Westmore · UDRP DecisionKravetdesign.com
The Panel ordered transfer of <kravetdesign.com> to Kravet Inc. It found the domain identical to the registered KRAVET DESIGN mark, found no evidence of Respondent rights or legitimate interests, and concluded that more than a decade of passive holding combined with Respondent's repeated losses in prior UDRP proceedings established bad-faith registration and use.
The timeline behind kravetdesign.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
The decision illustrates how exact incorporation of a registered mark, prolonged nonuse, an unrebutted prima facie case, and a documented pattern of adverse UDRP proceedings can combine to support transfer. The bad-faith determination did not rest on passive holding alone; the Panel paired more than a decade of inactivity with the Respondent's broader UDRP history.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Kravet Inc. v. Lisa Katz, Domain Protection LLC Case No. D2016-1540 1. The Parties The Complainant is Kravet Inc. of Bethpage, New York, United States of America (“United States”), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). The Respondent is Lisa Katz, Domain Protection LLC of Dallas, Texas, United States. 2. The Domain Name and Registrar The disputed domain name <kravetdesign.com> is registered with Fabulous.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2016. On July 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 4, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 10, 2016 and August 11, 2016. The Center verified that the Complaint together with the amended 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 August 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on September 2, 2016. The Center appointed Dennis A. Foster as the sole panelist in this matter on September 12, 2016. 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 Founded in 1918, the Complainant is a United States company that offers interior design fabrics and trimmings on a global basis. The Complainant operates under the trademarks KRAVET and KRAVET DESIGN, the latter of which is registered with the United States Patent and Trademark Office (“USPTO”) ( e.g. , Registration No. 2602037; registered on July 30, 2002; and Registration No. 2605195; registered on August 6, 2002). The Respondent is the owner of the disputed domain name <kravetdesign.com>, which was registered on November 8, 2005. The disputed domain name is not in use. 5. Parties’ Contentions A. Complainant The Complainant was founded in 1918 by Russian immigrant tailors who came to New York City in the United States. Over the years, the Complainant expanded to sell interior design fabrics and trimmings both in the United States and on a global basis. The Complainant has operated under both the registered trademarks KRAVET and KRAVET DESIGN. The Complainant also does business online through the domain names <kravet.com> and <kravetinc.com>. The disputed domain name, <kravetdesign.com>, is identical or confusingly similar to the Complainant’s trademarks. Certainly, the disputed domain name is nearly identical to the KRAVET DESIGN mark. The Respondent has no rights or legitimate interests in the disputed domain name. Though the Respondent has used a deceptive privacy service to register the disputed domain name, the Complainant believes that it has not authorized or licensed the Respondent to use the Complainant’s marks in any manner. There is no evidence that the Respondent is commonly known as the disputed domain name. As “Kravet” is not a common term, there is no generic meaning attached to it, whether in combination with the common word “design” or not. In any event, the Respondent is making no use of the disputed domain name, so there is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use attached to that name. The disputed domain name was registered and is being used in bad faith. The Respondent was undoubtedly aware of the Complainant and its rights in its marks before registering the disputed domain name. Also, there is no use being made of the disputed domain name, which non-activity has been found by prior UDRP panels to be consistent with bad faith registration and use of other disputed domain names. Moreover, the Respondent has engaged in a pattern of registering many domain names that would appear to infringe upon the established marks of third parties. In fact, the Respondent has been the subject, as a respondent, in some twenty-nine domain name dispute resolutions under the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In accordance with Policy paragraphs 4(a)(i) – (iii), the Panel may find for the Complainant and grant a transfer of the disputed domain name, <kravetdesign.com>, if the Complainant proves that: - The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and - The Respondent has no rights or legitimate interests in respect of the disputed domain name; and - The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has provided sufficient evidence to the Panel of rights in the trademark KRAVET DESIGN through registration of that mark with the USPTO. See, Lilly ICOS LLC v. Andrew Riegel , WIPO Case No. D2006-1088 (“The Panel finds that the Complainant’s registration with the USPTO sufficiently establishes the Complainant’s rights in the CIALIS mark.”); and E.D. Publications, Inc. v. Decorum , WIPO Case No. D2001-0589 (“Complainant’s registration of the EXOTIC DANCER mark on the Principal Register at the USPTO establishes a presumption of its validity in U.S. law.”). The disputed domain name, <kravetdesign.com>, duplicates the KRAVET DESIGN trademark except for the deletion of the space between that mark’s terms and the obligatory addition of a general Top-Level Domain (“gTLD”) suffix. Because there is no provision for spaces in a domain name and some form of suffix is demanded of domain names, these differences are of no consequence in the estimation of the Panel. Thus, the Panel determines that the disputed domain name is identical to said trademark. See, Direct Axis SA v. Domain Admin, Whois Privacy Corp. Acquire This Name, Inc. , WIPO Case No. D2016-0132 (finding the disputed domain name <directaxis.com> to be identical to the mark DIRECT AXIS); and Pierre Hardy v. Liheng, Just Traffic Supervision Consulting , WIPO Case No. D2015-2265 (having found <pierrehardy.biz> to be confusingly similar to the PIERRE HARDY mark). The Panel finds that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests The Complainant must make at least a pima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, before shifting the burden to the Respondent to produce convincing evidence that it does have such rights or interests. See, Hermès International v. Registrant [3585485]: Boris Moser , WIPO Case No. D2011-0406 (“It is the consensus view of WIPO UDRP panelists that once a complainant has established a prima facie case, it is respondent’s responsibility to prove otherwise.”); and Philip Morris USA Inc. v. yfmg , WIPO Case No. D2010-0058 (“Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name.”). In this case, the identity between the disputed domain name and the Complainant’s trademark, as found above, along with the Complainant’s reasonable assertion that it has not provided the Respondent any authority or license to use that trademark in any manner, secure for the Complainant such a prima facie case. The Respondent has chosen not to submit a filing in this case, and so the Panel will accept all of the Complainant’s reasonable contentions as true, unless contradicted by the Panel’s independent knowledge or otherwise in the record. See, RX America, LLC. v. Matthew Smith , WIPO Case No. D2005-0540 (“A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant.”); and Desotec N.V. v. Jacobi Carbons AB , WIPO Case No. D2000-1398 . The Complainant asserts reasonably that the Respondent has made no use of the disputed domain name, and the Panel accepts that assertion as true. Therefore, the Panel concludes that Policy, paragraphs 4(c)(i) and (iii) cannot be used to support any claim by the Respondent to own rights or legitimate interests in the disputed domain name. Moreover, the Panel accepts the Complainant’s reasonable argument that the Respondent, Lisa Katz, is very unlikely to have been known commonly as the disputed domain name <kravetdesign.com>, as there is simply no resemblance between the two. Also, there is no evidence that the Respondent owns any company whatsoever that might be commonly known as that name. Those circumstances lead the Panel to determine that Policy, paragraph 4(c)(ii) is inapplicable as well. As a result of this analysis, the Panel believes that there is no evidence before it that could possibly serve as a rebuttal to the Complainant’s prima facie case. The Panel finds that the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith Under the Policy, the Complainant bears the burden of proving that the disputed domain name was registered and is being used in bad faith. In this case, the Panel has previously accepted the Complainant’s contention that the disputed domain name is not being used at all. Many prior UDRP panels have found that such passive holding of a disputed domain name can allow for a finding of bad faith registration and use of that name in some circumstances. See, Malayan Banking Berhad v. Beauty, Success & Truth International , WIPO Case No. D2008-1393 (“Panels have consistently held that passive holding of domain names can, under certain circumstances, be considered bad faith use of the domain name.”); and Westdev Limited v. Private Data , WIPO Case No. D2007-1903 (“[...]there is ample authority in the form of previous decisions under the Policy [...] for the proposition that passive use can in certain circumstances constitute abusive use.”). In this case, the Panel notes that the Respondent has owned the disputed domain name for longer than a decade without use. Also, the Panel accepts the Complainant’s submission showing that the Respondent has a large portfolio of domain names, many of which are of questionable valid ownership by the Respondent. Moreover, the Complainant has called to the Panel’s attention some twenty-nine prior Policy decisions in which the Respondent has been involved as a respondent. In fact, the Panel has found for itself another two, even more recent, such Policy cases, bringing the total to thirty-one. Upon inspection, the Panel cannot help but notice that the Respondent has lost each and every time. See, Government Employees Insurance Company v. Domain Hostmaster, Whois Privacy Services Pty Ltd. / Lisa Katz, Domain Protection LLC , WIPO Case No. D2016-1275 ; Société d’Exploitation et de Gestion de Spectacles de Music Halls Internationaux v. Customer ID: 83520258894731, Whois Privacy Services Pty Ltd / Lisa Katz, Domain Protection LLC , WIPO Case No. D2016-1111 ; TPS Parking Management, LLC v. Whois Privacy Services Pty Ltd. / Lisa Katz, Domain Protection LLC , WIPO Case No. D2016-0900 ; Montage Hotels & Resorts, LLC v. Whois Privacy Services Pty Ltd. / Lisa Katz, Domain Protection LLC , WIPO Case No. D2016-0898 ; etc. These circumstances - a long delay in usage and a long pattern of abusive domain name registration by the Respondent - cause the Panel to conclude that the Respondent registered and is using the disputed domain name in bad faith. The Panel finds that the 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 disputed domain name <kravetdesign.com> be transferred to the Complainant. Dennis A. Foster Sole Panelist Date: September 26, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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