The Complainant is Kravet, Inc., United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.
The Respondent is Domain Admin, Fabricsonline, United States. 2. The Domain Names and Registrars
The disputed domain names and (the “Disputed Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2019. On August 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On August 27, 2019, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2019.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on October 3, 2019. 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. 4. Factual Background
The Complainant states that it is “is the global leader and largest distributor of decorative textiles and furnishings to the design industry founded in 1918 by Samuel Kravet, a tailor from Russia, and his four sons” and that it “now employs over 500 people and has 42 Corporate Showrooms and 50 Agent Showrooms worldwide”.
The Complainant states, and provides evidence to support, that it owns at least five registrations for trademarks that consist of or contain “Kravet” in the United States, Canada, and the European Union (the “KRAVET Trademark”), including U.S. Registration No. 1,240,403 for the mark KRAVET (first used in commerce in 1961; registered on May 31, 1983) for use in connection with “Woven, Printed, Natural and Synthetic Fiber Decorative Fabrics and Wall Coverings”.
The Disputed Domain Names were created on April 16, 2010, and are being used in connection with parked pages that include “Related Links” labeled, among other things, “Wholesale Fabrics,” “Leather Sofas,” “Fabric Sofas,” and “Wholesale Furniture”. 5. Parties’ Contentions A. Complainant
The Complainant contends, in relevant part, as follows:
- The Disputed Domain Names are confusingly similar to the KRAVET Trademark because, inter alia, the Disputed Domain Names “reproduce Complainant’s registered trademarks and trade name in their entirety with the addition of clearly descriptive phrases, ‘fabric by’ and ‘fabrics by’”; and “the addition of these common words is likely to add more confusion, in particular to the minds of its customer base and to Internet users in general, as the terms are consistent with the usage adopted by Kravet, namely; identifying their fabric products with their brand”.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, “Respondent is not associated with, licensed by or otherwise authorised to make use of the Complainant’s ‘KRAVET’ trademarks in relation to any domain names or for any other reason”; “by incorporating its famous brand as a domain name and attempting to generate revenue through sponsored links, this fails to represent a bona fide offering where such links compete with or capitalise on the reputation and goodwill of the Complainants mark or otherwise mislead Internet users”; “Respondent is not known by the Disputed Domain Names” but instead “is listed on the WHOIS as ‘Fabricsonline’”; and, in a previous decision under the Policy, a panel found that the same apparent registrant was found to lack rights or legitimate interests, in Tommy Bahama Group, Inc. v. Paige Sanders, Fabrics Online LLC,WIPO Case No. D2016-1858.
- The Disputed Domain Names were registered and are being used in bad faith because, inter alia, “[a]t the time of registration, the Complainant’s trademarks were already very well established and accessible through online trademark databases, and thus the Respondent had both constructive and actual knowledge of the Complainant’s rights at the time of registration”; “the Respondent is using the Disputed Domain Names to bait customers of the Complainant and thereafter switch them to the websites of their competitors”; and “the Respondent has engaged in a pattern of bad faith registration” by registering “a domain portfolio of over 1000 domain names incorporating various trademarks in a similar format to the Disputed Domain Names”. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Names havebeen registered and are being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by the Complainant, it is apparent that the Complainant has rights in and to the KRAVET Trademark.
As to whether the Disputed Domain Names are identical or confusingly similar to the KRAVET Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Names only (i.e., “fabricbykravet” and “fabricsbykravet”) because “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
Here, each of the Disputed Domain Names contains the KRAVET Trademark in its entirety. As set forth in section 1.7 of the WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Further, section 1.8 of the WIPO Overview 3.0, says: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
Accordingly, the Panel finds that the Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
The Complainant has argued that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, “Respondent is not associated with, licensed by or otherwise authorised to make use of the Complainant’s ‘KRAVET’ trademarks in relation to any domain names or for any other reason”; “by incorporating its famous brand as a domain name and attempting to generate revenue through sponsored links, this fails to represent a bona fide offering where such links compete with or capitalise on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users”; “Respondent is not known by the Disputed Domain Names” but instead “is listed on the WHOIS as ‘Fabricsonline’”; and, in a previous decision under the Policy, a panel found that the same apparent registrant was found to lack rights or legitimate interests, in Tommy Bahama Group, Inc. v. Paige Sanders, Fabrics Online LLC, supra.
WIPO Overview 3.0, section 2.1, states: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel finds that the Complainant has established its prima facie case and without any evidence from the Respondent to the contrary, the Panel is satisfied that the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Numerous UDRP panels have found the registration and use of a domain name that is confusingly similar to a complainant’s trademark to constitute bad faith pursuant to paragraph 4(b)(iv) of the Policy where, as here, the Disputed Domain Name is associated with a monetized parking page that contains links for goods or services competing to the Complainant. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005‑0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc.,WIPO Case No. D2006‑0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753.
Accordingly, the Panel finds that the Complainant has proven the third element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names and be transferred to the Complainant.
Douglas M. Isenberg
Sole Panelist
Date: October 10, 2019
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