Glen Raven, Inc. v. Joel Landgrave / SUNBRELLA MEXICO
Claim Number: FA1507001630160
Complainant is Glen Raven, Inc. (“Complainant”), represented by Christopher Kelly of Wiley Rein LLP, District of Columbia, USA. Respondent is Joel Landgrave / SUNBRELLA MEXICO (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sunbrellamexico.com> ('the Domain Name'), registered with 1&1 Internet AG.
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 Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 22, 2015; the Forum received payment on July 23, 2015.
On July 23, 2015, 1&1 Internet AG confirmed by e-mail to the Forum that the <sunbrellamexico.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 July 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 2015 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@sunbrellamexico.com. Also on July 24, 2015, 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 August 18, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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
The Complainant's contentions can be summarised as follows:
Complainant is a leading manufacturer of fabrics. In 1959 the Complainant adopted the mark SUNBRELLA in connection with performance fabrics used principally to manufacture awnings and marine products, soon expanded to include market, garden and beach umbrellas and garden and patio furniture and accessories. Today, the fabrics are used for a myriad of purposes including both indoor and outdoor furniture and accessories.
The Complainant directs much of its advertising to ordinary consumers. Its products are sold in large national and local retailers and through on line retailers such as Amazon. It has an internet presence at sunbrella.com and owns other domain names such as sunbrellas.com, sunbrella.net, sunbrella.org and sunbrella.info which redirect users to sunbrella.com. It also promotes its products through social media.
The SUNBRELLA mark is used prominently at point of sale and manufacturing customers affix the Complainant’s hang tags and labels to finished merchandise containing SUNBRELLA fabric. Accordingly SUNBRELLA fabrics have developed significant public recognition and customers frequently base purchasing decisions on whether a product is made with SUNBRLLA fabric. Based on Complainant's extensive, exclusive and continuous use of its SUNBRELLA trade mark SUNBRELLA is widely recognised among the consuming pubic as a designator of origin with respect to Complainant’s fabrics. Complainant owns an extremely valuable reputation and goodwill symbolized by its SUNBRELLA mark.
Complainant or members of its group own several registrations containing SUNBRELLA including the word mark in the USA for fabrics. Complainant's SUNBRELLA mark is registered in over 100 countries other than the United States including Mexico. Complainant successfully enforces and protects its rights in the SUNBRELLA mark.
The Domain Name is confusingly similar to the Complainant's SUNBRELLA trade mark incorporating it in its entirety and simply adding the geographical descriptive term MEXICO which does not alter the confusingly similar nature of the Domain Name. Indeed customers encountering the Domain Name could reasonably believe falsely that it identifies an official web site for SUNBRELLA fabrics and/or that the Respondent is the Complainant's official distributor in Mexico. The inclusion of the gTLD .com does not differentiate the Domain Name from the Complainant’s SUNBRELLA mark in any meaningful way. SUNBRELLA is the dominant feature of Respondent's domain name. The similarity between the Complainant's SUNBRELLA mark and the Domain Name will inevitably cause Internet users to believe that an official affiliation of some sort exists between Complainant and Respondent.
Respondent operates a business under the name 'Todo Para Exterior' and is a reseller of Complainant’s fabrics. The Domain Name redirects to Respondent’s website which prominently features images of Complainant’s SUNBRELLA logo.
The Complainant issues approved marketing materials to its licensees and registered distributors and reseller’s licensees are prohibited from registering domain names containing SUNBRELLA.
Respondent is not a registered distributor and is using the Complainant’s marketing materials without authorisation. It is clear Respondent wants the benefits of associating itself with the Complainant without becoming a licensee. Respondent therefore incorporates Complainant's SUNBRELLA trade mark into the Domain Name and uses the Complainant’s marketing materials to trade on Complainant’s immense goodwill in the SUNBRELLA trade mark for purposes of attracting consumers to its website. Respondent has failed to answer Complainant’s demand letters.
Respondent is fully aware that he is neither authorised nor entitled to use Complainant’s SUNBRELLA mark as part of any domain name. Respondent's action registering the Domain Name, using Complainant’s marketing materials and ignoring Complainant’s demand letters reflects Respondent's bad faith in this case and warrants transfer of the Domain Name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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(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.”).
The Domain Name consists of a name identical to the Complainant's registered mark SUNBRELLA and the geographical designation 'Mexico' plus the gTLD designation .com.
Previous panels have held there is confusing similarity where the domain name contains the entire mark and simply adds a geographical term. See Ticketmaster Corp v Kumar, FA 744436 (Nat Arb. Forum Aug 17, 2006) (Finding that indiaticketmaster.com was confusingly similar to the Complainant’s TICKETMASTER mark).
As a general rule the gTLD .com does not distinguish a domain name from the trade mark at issue. See ABT Elecs.., Inc. v Ricks FA 904239 (Nat Arb Forum Mar 27, 2007) "addition of a generic top level domain ('gTLD") is irrelevant when conducting a Policy 4 (a)(i) analysis".
Accordingly, the addition of the geographical designation 'Mexico' and the gTLD .com do not serve to distinguish the Domain Name from the Complainant's SUNBRELLA mark and the Panellist finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.
The Respondent has not responded in these proceedings. It is clear from the content of the site that the Respondent was aware of the significance of the name "SUNBRELLA" at the time of registration. The commercial usage does not appear to be fair as the sites do not make clear that there is no commercial connection with the Complainant and there is prominent use of the Complainant's name and logo without permission. The Panel finds this use is confusing as contended by the Complainant. As such it cannot amount to the bona fide offering of goods and services. Nor does the Respondent named on the WHOIS search as Joel Landgrave appear to be commonly known by the Domain Name. As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
The content of the Respondent's web site makes it clear that was aware of the Complainant’s rights at the time of registration. There is no explanation from the Respondent why he has registered a Domain Name consisting of the Complainant’s mark and a geographical designation giving the impression that the Respondent's is the Complainant’s representative in Mexico or there is another close affiliation between the Respondent and the Complainant.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site.
As such, the Panel holds that the 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 <sunbrellamexico.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: <<August 27, 2015>>
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