Glen Raven, Inc. v. mustafa yaman / YAMANB RANDA SAN.TC.LTD.ST
Claim Number: FA1609001694220
Complainant is Glen Raven, Inc. (“Complainant”), represented by Christopher Kelly of Wiley Rein LLP, District of Columbia, USA. Respondent is mustafa yaman / YAMANB RANDA SAN.TC.LTD.ST (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sunbrella.ist> and <sunbrella.istanbul>, registered with GoDaddy.com, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 16, 2016; the Forum received payment on September 19, 2016.
On September 19, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <sunbrella.ist> and <sunbrella.istanbul> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 September 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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@sunbrella.ist, postmaster@sunbrella.istanbul. Also on September 20, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant has rights in respect of the SUNBRELLA mark and that it uses the mark in connection with its business as a leading manufacturer of fabrics sold by the piece. Complainant has registered the SUNBRELLA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 709,110, registered Dec. 27, 1960), as well as with the Turkish trademark authority (“Marka No” 129,367, issued Nov. 7, 1991). See Compl., at Attached Ex. A. Respondent’s <sunbrella.ist> and <sunbrella.istanbul> are confusingly similar to the SUNBRELLA mark because they incorporate the mark entirely and merely add the geographical “.ist” or “.istanbul” top-level domains (“TLDs”).
Respondent has no rights or legitimate interest in <sunbrella.ist> and <sunbrella.istanbul>. Respondent is not affiliated with Complainant, nor is Respondent commonly known by <sunbrella.ist> and <sunbrella.istanbul>. Furthermore, Respondent has not used the domain names in connection with any bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent registered and used <sunbrella.ist> and <sunbrella.istanbul> in bad faith. Respondent operates a business called “Yaman Tente” which sells a variety of awnings and related equipment that competes with Complainant. The domain names link to Respondent’s website, <yamantente.com>. In doing so, Respondent profits through the goodwill associated with the SUNBRELLA mark and likely confuses Internet users, indicating Policy ¶ 4(b)(iv) bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant Is a United States company engaged in the business of a leading manufacturer of fabrics.
2. Complainant has registered the SUNBRELLA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 709,110, registered Dec. 27, 1960), as well as with the Turkish trademark authority (“Marka No” 129,367, issued Nov. 7, 1991).
3. Respondent registered the <sunbrella.ist> and <sunbrella.istanbul> domain names on May 12, 2016.
4. The domain names are linked to Respondent’s website, <yamantente.com>, which promotes products which compete with Complainant’s products and by that means Respondent profits through the goodwill associated with the SUNBRELLA mark and likely confuses Internet users.
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(f), 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 (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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant asserts that it has rights in the SUNBRELLA mark and that it uses the mark in connection with its business as a leading manufacturer of fabrics. Complainant submits it has registered the SUNBRELLA mark with the USPTO (e.g., Reg. No. 709,110, registered Dec. 27, 1960), as well as with the Turkish trademark authority (“Marka No” 129,367, issued Nov. 7, 1991) by evidence which the Panel accepts. See Compl., at Attached Ex. A. There has been uniform agreement that under the UDRP, valid trademark registrations are sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark.). As Complainant has given evidence of rights with two trademark agencies, the Panel agrees that it has adequately represented its rights in the SUNBRELLA mark under Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed <sunbrella.ist> and <sunbrella.istanbul> domain names are identical or confusingly similar to Complainant’s SUNBRELLA mark. Complainant argues that Respondent’s <sunbrella.ist> and <sunbrella.istanbul> domain names are confusingly similar to the SUNBRELLA mark because they incorporate the mark entirely and merely add the geographical “.ist” or “.istanbul” TLDs. Top level domains are required elements in domain name syntax, and therefore have generally been disregarded for present purposes. See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). Additionally, TLDs have been considered to heighten confusing similarity where descriptive of a complainant in some way. See Robert Downey Jr. v. Shashank Agarwal, FA 1581490 (Forum Nov. 10, 2014) (finding that the “.actor” addition to Complainant’s ROBERT DOWNEY JR. mark enhances the confusion in light of the fact that Complainant is a notable actor.). In light of Complainant’s trademark registrations in Turkey, the Panel finds the incorporation of geographic TLDs in fact increases confusing similarity, especially while the SUNBRELLA mark is included entirely without alteration in the first portion of <sunbrella.ist> and <sunbrella.istanbul>, thereby implying that the domain names relate to the activities of Complainant conducted in Instanbul and Turkey generally. The domain names are therefore confusingly similar to the SUNBRELLA mark.
Complainant has thus made out the first of the three elements that it must establish.
Rights or Legitimate Interests
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SUNBRELLA mark and to use it in its domain names;
(b) Respondent registered the disputed domain names on May 12, 2016;
(c) The domain names are linked to Respondent’s website, <yamantente.com> that promotes products that compete with those of Complainant and by that means Respondent profits through the goodwill associated with the SUNBRELLA mark and likely confuses Internet users;
(d) Complainant submits that Respondent engaged in the aforementioned activities without the permission or authority of Complainant and has adduced evidence to that effect which the Panel accepts. Complainant argues that Respondent has no rights or legitimate interest in the <sunbrella.ist> and <sunbrella.istanbul> domain names. Complainant submits that Respondent is not affiliated with Complainant, nor is Respondent commonly known as <sunbrella.ist> and <sunbrella.istanbul>. The Panel notes that the WHOIS lists “mustafa yaman / YAMANB RANDA SAN.TC.LTD.ST” as registrant of record for the domain names, and Respondent has not responded to Complainant’s allegations other than in the email correspondence referred to below. Lack of evidence contrary to WHOIS listings has been considered adequate in finding for complainant under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Therefore, the Panel agrees that Respondent is not commonly known by the <sunbrella.ist> and <sunbrella.istanbul> domain names under Policy ¶ 4(c)(ii);
(e) Complainant submits that Respondent has not used the domain names in connection with any bona fide offering of goods or services or any legitimate noncommercial or fair use. Complainant submits that Respondent uses the disputed domain names to resolve to Respondent’s <yamantente.com> website which offers a variety of awning fabrics, including those that compete with Complainant’s offerings. The Panel notes that Complainant has not included any exhibits or other evidence to support Respondent’s purported use of the disputed domain names. However, Complainant has certified the contents of its Complaint and the Panel has examined Respondent’s website to which the disputed domain names resolve. Panels have held that using a domain name to sell competing products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use). As the Panel concludes from the totality of the evidence that Respondent has been using the domain names in a competing manner it finds that Respondent’s use is not within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
(f) Respondent has not filed a Response but has sent some emails to the Forum that may be taken as a statement of Respondent’s position in this matter. The emails appear to state, first, that the domain names were acquired under the two TLDs “.istanbul” and “.inst” and pursuant to a preferential right given to “ proprietor companies” to acquire domain names in those extensions before their general availability. Respondent therefore may well have been entitled to register domain names in those extensions. But that right is subject necessarily to the dispute resolution process to which the domain names are subject and do not give a right to embody in a domain name another party’s trademark or to create a domain name that is identical or confusingly similar to another party’s trademark. The mere availability of the domain names therefore does not confer a right or legitimate interest in the disputed domain names. Another email recounts how Respondent became acquainted with “the Sunbrella Brand” and how it has “used” Sunbrella products for 16 years. Respondent does not allege, however, that it was an agent or distributor of Complainant or that it had any right to use the SUNBRELLA name or mark in a domain name or in any other manner. In their totality, therefore, the emails do not give Respondent any rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered and used the <sunbrella.ist> and <sunbrella.istanbul> domain names in bad faith. To support this submission Complainant points to Respondent’s operation of a business called “Yaman Tente” which sells a variety of awnings and related equipment that competes with Complainant. The domain names link to Respondent’s website <yamantente.com>. In doing so, Respondent profits through the goodwill associated with the SUNBRELLA mark and likely confuses Internet users, indicating Policy ¶ 4(b)(iv) bad faith. Again, Complainant has not included any evidence or documentation evidencing the claimed use of the disputed domain names. However, the Panel has examined Respondent’s website to which the disputed domain names resolve. Moreover, panels have concluded that a respondent using a confusingly similar disputed domain name to sell goods that compete with a complainant’s goods does so in bad faith. See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark). As Complainant has certified the submissions in its Complaint and having regard to the totality of the evidence, the Panel finds that Respondent has used the disputed domain names to sell products that compete with those of Complainant. The Panel therefore finds that Respondent has registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <sunbrella.ist> and <sunbrella.istanbul> domain names using the SUNBRELLA mark and in view of the conduct that Respondent engaged in when using the domain names to promote competing products, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sunbrella.ist> and <sunbrella.istanbul> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: October 19, 2016
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