Glen Raven, Inc. v. Chuck / Media
Claim Number: FA1404001552016
Complainant is Glen Raven, Inc. (“Complainant”), represented by Christopher Kelly of Wiley Rein LLP, Washington, D.C., USA. Respondent is Chuck / Media (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sunbrellas.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 April 1, 2014; the National Arbitration Forum received payment on April 4, 2014.
On April 2, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <sunbrellas.org> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 April 8, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 2014 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@sunbrellas.org. Also on April 8, 2014, the 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 April 29, 2014, 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" 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 <sunbrellas.org> domain name, the domain name at issue, is confusingly similar to Complainant’s SUNBRELLA mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a leading manufacturer of fabrics used primarily to manufacture awnings and marine products. In 1959, Complainant adopted and commenced use of the SUNBRELLA trademark. Complainant’s SUNBRELLA products have grown to include products for interior residential and commercial environments as well as patios, gardens, decks, and similar outdoor spaces. Complainant's products are sold through national retailers including Target, Sears, Costco, Home Depot, and Restoration Hardware. Complainant owns registrations for the SUNBRELLA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 709,110 registered December 27, 1960) and (Reg. No. 3,118,723 registered July 25, 2006). Complainant also owns registrations for the SUNBRELLAS mark with the USPTO (Reg. No. 2,028,355 registered January 7, 1997). Respondent’s <sunbrellas.org> domain name is confusingly similar to Complainant’s SUNBRELLA mark and identical to Complainant’s SUNBRELLAS mark. Respondent’s <sunbrellas.org> domain name features Complainant’s entire SUNBRELLA mark with the addition of the letter “s.” Respondent also adds the generic top-level domain (“gTLD”) “.org.”
Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the SUNBRELLA mark in any way. Respondent has never made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain. Respondent is engaged in a phishing scheme with the domain name at issue as the bait.
Respondent’s disputed domain name currently resolves to a website containing information about a government home refinancing program. Respondent is attempting to use the goodwill associated with Complainant’s mark to direct Internet users to Respondent’s website in order to obtain personal and financial information in perpetration of a scam. Respondent was fully aware of Complainant’s rights in the SUNBRELLA trademark at the time Respondent registered the <sunbrellas.org> domain name.
Respondent’s <sunbrellas.org> domain name was registered on December 3, 2013.
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 has rights in the SUNBRELLA mark under Policy ¶ 4(a)(i) and is a leading manufacturer of fabrics in the manufacture of awnings and marine products. In 1959, Complainant adopted and commenced use of the SUNBRELLA trademark which has come to uniquely identify products for interior residential and commercial environments as well as patios, gardens, decks, and similar outdoor spaces as being associated with Complainant. Complainant's products are sold through national retailers including Target, Sears, Costco, Home Depot and Restoration Hardware. Complainant owns registrations for the SUNBRELLA mark with the USPTO (Reg. No. 709,110 registered December 27, 1960) and (Reg. No. 3,118,723 registered July 25, 2006). Complainant also owns registrations for the SUNBRELLAS mark with the USPTO (Reg. No. 2,028,355 registered January 7, 1997). Panels have continuously found that providing evidence of a registration for a trademark with a recognized trademark authority is sufficient to establish rights in a given mark. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”). Since both Complainant and Respondent are located in the United States, the Panel finds that Complainant has established rights in the SUNBRELLA and SUNBRELLAS marks under Policy ¶ 4(a)(i).
Respondent’s <sunbrellas.org> domain name displays Complainant’s entire SUNBRELLAS mark with the addition of the gTLD “.org.” A domain name is identical to a complainant’s mark when the domain name features a complainant’s mark in its entirety with the addition of a gTLD. See Top RX, Inc. v. Robert Catts d/b/a BayouSouth, FA 1008565 (Nat. Arb. Forum July 30, 2007) (finding the addition of the gTLD “.org” a functional change required to transform Complainant’s mark into a domain name, and thus not sufficient to distinguish a domain name from a complainant’s mark.). The Panel concludes that Respondent’s <sunbrellas.org> domain name is identical to complainant’s SUNBRELLAS mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the SUNBRELLA mark in any way. The WHOIS information lists “Chuck” as the registrant of the disputed domain name. A respondent is not commonly known by a domain name where there is no sufficient evidence on the record indicating that respondent is commonly known by that domain name. 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel concludes that Respondent is not commonly known by the <sunbrellas.org> domain name and has no rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).
Furthermore, it appears to the Panel that Respondent has never made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent uses the disputed domain name to resolve to a website displaying information about a government home refinancing program. Respondent is seeking to obtain personal and financial information in association with a phishing scheme. Using a confusingly similar or identical domain name to resolve to a website used to lure Internet users into a phishing scheme does not convey rights or legitimate interests to a respondent. See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). The Panel concludes that Respondent has no rights or legitimate interests in the <sunbrellas.org> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Even though Respondent's use of the website associated with the domain features links to unrelated mortgage refinancing services, this is not a bona fide use when offered under an identical domain name. See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
When a respondent’s actions do not fall directly under a particular circumstance set out in ¶ 4(b) the panel may look beyond ¶ 4(b) to the totality of the circumstances when analyzing bad faith. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”). The Panel may therefore choose to infer bad faith from the totality of the circumstances under Policy ¶ 4(a)(iii). Such is the case here, and this Panel so infers.
Respondent’s disputed domain name currently resolves to a website containing information about a government home refinancing program. It appears to the Panel that Respondent is attempting to use the goodwill associated with Complainant’s mark to direct Internet users to Respondent’s website in order to obtain personal and financial information in perpetration of a scam. The resolving website features the heading “Few Federal HARP 2.0 Refinance Program, Check Your Eligibility Below..” The website urges Internet users to fill out the “property information” section including “Street address,” “Property type,” “City” “State” and “Zip Code.” Additionally, Internet users are encouraged to fill out their current “Mortgage Information.” Previous panels, such as the panel in Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) determined that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name. The Panel therefore finds, in this dispute, that Respondent registered and is using the <sunbrellas.org> domain name in bad faith under Policy ¶ 4(a)(iii) by using the disputed domain name to run a phishing scheme.
It appears to the Panel, as argued by Complainant, that Respondent was fully aware of Complainant’s rights in the SUNBRELLA trademark at the time of registration of <sunbrellas.org> due to the degree of fame and goodwill of Complainant's SUNBRELLA marks. However, any arguments of bad faith based on constructive notice are irrelevant, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). Notwithstanding, as noted, the Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sunbrellas.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 30, 2014
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