Springs Window Fashions LP v. Uzi Sade
Claim Number: FA0204000109363
Complainant is Springs Window Fashions LP, Fort Mill, SC (“Complainant”) represented by Larry C. Jones, of Alston & Bird, LLP. Respondent is Uzi Sade, Ramat Gan, ISRAEL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <graberblinds.com>, registered with Tucows, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 8, 2002; the Forum received a hard copy of the Complaint on April 12, 2002.
On April 8, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <graberblinds.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 6, 2002 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.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On May 16, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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.” 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.
1. Respondent’s domain name <graberblinds.com> is confusingly similar to Complainant’s GRABER mark.
2. By passively holding the contested domain name, and diverting Internet users to a presently inactive website, Respondent has no rights or legitimate interests in <graberblinds.com>.
3. Respondent did not register or begin using the contested domain until long after Complainant’s GRABER mark had acquired its fame. Respondent has failed to offer any goods or services through the subject domain name since it was registered. Thus, Respondent has registered and used the disputed domain name in bad faith.
B. Respondent did not submit a Response in this proceeding.
Complainant is one of the largest and most well known manufacturers of window treatments, shades and blinds in the United States, and sells its products internationally. Complainant has obtained registrations of the GRABER mark in over thirty countries throughout the world, including U.S. Trademark Registration No. 980,822, issued March 26, 1974, that covers “drapery rods, and drapery hardware; window shades” and U.S. Reg. No. 2,063,143, issued May 20, 1997, that covers “metal drapery hardware, window blinds and window shades.” Complainant’s goods are advertised and promoted extensively under the GRABER mark internationally in various forms of media, including the Internet. By reason of the adoption and longstanding continuous use of Complainant’s GRABER mark, that designation has a distinctive quality while having acquired special and particular significance as identifying Complainant’s goods.
Respondent registered the disputed domain name on March 14, 2001 and has used it to direct Internet users to a presently inactive 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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the 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.
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; and
(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.
Complainant has established its rights in the GRABER mark through federal registration and subsequent continuous use. (U.S. Trademark Reg. Nos. 980,822 and 2,063,143). The disputed domain name <graberblinds.com> is confusingly similar to Complainant’s GRABER mark.
The contested domain name is strikingly similar to Complainant’s GRABER mark. In fact, it is identical to Complainant’s mark except for the addition of the generic term “blinds.” The addition of a generic term underlies an established principle that such domain names are confusingly similar to the underlying mark. See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name <mannbrothers.com> confusingly similar to Complainant’s MANN BROTHERS mark “so as to likely confuse Internet users who may believe they are doing business with Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying the confusing similarity requirement”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).
The addition of “blinds” to the mark is inconsequential to the “confusingly similar” inquiry, as the addition of a generic term creates a clear association with the Complainant’s 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); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that, given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant; the Respondent is attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, or endorsement of the Respondent’s website).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has established its rights to and interests in its mark. Because Respondent has not submitted a Response in this proceeding, the Panel may presume it has no such rights or interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
By infringing on Complainant’s registered mark and passively holding the disputed domain name, Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when Respondent fails to use disputed domain names in any way).
Additionally, no evidence here suggests that Respondent is involved in window treatments and shades, including blinds. Respondent has no preexisting rights in GRABER or GRABER BLINDS as a trademark, service mark, or trade name. No evidence suggests that Respondent is commonly known as “graberblinds” or <graberblinds.com> pursuant to Policy ¶ 4(c)(ii); Respondent is known to this Panel only as Uzi Sade. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).
The Panel finds that Respondent has no rights or legitimate interests with respect to the disputed domain name, and thus, that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered the disputed domain name <graberblinds.com>, which is confusingly similar to Complainant’s mark, in order to solicit Internet users who were searching for the Complainant’s site. Given the prominence of Complainant’s mark, Respondent was aware or should have been aware of Complainant’s rights in the mark. See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
As previously stated, Respondent, by adding a generic term such as “blinds” to Complainant’s mark, was attempting to create an impression of an affiliation with the Complainant’s fame and the intent to cause confusion can be inferred. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[ w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).
The evidence also indicates that Respondent did not register or begin using the subject domain name until March 14, 2001 – long after Complainant’s GRABER mark had acquired its fame. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”). Respondent also does not offer any goods or services through the subject domain name. Without any preexisting rights in GRABER BLINDS as a trademark, service mark, or trade name, it may be assumed that Respondent adopted, registered and is using the subject domain name because of the fame and goodwill associated with Complainant’s GRABER mark satisfying Policy ¶ 4(b)(iv) requirements. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name contains the complainant’s mark in its entirety, (2) the mark is a coined word, well-known and in use prior to Respondent’s registration of the domain name, and (3) Respondent fails to allege any good faith basis for use of the domain name); see also Paws, Inc. v. Odie, FA 96206 (Nat. Arb. Forum Jan. 8, 2001) ("Given the uniqueness and the extreme international popularity of the [ODIE] mark, the Respondent knew or should have known that registering the domain name in question would infringe upon the Complainant's goodwill").
Respondent has not offered any goods or services through the subject domain name since it was registered on March 14, 2001, representing an adequate expiration of time to constitute passive holding, from which bad faith can be inferred. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief be hereby GRANTED.
Accordingly, it is Ordered that the domain name <graberblinds.com> be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 20, 2002
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