Complainant is Omnia Italian Design, Inc. of Chino, California, United States of America, represented by Stetina Brunda Garred & Brucker, United States of America.
Respondent is Andrew Greatrex of San Antonio, Texas, United States of America, represented pro se. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2013. On February 27, 2013, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On February 28, 2013, the Registrar transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2013. The Response was filed with the Center on March 24, 2013.
The Center appointed Robert A. Badgley as the sole panelist in this matter on April 9, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On April 10, 2013, Respondent requested leave to file a supplement to his response. The Panel responded by issuing Procedural Order No. 1 on April 11, 2013, which allowed a supplemental response from Respondent by April 18, 2013, and allowed Complainant until April 23, 2013 to reply to Respondent. On April 18, 2013, Respondent advised that he was not going to submit a supplemental response after all.
The Panel then issued Procedural Order No. 2 on April 19, 2013, which allowed Complainant to provide, by April 26, 2013, “information regarding the alleged prior business relationship between the Parties (including, if relevant, any reason that the existence of such relationship was not referenced in its filed Complaint), and the Complainant’s views on how, if at all, such alleged relationship may be relevant to the three elements required under the Policy.” Procedural Order No. 2 also allowed Respondent to reply to Complainant’s submissions by May 3, 2013.
Both Complainant and Respondent provided supplemental submissions to the Center by the established deadlines. 4. Factual Background
Complainant manufactures and sells leather furniture. Since 1989, Complainant has used the marks OMNIA and OMNIA ITALIAN LEATHER FURNITURE in commerce to identify and distinguish its wares. These two marks were registered with the United States Patent and Trademark Office in 2002. Complainant also markets its leather furniture via the Internet, using the domain name to host its main website.
Respondent registered the Domain Name on November 1, 2009. The Domain Name currently redirects users to a website located at . The website greets the visitor with the prominent message “Welcome to National Leather”. The site then states: “With 20 years experience in the custom leather furniture industry, we ARE your No. 1 source for Omnia Leather and Palliser Furniture!” Various leather furniture products are featured and listed for sale at the website. At the bottom of the home page is a notice: “© Omnia Leather Furniture”.
On February 5, 2013, Complainant’s counsel sent Respondent a cease-and-desist letter asserting that Respondent’s use of the Domain Name constituted trademark infringement, and demanded the transfer of the Domain Name. The Complaint filed in this proceeding makes no reference to the Parties having had a prior business relationship, though the cease-and-desist letter annexed to the Complaint contains the statement: “We also understand that you have had a mutually beneficial relationship with our client with regard to the sale of our client’s OMNIA® brand of furniture products”. The letter also asserts: “Recently, our client became aware that you are the registrant of [the Domain Name]”.
Respondent, who admits to being the owner of National Leather, claims that he was an authorized distributor of Complainant’s leather furniture products until that relationship was terminated in December 2012. (Complainant’s President stated in a sworn declaration that “National Leather was originally made an authorized dealer for OMNIA® brand furniture products in September 2010”.)
According to the Response, Respondent started to use the Domain Name as a website to sell Complainant’s wares in August 2010. Respondent alleges that his use of the Domain Name and Complainant’s marks “were all approved by Complainant when first launched in 8/2010 and has operated since, without change, with the full knowledge and support of the Complainant”. Respondent also asserts that he has never been advised of any confusion by any consumers who were “under the impression that they were purchasing products directly from the Complainant”.
In any event, there is no evidence of a response to Complainant’s February 5, 2013 cease-and-desist letter. Complainant filed its Complaint in this proceeding on February 26, 2013. 5. Parties’ Contentions A. Complainant
Complainant’s chief factual contentions are as set forth above in the Factual Background section. Complainant maintains that it has satisfied all three elements under the Policy and therefore is entitled to a transfer of the Domain Name. B. Respondent
Respondent asserts that Complainant has known of Respondent’s ownership and use of the Domain Name for more than two years and acquiesced in Respondent’s use of the Domain Name. Respondent also asserts that he is not a competitor of Complainant, since Respondent is a retailer and Complainant is a wholesaler. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name 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 in bad faith. A. Identical or Confusingly Similar
There is no doubt that Complainant has rights, through registration and use, in the marks OMNIA and OMNIA ITALIAN LEATHER FURNITURE. The Panel also concludes that the Domain Name is confusingly similar to both of these marks. The addition of the descriptive words “leather furniture” to the OMNIA mark does not diminish confusing similarity between the mark and the Domain Name. Indeed, the term “leather furniture” aptly describes the goods that Complainant offers under the OMNIA mark. Similarly, the omission of the descriptive word “Italian” from the mark OMNIA ITALIAN LEATHER FURNITURE is a minor change and does not significantly stray from the dominant aspect of that mark.
Accordingly, the Panel concludes that Policy paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests
In view of the Panel’s ruling below under the “bad faith” heading, there is no need to address the issue of rights or legitimate interests here. C. Registered and Used in Bad Faith
This Complaint must fail for the simple reason that there is no evidence that, at the time Respondent registered the Domain name, he did so in bad faith. Both Parties were given the opportunity by this Panel to elaborate on their prior business relationship – which Complainant did not even mention in its initial Complaint – and describe how, if at all, that relationship bore on the elements required under the Policy.
Remarkably, Complainant’s supplemental submission did not add any real substance to its initial allegations. Most notably, Complainant’s supplemental submission said absolutely nothing to refute Respondent’s allegation – made earlier in the original Response – that Complainant was fully aware of Respondent’s use of the Domain Name for more than two years and fully acquiesced to such use. If ever there was a time for Complainant to step up and address this point, it was upon receipt of the Response and the Panel’s Procedural Order No. 2. Complainant’s silence on this score leaves Respondent’s allegations about acquiescence unrebutted on this record. Under the circumstances, the Panel cannot conclude that the Domain Name was registered in bad faith.1
As to Respondent’s ongoing use of the Domain Name, Complainant may well have reason to explore a trademark infringement action of some sort – in a court of law. Such a consideration is, however, beyond the scope of this Panel. The Policy does not apply to trademark infringement per se; it applies to the bad faith registration and use of a domain name which is confusingly similar to a party’s trademark and in which the domain name registrant has no rights or legitimate interests. The fact that Respondent here may currently be infringing on Complainant’s trademark does not by itself bring this dispute within the proper scope of the Policy.
The Panel concludes that Policy paragraph 4(a)(iii) has not been satisfied. 7. Decision
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Sole Panelist
Date: May 8, 2013
1 Because the unrebutted evidence of record here shows that Complainant acquiesced in Respondent’s registration and use of the Domain Name, it is not necessary for the Panel to conduct a more extensive analysis of the Domain Name’s use by a distributor, under the standards set forth in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, and its progeny.
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