Glen Raven, Inc. v. Dharshinee Naidu
Claim Number: FA1704001728240
Complainant is Glen Raven, Inc. (“Complainant”), represented by Christopher Kelly of Wiley Rein LLP, District of Columbia, USA. Respondent is Dharshinee Naidu (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sunbrelladrapes.com>, registered with eNom, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 21, 2017; the Forum received payment on April 21, 2017.
On April 21, 2017, eNom, LLC confirmed by e-mail to the Forum that the <sunbrelladrapes.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 April 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 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@sunbrelladrapes.com. Also on April 25, 2017, 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 May 25, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, operating under the mark SUNBRELLA, is a manufacturer and marketer of fabrics for, among other things, awnings and draperies.
Complainant holds a registration for the SUNBRELLA trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,652,524, registered July 7, 2009.
Respondent registered the domain name <sunbrelladrapes.com> on or about February 8, 2017.
The domain name is confusingly similar to Complainant’s SUNBRELLA mark.
Respondent has not been commonly known by the domain name.
Complainant has not granted Respondent a license or other form of permission to use the SUNBRELLA mark for any purpose.
Respondent is not using the domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use.
Rather, the domain name appears to resolve to a revenue-generating portal site.
Respondent is attempting, for commercial gain, to attract Internet users to the website resolving from the domain name by creating confusion among them as to the possibility of Complainant’s sponsorship of or affiliation with it.
Respondent has no rights to or legitimate interests in the domain name.
Respondent knew of Complainant’s rights in the SUNBRELLA mark when it registered the domain name.
Respondent registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the SUNBRELLA trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with the USPTO. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum August 4, 2015) (finding that a UDRP complainant’s USPTO registration for the HAAS mark sufficiently demonstrated its rights in its mark under Policy ¶ 4(a)(i)).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent's <sunbrelladrapes.com> domain name is confusingly similar to Complainant's SUNBRELLA trademark. The domain name contains the mark in its entirety, merely adding the generic term “drapes”, which relates to an aspect of Complainant’s business, plus the generic Top Level Domain (“gTLD”) ".com." These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions to a UDRP complainant’s DURACELL mark of the term “batteries,” which described that complainant’s products, and of the generic Top Level Domain “.com” were insufficient to distinguish a respondent’s <duracellbatteries.com> domain name from that mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <sunbrelladrapes.com> domain name, and that Complainant has not authorized Respondent’s use of the SUNBRELLA mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Dharshinee Naidu,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (finding that a respondent was not commonly known by a disputed domain name, and therefore failed to show that it had rights to or legitimate interests in that domain name within the meaning of Policy ¶ 4(c)(ii), where the relevant WHOIS information did not indicate that that respondent was commonly known by the domain name, and where a UDRP complainant had not licensed or otherwise authorized that respondent to use its mark). To the same effect, see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a UDRP respondent was not commonly known by a disputed domain name where a complainant had not authorized that respondent to incorporate its trademark in a domain name).
We next observe that Complainant further asserts, without objection from Respondent, that Respondent uses the <sunbrelladrapes.com> domain name to resolve to a revenue generating portal at which Respondent attempts, for commercial gain, to attract Internet users to the resolving website by creating confusion among them as to the possibility of Complainant’s sponsorship of or affiliation with it. This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See, for example, Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum September 30, 2003):
Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent employs the challenged
<sunbrelladrapes.com> domain name, which we have found to be confusingly similar to Complainant’s SUNBRELLA trademark, to profit financially from the confusion thus caused among Internet users as to the possibility of Complainant’s affiliation with or sponsorship of the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent diverted to its own website Internet users searching for the website of a UDRP complainant, likely profiting in the process).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the SUNBRELLA mark when it registered the disputed <sunbrelladrapes.com> domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (finding that where the circumstances indicate that a respondent had actual knowledge of a UDRP complainant's mark when it registered a challenged domain name, a panels may find that the domain name was registered in bad faith). See also Yahoo! Inc. v. Butler, FA 744444 (Forum August 17, 2006) (finding bad faith registration of a domain name where a respondent was "well-aware of the complainant's … mark at the time of registration").
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <sunbrelladrapes.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 6, 2017
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