Glen Raven, Inc. v. Joe Cruzio
Claim Number: FA1609001696106
Complainant is Glen Raven, Inc. (“Complainant”), represented by Christopher Kelly of Wiley Rein LLP, District of Columbia, USA. Respondent is Joe Cruzio (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sunbrellafabricstore.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 29, 2016; the Forum received payment on September 30, 2016.
On September 30, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <sunbrellafabricstore.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 September 30, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 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@sunbrellafabricstore.com. Also on September 30, 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 October 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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
1. Complainant registered the SUNBRELLA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 709,110, registered Dec. 27, 1960), which demonstrates its rights in the mark. See Compl., at Attached Ex. A. Complainant’s SUNBRELLA mark is used to identify a wide array of residential and commercial shade applications, such as awnings, shade sails, sunscreens, cabanas, tents and garden, patio and market umbrellas. <sunbrellafabricstore.com> is confusingly similar to Complainant’s mark as it incorporates the SUNBRELLA mark in its entirety and merely adds the descriptive wording “Fabric Store.” Additionally, the addition of the generic top-level domain (“gTLD”) “.com” does not differentiate Respondent’s disputed domain name from Complainant’s mark.
2. Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent has never been commonly known by the SUNBRELLA name. Moreover, at no time has Complainant authorized Respondent’s use of the SUNBRELLA mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use as the resolving website resolves to a parked webpage not associated with any content. See Compl., at Attached Ex. E.
3. Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, and does not make any use of the disputed domain name.
B. Respondent
1. Respondent did not submit a response in this proceeding.
1. Respondent’s <sunbrellafabricstore.com> domain name is confusingly similar to Complainant’s SUNBRELLA mark.
2. Respondent does not have any rights or legitimate interests in the <sunbrellafabricstore.com> domain name.
3. Respondent registered or used the <sunbrellafabricstore.com> domain name 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 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.”).
Complainant claims it registered the SUNBRELLA mark with the USPTO (e.g., Reg. No. 709,110, registered Dec. 27, 1960), arguing this demonstrates its rights in the mark. See Compl., at Attached Ex. A. Complainant’s SUNBRELLA mark is used to identify a wide array of residential and commercial shade applications, such as awnings, shade sails, sunscreens, cabanas, tents and garden, patio and market umbrellas. The Panel agrees that Complainant’s trademark registration with the USPTO is sufficient in demonstrating its rights in the SUNBRELLA mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Next, Complainant argues that <sunbrellafabricstore.com> is confusingly similar to Complainant’s mark as it incorporates the SUNBRELLA mark in its entirety and merely adds the descriptive wording “Fabric Store.” Additionally, the addition of the gTLD “.com” does not differentiate Respondent’s disputed domain name from Complainant’s mark. Addition of generic terms, especially when there may be an imputed connection with a complainant that may add to confusion, has been considered confusingly similar. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).). Further, “.com” is irrelevant under Policy ¶ 4(a)(i). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Therefore, the Panel agrees that <sunbrellafabricstore.com> is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. First, Complainant argues that Respondent has never been commonly known by the SUNBRELLA name. Moreover, at no time has Complainant authorized Respondent’s use of the SUNBRELLA mark. WHOIS information has been looked to in light of a respondent in default. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). While the WHOIS lists “Joe Cruzio” as registrant, and Respondent has not submitted any evidence to rebut Complainant, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use as the resolving website resolves to a parked webpage not associated with any content. See Compl., at Attached Ex. E. Where there is no active use or parking service engaged by a respondent, such a respondent cannot be said to have demonstrated any rights or legitimate interests. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. 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).”); see also State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”). Therefore, the Panel finds Respondent’s use of the disputed domain does not lead to a finding of any bona fide offering of goods or services or for any legitimate noncommercial or fair use.
The Panel agrees that while Complainant has not made arguments under Policy ¶ 4(b), such arguments are not mandatory under the Policy—so long as Complainant shows bad faith use and registration in some manner. 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).
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, and does not make any use of the disputed domain name. Actual knowledge is a nebulous concept that panels determine by looking to a totality of circumstances. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Furthermore, inactive holding has been considered bad faith under Policy ¶ 4(a)(iii). 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). Therefore, the Panel agrees that the totality of evidence bears in favor of Complainant under a nonexclusive analysis of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sunbrellafabricstore.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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