Glen Raven, Inc. v. cho gook hyung
Claim Number: FA1704001728024
Complainant is Glen Raven, Inc. (“Complainant”), represented by Christopher Kelly of Wiley Rein LLP, District of Columbia, USA. Respondent is cho gook hyung (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sunbrellakorea.com>, (‘the Domain Name’) registered with Gabia, Inc..
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 20, 2017; the Forum received payment on April 21, 2017. The Complaint was received in both Korean and English.
On April 23, 2017, Gabia, Inc. confirmed by e-mail to the Forum that the <sunbrellakorea.com> domain name is registered with Gabia, Inc. and that Respondent is the current registrant of the name. Gabia, Inc. has verified that Respondent is bound by the Gabia, Inc. 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 May 1, 2017, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of May 22, 2017 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@sunbrellakorea.com. Also on May 1, 2017, the Korean 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 May 25, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant’s contentions can be summarized as follows:
Complainant is the owner of trade mark registrations for SUNBRELLA, inter alia, in the USA and Korea, for performance fabrics such as awnings, marine products and beach umbrellas, having adopted and commenced use of the SUNBRELLA mark in 1959. It owns sunbrella.com amongst other domains containing SUNBRELLA, including country and territory specific domains such as sunbrellaMexico.com and SUNBRELLA.eu. It has successfully opposed or cancelled brella-formative marks in, inter alia, South Korea. The Republic of Korea has recognized the strength and fame of the SUNBRELLA mark in actions where Complainant’s rights were enforced against infringing marks.
The Domain Name is confusingly similar to Complainant’s SUNBRELLA mark, containing it in its entirety and simply adding the geographically descriptive term KOREA and the .com tld which are not sufficient to distinguish Respondent’s Domain Name from Complainant’s SUNBRELLA mark.
Respondent has no rights or legitimate interests in Complainant’s SUNBRELLA mark. Respondent is not affiliated with Complainant, has never used SUNBRELLA with a bona fide offering of goods and services and is not commonly known by the SUNBRELLA name. Complainant has not authorized any use of SUNBRELLA by Respondent. In fact, Complainant objected to Respondent’s registration and use of the Domain Name shortly after it was obtained by Respondent. Respondent did not answer this letter. Given the fame of Complainant’s marks Respondent no doubt knew of Complainant and its mark when the Domain Name was registered.
The Domain Name currently resolves to no active web site.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of trade mark registrations for SUNBRELLA, inter alia, in the USA and Korea, for performance fabrics such as awnings, marine products and beach umbrellas, having adopted and commenced use of the SUNBRELLA mark in 1959.
The Domain Name registered in 2016 does not resolve to an active website.
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 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.”).
Language of the Complaint
Pursuant to rule 11 (a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement notification having been served on Respondent and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Identical or Confusingly Similar
The Domain Name consists of Complainant’s SUNBRELLA mark (which is registered in USA and Korea, inter alia for performance fabrics and has been used since at least 1959), the geographical term ‘Korea’ and the gTLD .com. Previous panels have found confusing similarity when a respondent merely adds a geographical term to a Complainant's mark. See Ticketmaster Corp. v Kumar, FA 744436 (Forum Aug 17, 2006)(finding that the indiaticketmaster.com domain name was confusingly similar to Complainant’s TICKETMASTER mark). The Panel agrees that the addition of the geographical term ‘Korea’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.
The gTLD .com does not serve to distinguish the Domain Name from the SUNBRELLA mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
There is no evidence of any use by Respondent of the Domain Name before the panel. However, Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to register or use Complainant’s mark in a domain name which in the circumstances of Complainant’s longstanding reputation has not been explained. Respondent is not commonly known by the Domain Name upon reference to the WhoIs data. See Guardair Corporation v Pablo Palermo, FA 1407001571060 (Forum Aug 28, 2014) for support that this may be used as reference. Inactive use may serve as a demonstration that a respondent lacks rights and a legitimate interest. See Bloomberg LP v SC Media Servs & Info. SRL, FA 296583 (Forum Sept. 2, 2004) As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
No use has been made of the name by Respondent since registration and it has not spoken up that it was not aware of Complainant’s rights or that the Domain Name would not cause the natural confusion which would be expected in use given those rights. SUNBRELLA is an invented word and Complainant does business in Korea where Respondent is based.
The Panel finds it more likely than not that Respondent knew about Complainant and its business at the time of registration and the likely consequences of any use of the Domain Name in terms of confusion on the Internet. See Phat Fashions LLC v Kruger, FA 96193 (Forum Dec 29, 2000)(finding bad faith under Policy 4(b)(iv) even though respondent has not actually used the domain name because’ it makes no sense whatever to wait until it actually uses the name when inevitably when there is such use it will create the confusion described in the Policy.)
Further passive use itself can be bad faith registration and use. See Am. Broad. Cos. Inc v Sech, FA 893427 (Forum Feb 28, 2007)(concluding that respondent’s failure to make active use of its domain name in the three months after its registration indicated that he respondent registered the name in bad faith).
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sunbrellakorea.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page