national arbitration forum

 

DECISION

 

Glen Raven, Inc. v. GLENNRAVEN.COM / Privacy--Protect.org

Claim Number: FA1109001408114

 

PARTIES

Complainant is Glen Raven, Inc. (“Complainant”), represented by Christopher Kelly of Wiley Rein LLP, Washington D.C., USA.  Respondent is GLENNRAVEN.COM / Privacy--Protect.org (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <glennraven.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 20, 2011; the National Arbitration Forum received payment on September 21, 2011. The Complaint was submitted in both Slovak and English.

 

On September 23, 2011, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com confirmed by e-mail to the National Arbitration Forum that the <glennraven.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com and that Respondent is the current registrant of the name.  Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On September 29, 2011, the Forum served the Slovak language Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of October 19, 2011 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@glennraven.com.  Also on September 29, 2011, the Slovak language 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 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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" 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.

 

Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Slovak language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <glennraven.com> domain name is confusingly similar to Complainant’s GLEN RAVEN mark.

 

2.    Respondent does not have any rights or legitimate interests in the <glennraven.com> domain name.

 

3.    Respondent registered and used the <glennraven.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Glen Raven, Inc., has produced fabrics for a wide array of applications since 1880. Complainant claims rights in the GLEN RAVEN mark based on its registration of the mark with the United States Patent and Trademark and Office (“USPTO”) (Reg. No. 670,286 registered November 25, 1958).

 

Respondent, Privacy--Protect.org, registered the disputed domain name on June 10, 2010. The disputed domain name resolves to a directory website featuring links to competing fabric retailers.

 

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 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.

 

Identical and/or Confusingly Similar

 

Complainant claims rights in the GLEN RAVEN mark pursuant to Policy ¶ 4(a)(i). Complainant provides evidence of its registration of the mark with the USPTO (Reg. No. 670,286 registered November 25, 1958). Previous panels have agreed that registration of a mark with the USPTO is sufficient to establish rights in a mark for the purposes of  Policy ¶ 4(a)(i). 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).”). The fact that Complainant does not hold a trademark registration in the country in which Respondent operates is also irrelevant. See 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)The Panel concludes, therefore, that Complainant has established rights in the GLEN RAVEN mark pursuant to Policy ¶ 4(a)(i).

 

Complainant contends that the <glennraven.com> domain name is confusingly similar to its GLEN RAVEN mark for the purposes of Policy ¶ 4(a)(i). The disputed domain name is substantially similar to Complainant’s mark, adding only an additional “n” and the generic top-level domain (“gTLD”) “.com”, while omitting the space between the words. UDRP precedent clearly establishes that the addition of a single letter to Complainant’s mark is insufficient to distinguish a disputed domain name under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The affixation of a gTLD also cannot distinguish a disputed domain name. 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). Finally,the ommission of the space between two words does not distinguish a disputed domain name. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). Based on the foregoing, the Panel holds that the disputed domain name is confusingly similar to Complainant’s mark for the purposes of Policy ¶ 4(a)(i). 

 

The Panels that Policy ¶ 4(a)(i) has been satisfied. 

 

Rights or Legitimate Interests

 

From the outset, the burden of presenting a prima facie case lies with Complainant. Once this has been done, as is the case here, the burden shifts to Respondent to rebut Complainant’s claims. 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.”). Respondent in this case has failed to produce a Response, which some panels have construed as evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). The Panel will nonetheless continue to examine the record, however, to determine whether such rights or legitimate interests do in fact exist.

 

Complainant alleges that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). The WHOIS information identifies the domain name registrant as “Privacy--Protect.org”. The Panel finds this to bear no resemblance to the <glennraven.com> domain name, providing evidence that Respondent is not commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Complainant further states that it has not authorized Respondent’s use of the GLEN RAVEN mark, nor has Respondent ever been affiliated with Complainant in any way. In the absence of a Response, or any other evidence in the record to support the notion that Respondent is commonly known by the disputed domain name, the Panel must conclude that that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). 

 

Complainant further alleges that Respondent’s use of the disputed domain name does not coincide with 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). Respondent’s disputed domain name resolves to a directory website featuring links to competing fabric retailers. Previous panel decisions have made it clear that the use of a disputed domain name to resolve to this type of parked website cannot constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use 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 also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel holds that Respondent’s use of the disputed domain name does not coincide with 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 Panels that Policy ¶ 4(a)(ii) has been satisfied. 

 

Registration and Use in Bad Faith

 

By operating a directory website featuring links to Complainant’s competitors in the fabric industry, Respondent disrupts Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iii). Through the use of a confusingly similar domain name, Respondent increases the likelihood that consumers will visit Respondent’s website, when they had in fact intended to visit Complainant’s official website. A portion of these consumers will inevitably visit the competing links displayed on Respondent’s website, eventually purchasing fabric from a competitor of Complainant. Respondent’s website, therefore, causes Complainant to lose a sale to the direct benefit of a competitor. In this way, Complainant’s business has been disrupted in bad faith 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 David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

Complainant urges that Respondent’s registration and use of the disputed domain name also exhibits bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). Respondent’s use of a confusingly similar domain name substantially increases the likelihood that consumers will believe that Respondent’s site is sponsored by or somehow associated with Complainant. Respondent hopes to use this confusion to drive Internet traffic to its site. The Panel assumes that Respondent collects click-through fees each time one of the links featured on its page is accessed. Respondent, therefore, attempts to realize a commercial gain from the confusion it creates, as greater traffic will lead to a higher click-through rate, in turn leading to a greater financial gain. The Panel holds that this type of use constitutes bad faith attraction for commercial gain under 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 AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).

 

The Panels that Policy ¶ 4(a)(iii) has been satisfied. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <glennraven.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  November 7, 2011

 

 

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