WIPO Domain Name Decision: D2008-0658

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kravet Inc. v. Laksh Internet Solutions Private Limited

Case No. D2008-0658

1. The Parties

The Complainant is Kravet Inc., Bethpage, New York, United States of America, represented by Bingham McCutchen, LLP, United States of America.

The Respondents on the face of the Complaint are (1) Laksh Internet Solutions Private Limited, Mumbai, Maharashtra, India, and (2) Private Whois Escrow Domains Private Limited, Mumbai, Maharashtra, India.

2. The Domain Name and Registrar

The disputed domain name <kravetfabric.com> is registered with Lead Networks Domains Pvt. Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2008 naming only the second Respondent. On April 29, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain name at issue (the “Domain Name”). On May 15, 2008, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response advising that someone other than the second Respondent (namely the first Respondent) was listed as the registrant and providing contact details. In response to a notification by the Center of this, and of a deficiency in the Complaint, on May 19, 2008, the Complainant, on May 22, 2008, filed an amended Complaint adding the first Respondent’s name to the Complaint (and dealing with the deficiency). The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the first Respondent of the Complaint, and the proceedings commenced on May 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2008. The first Respondent did not submit any response. Accordingly, the Center notified the first Respondent’s default on June 18, 2008.

The Center appointed Jon Lang as the sole panelist in this matter on June 30, 2008. 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.

Before dealing with the substance of the Complaint, the position of the second Respondent identified in the Complaint should be dealt with. It is not listed as the registrant by the registrar and the Center did not notify it of the Complaint. As its name suggests, the second Respondent most probably does no more than provide a privacy service for domain name registrants. Indeed, in Associazione Radio Maria v. Private Whois Escrow Domains Private Limited / Comdot Internet Services Private Limited, WIPO Case No. D2008-0477, the first Respondent (in that case), who appears to be the second Respondent in this case, submitted that it was merely a company which held the domain name for the actual registrant in order to maintain the registrant’s privacy and disclaimed ownership of the domain name in issue. In these circumstances, it would appear that whilst a Decision could not, in any event, be made against the second Respondent at this stage, (because of it not having been notified of the Complaint), it is unlikely to matter at all given that it (the second Respondent) is not the registrant and, being most likely no more than a privacy service, is unlikely to have any beneficial interest in the Domain Name. The Panel further notes that the Registrar has confirmed the first Respondent (“Laksh Internet Solutions Private Limited ”) as the Registrant of record of the domain name. Accordingly, this Decision concerns only the first Respondent who shall be referred to simply as the Respondent hereafter.

4. Factual Background

The Complainant markets a wide range of fabrics and furnishings. It has been in business for almost 90 years. Its fabrics are sold domestically and abroad. The KRAVET name has ‘become recognized as representative of one of the premier fabric suppliers throughout the world’. It is said that the Complainant has worked hard building a substantial reputation and goodwill and as a result it has become a well-known and trusted leader in the decorative home fabric industry.

The Complainant owns 16 KRAVET and KRAVET formative marks registered or applied for in the USA, Canada and the EU. Moreover, the Complainant possesses 27 URL registrations which incorporate the KRAVET mark.

In 2007, it spent more than $15million in advertising and promoting the KRAVET and KRAVET formative marks and its annual expenditure in this regard has exceeded $10 million since at least 1998.

Nothing is known about the Respondent as it has not responded to the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are as follows:

- The Domain Name is identical or confusingly similar to all of its 16 trade marks (in which it of course has rights) and the addition of the term ‘fabric’, referring to the Complainant’s products for which it is well-known, is likely to increase confusion;

- The Domain Name is nearly identical to 10 other domain names held by the Complainant e.g. <kravetfabrics.com>;

- The Respondent has not been known as <kravetfabric.com> and is not affiliated to, or licensed by the Complainant to use any of its marks

The Respondent cannot make any legitimate use of the Domain Name in connection with fabrics given the fame of the Complainant’s mark and associated goodwill;

- The Respondent has not made legitimate non-commercial use of the Domain Name - it is using the Domain Name (and therefore the Complainant’s famous mark) to generate revenue (the website to which the Domain Name resolves containing sponsored links);

- Nearly all the KRAVAT and KRAVAT formative marks were registered for trademark protection before the 2005 registration of the Domain Name and thus the Respondent had both constructive and actual knowledge of the Complainant’s rights at the time of registration;

- The Respondent is creating ‘initial interest confusion’ and using the Complainant’s mark to divert users to a website which advertises similar products to those sold by the Complainant and is thus intentionally attempting to attract for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or of products or services on the website;

- The Respondent is attempting to demonstrate that it is legitimately affiliated with the Complainant and use of the disputed Domain Name is intended to cause confusion, mistake or deception among the public.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is:

(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A complainant must prove each of these three elements.

A. Identical or Confusingly Similar

The Domain Name is clearly very similar to the trademarks of the Complainant (in which it of course has rights). The Domain Name incorporates the mark KRAVET in its entirety. But is it confusingly similar? The use of the word ‘fabric’ immediately after ‘kravet’ far from distinguishes the Domain Name from the Complainant’s mark – it adds to, or at least creates, a likelihood of confusion by strengthening in the mind of the Internet user the possibility, if not likelihood, of the owner of the Domain Name in fact being the owner of the mark to which it is similar or, at the minimum, some form of association between the Respondent and the Complainant. Even if there was not confusion without the word ‘fabric’ included in the Domain Name, there is clearly a likelihood of confusion with it, given that fabric is at the heart of the Complainant’s business. This element of paragraph 4 of the Policy has been established.

B. Rights or Legitimate Interests

The Respondent has not been licensed in any way by the Complainant. Nor is there any affiliation between them. A respondent can show it has rights to or legitimate interests in a domain name in various ways. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate non commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. However, the Respondent is not known by the Domain Name and, in all the circumstances, it cannot be said, at least on the basis of the documents of record, that there is legitimate non commercial or fair use. Indeed, in the absence of contrary evidence, this Panel can only assume that the Respondent derives some commercial benefit from the website to which the Domain Name resolves given the commercial nature of the links thereon.

A respondent can also show that it was using a domain name in connection with a bona fide offering of goods or services. The use that the Respondent makes of the Domain Name has been described earlier. Promoting competing brands using a domain name confusingly similar to a complainant’s mark is not a bona fide offering of goods or services. There is ample support for this proposition. For instance, in Philip Morris USA Inc. v. n/a, WIPO Case No. D2004-0462, it was said:

‘To offer competing brands for sale using a domain name confusingly similar to the Complainant’s trademark is not a bona fide offering of goods within the meaning of paragraph 4(c)(i) of the Policy: see Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870 (December 31, 2003); Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (February 26, 2001).’

In the absence of any countervailing evidence from the Respondent the Panel finds that this element too of paragraph 4 of the Policy is established.

C. Registered and Used in Bad Faith

It seems clear that the Respondent was aware of the business of the Complainant (and probably some or all of its marks) at the latest, when it applied for the Domain Name, because of the combination of ‘kravet’ and ‘fabric’. One way of a complainant demonstrating bad faith registration and use, is to show that by using the domain name in the way that a respondent has, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. Such would appear to be the circumstances here and, accordingly, the Panel finds that, for the purposes of the Policy, the Domain Name has been registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <kravetfabric.com> be transferred to the Complainant.

Jon Lang
Sole Panelist

Date: July 13. 2008