WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kravet, Inc. v. Vietnam Domain Privacy Services / Pham Dinh Nhut
Case No. D2017-1397
1. The Parties
The Complainant is Kravet, Inc. of New York, 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 Vietnam Domain Privacy Services of Ho Chi Minh City, Viet Nam / Pham Dinh Nhut of Ho Chi Minh City, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <kravetfurniture.com> (the “Domain Name”) is registered with April Sea Information Technology Corporation (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2017. On July 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint and confirming Vietnamese as the language of the Registration Agreement. The Center sent an email communication to the Complainant on July 28, 2017, 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 1, 2017. In response to an email communication from the Center of July 28, 2017, the Complainant requested that English be the language of the proceeding on the same day. On August 1, 2017, the Respondent requested that Vietnamese be the language of the proceeding.
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 in both English and Vietnamese, and the proceedings commenced on August 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2017. The Respondent did not submit any response.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on August 28, 2017. 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 is a distributor of decorative textiles and furnishings to the design industry. Founded in 1918 by a tailor from Russia, Samuel Kravet and his four sons, the family provided tailoring services but later expanded to sell fabric and trimmings to the interior design trade. During the 1960s, the Complainant’s distribution expanded through a national showroom network and international distribution. The expansion continued and the Complainant increased its product offerings to furniture, carpet and lighting. Today, the Complainant employs over 500 people and it has 42 corporate showrooms and 50 agent showrooms worldwide.
The Complainant owns numerous trademark registrations for “KRAVET” and “KRAVET FURNITURE”, including United States of America registrations no. 1240403 (registered May 31, 1983) and 2571650 (registered May 21, 2002), and European registration no. 002980522 (registered April 9, 2004).
The Complainant has an extensive following on social media platforms, such as Facebook, Twitter and Instagram.
At the time of filing of the Complaint, and also at the time of drafting this decision, the Domain Name resolved to a pay-per-click landing webpage. The Domain Name registration was set to expire August 3, 2017, but has been placed under “registrar lock” until this UDRP proceeding is concluded.
5. Parties’ Contentions
The Complainant provides trademark registrations, and submits that its trademark is well-known in the market. The Complainant argues that the Domain Name is identical to the Complainant’s trademark. The Domain Name incorporates the Complainant’s trademark in its entirety.
The Complainant argues further that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the Complainant’s trademarks. The Respondent uses the Domain Name to resolve to a pay-per-click landing page. The web page displays links for home design and modern furniture companies that compete with the Complainant. According to the Complainant, the Respondent is capitalizing on the reputation and goodwill of the Complainant’s brand and gaining monetary compensation in the process. This does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Mere ownership of a domain name is not sufficient to show that a respondent has been commonly known by the domain name.
As to bad faith, the Complainant argues that the Respondent must have been aware of the Complainant’s trademark at the time of the registration of the Domain Name. The reputation of brands and trademarks transcends national borders. Even a cursory Internet search on the part of the Respondent would have disclosed the “KRAVET FURNITURE” brand and its extensive use by the Complainant. The term “KRAVET” has been associated with the Complainant’s furniture industry for more than 25 years. Further, the Respondent uses the Domain Name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s registered trademarks as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s website. The Respondent’s registration and use of the Domain Name constitute bad faith because the Respondent disrupts the Complainant’s business and unfairly competes with the Complainant by using the Domain Name to resolve to a webpage that features pay-per-click advertisements for various commercial websites including websites in competition with the Complainant. The Respondent is likely to receive pay-per-click commissions. Hence, according to the Complainant, the Respondent generates revenue at the expense of the trademark owner by taking advantage of the trademark’s reputation.
The Respondent has not replied to the Complainant’s contentions, but he sent a reply email on August 1, 2017 to the Center’s language notification, requesting “Vietnamese as language of proceedings”.
6. Discussion and Findings
6.1. Language of the Proceeding
Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement, unless otherwise agreed by the parties. Importantly, paragraph 11(a) also states that the determination of the language of the proceeding is “subject to the authority of the Panel… having regard to the circumstances of the administrative proceeding”. The language of the Registration Agreement here is Vietnamese. The Complainant submitted its Complaint in English, and subsequently requested that English be the language of the proceeding. The Complainant argued that a review of the Respondent’s domain portfolio shows that the Respondent has a working knowledge of the English language with the registration of other domain names which have words with English meaning such as <speedteclights.com> and <trianglerentalcars.com>. Furthermore, the Complainant argues, the Respondent has been party to numerous UDRP disputes, where the panelists have concluded that the Respondent has a competent understanding of the English language. Therefore, it is evident that the Respondent is competent in English. The Complainant further argues that requesting the Complainant to translate and submit this complaint in English would not be acting in keeping with the overriding principles in paragraph 10, in particular 10(b) that the parties should be treated equally and given a fair opportunity to present its case and 10(c) which preserves the time span of the process.
The Panel finds that the Respondent is on the balance of probabilities likely to understand English. As mentioned above, the Respondent sent an email to the Center in English, requesting “Vietnamese as language of proceedings”. The Respondent has also registered several domain names with English words and has been a party to other UDRP disputes. See, e.g., Herald & Weekly Times Pty Limited v. Vietnam Domain Privacy Services / Pham Dinh Nhut, WIPO Case No. D2016-1162 (<heraldsunsupercoach.com>). Moreover, the Panel notes that even if the Center’s case-related communications have been in both Vietnamese and English, the Respondent has failed to participate in the proceeding beyond requesting that the language of the proceeding be Vietnamese. The Respondent has decided not to give any reasons, neither in English nor Vietnamese, for why he has registered a domain name identical to the Complainant’s trademark, a trademark that includes the English dictionary word “furniture”.
Based on the above, the Panel determines that the language of this proceeding will be English.
Turning to the merits of the case, in order to prevail, the Complainant must prove the three elements in paragraph 4(a) of the Policy.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademarks KRAVET and KRAVET FURNITURE.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name is identical to the Complainant’s trademark KRAVET FURNITURE. For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”.
The Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register a domain name containing its trademark or otherwise make use of its mark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. The Respondent uses the Domain Name to resolve to a pay-per click-landing page. The web page displays links for home design and modern furniture companies that compete with the Complainant. This is not a bona fide offering nor a legitimate noncommercial or fair use, within the meaning of the Policy.
There is no evidence on the record to show that the Respondent is generally known by the Domain Name.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its business when the Respondent registered the Domain Name.
The Panel finds that on the balance of probabilities the Respondent registered and holds the Domain Name with the intention of confusing Internet users into believing that the Domain Name is associated with the Complainant. The use of the Domain Name to receive pay-per-click commissions constitutes bad faith. It disrupts the Complainant’s business and unfairly competes with the Complainant inter alia because the pay-per-click webpage includes websites in competition with the Complainant. The bad faith is supported by the fact that the Respondent has not responded to the Complainant’s contentions.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the paragraph 4(a)(iii) of the Policy.
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 <kravetfurniture.com> be transferred to the Complainant.
Date: September 1, 2017