Glen Raven, Inc. v. Custom Shade Sails
Claim Number: FA1507001629517
Complainant is Glen Raven, Inc. ("Complainant"), represented by Christopher Kelly of Wiley Rein LLP, Washington, D.C., United States. Respondent is Custom Shade Sails ("Respondent"), Missouri, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sunbrellashadesails.com>, registered with NETWORK SOLUTIONS, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 17, 2015; the Forum received payment on July 20, 2015.
On July 20, 2015, NETWORK SOLUTIONS, LLC. confirmed by email to the Forum that the <sunbrellashadesails.com> domain name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, LLC. 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 22, 2015, the Forum received an email message from Respondent regarding the content of the website to which the disputed domain name resolves.
On July 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 2015 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@sunbrellashadesails.com. Also on July 23, 2015, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a formal response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant manufactures performance fabrics, marketed under the SUNBRELLA trademark, for use in awnings, shade sails, tents, umbrellas, and many other products. Complainant is the leading manufacturer of awning fabric in the United States. Complainant promotes its SUNBRELLA fabrics both within the trade and directly to ultimate consumers. Complainant holds various registrations for the SUNBRELLA mark in the United States and other countries, dating back to 1960.
Complainant states that Respondent manufactures and sells shade sails made from Complainant's SUNBRELLA fabric. In 2011, Complainant granted Respondent's principal a limited right to use the SUNBRELLA mark under Complainant's brand license agreement. That agreement states, in relevant part:
1. [Complainant] grants to [Respondent] a limited, nonexclusive, nontransferrable, royalty-free license to use the SUNBRELLA Brand solely for the purpose of advertising and promoting Licensor's SUNBRELLA Brand fabrics and/or finished products containing Licensor's SUNBRELLA Brand fabrics as a featured ingredient or component.
. . . .
7. Licensee shall not use SUNBRELLA in or as part of any Internet domain name, URL, TLD, or e-mail address . . . .
Respondent registered the disputed domain name <sunbrellashadesails.com> on or about March 29, 2012. The domain name was registered in the name of a privacy service, and resolves to a website comprised of links to sellers of products containing Complainant's fabrics as well as competing products.
Based upon the foregoing, Complainant contends that the disputed domain name is confusingly similar to its SUNBRELLA mark; that Respondent has no rights or legitimate interests in the domain name; and that the domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
Respondent's email message to the Forum states as follows, in relevant part:
Our company owns sunbrellashadesails.com. The page is under construction and we found out that our service provider is putting ads on this website until it is finished.
I have called them to try to change this, but it is under "legal lock" so we can not make any changes as of now.
We make shade sails from Sunbrella fabric and was unaware of the links on the page while under construction.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used in bad faith.
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 formal 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.").
The disputed domain name <sunbrellashadesails.com> corresponds to Complainant's registered trademark SUNBRELLA, with the generic term "shade sails" (minus the space) and the ".com" top-level domain appended thereto. These alterations do not diminish the similarity between the domain name and Complainant's mark. See, e.g., Glen Raven, Inc. v. Cheryl Johnson, FA 1552248 (Nat. Arb. Forum May 5, 2014) (finding <sunbrella-boat-covers.com> confusingly similar to SUNBRELLA); 3M Co. v. Kittipron Na Chiang Mai, FA 1422435 (Nat. Arb. Forum Feb. 9, 2012) (finding <thinsulateskigloves.info> confusingly similar to THINSULATE). The Panel finds that the disputed domain name is confusingly similar to Complainant's SUNBRELLA mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark; it was registered in the name of a privacy service; and its only apparent use thus far has been for a website comprised of pay-per-click links, including links related to competitors of Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Ashley Furniture Industries, Inc. v. amir shirazi, FA 1628869 (Forum Aug. 17, 2015). Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent has registered a domain name that incorporates Complainant's mark. Based upon Respondent's email message to the Forum, it is possible that Respondent registered the domain name with the intention of using it solely to promote products made from Complainant's fabric (although, as Complainant notes, such use would violate Complainant's brand license agreement). However, the domain name was registered more than three years ago, and it still resolves to a registrar-provided page containing pay-per-click links, including links related to competitors of Complainant. Although the content of the page may not be under Respondent's direct control, a domain name registrant is normally deemed responsible for content appearing on a website at its domain name. See Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, D2014-0206 (WIPO Mar. 14, 2014) (citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 3.8 (2d ed. 2011), http://www.wipo.int/amc/en/domains/search/overview/). Respondent's attempt to shield its identity through the use of a privacy service, though not in itself conclusive, is another indicator of bad faith. See, e.g., Aktiebolaget Electrolux v. Domain Admin, whoisprotection.biz / Emrecan ARSLAN, D2015-0298 (WIPO Apr. 29, 2015); see also Ashley Furniture Industries, Inc., supra (finding bad faith where domain name was registered through privacy service and resolved to registrar-provided link page). Under the circumstances, the Panel finds that Respondent registered and used the disputed domain name in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sunbrellashadesails.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 19, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page