Glen Raven, Inc. v. Nurture Lab / Kelvin Ho
Claim Number: FA1008001343945
Complainant is Glen Raven, Inc. ("Complainant"), represented by Christopher Kelly of Wiley Rein LLP, Washington D.C., USA. Respondent is Nurture Lab / Kelvin Ho ("Respondent"), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sunbrellaumbrellas.net> registered with ENOM, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2010; the National Arbitration Forum received payment on August 30, 2010.
On August 30, 2010, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the sunbrellaumbrellas.net domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accorance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 31, 2010, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the sunbrellaumbrellas.net domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 September 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 2010 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@sunbrellaumbrellas.net. Also on September 1, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 5, 2010 pursuant to Complainant's request to have the dispute decided by a 1-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Respondent’s email of September 1, 2010 to Complainant offering to transfer the domain name to Complainant has been considered.
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" 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 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 <sunbrellaumbrellas.net> domain name is confusingly similar to Complainant’s SUNBRELLA mark.
2. Respondent does not have any rights or legitimate interests in the <sunbrellaumbrellas.net> domain name.
3. Respondent registered and used the <sunbrellaumbrellas.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Glen Raven, Inc., is a manufacturer of fabric used in umbrellas, awnings, windscreens, home furnishings, garden furniture, and marine applications among other things. Complainant holds multiple registrations for its SUNBRELLA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 709,110 issued December 27, 1960).
Respondent, Nurture Lab / Kelvin Ho, registered the <sunbrellaumbrellas.net> domain name on May 5, 2010. The disputed domain name resolves to a website consisting of pay-per-click links to outlets selling Complainant’s fabrics as well as to websites offering competing fabrics for sale.
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 based on its registration of the same with the USPTO (e.g., Reg. No. 709,110 issued December 27, 1960). The Panel finds that Complainant’s registration of its mark with the USPTO is sufficient evidence of Complainant’s rights in its SUNBRELLA mark under Policy ¶ 4(a)(i), even though Respondent resides in another jurisdiction. 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 Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant asserts that Respondent’s <sunbrellaumbrellas.net> domain name is confusingly similar to Complainant’s SUNBRELLA mark. Respondent’s disputed domain name incorporates the entirety of Complainant’s mark and then adds the descriptive term “umbrellas” as well as the generic top-level domain (“gTLD”) “.net.” The Panel finds that these alterations are insufficient to effectively distinguish the disputed domain name from Complainant’s mark. 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).”); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <sunbrellaumbrellas.net> domain name is confusingly similar to Complainant’s SUNBRELLA mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must first make a prima facie case in support of its allegations, then the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel finds that based on the arguments in the Complaint, Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); see also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”).
Complainant argues that at no time has Complainant authorized Respondent’s use of the SUNBRELLA mark nor is Respondent affiliated with Complainant. The WHOIS information indicates the registrant of the disputed domain name is “Nurture Lab / Kelvin Ho.” Without evidence in the record to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent’s <sunbrellaumbrellas.net> domain name resolves to a website consisting of pay-per-click links to outlets selling Complainant’s fabrics as well as to websites offering competing fabrics for sale. The Panel finds that Respondent is not using the disputed domain name in connection with 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s disputed domain name resolves to a website containing links to third-parties selling both Complainant’s SUNBRELLA brand fabrics and competing products. Complainant further alleges that it is likely that consumers searching the Internet for information about Complainant’s products may be redirected to Respondent’s website and ultimately purchase a competing fabric or product containing a competing fabric. Complainant asserts that this causes a disruption to its business. The Panel agrees and finds that Respondent has registered and used the disputed domain name in bad faith under 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The Panel finds that Respondent likely profits through the receipt of click-through fees from the links displayed on the resolving website. Therefore, the Panel finds that Respondent registered and is using the disputed domain name to attempt to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to Complainant’s source, sponsorship, or affiliation with the disputed domain name. 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 Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sunbrellaumbrellas.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 5, 2010
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