INVISTA North America S.a.r.l. v. Giasuddin Ahmed / ClusterBD
Claim Number: FA1409001580773
Complainant is INVISTA North America S.a.r.l. (“Complainant”), represented by David S. Safran of Roberts Mlotkowski Safran & Cole P.C., Virginia, USA. Respondent is Giasuddin Ahmed / ClusterBD (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <invistasourcing.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 19, 2014; the National Arbitration Forum received payment on September 19, 2014.
On September 23, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <invistasourcing.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 30, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 2014 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@invistasourcing.com. Also on September 30, 2014, 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 formal response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a global company that operates several global businesses that serve many industries with value-added chemical, polymer and fiber products. Complainant has rights in the INVISTA mark registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,327,991 registered October 30, 2007). Complainant also owns numerous foreign trademark registrations for the INVISTA mark. See Canadian Intellectual Property Office “CIPO” (Reg. No. 722156 registered August 26, 2008); see also India’s Office of the Controller-General of Patents, Designs and Trademarks (Reg. No. 01542730 registered March 22, 2007). Complainant owns the <invista.com> domain name from which Complainant runs its business. Complainant established this domain in 1999 and has been using it continuously ever since.
Respondent’s <invistasourcing.com> domain name is confusingly similar to Complainant’s INVISTA mark. Respondent uses Complainant’s INVISTA mark in its entirety and adds the generic term “sourcing” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <invistasourcing.com> domain name. The WHOIS information for Respondent’s disputed domain name lists the registrant as “Giasuddin Ahmed.” Complainant further contends that Respondent is not affiliated with Complainant and has not authorized Respondent to use Complainant’s mark. Respondent’s disputed domain name resolves to a website indicating that Respondent sells goods including, but not limited to, “socks, towels, bed sheets, and pillowcases.”
Respondent registered and is using the <invistasourcing.com> domain name in bad faith. Respondent uses the disputed domain name to intentionally attract Internet users to Respondent’s website for commercial gain. Respondent does this by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s domain name. Given the fame of Complainant’s INVISTA mark when Respondent registered the disputed domain name, it is clear the Respondent had actual knowledge of Complainant’s mark.
B. Respondent
Respondent, Mr. Giasuddin Ahmed, says that he is the web developer of Invista Sourcing and that Mr. Zahid Mohammad is the owner of this company. Mr. Ahmed says that Invista Sourcing is a Buying House at Dhaka, Bangladesh with a trade license from the government of Bangladesh.
Mr. Mohammad states that Invista Sourcing is an “apparel / ready made garments buying agent” and is only located in Dhaka, Bangladesh. Invista Sourcing takes orders from buyers, as a broker between buyer and manufacturer for ready-made garments per the buyer’s requirements. Mr. Mohammad contends that “[t]he type of business of Invista Sourcing is totally different from Invista North America” and that Invista Sourcing is not a competitor of Invista North America.
Complainant, INVISTA North America S.a.r.l., is a global company that operates several global businesses that serve many industries with value-added chemical, polymer and fiber products. Complainant has rights in the INVISTA mark registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,327,991 registered October 30, 2007). Complainant also owns numerous foreign trademark registrations for the INVISTA mark. See Canadian Intellectual Property Office “CIPO” (Reg. No. 722156 registered August 26, 2008); see also India’s Office of the Controller-General of Patents, Designs and Trademarks (Reg. No. 01542730 registered March 22, 2007).
Respondent, Giasuddin Ahmed / ClusterBD, registered the <invistasourcing.com> domain name on January 21, 2013. Respondent’s disputed domain name resolves to a website where Invista Sourcing acts as a broker or manufacturer’s representative for ready-made garments.
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.
Preliminary Issue: Respondent’s Deficient Submission
Respondent did not submit a formal response, but on October 15, 2014, submitted emails after the deadline for submissions had passed. The emails have been deemed deficient by the National Arbitration Forum pursuant to Supplemental Rule 7. The Panel has the discretion to determine what amount of weight, if any, should be given to Respondent’s deficient submissions. See, e.g., Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a response which was one day late, and received before a panelist was appointed and any consideration made). The Panel will consider Respondent’s submissions.
Complainant has rights in the INVISTA mark under Policy ¶ 4(a)(i) through registration with the USPTO and numerous foreign trademark registrations. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’).”
Respondent’s <invistasourcing.com> domain name is confusingly similar to Complainant’s INVISTA mark under Policy ¶ 4(a)(i). Respondent uses Complainant’s INVISTA mark in its entirety and adds the generic term “sourcing” and the gTLD “.com.” See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
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 (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).
Respondent has no rights or legitimate interests in the <invistasourcing.com> domain name. The WHOIS information for Respondent’s disputed domain name lists the registrant as “Giasuddin Ahmed.” Respondent is not affiliated with Complainant and has not authorized Respondent to use Complainant’s mark. The Panel finds that Respondent is not commonly known by the <invistasourcing.com> domain name under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response). Nor has Respondent submitted any evidence that Invista Sourcing was commonly known by the disputed domain name prior to registration. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (Respondent was not commonly known by the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information where there was no evidence before the Panel that Respondent was commonly known by the disputed domain name prior to registration of the disputed domain name).
Respondent’s disputed domain name resolves to a website where Invista Sourcing acts as a broker or manufacturer’s representative for ready-made garments. Invista Sourcing’s goods are closely related to the goods of Complainant’s registrations which include pillows and fabric for pants, shirts, dresses, shorts, coats, jackets, shoes and hats as well as, fabric mattress covers, blankets, comforters, quilts, towels, and fabric for upholstery. Respondent’s use of a confusingly similar domain name to broker competing products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not create any legitimate interest in the domain name). However, even if Respondent’s brokered goods were to be considered unrelated to those of Complainant, Respondent’s use of a confusingly similar domain name to divert Internet users to his own website to broker or sell goods or services unrelated to Complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See True Value Company v. David Wetters, FA1112001420219 (Nat. Arb. Forum January 17, 2012) (finding that “using Complainant’s mark to offer unrelated products or services does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). ”).
Respondent registered and is using the <invistasourcing.com> domain name in bad faith under Policy ¶ 4(b)(iv). Respondent uses the disputed domain name to intentionally attract Internet users to Respondent’s website for commercial gain. Complainant states that Respondent does this by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s domain name. Use of a confusingly similar domain name to attract internet users for the purpose of commercial gain is evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Respondent registered the <invistasourcing.com> domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent had actual knowledge of Complainant’s INVISTA mark when Respondent registered the domain name. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <invistasourcing.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 11, 2014
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