DECISION

 

David Kahng / Davek Accessories, Inc. v. INNOVENTION ENTERPRISES LTD.

Claim Number: FA1710001751732

 

PARTIES

Complainant is David Kahng / Davek Accessories, Inc. (“Complainant”), New York, USA.  Respondent is INNOVENTION ENTERPRISES LTD.

(“Respondent”), represented by Erin Stamper of Russell Friedman & Associates, New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <davekumbrella.com>, registered with Network Solutions, LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on October 2, 2017; the Forum received payment on October 2, 2017.

 

On October 2, 2017, Network Solutions, LLC confirmed by e-mail to the Forum that the <davekumbrella.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 October 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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@davekumbrella.com.  Also on October 5, 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 November 1, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    Complainant owns and operates a website, <davekny.com>, that sells Davek Umbrellas, a line of premium umbrellas. The website has been in operation since 2006.  Complainant registered the DAVEK mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,132,909, registered Aug. 22, 2006). See Compl. Annex A. Respondent’s <davekumbrella.com> domain name confusingly similar to Complainant’s mark in which it has rights.

2.    Respondent has no rights or legitimate interests in the <davekumbrella.com> domain name. Respondent has no relation or affiliation with Complainant. Respondent uses the domain name to redirect users to a different website displaying the title “Uncle Sams Umbrellas,” and offers competing umbrellas. See Compl. Annex C.

3.    Respondent registered and uses the <davekumbrella.com> domain name in bad faith. Respondent has used the domain name to intentionally confuse and attract customers who are seeking Complainant’s brand of umbrellas to a competitor website <unclesamsumbrella.com>, in an effort to sell them a competing product. See Compl. Annex C.

 

B.   Respondent:

1.    Respondent failed to submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <davekumbrella.com> domain name is confusingly similar to Complainant’s DAVEK mark.

2.    Respondent does not have any rights or legitimate interests in the <davekumbrella.com> domain name.

3.    Respondent registered or used the <davekumbrella.com> domain name in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant claims it registered the DAVEK mark with the USPTO (e.g. Reg. No. 3,132,909, registered Aug. 22, 2006). See Compl. Annex A. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the DAVEK mark.

 

Complainant next argues that Respondent’s <davekumbrella.com> domain name is confusingly similar to Complainant’s mark.  The Panel agrees and finds the disputed domain name to be confusingly similar to Complainant’s mark.

 

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 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.”).

 

Complainant contends that Respondent has no rights or legitimate interests in the <davekumbrella.com> domain name. Complainant alleges that Respondent has no relation or affiliation with Complainant. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The Panel agrees that Complainant has not permitted Respondent to use the DAVEK mark in any way, demonstrating Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).

 

Further, Complainant argues that Respondent uses the disputed domain name to offer goods in direct competition with Complainant. Using a confusingly similar domain name that resolves in a webpage which directly competes with Complainant fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant provides a screenshot of the resolving webpage, which displays the title “Uncle Sams Umbrellas” and appears to offer umbrellas for sale. See Compl. Annex C. Accordingly, the Panel finds that Respondent offers competing goods in the form of umbrellas, and thus fails to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the <davekumbrella.com> domain name in bad faith by using the domain name to intentionally confuse and attract customers who are seeking Complainant’s brand of umbrellas to a competitor website in an effort to sell them a competing product. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As noted previously, Complainant’s provided screenshot shows that the resolving website displays the title “Uncle Sams Umbrellas” and purports to offer umbrellas for sale. See Compl. Annex C. Accordingly, the Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

 

Accordingly, it is Ordered that the <davekumbrella.com> domain name be TRANSFERRED from Respondent to Complainant.

           

John J. Upchurch, Panelist

Dated:  November 22, 2017