The Complainant is Urban Hardwoods LLC of Seattle, Washington, United States of America ("United States"), represented by Foster Pepper PLLC, United States.
The Respondent is Raj Mohan / R.M.C. Group of Companies of Jodhpur, Rajhasthan, India, represented by LexOrbis, India.
The disputed domain name <urbanhardwoodfurniture.com> is registered with Net 4 India Limited (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 15, 2018. On May 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 May 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2018. The Response was filed with the Center on June 13, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 27, 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.
The Complainant is located in Seattle, Washington in the United States. It started using the trademark URBAN HARDWOODS in connection with furniture and wood used in the production of furniture on September 19, 2003. It has been using the trademark continuously since then.
It has two registered trademarks in the United States for URBAN HARDWOODS:
(a) United States Registered Trademark No. 3,384,019 in respect of " lumber; slabs of furniture-grade hardwood " in International Class 19 and which was registered on February 19, 2008; and
(b) United States Registered Trademark No. 3,350,514 in respect of furniture, living room furniture and tables in International Class 20 which was registered on December 4, 2007.
Trademark No. 3,350,514 is registered in the Supplemental Register only. Trademark No. 3,384,019 disclaims the word "hardwoods".
The Complainant also has a registration for a stylized version of UH: United States Registered Trademark No. 4,514,193 in respect of furniture, living room furniture and tables in International Class 20 which was registered on April 15, 2014.
The Complainant has also registered and uses for a website the domain name <urbanhardwoods.com>.
The Respondent offers for sale from Denver, Colorado in the United States furniture manufactured in and imported from India. In fact it is based in India, and as stated in the Response has a presence as an importer in Denver, Colorado. It was established in 2013 and registered the disputed domain name in July 2013. Since then, the disputed domain name has resolved to a website which offers for sale hardwood furniture products under the name "Urban Hardwood Furniture Handcrafted". Some of the Respondent's social media pages use the name "Urban Hardwood Handcrafted Furniture". The Respondent's website uses the name in conjunction with a device element which is a slightly stylised form of the acronym "UH". According to the Response, the Respondent's turnover in the financial year 2017-18 was USD 1.5 million.
The Complainant says it first discovered the Respondent's registration and use of the disputed domain name in December 2017. It lodged a notice and takedown complaint with the then host of the Respondent's website. Before that host implemented the takedown, the Respondent moved its registration of the disputed domain name to the current Registrar.
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.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
The first element that the Complainant must establish is that the disputed domain name is identical with, 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 Complainant has proven ownership of the two registered trademarks in the United States for URBAN HARDWOODS. One is on the Principal Register and disclaims the term "hardwoods", and the other Trademark No. 3,350,514 is registered on the Supplemental Register.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), at section 1.2.2 records the long-established view of Panels that the registration of a trademark solely in the Supplemental Register does not by itself provide sufficient evidence of distinctiveness to support a finding of trademark rights under the Policy. It is therefore necessary for a complainant to show that its trademark, where registered in the Supplemental Register only, has acquired secondary meaning.
Here, the Complainant does claim its mark has acquired secondary meaning sufficient to give it rights in the expression "Urban Hardwoods" as an unregistered trademark. It states:
"The name URBAN HARDWOODS is well-known to [sic] especially in the niche field of interior designers and the design community. The Complainant has spent a great deal of effort and resources to protect and enforce its valuable trademark".
The Complainant also points out that it has been using its trademark since 2003. Annex 6 to the Complaint also includes some screenshots from the Wayback Machine at "www.archive.org" of a page of the Complainant's website in August 2010, February 2014 and October 2015.
The Complainant's claim to acquired distinctiveness may be true. Its generalised assertion, however, falls well short of what is required under the Policy to establish that claim. There is no evidence of sales volumes, advertising expenditure or of objective public recognition. Thus, WIPO Overview 3.0section 1.3 records the accepted view of panels that:
"Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning".
On the evidence in the record in this proceeding, therefore, the Panel finds that the Complainant has proven ownership only of Trademark No. 3,384,019 in respect of "lumber; slabs of furniture-grade hardwood". The disputed domain name differs from this trademark only by the addition of the word "furniture" and the generic Top-Level Domain ("gTLD"), ".com".
Generally, the inquiry involved at this stage is simply a visual and aural comparison of the disputed domain name to the proven trademark. In undertaking that comparison, it is permissible in the present circumstances to disregard the gTLD component as a functional aspect of the domain name system: WIPO Overview 3.0, section 1.7. 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.
The Complainant's trademark is clearly visible and recognisable within the disputed domain name. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant's trademark. The requirement under the first element of the Policy, paragraph 4(a), is satisfied.
Under the third element of the Policy, paragraph 4(a), 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 Complainant contends that bad faith should be inferred from the close similarity of the names used by the two competing businesses, the close similarity of the appearance of their respective websites including the use of the acronym, "UH", as part of their branding. It argues that the Respondent is trying to divert customers from the Complainant by offering lesser quality products under a confusingly similar name.
The Respondent mistakenly contends that, for the Complainant to succeed under this head, it must establish that the disputed domain name was registered in one of the circumstances listed in paragraph 4(b) of the Policy. Paragraph 4(b), however, provides:
"For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the Respondent has] registered or [the Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the [C]omplainant who is the owner of the trademark or service mark or to a competitor of that [C]omplainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or
(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's] website or location or of a product or service on your website or location". (emphasis supplied).
As the emphasised words indicate, however, the instances of bad faith set out in paragraph 4(b) of the Policy are examples only, intended to illustrate types of conduct which is caught by the Policy. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
If the Complainant's trademark rights as reflected on the Principal Register did extend to furniture, the Complainant's case would have greater force as use of another's trademark in infringement of that other's trademark would not typically qualify as good faith conduct under the Policy.
On the record in this case, however, the Complainant's proven trademark rights for the purposes of the Policy are limited to "lumber; slabs of furniture-grade hardwood".
Further, the Respondent points out the descriptive nature of the expressions "urban hardwoods" and "urban hardwoods furniture". In addition to the restriction of one of the Complainant's trademark registrations to the Supplemental Register, the Respondent also points to numerous other businesses using "urban hardwoods" or close analogues as the name of their businesses. These include:
- urbanhardwoodflooring.com (registered in 2006);
- indyurbanhardwood.com (registered in 2016);
- Urban Hardwood Recovery LLC;
- Urban Forest Hardwoods;
- Urban Hardwood Products Inc.; and
- Urban Woods.
The Panel accepts that there is a degree of similarity in the layout of the respective websites. However, it does not appear to the Panel that either website has an especially distinctive layout or arrangement. The display of products on both sites appears to be conventional. There is also a degree of resemblance in the fact that both the Complainant and the Respondent use as a device, the element "UH". The use of an acronym is not itself particularly surprising in modern marketing practices. Moreover, the Respondent's device element is only very faintly stylised. Only the other hand, the Complainant's device is highly stylised with the "U" appearing inside and as part of the upper half of the "H". Apart from the fact that both are, or can be read as "UH", they are very different.
Taking into account all these matters, the Panel is unable to find that the Complainant has met its burden of proving the Respondent's bad faith, at least in the limited context provided for under the Policy. As the panelist said in Nationwide Mutual Insurance Company v. Tim Parker, WIPO Case No. D2014-0655 in the context of considering the third element under the Policy, paragraph 4(a):
"where a respondent registers a domain name consisting of 'dictionary' terms because the respondent has a good faith belief that the domain name's value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. …. In some instances a respondent may form such a good faith belief even when its goods and services compete directly with those of the complainant …." (citations omitted).
The panelist continued:
"The Panel notes that Policy was not intended to permit a party who elects to register or use a common term or terms as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner".
The Panel would emphasise the important qualification to "in some instances" made by the panelist in Nationwide Mutual Insurance Company v. Tim Parker, supra. The panel's comments and that important qualification direct attention especially to the good faith or otherwise of the conduct.
And, as discussed above, the record in this case does not permit a finding that the Complainant's use and reputation had extended further sufficiently to disentitle the Respondent from using what is otherwise a descriptive term for its business.
Accordingly, the Complainant has failed to establish the third element under the Policy, paragraph 4(a), and the Complaint must fail.
As the Complaint must fail, no good purpose would be served by considering the second requirement under the Policy.
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Date: July 14, 2018
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