Sky Shades Holdings LLC v. Maverick Innovations
Claim Number: FA0704000953493
Complainant is Sky Shades Holdings LLC (“Complainant”), represented by Bridget
C. Heffernan, of Allen, Dyer, Doppelt, Milbrath & Gilchrist,
P.A.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <skyshades.com>, registered with Network Solutions, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 4, 2007.
On April 3, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <skyshades.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 2, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@skyshades.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 8, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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." 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, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <skyshades.com> domain name is identical to Complainant’s SKYSHADES mark.
2. Respondent does not have any rights or legitimate interests in the <skyshades.com> domain name.
3. Respondent registered and used the <skyshades.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sky Shades Holdings LLC, sells “shade sails” under the SKYSHADES mark, which Complainant defines as “outdoor, free-standing awnings that provide sun and weather protection.” Complainant started production of these awnings in 2004, and several periodicals, including Popular Mechanics magazine and the Orlando Business Journal, have featured Complainant’s products. Complainant’s main website is at the <skyshades.us> domain name (registered on May 12, 2004).
Complainant holds a trademark registration for the SKYSHADES mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,968,150 issued July 12, 2005).
Respondent’s <skyshades.com> domain name, which it registered on March 21, 2006, resolves to Respondent’s own website, where it promotes its graphics and sign company.
According to Complainant, Respondent agreed to transfer the disputed domain name in November 2006 in exchange for $3,500. Complainant allegedly put this amount in escrow, but Respondent then reneged on the deal and has subsequently refused to transfer the disputed domain name to Complainant.
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant’s valid trademark registration with the USPTO
for the SKYSHADES mark is sufficient for purposes of Policy ¶ 4(a)(i) of
demonstrating Complainant’s rights in the mark.
Respondent’s <skyshades.com>
domain name contains no significant differences from Complainant’s mark other
than the addition of the generic top-level domain “.com.” This is merely a functional addition required
of every domain name, and therefore, the Panel finds that the <skyshades.com> domain name is
identical to Complainant’s mark according to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)
(concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,”
or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Jerry Damson, Inc. v.
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
In determining whether or not Respondent has rights or
legitimate interests in the <skyshades.com>
domain name, it is initially Complainant’s responsibility to make a prima facie case that Respondent lacks
rights and legitimate interests in the contested domain name. Once Complainant has done so, the burden
effectively shifts to Respondent to demonstrate that it has rights or
legitimate interests in the contested domain name. 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 Policy ¶ 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 Swedish Match UK Ltd.
v. Admin, Domain, FA 873137
(Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case
has been established by the complainant under Policy ¶ 4(c), the burden then
shifts to the respondent to demonstrate its rights or legitimate interests in
the disputed domain name).
In cases where a respondent fails to respond, as is the case in the present proceeding, the Panel presumes that Respondent has no rights or legitimate interests in the domain name in dispute. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.’”). Nevertheless, the Panel will still examine whether Complainant has made a prima facie case in support of its contentions that Respondent has no rights or legitimate interests pursuant to Policy ¶ 4(c).
Respondent lists itself as “Maverick Innovations” in the WHOIS contact information and has provided no evidence suggesting that it is commonly known by the <skyshades.com> domain name. As a result, the Panel finds that Respondent is not commonly known by the contested domain name according to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also 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).
Furthermore, Respondent is using the <skyshades.com> domain name to
redirect Internet users seeking information on Complainant’s products to a
completely unrelated business—graphic design.
In
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the <skyshades.com> domain name, which includes Complainant’s mark in its entirety, to divert Internet users to its own website promoting its unrelated business suggests bad faith. Respondent is presumably profiting from such diversion because unsuspecting Internet users searching for Complainant will come across Respondent’s website and think it is affiliated with Complainant and its SKYSHADES mark. Pursuant to Policy ¶ 4(b)(iv), the Panel finds that Respondent has registered and is using the <skyshades.com> domain name in bad faith. See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also GMAC LLC v. WhoisGuard Protected, FA 924715 (Nat. Arb. Forum May 2, 2007) (“Under Paragraph 4(b) of the Policy, evidence that a domain name registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website by creating a likelihood of confusion with the complainant’s mark serves as evidence of bad faith.”)
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skyshades.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 21, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum