Showa Glove, Co. v. Corp New Ventures Services
Claim Number: FA1602001659105
Complainant is Showa Glove, Co. (“Complainant”), represented by Katrina M. Quicker of Baker & Hostetler LLP, Georgia, USA. Respondent is Corp New Ventures Services (“Respondent”), represented by Matt McClure, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <showa-glove.com>, registered with Register.com, Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically February 1, 2016; the Forum received payment February 1, 2016.
On February 2, 2016, Register.com, Inc. confirmed by e-mail to the Forum that the <showa-glove.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. verified that Respondent is bound by the Register.com, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 29, 2016, 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@showa-glove.com. Also on February 3, 2016, 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.
The Forum received a timely Response and determined it to be complete February 29, 2016.
Additional Communications were received from each of the two parties. These, while reviewed, are not being treated as Supplemental Responses pursuant to Rule 7.
On March 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant’s Allegations in this Proceeding:
Complainant uses the SHOWA GLOVE mark in connection with its business as a leader in the glove and hand-protection industry. Complainant registered its mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,499,261, register on Sep. 9, 2008), which establishes rights in the mark. Respondent’s <showa-glove.com> domain name is confusingly similar to the SHOWA GLOVE mark inasmuch as it incorporates the mark in its entirety while adding a hyphen between the words and the generic top level domain (“gTLD”) “.com.”
Respondent is not commonly known by the <showa-glove.com> domain name because the record is void of evidence to show that it is known as such. Further, Respondent’s use of the domain, to resolve to a website displaying links to Complainant’s competitors’ products (links include: “Showa Gloves,” “Chemical Resistant Gloves,” and “Nitrile Gloves”), and Respondent’s willingness to sell the domain (“This domain name may be for sale. Please click here to inquire.”), indicate that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. Compl., at Attached Ex. 5.
Respondent registered and is using the disputed <showa-glove.com> domain name in bad faith. First, Respondent’s willingness to sell the disputed domain demonstrates bad faith. Second, Respondent disrupts Complainant’s business through using Complainant’s mark to advertise the goods of Complainant’s competitors. Third, Respondent is using the similarity between the <showa-glove.com> domain and the SHOWA GLOVE mark to attract and profit from Internet users who believe the domain is affiliated with Complainant. Lastly, Respondent had actual knowledge of the SHOWA GLOVE mark and Complainant’s rights therein when registering and using the mark.
Respondent’s Contentions in Response in this Proceeding:
Respondent submitted a formal response stating a willingness to transfer the disputed domain name to Complainant. The Panel notes that Respondent registered the <showa-glove.com> domain name August 2, 2015, some seven years after Complainant registered its mark.
Additional Submission by Complainant in this Proceeding:
Complainant reasserts arguments brought forth in the initial complaint. Complainant further contends that it did not act in bad faith by not accepting Respondent’s consent to transfer with prejudice and the caveat of foregoing a finding of fault, liability, or bad faith.
PRELIMINARY ISSUE – CONSENT TO TRANSFER
The Forum received correspondence as well as a formal Response from Respondent, identified in this proceeding as “Correspondence – Respondent,” and “Response” in which Respondent consents to the transfer of the <showa-glove.com> domain name, stating: “We are willing to transfer the domain to your client pursuant to your agreement that the transfer is with prejudice and without any admission of any fault, liability, or bad faith by New Ventures Services. Alternatively, we would be more than happy to delete it as well.”
As a result, the Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel may, absent other factors, forego the traditional UDRP analysis and order an immediate transfer of the <showa-glove.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Here, however, the Panel finds that the parties are not in agreement and Complainant did not implicitly consent in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel therefore finds that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, this Panel as well finds that the rights of the parties require the Panel to analyze the case under the elements of the UDRP and to determined the case on the merits..
Complainant established that it has rights and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent never had rights or legitimate interests in Complainant’s mark contained in its entirety within the disputed domain name Respondent registered and thereafter used without right by Respondent to further its own gain.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name 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 Complainant to 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.
Given Respondent's Response, the Panel shall decide this administrative proceeding on the parties’ respective presentations to the extent both addressed the issues in this Proceeding. However, where Respondent did not address the issues and Complainant's representations are undisputed, then pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. Where allegations are not addressed, the Panel may 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.”).
Identical or Confusingly Similar:
Complainant relates that it uses the SHOWA GLOVE mark in connection with its business as a leader in the glove and hand-protection industry. Complainant provides evidence that it registered the mark USPTO (e.g., Reg. No. 3,499,261, register on Sep. 9, 2008), which establishes rights in the mark. See Compl., at Ex. 3. Panels have routinely held, and this Panel holds, that a complainant has established rights in a mark based on registration of mark with the USPTO. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s <showa-glove.com> domain name is confusingly similar to the SHOWA GLOVE mark and that it incorporates the mark in its entirety while adding a hyphen between the words and the generic top level domain (“gTLD”) “.com.” The addition of a hyphen between the words in a mark has been found by previous panels not to overcome a finding of confusing similarity. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Panels consistently find that a domain is identical to a mark when the domain only differs through the addition of a gTLD. See SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”). This Panel finds that the <showa-glove.com> domain is confusingly similar to the SHOWA GLOVE mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to the Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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.”).
Complainant contends that Complainant has not given Respondent permission or license to use the SHOWA GLOVES mark in any manner, and that Respondent has not been commonly known by the disputed domain name. WHOIS information associated with the disputed domain name lists “Corp New Ventures Services.” See Compl., at Attached Ex. 1. Panels have found that a respondent is not commonly known by a disputed domain based on WHOIS information and a lack of contradictory information in the record. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The Panel thus finds that Respondent has not been commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant next contends that Respondent’s use of the domain, to resolve to a website displaying links to Complainant’s competitors’ products, and Respondent’s willingness to sell the domain, indicate that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed <showa-glove.com> domain appears to display various click-through advertisements with titles such as, “Showa Gloves,” “Chemical Resistant Gloves,” and “Nitrile Gloves.” See Compl., at Attached Ex. 5. Panels have held that using a disputed domain to sell a complainant’s or a complainant’s competitors’ products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”). This Panel thus finds that Respondent’s use does not fall within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Additionally, Complainant urges that Respondent offered the disputed domain name for sale to Complainant, which is additional evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name. See Compl., at Attached Ex. 5. The Panel agrees that such an offer indicates a further lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant believes Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). First, Complainant notes that Respondent offered to sell Complainant the disputed domain name. The Panel notes that Complainant’s attached Exhibit 5 supports this contention and agrees that such an offer supports findings of bad faith under Policy ¶ 4(b)(i). 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).”).
Complainant argues that Respondent uses the disputed domain name to redirect Internet users to its own website, through which Respondent purportedly hosts hyperlinks to businesses that compete with Complainant. See Compl., at Attached Ex. 5 (links include, “Showa Gloves,” “Chemical Resistant Gloves,” and “Nitrile Gloves”). Such behavior also supports findings of a respondent’s bad faith under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Consequently, the Panel finds that Respondent engaged in bad faith disruption under Policy ¶ 4(b)(iii).
Additionally, Complainant alleges that Respondent’s use of the confusingly similar disputed domain name to attract confused Internet users to its own website at which Respondent offers competitive hyperlinks presumably for commercial gain, demonstrates Respondent’s bad faith according to Policy ¶ 4(b)(iv). Prior panels have agreed with similar arguments. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). The Panel agrees with Complainant’s argument here and finds that Respondent acted in bad faith under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the SHOWA GLOVE mark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. While constructive notice is generally not sufficient to support a finding of bad faith, the Panel here finds that Respondent had actual knowledge of Complainant's mark and thus registered the disputed confusingly similar domain name in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <showa-glove.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 21, 2016.
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