Springs Window Fashions LP v. Uzi Sade
Claim Number: FA0204000109363
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@graberblinds.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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
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.
FINDINGS
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.
DISCUSSION
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.
DECISION
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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