Glen Raven, Inc. v. Roh Hyun Sook
Claim Number: FA1212001477067
Complainant is Glen Raven, Inc. (“Complainant”), represented by Christopher Kelly of Wiley Rein LLP, Washington, D.C., USA. Respondent is Roh Hyun Sook (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sunbella.com>, registered with Inames Co., Ltd. d/b/a inames.co.kr.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2012; the National Arbitration Forum received payment on December 27, 2012. The Complaint was submitted in both English and Korean.
On December 23, 2012, Inames Co., Ltd. d/b/a inames.co.kr confirmed by e-mail to the National Arbitration Forum that the <sunbella.com> domain name is registered with Inames Co., Ltd. d/b/a inames.co.kr and that Respondent is the current registrant of the name. Inames Co., Ltd. d/b/a inames.co.kr has verified that Respondent is bound by the Inames Co., Ltd. d/b/a inames.co.kr 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 December 27, 2012, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of January 16, 2013 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@sunbella.com. Also on December 27, 2012, the Korean language Written Notice of the Complaint, notifying Respondent of the e-mail 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 January 28, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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 Korean language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Glen Raven, Inc. who’s address reflects its location as being in Glen Raven, NC, USA. Complainant was founded in 1880 and is a leading manufacturer of fabrics sold in the piece. Complainant adopted the SUNBRELLA trademark in 1959 and has consistently used it since that time. SUNBRELLA products are sold through retailers at the local, regional and national level in a variety of stores. The products are also offered via ecommerce through numerous on-line retailers and on Complainant’s official websites which include <sunbrella.com>, <sunbrella.net>, <sunbrella.org>, <sunbrella.info> and other SUNBRELLA sites on the Internet.
Respondent is Roh Hyun Sook who address reflects allocation in Suseong-gu, South Korea. The Respondent's registrar list its address as Seoul, South Korea. The <sunbella.com> domain name was registered on February 1, 2011.
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."
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.
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.”).
Complainant bases its claim of rights in the SUNBRELLA mark upon USPTO registrations for the mark. See, e.g., SUNBRELLA (Reg. No. 709,110 registered on Dec. 27, 1960) & SUNBRELLA “PLUS” (Reg. No. 2,966,133 registered on July 12, 2005). The Panel finds that Complainant has rights in its SUNBRELLA mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant next contends that Respondent’s <sunbella.com> domain name is an intentional misspelling of Complainant’s SUNBRELLA mark. Complainant argues that because the domain name differs from the mark by only one letter, the absence of the letter “r,” there is nothing to distinguish the domain name and the mark in any meaningful way. The Panel notes that Respondent also added the generic top-level domain (“gTLD”) “.com” to the domain name, but finds this addition is irrelevant under Policy ¶ 4(a)(i). 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). The Panel finds that the deletion of a single letter from the SUNBRELLA mark does nothing to distinguish the <sunbella.com> domain name from the mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). The Panel thus finds that the <sunbella.com> domain name is confusingly similar to the SUNBRELLA mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant asserts on information and belief that Respondent is not commonly known by the <sunbella.com> domain name and has not at any time been otherwise authorized by Complainant to use its SUNBRELLA mark. The Panel notes that the domain name’s WHOIS information lists “Roh Hyun sook” as the registrant of the domain name. Previous panels have found that a respondent is not commonly known as a disputed domain name when there is nothing in the record, especially the WHOIS information, to show that respondent is commonly known by the disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The Panel concludes that Respondent is not commonly known by the <sunbella.com> domain name under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent is not providing a bona fide offering or noncommercial or fair use. Complainant argues that the <sunbella.com> domain name resolved to a website displaying click-through links to third-party websites, including links to products sold by both Complainant and its competitors. The Panel notes that the domain name did formally appear to consist primarily of hyperlinks to related products. See Complainant’s Exhibit B. The Panel finds that Respondent’s prior use of the disputed domain name did not amount to 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
Complainant further states that following the issuance of a cease and desist letter to Respondent, Respondent altered the content of the domain name’s website to contain a general offer to sell the name to the general public. The Panel notes that in its present form the domain name resolves to a website that is focused exclusively on soliciting offers for the domain name to DomainMaster7@yahoo.com.” See Complainant’s Exhibit C. The Panel finds that soliciting a domain name for a profit is not a legitimate noncommercial or fair use, and that such a use does not constitute a bona fide offering of goods or services. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”). The Panel finds that Respondent has made neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that following its sending of a cease and desist letter to Respondent, Respondent has used the <sunbella.com> domain name to promote a general offer to sell the domain name to any member of the Internet community. The Panel again notes that the disputed domain name now resolves to a website that focuses exclusively on directing Internet users to an e–mail account where they may submit their offers for the purchase of the domain name. See Complainant’s Exhibit C. Previous panels have found that the general offering of a domain name for sale constitutes a bad faith use and registration of that domain name. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). The Panel finds that Respondent’s use of the domain name to attempt to sell off the domain name to another party illustrates Policy ¶ 4(b)(i) bad faith use and registration of the domain name.
Complainant next asserts that Respondent previously used the <sunbella.com> domain name to disrupt Complainant’s business by sending Internet users through hyperlinks to Complainant’s competitors. The Panel again notes that Respondent previously used the disputed domain name to host hyperlinks to third-party websites. See Complainant’s Exhibit B. Previous panels have found that it is bad faith use and registration for a respondent to use a domain name to divert Internet users to a complainant’s competitors through hyperlinks. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel finds that Respondent has similarly registered and used the domain name in a Policy ¶ 4(b)(iii) effort to disrupt Complainant’s business in bad faith.
Complainant finally contends that Respondent’s typosquatting conduct illustrates a bad faith use and registration of the <sunbella.com> domain name. The Panel again notes that the domain name is merely the SUNBRELLA mark minus the letter “r” and with the addition of the gTLD “.com.” Previous panels have found that typosquatting is in itself evidence that a respondent has registered and used a domain name in bad faith. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.). The Panel finds that Respondent’s typosquatting behavior illustrated bad faith use and registration under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <sunbella.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 11, 2013
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