All About Blinds, LLC v. Blinds Acquisition, LLC c/o Jay Steinfeld
Claim Number: FA0707001029947
Complainant is All About Blinds, LLC (“Complainant”), represented by Trent
Martinet, 1050 17th St., Ste. 1500, Denver, CO 80265. Respondent is Blinds Acquisition, LLC c/o Jay
Steinfeld (“Respondent”), 4660 Beechnut,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allaboutblinds.com>, registered with Register.com, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On July 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 13, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on
A timely Additional Submission was received from Complainant on
A timely Additional Submission was received from Respondent on
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant contends that:
The Respondent asserts in its Response that:
2. http://www.allaboutblindsandshutters.com/ Mesa, AZ
3. http://blindsus.com/ (All About Blinds) Charlotte S.C.
4. http://www.coveryourwindows.com (All About Blinds)
5. http://allaboutblinds.hdwfg.com/sb.cn (All About Blinds Etc)
The Respondent is the largest online seller of
window coverings in the world and in the
· The fact that the <blinds.com> website appears prominently on search engines is simply evidence of Respondent’s substantial work over time in gaining search engine popularity for important keywords such as “blinds,”
· The disputed domain name currently redirects to the <blinds.com> website because Respondent has determined at this moment, the website functionality on <blinds.com> is more useful for the consumer and helpful than the previous <allaboutblinds.com> site in providing information necessary to learn about blinds,
· Complainant’s claims that Respondent is acting in bad faith, and has refused to accept reasonable purchase offers from Complainant in an effort to get as much money as possible for the sale of the domain name are false. The Respondent was ready and willing to sell the domain at a reasonable price if this would avoid legal costs and time but it was the Complainant that refused to consider anything more than the cost of the arbitration and legal process,
· The Complaint was brought in bad faith, in an attempt of Reverse Domain Name Hijacking, and that it is abuse of the administrative proceeding.
C. Additional Submissions
Complainant Additional Submission
By the additional submission in this case, the Complainant further asserts that:
Respondent Additional Submission
Respondent hereby responds to
Complainant’s Additional Submission dated
Respondent had registered and has been using the disputed domain name at least 5 years before Complainant has registered the trademark similar to the disputed domain and has started to invest substantial goodwill in the said trademark and its trade name.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
The Panel finds that Complainant’s
USPTO registration establishes rights in the ALL ABOUT BLINDS LLC mark in
accordance with Policy ¶ 4(a)(i). See Ameridream, Inc. v.
Russell, FA 677782 (Nat. Arb. Forum
In addition, Complainant’s
extensive investment in the ALL ABOUT BLINDS LLC mark, combined with the
subsequent goodwill commensurate with such an investment, establishes secondary
meaning in the mark pursuant to Policy ¶ 4(a)(i) and
common law rights in the ALL ABOUT BLINDS LLC mark since September 13,
2003. See Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb.
Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO
SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because
it had developed brand name recognition with the word “bibbero”); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided
evidence that it had valuable goodwill in the <minorleaguebaseball.com>
domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark). See Winterson v. Hogarth, D2000-0235 (WIPO
The Panel finds that the disputed domain name is confusingly similar with a federally registered trademark of the Complainant, as it contains Complainant’s mark in its entirety, eliminates the “LLC” designation, and adds the generic top-level domain (“gTLD”) “.com.
It is the opinion of the Panel that Complainant’s
establishment of rights in the mark need not to pre-date Respondent’s
registration of the disputed domain name for the Complainant to successfully
establish rights in the mark pursuant to Policy ¶ 4(a)(i).
See CMVY, Inc. v.
Offshore Atlantic Yachts, Inc.,
FA 97308 (Nat. Arb. Forum, July 6, 2001); see also CDG v. WSM Domains, FA 933942 (Nat. Arb. Forum May 2, 2007)
(holding that the Policy does not require a complainant’s rights in a mark to
predate a respondent’s domain name registration in order to satisfy Policy ¶
4(a)(i)); see also Javacool Software Dev. LLC v. Elbanhawy Inv.,
FA 836772 (Nat. Arb. Forum
The Panel is of the opinion that the registration and subsequent use of the disputed domain name for at least 5 years prior to Complainant’s USPTO registration indicates that its use is a bona fide offering of goods or services and a legitimate, fair use of the disputed domain name. Respondent’s use of the disputed domain name constitutes a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) as it used the disputed domain name for selling windows covering starting with 1999. See Russell & Miller, Inc. v. Dismar Corp., FA 353039 (Nat. Arb. Forum Dec. 20, 2004) (finding that the respondent used the <salesigns.com> domain name for a bona fide offering of goods or services, which was established by the respondent’s “longstanding involvement in the ‘sale sign’ market and its use of a descriptive domain name to further its competition in that market”); see also Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000) (stating that “[b]y September 1999, when first approached by the Complainant, the Respondent or its predecessors had used the <bankinternet.com> website for almost 4 years, thus demonstrating “a bona fide offering of goods and services”).
It is not relevant that Respondent has registered and has been using a domain name not identical with its own name, as it has registered the disputed domain name and it has been using it in connection to its field of activity, for the purpose of selling blinds long time before the Complainant started to invest in the all about blinds LLC mark and trade name.
Complainant failed to bring any proof that the disputed
domain name was registered in bad faith, with actual knowledge about
Complainant’s mark and trade name. The Panel considered in this sense
Complainant’s assertions that only starting with 2003,
it invested in the developing of goodwill of ALL ABOUT BLINDS LLC mark and
trade name, while the disputed domain name has been registered in 1998. Policy ¶ 4(a)(iii)
is clear in stating that the disputed domain
name has to be both registered and used in bad faith and there is no
indication that the Respondent has ever intended to register in bad faith the
disputed domain name. See Interep Nat'l Radio Sales, Inc. v.
Internet Domain Names, Inc., D2000-0174 (WIPO
In addition, as the Panel found that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii), the Panel concludes that Respondent did not register the domain name in bad faith in accordance with Policy ¶ 4(a)(iii). See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) (“Respondent's rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy ¶ 4(a)(iii).”); see also Pensacola Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (“Because the Panel has found that Respondent has rights and interests in respect of [sic] the domain name at issue, there is no need to decide the issue of bad faith.”).
Therefore it is the Panel’s opinion that there is no further need to question the bad faith use of the disputed domain name by Respondent as there is no bad faith registration of such domain name.
Reverse Domain Name Hijacking
The Panel finds that Complainant has not engaged in reverse
domain name hijacking through the filing of the present Complaint as Respondent
failed to prove any bad faith of Complainant in filling this Complaint.
Based upon the above findings and conclusions, the Panel finds in favor of Respondent. Therefore, the relief requested by the Complainant pursuant to Paragraph 4(I) of the Policy is DENIED. Respondent shall not be required to transfer to the Complainant the domain name <allaboutblinds.com>.
Beatrice Onica Jarka, Panelist
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