Sunbrellacanvas.com

The timeline behind sunbrellacanvas.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Glen Raven, Inc. v. DFerguson Pamela Case No. D2024-4642 1. The Parties Complainant is Glen Raven, Inc., United States of America (“United States”), represented by Wiley Rein, LLP, United States. Respondent is DFerguson Pamela, United States. 2. The Domain Name and Registrar The disputed domain name <sunbrellacanvas.com> is registered with Gname.com Pte. Ltd. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2024. On November 12, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 2024, 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 (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to Complainant on November 13, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 13, 2024. 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 Respondent of the Complaint, and the proceedings commenced on November 15, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 6, 2024. The Center appointed Scott R. Austin as the sole panelist in this matter on December 11, 2024. 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. page 2 4. Factual Background The following facts appear from the Complaint (as amended) and its attached Annexes, which have not been contested by Respondent, and provides evidence sufficient to support: Founded in 1880 in the United States, Complainant is a leading manufacturer of fabrics, both by the piece and incorporated into finished products in a wide range of applications provided under the trademark SUNBRELLA (the “SUNBRELLA Mark”), including, inter alia, awnings, canopies, umbrellas, footwear, clothing and accessories, marine applications, indoor and outdoor furniture, tents, luggage, and flags. Complainant has offices and/or manufacturing facilities located not only in the United States but also South America, Europe, Africa, and Asia, including China. Complainant owns a number of registrations in the United States and around the world for the SUNBRELLA Mark for its fabric products, including the following: - United States Registration No. 709,110, SUNBRELLA, registered on December 27, 1960, for “fabrics for awnings, furniture, handbags and sportswear,” claiming a date of first use of 1959; - United States Registration No. 2,966,133, SUNBRELLA “PLUS”, registered on July 12, 2005, for “fabrics sold in the piece for use in producing awnings, sun and windscreens, tents, canopies, boat covers and tops, indoor and outdoor furniture and beach umbrellas,” claiming a date of first use of 1991; and - United States Registration No. 5,474,228, SUNBRELLA, registered on May 22, 2018 for “yarn” and “fabrics for the manufacture of awnings, sun and windscreens, shade sails, tents, canopies, boat covers and tops, indoor and outdoor furniture, beach, garden and market umbrellas, cushions, pillows, area rugs, draperies, sheers, window treatments, automotive applications, namely, headliners and convertible tops, and sports, athletic, tote and golf bags,” claiming a date of first use of 1961. Complainant also shows it incorporates SUNBRELLA Mark into its official domain name <sunbrella.com>, that since 1998 it has used to access its official website at “www.sunbrella.com” (the “Official SUNBRELLA Mark Website”) where it offers its products for sale. The disputed domain name was registered on October 16, 2024, and resolves to a website that uses the SUNBRELLA Mark in multiple ways, including identifying its business as “Sunbrella Marine Fabric,” on its landing page while the terms and conditions identify it as “Sunbrella Sales Shop.” The website purports to sell fabrics including SUNBRELLA brand fabrics identified with the SUNBRELLA Mark and displays an address for a location in Boston, Massachusetts, but the record submitted shows no building associated with a fabric company at that location, nor is there any “Sunbrella Canvas,” “Sunbrella Marine Fabric,” or “Sunbrella Sales Shop” registered as a business entity in Massachusetts. The Panel’s independent investigation of the disputed domain name found that as of the date visited, December 11, 2024, Respondent’s disputed domain name resolved to what is generally referred to as a “copycat” website which displayed pages strikingly similar to the content on the Official SUNBRELLA Mark Website, including Complainant’s trademark as well as infringing copies of Complainant’s copyright protected digital images of its fabric products and offers directly competing fabric products. 1 Numerous cases support a panel’s power to undertake such limited factual research and the Panel has, in its discretion, examined Respondent’s 1 “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name or accessing trademark registration databases.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“ WIPO Overview 3.0”), section 4.8. See e.g., Humble Bundle, Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0914; Creative NetVentures, Inc. v. Webheads, WIPO Case No. D2000-1655. page 3 website as well as the United States Patent and Trademark Office database for the current status of Complainant’s United States trademark registration data. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. B. Respondent Respondent did not reply to Complainant ’s contentions. 6. Discussion and Findings Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. The onus is on Complainant to make out its case and it is apparent from the terms of the Policy that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer or cancel a domain name. As the proceedings are administrative, the standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0 ”), section 4.2. Thus, for Complainant to succeed it must prove within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that: 1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; 2. Respondent has no rights or legitimate interests in respect of the disputed domain name; and 3. The disputed domain name has been registered and is being used in bad faith. The Panel finds that Complainant has met its burden in all three elements of the Policy and will deal with each of these elements in more detail below. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s trademark and the disputed domain name. WIPO Overview 3.0 , section 1.7. Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. Trademark registration evidence has been submitted in the form of electronic copies of valid and subsisting national and international trademark registration documents in the name of Complainant referenced in Section 4 above. Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 , section 1.2.1; see Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657; see also Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201. page 4 A consensus among UDRP panels has recognized that the global nature of the Internet and Domain Name System renders the jurisdiction(s) where a trademark is registered irrelevant to panel assessment under the first element test, as are the goods and/or services for which the mark is registered or used in commerce, the filing/priority date, date of registration, and date of claimed first use. See WIPO Overview 3.0 , section 1.1.2. The Panel finds Complainant’s foregoing national and international registrations are sufficient to demonstrate statutory trademark rights in Complainant’s SUNBRELLA Mark to meet Complainant’s burden under the first element of the Policy. A side-by-side comparison between the disputed domain name and Complainant’s mark shows the disputed domain name is confusingly similar to Complainant’s SUNBRELLA Mark. Complainant’s SUNBRELLA Mark is incorporated in its entirety in the disputed domain name except for Respondent inserting the term “canvas” between the Mark and the Top-Level Domain (“TLD”) “.com”. Prior UDRP panels have held “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.” See, L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627 ; see also, Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Prior UDRP panels have also found the TLD, being viewed as a standard registration requirement, may typically be disregarded under the paragraph 4(a)(i) analysis. See WIPO Overview 3.0, section 1.11.1; see also Kinetic Concepts, Inc. v. Sheppard Stetve, WIPO Case No. DCO2015-0007. Complainant also contends that the disputed domain name must be considered confusingly similar to Complainant’s Mark because the inserted term “canvas” is a reference to Complainant’s goods in the fabrics industry, but this issue is more properly considered under elements two and three of the Policy. The Panel finds that the added term “canvas” does not prevent a finding of confusing similarity with Complainant’s SUNBRELLA Mark, and the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0 , section 1.8. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0 , section 2.1. Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant contends that none of the circumstances provided in paragraph 4(c) of the Policy for demonstrating a respondent’s rights to and legitimate interests in a domain name are present in this case. Respondent has not rebutted page 5 Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. First, Complainant contends that there is no evidence to suggest that Respondent is commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests under Policy paragraph 4(c)(ii). Respondent, as registrant of the disputed domain name, identified as “DFerguson Pamela” is not commonly known by the disputed domain name because it clearly bears no resemblance to it. Prior UDRP panels have held where no evidence, including the WhoIs record for the disputed domain name, suggests that Respondent is commonly known by the disputed domain name, then Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(c)(ii). See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049 . Complainant also contends Respondent has no rights in the disputed domain name because Complainant has no commercial relationship with Respondent, Respondent is not sponsored by or affiliated with Complainant in any way, and Complainant has not given Respondent authority or license to register or use Complainant’s trademarks in any manner, including in domain names. Prior UDRP panels have held “in the absence of any license or permission from Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed”. See Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875 . Most importantly, Complainant contends Respondent is not using the disputed domain name in connection with legitimate noncommercial or fair use or a bona fide offering of goods or services because, as Complainant’s attached screen shots of the web pages accessed through the disputed domain name show, the disputed domain name resolves to a carefully crafted “copycat” version of Complainant’s Official SUNBRELLA Mark Website to create a false association with Complainant for its commercial benefit. The Panel notes that the evidence submitted persuasively supports Complainant’s argument because it shows Respondent’s website prominently features the unauthorized use of infringing copies of Complainant’s content: copyright protected digital images of its fabric products and offers users the possibility of ordering competing fabrics sold by Respondent. Respondent’s activities therefore undermine any claim of rights and legitimate interests because Respondent is using the disputed domain name to confuse Internet users, suggest an affiliation with or sponsorship by Complainant to direct users to Respondent’s website for its commercial gain. Based on these facts the Panel finds Respondent’s actions are clearly not legitimate and clearly are misleading. Respondent, therefore, cannot claim rights or legitimate interests or noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy. See Six Continents Hotels Inc. v. “m on”, WIPO Case No. D2012-2525 ; see also Frankie Shop LLC v. Jie Wen, WIPO Case No. D2022-4197. It is a well-established principle according to a consensus of UDRP panels that the use of a domain name for “illegal activity[,] [such as] [...] impersonation/passing off, or other types of fraud[,] can never confer rights or legitimate interests on a respondent.” WIPO Overview 3.0 , section 2.13.1. See also Frankie Shop LLC v. Domain Protection Services, Inc. / My Mo, WIPO Case No. D2022-0825. Having reviewed the record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. page 6 C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may also be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0 , section 3.2.1. Complainant contends that Respondent’s configuration of the disputed domain name demonstrates a knowledge of and familiarity with Complainant’s well-known brand and business by registering a domain name that incorporates the SUNBRELLA Mark in its entirety with the addition of the term “canvas” appended after Complainant’s mark. Complainant contends such configuration also shows Respondent’s intent to create a false association in the minds of consumers between Respondent’s offered fabric goods and Complainant’s SUNBRELLA Mark fabric products because it is implausible that Respondent was not aware of Complainant’s SUNBRELLA Mark and its association with fabrics, given the brand’s renown - both generally, and in the fabric business in which Respondent’s copycat website purports to operate. The Panel notes there can be no doubt of Respondent’s knowledge of Complainant’s mark since Complainant shows that Respondent actually sells (or at least, claims to sell) fabrics labeled with the SUNBRELLA Mark on its website. Respondent has thereby intentionally created a domain name for registration that is confusingly similar to Complainant’s trademark, as well as its official domain name. Prior UDRP panels have found a domain name was registered in bad faith where the respondent registered the well-known domain name for the purpose of intentionally attempting to impersonate or mislead in order to commit fraud. See, e.g., Houghton Mifflin Co. v. The Weathermen Inc., WIPO Case No. D2001-0211 ; Hachette Filipacchi Presse v. Domains by Proxy, LLC / Al-Rahim International, WIPO Case No. D2014-1635; Accor v. Jiangdeyun, WIPO Case No. D2011-2277. Prior UDRP panels have also held where the disputed domain name is configured in a manner to wholly incorporate a complainant’s mark, as Complainant’s Mark is incorporated here, with an added term, “canvas”, related to Complainant’s fabrics industry, the disputed domain name can only sensibly refer to Complainant; thus, there is no obvious possible justification for Respondent’s selection of the disputed domain name other than registration in bad faith. See Frankie Shop LLC v. Bgeew Aferg, WIPO Case No. D2022-3619 . As discussed in greater detail in Section 6.B above, Complainant shows in evidence in the Annexes to its Complaint that Respondent used the disputed domain name to configure a copycat website to impersonate Complainant attempted to attract Internet users seeking Complainant’s products through the purported sale by Respondent of competing or possibly counterfeit products at discounted prices constitutes evidence of bad faith use under the well-established principles in the cases decided under the Policy. See WIPO Overview 3.0 , section 3.4 and The Coca-Cola Company v. PrivacyProtect.org/ N/A, Stephen Chukwumaobim, WIPO Case No. D2012-1088; Ropes & Gray LLP v. Domain Administrator, c/o DomainsByProxy.com / Account Recievable, WIPO Case No. D2020-0294. Complainant also contends Respondent’s bad faith is also evident from the concealment of its identifying information, and attempts to evade contact using false or inoperative registration data. Complainant shows the contact information on Respondent’s website is false because there is no business by the given name in the given location, which location does lead to an actual business address. Having reviewed the record, the Panel finds Respondent’s registration and use of the disputed domain name constitutes bad faith registration and use under the Policy. The Panel finds that the evidence presented here: 1) Respondent’s copycat website using Complainant’s trademark as well as what appears to be pirated content displaying infringing copies of Complainant’s copyright protected digital images of its products; and 2) offering users the possibility to order competing if not counterfeit products promoted on its website, is sufficient for this Panel to find bad faith registration and use. Under these circumstances, there can be little doubt Respondent had actual knowledge of Complainant, targeted Complainant’s mark and used its actual knowledge to configure a mimic website for its commercial advantage. Accordingly, Complainant has established the third element of the Policy. page 7 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 <sunbrellacanvas.com> be transferred to Complainant. /Scott R. Austin/ Scott R. Austin Sole Panelist Date: December 17, 2024

Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.