Glen Raven, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin
Claim Number: FA1002001306281
Complainant is Glen Raven, Inc. (“Complainant”), represented by Christopher
Kelly, of Wiley Rein LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sumbrella.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 3, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 4, 2010.
On February 3, 2010, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <sumbrella.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-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 5, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 25, 2010 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@sumbrella.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 3, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <sumbrella.com> domain name is confusingly similar to Complainant’s SUNBRELLA mark.
2. Respondent does not have any rights or legitimate interests in the <sumbrella.com> domain name.
3. Respondent registered and used the <sumbrella.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Glen Raven, Inc.,
holds multiple trademark registrations for its SUNBRELLA mark with the United
States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 709,110 issued December 27, 1960) in connection with
awnings, furniture, handbags and sportswear.
Respondent, Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin, registered the <sumbrella.com> on August 19, 2002. The disputed domain name resolves to a directory website with links to competitors of Complainant’s business.
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 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.”).
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.
Complainant asserts rights in its SUNBRELLA mark through its holding of multiple trademark registrations for the SUNBRELLA mark with the USPTO (e.g., Reg. No. 709,110 issued December 27, 1960). The Panel finds that Complainant has established rights in the SUNBRELLA mark under Policy ¶ 4(a)(i) through its registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that Respondent’s <sumbrella.com> domain name is confusingly
similar to Complainant’s SUNBRELLA mark pursuant to Policy ¶ 4(a)(i). Respondent’s <sumbrella.com> domain
name is confusingly similar because it merely replaces the letter “n” in
Complainant’s mark with the letter “m” which is a letter adjacent on the QWERTY
keyboard and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the replacement of a
single letter in Complainant’s mark creates a confusing similarity between the
disputed domain name and Complainant’s mark.
See Neuberger Berman Inc. v. Jacobsen, D2000-0323
(WIPO June 12, 2000) (finding that the respondent’s <newbergerberman.com>
domain name was confusingly similar to the complainant’s NEUBERGER BERMAN mark
despite the slight difference in spelling); see
also Toronto-Dominion Bank v.
Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names
<tdwatergouse.com> and <dwaterhouse.com> are virtually identical to
the complainant’s TD WATERHOUSE name and mark).
The Panel also finds that the addition of a gTLD to a registered mark is
irrelevant in distinguishing a disputed domain name and a mark. See Trip Network Inc. v. Alviera, FA
914943 (Nat. Arb. Forum Mar. 27,
2007) (concluding that the affixation of a gTLD to a domain name is irrelevant
to a Policy ¶ 4(a)(i) analysis); see also
Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or
legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to prove it has rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint,
the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has
failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum
Apr. 26, 2006) (finding the “complainant must first make a prima facie case
that [the] respondent lacks rights and legitimate interests in the disputed
domain names under Policy ¶ 4(a)(ii), and then the
burden shifts to [the] respondent to show it does have rights or legitimate
interests.”); see also 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 Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or legitimate
interests in a domain name).
Nothing in the WHOIS information indicates that Respondent is commonly known by the disputed domain name. Complainant asserts that it has not authorized Respondent’s use of Complainant’s mark and that Respondent is not affiliated with Complainant. Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). 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 of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s disputed domain name was registered on August 19, 2002. The disputed domain name resolves to a
directory website with links to competitors of Complainant’s business. The Panel finds that Respondent’s use of the
disputed domain name is neither a bona
fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use of the disputed domain name pursuant to
Policy ¶ 4(c)(iii). See St.
Lawrence Univ. v. Nextnet Tech, FA
881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or
confusingly similar domain name to earn click-through fees via sponsored links
to a complainant’s competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii)); see
also Jerry
Damson, Inc. v.
Complainant argues that
Respondent is using a typographical error in the confusingly similar disputed
domain name to redirect Internet users to Respondent’s directory website. The Panel agrees and finds that Respondent’s
typosquatting is further evidence that Respondent lacks rights and legitimate
interests under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked
rights and legitimate interests in the disputed domain names because it “engaged
in the practice of typosquatting by taking advantage of Internet users who
attempt to access Complainant's <indymac.com> website but mistakenly
misspell Complainant's mark by typing the letter ‘x’ instead of the letter
‘c’”); see also Microsoft Corp. v.
Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration and use of
the disputed domain name to link Internet users to a directory website with
links which are in competition with Complainant constitutes a disruption of
Complainant’s business and constitutes bad faith registration and use pursuant
to Policy ¶ 4(b)(iii). See Tesco Pers. Fin.
Ltd. v. Domain Mgmt. Servs., FA
877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see
also
Respondent’s uses the disputed domain name to intentionally
attract Internet users attempting to access Complainant’s goods and services
and redirect them to the disputed domain name.
The Panel presumes that Respondent receives click-through fees from
these linked websites. Therefore, the
Panel finds that Respondent’s use of the disputed domain name is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb.
Forum July 18, 2006) (finding that the respondent engaged in bad faith
registration and use by using a domain name that was confusingly similar to the
complainant’s mark to offer links to third-party websites that offered services
similar to those offered by the complainant); see also
As established
previously, Respondent has engaged in the practice of typosquatting by using a
common mistyping of Complainant’s SUNBRELLA mark to misdirect Internet
users. The Panel finds typosquatting is
itself evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the
respondent engaged in typosquatting, which is evidence of bad faith registration
and use under Policy ¶ 4(a)(iii)); see also Microsoft Corp. v. Domain
Registration
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <sumbrella.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 19, 2010
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