNBRELLA mark. Complainant has provided a demand letter sent to Respondent, in Exhibit D, to indicate a lack of affiliation or permission. The Panel notes that available WHOIS information lists “Mustafa Yaman” as Registrant. As the Panel finds a lack of contrary evidence, it finds that Respondent is not commonly known by the <sunbrella.xyz> domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark);
(f) Complainant maintains that Respondent has never used the <sunbrella.xyz> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website constitutes an inactive use. Complainant provides in Exhibit B a screenshot of the inactive website to which the domain name resolves to demonstrate this. Although the printed words are in the Turkish language, the Panel notes that they include the disputed domain name and therefore presumably originate from Respondent. As Complainant has certified that the contents of the Complaint are complete and accurate, the Panel finds this evidence sufficient for the Panel to find, as it does, that Respondent does not provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant does not make any arguments regarding Respondent’s bad faith registration or use of the <sunbrella.xyz> domain name which are specifically enumerated under Policy ¶ 4(b). However, prior panels have agreed that the Policy is a non-exclusive list of bad faith criteria. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Secondly, Complainant contends that Respondent uses the <sunbrella.xyz> domain name in bad faith because the resolving website constitutes an inactive use. Complainant provides a screenshot of the resolving website to demonstrate this use in Exhibit B. Although the printed words are in the Turkish language, the Panel notes that they include the disputed domain name and therefore presumably originate from Respondent. As Complainant has certified that the contents of the Complaint are complete and accurate, the Panel finds this evidence sufficient for the Panel to find, as it does, that Respondent uses the domain name in bad faith. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Thirdly, Complainant contends that Respondent registered the <sunbrella.xyz> domain name in bad faith because it did so with constructive or actual knowledge of Complainant’s rights in the SUNBRELLA mark. Complainant urges that constructive knowledge is demonstrated through the fame of the mark as well as the multiple registrations of the mark. Further, Complainant submits that Respondent had actual knowledge through a Trademark Claims Notice received during registration because of Complainant’s registration with the Trademark Clearinghouse. The Panel notes that Complainant has not provided evidence of this registration or of Respondent’s receipt of such a notice. However, Complainant has certified that the contents of the Complaint are complete and accurate. As the Panel finds these submissions sufficient to show that Respondent registered the domain name with actual knowledge of Complainant’s rights in the SUNBRELLA mark, it finds that Respondent did so in bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed
<sunbrella.xyz >domain name using the SUNBRELLA mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sunbrella.xyz> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 2, 2016
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