Glen Raven, Inc. v. Lisa Katz / Domain Protection LLC
Claim Number: FA1507001629557
Complainant is Glen Raven, Inc. (“Complainant”), represented by Christopher Kelly of Wiley Rein LLP, District of Columbia, USA. Respondent is Lisa Katz / Domain Protection LLC (“Respondent”), represented by Gary N. Schepps, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <glenravenmills.com>, registered with Fabulous.com Pty Ltd.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 17, 2015; the Forum received payment on July 20, 2015.
On July 21, 2015, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <glenravenmills.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 July 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 2015 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@glenravenmills.com. Also on July 24, 2015, 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 August 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
Policy ¶ 4(a)(i)
Complainant is a fabric manufacturer that was founded in 1880. Complainant has rights in the GLEN RAVEN mark through its registration with the United States Patent and radmark Office (“USPTO”) (e.g., Reg. No. 670,286, registered November 25, 1958). Respondent’s <glenravenmills.com> is confusingly similar to the GLEN RAVEN mark because it contains the entire mark, and is differentiated by only the removal of the space between the words of the mark, and the additions of the descriptive word “mills” and the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <glenravenmills.com> domain name because there is no evidence in the record to suggest that it is so known, and because Respondent is neither authorized by, nor affiliated with, Complainant. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent’s resolving website contains links to retailers who compete with Complainant.
Policy ¶ 4(a)(iii)
Respondent uses the <glenravenmills.com> domain name in bad faith because the resolving webpage offers hyperlinks to retailers who compete with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Glen Raven, Inc. of Glen Raven, NC, USA. Complainant is the owner of numerous domestic registrations for the mark GLEN RAVEN and variations thereof which Complainant has used continuously since at least as early as 1958 in connection with the manufacture and sale of fabrics. Complainant does business in real space as well as in cyberspace through its website found at <glenraven.com> which it has registered and used since 1995.
Respondent is Lisa Katz / Domain Protection LLC of Dallas, TX, USA. Respondent’s registrar’s address is listed as Queensland, Australia. The Panel notes that the <glenravenmills.com> domain name was created on or about March 1, 2005.
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.”).
Complainant alleges it has rights in the GLEN RAVEN mark through its registration with the USPTO (e.g., Reg. No. 670,286, registered November 25, 1958). Complainant has provided documentation of this registration. Past panels have found that registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has rights in the GLEN RAVEN mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <glenravenmills.com> is confusingly similar to the GLEN RAVEN mark because it contains the entire mark, and is differentiated by only the removal of the space between the words of the mark, and the additions of the word “mills” and the gTLD “.com.” Prior panels have found that because spaces cannot be displayed in domain names, while top-level domains are required, changes related to either are irrelevant to Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Complainant argues that the word “mills” is descriptive, or otherwise serves to increase confusing similarity, because Complainant used to do business as “Glen Raven Mills.” Complainant has provided evidence of this prior business practice. Prior panels have found that descriptive terms added to a mark do not remove a resulting domain name from the realm of confusing similarity. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The Panel here finds that Respondent’s <glenravenmills.com> is confusingly similar to the GLEN RAVEN mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes 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), 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 (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). The Complainant has met this burden.
Complainant alleges that Respondent is not commonly known by the <glenravenmills.com> domain name. Complainant urges that Respondent has never been authorized to use the GLEN RAVEN mark and that Respondent is not affiliated with Complainant. The Panel notes that the WHOIS information lists “Lisa Katz” as Registrant and that Respondent has failed to provide further evidence to indicate being commonly known by the domain name. Previous panels have found that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii) under similar circumstances. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). The Panel here finds that Respondent is not commonly known by the <glenravenmills.com> domain name under Policy ¶ 4(c)(ii).
Complainant does not make any specific arguments under Policy ¶4(c)(i) that Respondent fails to provide a bona fide offering of goods or services or under ¶4(c)(iii) that Respondent does not offer a legitimate noncommercial or fair use. However, Complainant alleges, under the last prong of its analysis, that Respondent uses the <glenravenmills.com> domain name in order to host links to retailers that compete with Complainant. Complainant has provided evidence of this use, showing links to websites containing the GLEN RAVEN mark, as well as other sites such as “Estes” and “Somfy.” Previous panels have found that hosting competitive links suffices to show a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶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 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).”). The Panel here finds that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant alleges that Respondent uses the <glenravenmills.com> domain name for the purpose of disrupting Complainant’s business operations by using the resolving website to host links to competitors of Complainant. Complainant has provided evidence showing links, to websites such as “Estes” and “Somfy.” Past panels have found that hosting competitive links constitutes disruption under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel here finds that Respondent registered and uses the <glenravenmills.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <glenravenmills.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September 1, 2015
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