Glen Raven, Inc. v. Monica Bogen
Claim Number: FA1407001571692
Complainant is Glen Raven, Inc. (“Complainant”), represented by Christopher Kelly of Wiley Rein LLP, Washington D.C., USA. Respondent is Monica Bogen (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sunbrella-mexico.com> (“the Domain Name”), registered with Melbourne IT 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.
Alan L Limbury, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 25, 2014; the National Arbitration Forum received payment on July 28, 2014.
On July 28, 2014, Melbourne IT Ltd confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the name. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT Ltd 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 July 29, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 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@sunbrella-mexico.com. Also on July 29, 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.
A timely Response from Monica V. Felix Diaz, whom the Panelist takes to be the Respondent, was received and determined to be complete on August 18, 2014.
On August 25, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Alan L Limbury as Panelist.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant manufactures and sells fabrics for a wide variety of purposes under the brand SUNBRELLA, which has become well known. It is the registrant of several United States SUNBRELLA trademarks dating from 1960, including No. 3,731,230, “a stylized umbrella design and the word ‘Sunbrella’ all in orange”, registered on December 29, 2009 (“the 230 mark”).
Respondent operates an interior design business under the name “Studio 1” and sells Complainant’s SUNBRELLA fabrics.
On June 24, 2009 Respondent, on behalf of Studio 1, registered with the Complainant’s “Sunbrella Identity” website and thereby obtained a license from the Complainant to use the Complainant’s SUNBRELLA brand for the purpose of advertising and promoting Complainant’s SUNBRELLA brand products pursuant to the terms of a “Sunbrella Brand License Agreement” which specifically provided in clause 7:
“Licensee shall not use SUNBRELLA in or as part of any Internet domain name, e-mail address or in the operation of any Internet web site”.
On March 7, 2010 Respondent registered the Domain Name. The Domain Name is confusingly similar to Complainant’s SUNBRELLA mark and Respondent has no rights or legitimate interests in the Domain Name, which was registered and is being used in bad faith.
As to legitimacy and bad faith, Complainant relies on the terms of the License Agreement and says Respondent is fully aware that she is not authorized or licensed by Complainant to use Complainant’s SUNBRELLA trademark as part of any domain name and was fully aware of Complainant’s trademark rights when the Domain Name was registered. Complainant says it is a well-established proposition that registration of a domain name in violation of the terms of a license agreement is evidence of bad faith use and registration: Dermalogica, Inc. and The International Dermal Institute, Inc. v Barnab, Inc., FA719562 (Nat. Arb. Forum Jul. 10, 2006) and Hewlett-Packard Co. v. OfficeOnWeb Ltd., FA151537 (Nat. Arb. Forum Oct. 24, 2003).
Complainant’s attempts to resolve this matter amicably have been unsuccessful. Accordingly, Complainant seeks the transfer to it of the Domain Name.
B. Respondent
Respondent denies Complainant’s allegations and says the Domain Name was registered in early 2010 in response to insistent requests from the public wishing to find fabrics by name in Mexico and for the legitimate purpose of informing consumers as to quality fabrics. This use does not infringe on Complainant’s rights, but instead benefits Complainant through market exposure. The use further constitutes a justifiable commercial purpose.
Respondent has not acted in bad faith. Respondent’s use of the Domain Name does not infringe on the mark. Instead it serves to further develop Complainant’s reach in Mexico. Adding “-mexico” to the mark shows that the product may be found with a clear indication of proximity. Respondent is “loyal to the brand we registered”.
Respondent invokes the “trademark fair use doctrine of the registered domain name”, which permits limited and unprejudiced use of the material without requiring permission from the rights holder given its positive impact on the mark and the market.
To illustrate Respondent’s contention that since 1987, Respondent has become known as “The Sunbrella in Mexico People”, Respondent annexes photographs showing motor vehicles emblazoned with the 230 Mark, followed by the web address reached by means of the Domain Name and other contact details in Mexico for the Respondent.
Respondent requests a finding of reverse domain-name hijacking.
Complainant has established all the elements required to entitle it to relief.
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.
Complainant has demonstrated that it has rights in the SUNBRELLA mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812. The “.com” suffix may be ignored: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
Here, the addition of the “-mexico” suffix to the SUNBRELLA mark does not escape a finding of confusing similarity, since the overall significance of the Domain Name, as put forward by Respondent, is to convey the availability in Mexico of SUNBRELLA branded products.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The substance of Respondent’s case in this regard is that, before any notice to her of this dispute, as an authorized reseller of Complainant’s SUNBRELLA branded products, licensed to use Complainant’s SUNBRELLA mark, she has made bona fide use of the Domain Name in promoting Complainant’s fabrics and goods made using those fabrics in Mexico, and that this has been to the advantage of Complainant.
The leading UDRP case setting out the “minimum requirements” for use by an authorized reseller of a domain name that is identical or confusingly similar to the complainant’s trademark to be regarded as bona fide is Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.D2001-0903, as follows (omitting citations):
(i) Respondent must actually be offering the goods or services at issue.
(ii) Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.
(iii) The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.
(iv) The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Neither Complainant nor Respondent provided a printout of Respondent’s website. In determining that it is appropriate for this Panel to visit Respondent’s website and that it is unnecessary to request or allow additional submissions, the Panel has had regard to the decision in Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V., WIPO Case No. D2011-0057, in which the 3-member panel noted that UDRP panels frequently avail themselves of resources not supplied or mentioned by the parties, when these are publicly available and have a high degree of credibility for a relevant purpose, including websites associated with the domain names, to establish how and by whom the domain names are used:
“In most cases, the panel’s reference to sources such as these will not require exercising the panel’s discretion under Rules, paragraph 12 to invite “statements or documents” on the subject from the parties. The panel will use these resources, for example, to interpret and apply the Policy and Rules, establish relevant legal principles, fill in the factual gaps left by a silent respondent, or test the credibility and completeness of the parties’ statements in the UDRP proceeding. The Policy is designed to provide an administrative procedure for the speedy and inexpensive resolution of a particular kind of dispute, offering limited remedies that are not exclusive of recourse to judicial proceedings. Thus, unlike civil litigation and some arbitration procedures, the Policy and Rules do not contemplate a discovery process, successive rounds of pleading and motions, or evidentiary hearings. Accordingly, UDRP panels should be reluctant to request or allow additional submissions that would substantially delay the proceedings or burden the parties. It is not normally necessary or appropriate in the interest of fair process or natural justice to delay the UDRP proceeding so that the parties can comment on legal or factual materials that were in existence and foreseeably relevant to their positions when they prepared the complaint or response.” Ibid.
Accordingly, on September 3, 2014 the Panelist visited Respondent’s website at <www.sunbrella-mexico.com>. The “Home” page prominently displays Complainant’s 230 mark and the page as a whole adopts the same orange colour as the mark. Complainant’s products are clearly promoted. However, other brands of fabrics are also promoted, by way of the statement: “SUNBRELLA, MARIA FLORA IT. SOLARIUM, BELLA-DURA, SOLARIS, PHIFERTEX, FERRARI, HERCULITE, DICKSON,VIVA SOLEIL, & ALL FAMOUS BRAND OUTDOOR FABRICS.” Likewise, the “Services” page contains the prominent statement: “SUNBRELLA, PHIFERTEX, FERRARI, DICKSON, HERCULITE & all major Outdoor Textiles. DISTRIBUTORS for MEXICO & THE WORLD. will ship world wide.” There is no disclosure of the relationship between Respondent and Complainant.
Hence Respondent’s use of the Domain Name meets the first Oki Data requirement for bona fide use but not the second or third requirements.
Further, the Panel notes that in Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) the panel found no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors.
As to Respondent’s argument that she is making fair use of the SUNBRELLA mark in the Domain Name in promoting Complainant’s goods, the “fair use” doctrine allows a mark having an ordinary meaning to be used if it is used in its common usage and not as an identifier of goods or services. See, e.g., KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004). Here the term “sunbrella” has no ordinary meaning, as it is a coined term. As such, even assuming that the doctrine has a place in the UDRP, the “fair use” doctrine is inapplicable in this case.
The Panel finds that Respondent has failed to rebut Complainant’s prima face case of absence of rights or legitimate interests in the Domain Name.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The Panel finds that none of the circumstances (i), (ii) or (iii) are present here.
However, Respondent was fully aware of Complainant’s trademark rights when she registered the Domain Name and knew that such registration was expressly prohibited by the License Agreement and was not otherwise permitted by Complainant. In those circumstances the Panel finds Respondent registered the Domain Name in bad faith.
As noted above, the Domain Name is being used by Respondent to promote not only Complainant’s goods but also those of Complainant’s competitors. These circumstances lead to the conclusion that, irrespective of the benefit that might have accrued to Complainant from Respondent’s use of the Domain Name to promote Complainant’s goods, the Domain Name is being used in bad faith. Further, Internet users alighting at Respondent’s website are likely to be confused into the belief that Complainant endorses the promotion of those other brands. This must have been intended by Respondent. Accordingly circumstance (iv) is present.
The Panel finds that the Domain Name was registered and is being used in bad faith.
Complainant has established this element.
Reverse Domain Name Hijacking
Since Complainant has established all three elements required, no question of reverse domain name hijacking arises.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the Domain Name <sunbrella-mexico.com> be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Alan L Limbury, Panelist
Dated: September 3, 2014
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