Complainant is Kravet, Inc., United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.
Respondent is Privacy Administrator, Anonymize, Inc., United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2020. On January 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 23, 2020, the Registrar transmitted by email 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 30, 2020. On February 18, 2020, the Center received an email communication from a third party to which the Center replied. The Center requested that the third party identify herself or himself and clarify her or his relationship (if any) to Respondent. The third party did not respond to this request. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2020. Respondent did not submit any formal response. Accordingly, the Center notified the commencement of Panel Appointment on February 25, 2020. The Center appointed Christopher S. Gibson as the sole panelist in this matter on March 3, 2020. 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 Complainant is a distributor of decorative textiles and furnishings to the design industry. Complainant has been in business for over 100 years and employs over 500 people, with a head office in New York and 42 corporate showrooms and 50 agent showrooms worldwide. Complainant was founded in 1918 by Samuel Kravet and his four sons, who provided tailoring services to New York City’s residents but later expanded to sell fabric and trimmings to the interior design trade. In 1938, S. Kravet & Sons, as the company was then called, opened its first corporate showroom in New York City. In 1963, the company became Kravet Fabrics, Inc., with a showroom in New York and offices and warehouse in Woodbury, Long Island. During the 1960s, the company’s distribution expanded through a national showroom network and international distribution. In the 1980s, the company opened new warehouses in Bethpage, Long Island, New York, and Anderson, South Carolina, to meet expanded business demands. This expansion continued, and two new brands were created in the 1990s, Kravet Contract, for the hospitality and healthcare markets, and Kravet Furniture. In addition, Kravet Collections was created as a licensing division. In 1991, the company further increased its product offerings to furniture, followed by carpet in 2005 and lighting in 2007. To date, Complainant has one of the largest and most important collections of historic American and European printed fabrics. More than 52,000 historic textile documents belong to Complainant through its own holdings and the archives of the textile firms it has acquired, such as Lee Jofa, a long-established high-end fabric brand acquired in 1995; Brunschwig & Fils, a fabric and furnishings company acquired in 2011; and the United Kingdom-based firm of G.P. & J. Baker, which has the largest privately held archive of decorative textiles in the world. Complainant has expanded its trademark portfolio across various jurisdictions, including the following: Trademark Country Registration Number Registration Date Class KRAVET United States 1240403 31/05/1983 24 KRAVET European Union 002980522 09/06/2004 20,24,26 KRAVET Canada TMA643805 07/07/2005 20,24,26 KRAVET United States 2602037 30/07/2002 24 Complainant has established a social media presence and uses its KRAVET trademark to promote its services under this name, in particular, on Facebook, Pinterest, Twitter and Instagram. Additional marketing channels employed by Complainant include the distribution of their own brochures and catalogues, with select merchandise also being featured in third-party magazines such as Country House, Modern Luxury Interiors Texas, House & Home and Elle Décor. The Domain Name was registered on November 2, 2009 and resolves to a pay-per-click (“PPC”) page. 5. Parties’ Contentions A. Complainant (i) Identical or confusingly similar Complainant states that the Complaint is brought on the basis of its substantive rights and interests in the term KRAVET. In addition to its registered KRAVET marks, Complainant avers that its rights and interests arise from its exclusive, extensive, and consistent use of the KRAVET mark in the global marketplace. Complainant states it has invested substantial time and money in promoting its business by reference to its trademarks, including comprehensive marketing campaigns across the world encompassing web marketing, social media advertising and catalogue printing. Complainant features the KRAVET logo extensively as part of its marketing material and on its website located at “www.kravet.com”, in order to distinguish its products from those of its competitors. Complainant further submits that previous UDRP panels have recognized the distinctive value of the KRAVET trademark and its association with Complainant, including the following cases: - Kravet, Inc. v. Domain Admin, Fabricsonline,WIPO Case No. D2019-2072; Complainant states that it has accordingly satisfied the requirement of holding rights in the KRAVET mark. Complainant submits that its registered KRAVET mark is recognizable within the second level of the Domain Name. By applying the identical or confusing similarity test under the Policy, Complainant claims the Domain Name is confusingly similar to its trademark, due to Respondent misspelling the term KRAVET by swapping the letters “r” and “a”. Complainant contends that where a domain name consists of a common, obvious or intentional misspelling of a trademark, the domain name is considered to be confusingly similar for the purposes of the first element. Complainant requests that the Panel find the Domain Name to be confusingly similar to Complainant’s trademark for the purposes of Paragraph 4(a)(i). (ii) Rights or legitimate interests Complainant contends that Respondent lacks rights or legitimate interest in the Domain Name. To the best of Complainant’s knowledge, Respondent has not registered any trademarks for the term KRAVET, and there is no evidence that Respondent holds any unregistered rights to the term KRAVET. Moreover, Respondent has not received any license from Complainant to use a domain name that features the KRAVET trademark. Complainant holds all active trademarks for the term KRAVET. Complainant claims there is no bona fide offering of goods or services attached to the Domain Name. The website currently hosts a PPC advertising page, which contains links thematically similar to Complainant’s expertise. Moreover, some of the links redirect to websites of competitors. Therefore, instead of using the Domain Name in connection with a bona fide offering of goods or services, Respondent has deliberately used the distinctive KRAVET mark to create an impression of association with Complainant, in order to earn revenue generated from the redirections. Complainant submits that Respondent is not known nor has ever been known as ”kravet”. The KRAVET mark is distinctive and not used in commerce other than by Complainant. Therefore, there is no plausible reason for the registration and use of the Domain Name, other than to take advantage of the goodwill and valuable reputation attached to the KRAVET brand, as Respondent has no connection or affiliation with Complainant and has not received any license or consent to use the mark in any way. Complainant contends that the mere ownership of the Domain Name does not confer rights or legitimate interest on Respondent. Moreover, to rely on this defense, Complainant claims that Respondent must demonstrate that at the time of registration, Respondent was commonly known by the Domain Name. Previous UDRP panel decisions have held that there must be unequivocal evidence to prove that a respondent is commonly known by a domain name. Complainant also submits that the evidence shows that Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Complainant asserts that Respondent is generating monetary revenue by diverting online users to the Doman Name, which is confusingly similar to Complainant’s trademark. In addition, Respondent is hosting PPC links on the Domain Name, which are comprised of terms thematically similar to the sector where Complainant operates. Past UDRP panels have stated that this does not constitute a legitimate noncommercial or fair use. Complainant contends that it has presented a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) of the Policy. Complainant asserts that the burden of proof now shifts to Respondent to show that it has a right or legitimate interest in the Domain Name. (iii) Registered and used in bad faith Complainant contends that Respondent both registered and is using the Domain Name in bad faith in accordance with Paragraph 4(a)(iii). Complainant submits that the KRAVET trademark has been active for many years and predates the registration of the Domain Name by 26 years for Complainant’s earliest trademark registration. In addition, Complainant has accrued substantial goodwill and recognition in its business and mark over 100 years of operation. Complainant further submits that anyone who has access to the Internet can find Complainant’s trademark on public trademark databases. To date, results on popular search engine such as Google for the term KRAVET lists Complainant’s brand and services as the first result. Additionally, Respondent has chosen to ignore the cease and desist letter sent by Complainant’s representatives on November 28, 2019. This letter was sent to put Respondent on notice of Complainant’s trademark rights and with a view to resolving the matter amicably. Previous UDRP panel decisions have stated that a lack of reply to a cease and desist letter prior to commencing the proceedings infers bad faith behavior. Based on Respondent's use of the Domain Name and the close similarity of the Domain Name and Complainant’s KRAVET mark, Complainant asserts that the Domain Name was registered with Complainant’s brand in mind, in view of profiting from the Domain Name in excess of Respondent’s out of pocket costs. Respondent’s use of the Domain Name, which links to a PPC page, is an indication of bad faith use, constituting an attempt to generate commercial gain by creating a likelihood of confusion with Complainant’s trademark. This is particularly so where Respondent presumably attracts commercial gain through redirecting PPC traffic to third party websites. Complainant states that previous UDRP panels have stated that such use amounts to unduly taking advantage of the well-known nature of a complainant’s mark to attract more Internet users and generate revenue. Respondent has also listed the Domain Name for sale on the domain aftermarket site, Sedo, for a minimum offer price of USD 888. While the offer to sell has not been made directly to Complainant, the circumstances surrounding the registration and use is an indication of bad faith. Additionally, Complainant submits that having consulted the historical resource, the Internet Archive at “www.archive.org”, screenshots show that since the Domain Name’s registration in 2009, Respondent has not used the Domain Name for any good faith use, as it has either remained parked, used to offer its sale, or to host PPC links. Consequently, Complainant submits that, since the registration of the Domain Name, there is no evidence that Respondent uses or intends to use the Domain Name in good faith. Complainant concludes it has proven that it has a strong reputation in its KRAVET mark. The circumstances of this case indicate that Respondent is using the commercial value and goodwill of Complainant’s KRAVET mark in order to attract revenue, whether by selling the Domain Name to Complainant or a competitor, or through the PPC links hosted on the Domain Name. In view of the foregoing, Complainant requests that the Panel make a finding of bad faith registration and use under the Policy. B. Respondent Respondent did not formally reply to Complainant’s contentions. An individual going by “lorin pace” wrote to seek an extension of time to file a response and suggesting that the parties were in settlement talks (the Complainant did not, for its part, react to this suggestion); no other communications were received from this person, and their relation, if any, to the registration has not been clarified. The Panel notes here that given the use of an apparent privacy “licensing” service to register the Domain Name, and lacking any specific formal guidance or protocols on such matters (in particular from ICANN) beyond e.g., the ICANN Registrar Accreditation Agreement at section 3.7.7.3 concerning liability for the use of such “licensing” services, it would be incumbent on such service provider and/or their client to clarify the nature of the relationship, in particular where communications are received from a party not verified by the registrar as the registrant of record. 6. Discussion and Findings In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that: (i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and (iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar The Panel finds that Complainant has established rights in its KRAVET mark, based on ownership of the trademark’s registrations and use of the mark in commerce. Further, the Panel determines that the Domain Name is identical or confusingly similar to the KRAVET marks. The Domain Name misspells the term KRAVET by swapping the letters “r” and “a”. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), states that the test of confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name (…). In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the domain name to ascertain confusing similarity.” Further, section 1.9 provides in relevant part that “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark (…). Examples of such typos include (...) (v) the inversion of letters and numbers (…)” Here, the Panel determines that despite the inversion of the letters “r” and “a” in the Domain Name, the overall visual and phonetic similarity between the terms “kravet” and “karvet” remains high. Accordingly, the Panel finds that that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy. Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “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.” Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its KRAVET trademark; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services – instead, the Domain Name has been used not only to resolve to a PPC landing webpage with links that purport to redirect users to sites offering products related to and/or competitive with Complainant’s business, but also to offer the Domain Name for sale. Respondent’s use of the Domain Name in this manner does not give rise to any right or legitimate interest in it. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. These matters, bearing in mind the registration of Complainant’s trademark long before the Domain Name was registered, are sufficient to raise a prima facie case that Respondent does not have rights or a legitimate interest in the Domain Name. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii). C. Registered and Used in Bad Faith The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. Here, the Panel determines that the Domain Name was registered and is being used in bad faith. Complainant’s KRAVET trademark has been active for many years and Complainant’s earliest trademark registration predates the Domain Name’s registration by 26 years. In addition, Complainant has accrued goodwill and recognition for its KRAVET mark through its over 100 years of operation. Based on the evidence, and the close similarity of the Domain Name which contains a misspelling of Complainant’s KRAVET mark, the Panel finds, on the balance of the probabilities, that Respondent was likely aware of Complainant and its KRAVET mark, and intentionally targeted that mark, when registering the Domain Name. This point is further confirmed by Respondent’s use of the Domain Name in connection with a landing page containing PPC links that are linked to Complainant business and/or its competitors. Based on the circumstances here, where the Domain Name resolves to parking pages containing sponsored PPC links based on the trademark value of the Domain Name, in this context, the use of the Domain Name to receive PPC commissions constitutes bad faith. Indeed, 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 Domain Name is associated with a monetized parking page that contains links for goods or services competing with a complainant. See, e.g., Champagne Lanson v. Development Services/ MailPlanet.com, Inc., WIPO Case No. D2006-0006 (PPC landing pages not legitimate where sponsored links are based on the trademark value of the domain name); 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. Moreover, Respondent's offer to sell the Domain Name, under the circumstances, is also evidence of Respondent's bad faith registration and use under paragraph 4(b) of the Policy. Finally, in this context, Respondent's bad faith can also be inferred from its lack of reply to the cease and desist letter sent by Complainant prior to commencing this proceeding and the failure to substantively respond to the allegations made in the Complaint (not to mention the failure to clarify whether there was an underlying “licensee” registrant). See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210; Facebook, Inc. and Instagram, LLC v. C W / c w, c w,WIPO Case No. D2018-1159. In conclusion, in this case, where Respondent failed to submit a reply to Complainant’s contentions, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied 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 Domain Name Christopher S. Gibson
and design
- Kravet, Inc. v. Youri van Oostendorp, Calipseo B.V. / Y. v. Oostendorp, Calipseo B.V.,WIPO Case No. D2018-0400;
- Kravet, Inc. v. Sushil Kriplani, Royce Wool Carpets,WIPO Case No. D2016-0169;
- Kravet, Inc. v. Lisa Katz, Domain Protection LLC,WIPO Case No. D2016-1540;
- Kravet, Inc. v. Vietnam Domain Privacy Services/ Pham Dinh Nhut,WIPO Case No. D2017-1397; and
- Kravet, Inc. v. Laksh Internet Solutions Private Limited/ Private Whois Escrow Domains Private Limited,WIPO Case No. D2008-0658.
Sole Panelist
Date: March 23, 2020
Full & Egal Universal Law Academy