WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kravet, Inc v. Youri van Oostendorp, Calipseo B.V. / Y. v. Oostendorp, Calipseo B.V.
Case No. D2018-0400
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.
The Respondent is Youri van Oostendorp, Calipseo B.V. / Y. v. Oostendorp, Calipseo B.V. of Amsterdam, Netherlands, self-represented.
2. The Domain Name and Registrar
The disputed domain name <kravet.shop> is registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2018. On February 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2018, the Registrar transmitted by email to the Center its verification response confirming that it is the Registrar, the Respondent is listed as the registrant, providing the Respondent’s contact details and English is the language of the registration agreement.
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 the Respondent of the Complaint, and the proceedings commenced on March 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2018. The Response was filed with the Center on March 22, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 29, 2018. 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. The business was founded in 1918 when a tailor from Russian Federation and his four sons began providing tailoring services to wealthy residents of New York. The business expanded over time to include the sale of fabric and trimmings to the interior design trade, then to the hospitality and healthcare trades, furniture from 1991, carpets from 2005 and lighting from 2007.
According to the Complaint, the Complainant employs over 500 people, has 42 corporate showrooms and 50 Agent showrooms “worldwide”. The details provided in Annex 4 provide evidence of 26 showrooms and 46 Agents’ showrooms in the United States; three showrooms and four Agent’s showrooms in Canada.
The Complainant says it has over 31,000 followers on Facebook, over 10,000 followers on Pinterest, over 43,000 followers on Twitter and over 99,000 followers on Instagram. It also distributes brochures and catalogues and its merchandise has featured in magazines such as Country House, Modern Luxury Interiors Texas, House & Hoe and Elle Décor.
The Complainant owns a number of registered trademarks including:
- United States Trademark No. 1,240,403, KRAVET, for fabrics and wall coverings in International Class 24 and which was registered from May 31, 1983 claiming a first use in commerce from 1961;
- United States Trademark No. 2,602,037, KRAVET DESIGN, for fabrics and textiles in International Class 24, which was registered from July 30, 2002 claiming a first use in commerce from September 1, 1999;
- European Union (EU) Trademark No. 002980522, KRAVET, registered from June 9, 2004 in respect of a range of goods in International Classes 20, 24 and 26; and
- Canadian Trademark No. TMA643805, KRAVET, registered from January 10, 2003 in respect of a range of goods in International Classes 20, 24 and 26.
The disputed domain name was registered on September 26, 2016.
It has been inactive since that date.
The Respondent is apparently involved in the field of interior design. Amongst other things, the Respondent has registered some 292 domain names in addition to the disputed domain name. These other registrations include many incorporating well-known fashion or design brands such as <versacehome.shop>, <voguefashion.shop> and <jeanpaulgaultier.shop>, which do not resolve to an active website and apparently are not in use.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel notes that the language of the registration agreement for the disputed domain name is in English and is the default language of the proceeding unless the parties agree otherwise or there is some other good reason: see paragraph 11 of the Rules and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5. In addition, both the Complaint and the Response have been submitted in English.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical or confusingly similar to the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Respondent contends that the way the Complaint is framed presents the trademark rights relied on by the Complainant as a conjunctive composite of registered rights, goodwill in its brand and secondary meaning. The Respondent then contends that the Complainant has failed to establish goodwill in accordance with the requirements of the Policy – see WIPO Overview 3.0, section 1.3 – and accordingly fails to establish the first requirement under the Policy.
It is unnecessary to explore whether the Complainant has established its claim to “goodwill in its brand” or the extent of that goodwill as registered trademarks in themselves clearly satisfy the requirement for a “trademark” under paragraph 4(a)(i) of the Policy: WIPO Overview 3.0, section 1.1.
Bearing that in mind, the Complainant has proven ownership of at least the registered trademarks referred to in Section 4 above. Three of those are for the work KRAVET alone.
The second stage of this inquiry requires a visual and aural comparison of the disputed domain name to the proven trademarks: see WIPO Overview 3.0, section 1.7. In making this comparison, it is permissible to disregard the generic Top-Level Domain (“gTLD”) included in the domain name as a functional requirement of the domain name system. Further, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the gTLD, “.shop”, the disputed domain name consists solely of the Complainant’s first United States Trademark, the EU Trademark and the Canadian Trademark. The Panel finds therefore that the disputed domain name is identical to these trademarks.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head, and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., section 2.1 of the WIPO Overview 3.0.
The Complainant states that it has not licensed or authorised the Respondent to use its trademark. There is no other association between the Complainant and the Respondent. The disputed domain name is not derived from the Respondent’s name or any name of the various entities which the Complainant has been able to identify the Respondent being associated with. In addition, the disputed domain name has been inactive since its registration. These matters, bearing in mind the registration of the Complainant’s trademark (including as an EU trademark where the Respondent apparently carries on business) long before the disputed domain name was registered are sufficient to raise a prima facie case that the Respondent does not have rights or a legitimate interest in the disputed domain name.
The Respondent advances two main points in rebuttal. First, the Respondent says it registered the disputed domain name to establish a platform from which to offer for sale the Complainant’s products once the Respondent reaches agreement with the Complainant about this. Secondly, the Respondent says that Annex 7 to the Complaint shows that the Respondent is already known as, or trading under “Kravet”.1
The Respondent’s second argument seems to contradict the first argument in that it suggests the Respondent is already using the name “Kravet”. Annex 7 to the Complaint, however, consists of extracts from the Complainant’s catalogue or website, a print-out of the Complainant’s advertisement in Elle Décor and some images of “Michael Berman for Kravet Furniture” and “Thom Filicia for Kravet Furniture”. None of the contents shows the Respondent as, or under the name “Kravet”. Moreover, the Respondent’s first argument makes it clear that the Respondent is not yet operating as “Kravet”.
Perhaps, the Respondent intended to convey an intention to use the disputed domain name in some way like the “Michael Berman” / “Thom Filicia” use. There are a number of problems with this contention (if that is what is being contended). First, the evidence does not show what, if any, domain name is being used in connection with those posited uses or by whom. Secondly, the uses in question take the form “[name] for [trademark]” and not just [trademark] gTLD. Usually, cases involving a successful claim along the lines of the Oki Data test do not involve a domain name which consists solely of the complainant’s trademark: WIPO Overview 3.0, section 2.8.2. Thirdly, and in any event, it is entirely speculative. Most successful claims in reliance on the Oki Data test involve satisfaction of the first element that the respondent is actually offering the goods or services at issue: WIPO Overview 3.0, section 2.8.1.
Paragraph 4(c)(i) does contemplate that demonstrable preparation to use the disputed domain name in good faith can suffice. It is worth recalling what the Respondent claims. The Respondent says it intends to use the disputed domain name as a platform to promote the sale of the Complainant’s products once (that is, if)the Respondent and the Complainant reach agreement to appoint the Respondent as a distributor.2
The Panel considers this falls well short of what is required to establish that the Respondent has been making demonstrable preparations to use the disputed domain name in connection with a good faith offering of goods or services.
It is clear on the record in this proceeding that the Respondent is not actually trading in the Complainant’s products: rather, the Respondent says it plans, or hopes, to do so if agreement can be reached with the Complainant. Establishing demonstrable preparations for use for the purposes of paragraph 4(c)(i), however, requires clear evidence of good faith preparations before the dispute: WIPO Overview 3.0 section 2.2.
The mere registration of a domain name by itself is not sufficient to constitute demonstrable preparations to use the disputed domain name for the purposes of paragraph 4(c)(i) of the Policy. All the more so where, as here, the Respondent was well aware of the Complainant’s trademark before registering the disputed domain name. Moreover, more than a year passed following registration of the disputed domain name before the idea of operating as the Complainant’s distributor was even raised with the Complainant. Even then it was only in response to a cease and desist letter from the Complainant’s representatives. The Response does not explain this delay.
In attempted mitigation of the delay, the Respondent says that the developer whom it planned to use to develop the website became embroiled in litigation which disrupted that development. The Respondent has submitted a document which it says evidences the dispute which its then developer became embroiled in. The document is in Dutch and no translation has been provided. It appears to be some form of draft agreement with signature clauses for dates at some unspecified time in 2017. The Respondent says it has now appointed a new developer “who is expected to proceed and accomplish the tasks of coding” etc. to establish the new platform. A document bearing what appears to be a date “4-12-2017” has been submitted in corroboration of this claim. It is also in Dutch and no translation has been provided. It is also unsigned by either party. The status of the “agreement” and the duration of the proposed project, including if it has even started, are unclear and not explained. In any event, the Response continues:
“the Respondent is clear on the fact that it intends to work closely with the Complainant for purposes of enhancing business relationship, thus, the Respondent to purchase the products of Complainant with a view of putting the same on sale as a certified retailer of the Complainant’s products.”
This appears to indicate that the whole project is contingent upon the Complainant being prepared to appoint the Respondent as an authorised agent (certified retailer) of its “Kravet” range of products. If all this be true, however, what it does not explain is the delay in even broaching the subject with the Complainant. The Panel finds it very difficult to countenance this approach as in good faith under the Policy.
Even assuming in the Respondent’s favour that its current intention is to operate a website of the kind it describes, the possibility of doing so is far too contingent on reaching some form of arrangement with the Complainant. The contingency of agreement with the Complainant for the proposed business activity is not sufficiently concrete to qualify as demonstrable preparations to use the disputed domain name in connection with a good faith offering of goods or services under the Policy.
The speculative nature of the whole project is reinforced by the number of other domain names registered by the Respondent, including many incorporating famous fashion or design brands which are inactive.
In these circumstances, the Panel finds that the Complainant has established the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Respondent has effectively admitted it knew of the Complainant’s trademark before it registered the disputed domain name given its claims to have registered the disputed domain name for a proposed business with the Complainant. So far as the record in this case shows, there was no basis for that registration other than to take advantage of its significance as the Complainant’s trademark. The Respondent contends it has the right to do so under trademark law. However, as already discussed in section 5B above, the Panel has found that the Respondent does not have a right or legitimate interest so to have done. Accordingly, the Panel finds that the Respondent registered the disputed domain name in bad faith under the Policy. Moreover, it is now well established that the passive holding of a domain name in the absence of a right or legitimate interest in it qualifies as use in bad faith under the Policy: Telstra Corporation v Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel finds therefore that the Complainant has established on the record in this case that the Respondent registered and is using the disputed domain name in bad faith contrary to 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 disputed domain name <kravet.shop> be transferred to the Complainant.
Warwick A. Rothnie
Date: April 10, 2018
1 The Panel notes that Annex 7 to the Response is the WhoIs record for the disputed domain name which, of itself, does not constitute proof for the purposes of paragraph 4(c)(ii).
2 The Panel notes this claimed justification precludes reliance on the circumstances outlined in paragraph 4(c)(iii).