K&N Engineering, Inc. v. Mike
Weinberger
Claim Number: FA0205000114414
PARTIES
Complainant
is K&N Engineering, Inc.,
Riverside, CA (“Complainant”) represented by David J. Steele, of Christie,
Parker & Hale LLP. Respondent
is Mike Weinberger, Kailua Kona, HI
(“Respondent”) represented by Stephen H.
Sturgeon, of Stephen H. Sturgeon
& Associates, PC.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <knfiltercharger.com>,
<knnairfilters.com>, <goknfilters.com>, <goknairfilter.com>, and <goknairfilters.com>, registered with VeriSign, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 28, 2002; the Forum received a hard copy of the Complaint
on May 28, 2002.
On
June 3, 2002, VeriSign, Inc. confirmed by e-mail to the Forum that the domain
names <knfiltercharger.com>,
<knnairfilters.com>, <goknfilters.com>, <goknairfilter.com>, and <goknairfilters.com> are registered with VeriSign, Inc. and
that the Respondent is the current registrant of the name. VeriSign, Inc. has verified that Respondent
is bound by the VeriSign, Inc. registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
June 3, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 24,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@knfiltercharger.com, postmaster@knnairfilters.com, postmaster@goknfilters.com,
postmaster@goknairfilter.com, and postmaster@goknairfilters.com by e-mail.
A
timely Response was received and determined to be complete on June 24, 2002.
Complainant submitted an Additional Submission, which pursuant to the Forum’s
Supplemental Rule 7 was timely received June 27, 2002.
On July 11, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations in this proceeding:
Respondent
has filed domain names that are confusingly similar to Complainant’s
established marks. Respondent has no
rights to or legitimate interest in the marks. Respondent registered the domain
names containing Complainant’s marks in bad faith.
B. Respondent makes the following points in
response.
Respondent’s
timely Response recites ICANN Policy and Rules and makes a general statement
that Complainant failed to satisfy that burden. Respondent contends that he has rights to and legitimate
interests in the domain name because he is a retail seller of Complainant’s product. Respondent further states that he has no bad
faith.
C. Additional Submission
Complainant
urges in its Additional Submission that while Respondent sells Complainant’s
product, Respondent is not an authorized agent of Complainant and has no
license or permission to operate using Complainant’s trademarks.
Complainant
also complains of technical defects in Respondent’s Response, including the
small font, which kept Respondent’s Response within the ten-page limit.
FINDINGS
Complainant
established in this proceeding that it has legal rights to the marks contained
in their entirety in the domain names registered by Respondent by virtue of
trademark registration and continuous use in commerce.
Complainant holds as many as ten trademark
registrations in eight international countries for its line of vehicle air
filters. Complainant’s use in commerce
preceded Respondent’s registration of the domain names in issue by a decade.
Complainant has numerous dealers operating in the United States and ten such
licensed operators in Hawaii, which is Respondent’s home state. Complainant
also operates websites under its mark and as many as tens of millions of
Internet users access the sites.
Respondent’s use of the various domain names
containing Complainant’s established trademarks seems calculated to generate
the likelihood of confusion among Internet users attempting to access
Complainant’s sites.
Respondent is not known by Complainant’s marks and
Respondent’s conduct suggests attempts to capitalize, opportunistically, on
Complainant’s goodwill and fame.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that Complainant must prove each of the following
three elements to obtain an order that a domain name should be cancelled or
transferred:
(1)
the domain name registered by Respondent 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 domain name;
and
(3)
the domain name has been registered and is being used in bad faith.
Identical to and/or Confusingly Similar
Complainant
has operated its business since 1963 and claims to be a leader in automotive
technology. Complainant manufacturers
air filters and uses its trademarks K & N and FILTER CHARGER to denote its
air filters. Complainant has the marks
K & N and FILTER CHARGER registered with the United States Patent and
Trademark Office, respectively Reg Nos. 1,536,024 and 1,281,461.
Complainant
owns <knfilters.com> and <knfilter.com> and Complainant operates a
website at <knfilters.com> where it provides information about its
products and facilitates sales with its authorized distributors. Complainant claims that the website at
<knfilters.com> receives “millions of hits each year from [its] customers
and others in the automotive industry.”
Complainant asserts common law rights in the KNFILTERS mark because of
the ongoing business conducted at its website.
See Bibbero Sys., Inc. v.
Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding common
law rights in the mark BIBBERO as the Complainant, Bibbero Systems, Inc
(Complainant owns a trademark for its full company name) had developed brand
name recognition with the BIBBERO term by which the Complainant is commonly
known).
Complainant
asserts that the <knfiltercharger.com> domain name is confusingly
similar to its K & N and FILTER CHARGER marks because it combines a common
abbreviation of the K & N mark with the entire FILTER CHARGER mark. Complainant points out that the omission of
the “&” symbol is of no relevance because ampersands are not permitted in
domain names. See PG&E Corp. v. Anderson, D2000-1264
(WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at
<pge.com> because the ampersand symbol is not reproducible in a domain
name); see also McKinsey Holdings,
Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal
of the ampersand from “McKinsey & Company” does not affect the user’s
understanding of the domain name, and therefore the domain name <mckinseycompany.com>
is identical and/or confusingly similar to the mark “McKinsey & Company”).
Complainant
claims that the <knnairfilters.com> domain name is confusingly
similar to its marks because the domain name replaces the “&” with an “n”
along with adding “airfilters,” which refers to Complainant’s products. Complainant asserts that the “n” easily
replaces the sound of “&,” which denotes “and.” See Hewlett-Packard
Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that
a domain name which is phonetically identical to Complainant’s mark satisfies ¶
4(a)(i) of the Policy); see also VeriSign
Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the
pronunciation and spelling between the domain name <venesign.com> and the
Complainant’s mark, VERISIGN, are so close that confusion can arise in the mind
of the consumer); see also Space Imaging
LLC v. Brownwell, AF-0298 (eResolution
Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain
name combines the Complainant’s mark with a generic term that has an obvious
relationship to the Complainant’s business); see also Marriott Int’l v. Café au lait, FA
93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain
name <marriott-hotel.com> is confusingly similar to Complainant’s
MARRIOTT mark).
Complainant
claims that the <goknfilters.com> domain name is confusingly
similar to its KNFILTERS mark because the addition of a common word, such as
“go,” does not defeat a “confusingly similar” claim. See Arthur Guinness
Son & Co. (Dublin) Ltd. v.
Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity
where the domain name in dispute contains the identical mark of the Complainant
combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding that “[n]either the addition of an ordinary descriptive word…nor the
suffix ‘.com’ detract from the overall impression of the dominant part of the
name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is
satisfied).
Finally,
Complainant asserts that the <goknairfilters.com> and <goknairfilter.com>
domain names are confusingly similar to its K & N mark because the domain
names contain the common word “go” and industry-related word “filter” or
“filters.” See Space Imaging LLC v. Brownwell, supra; see also Marriott Int’l v. Café au lait, supra.
Respondent
argues that the disputed domain names are not confusingly similar to
Complainant’s marks because Complainant is not entitled to all domain names
containing its trademarks. This
argument is not accompanied by authorities to that effect and is not
persuasive.
The Panel finds that ICANN Policy ¶ 4(a)(i) relative to
“confusing similarity,” has been satisfied.
Respondent
uses the disputed domain names to link to a website that sells Complainant’s
air filters without Complainant’s authorization. Respondent’s website uses Complainant’s copyrighted text,
copyrighted photographs and stylized logo.
Complainant notes that Respondent “clearly identifies K & N as the
owner and operator” of the website to which the domain names link.
Complainant
urges that Respondent uses the domain names to “secure commercial gain.” Therefore, Complainant argues that the
domain names are not being used in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) or in association with a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec.
10, 2000) (finding that domain names used to sell Complainant’s goods without
Complainant’s authority, as well as others’ goods is not bona fide use); see
also Chanel, Inc. v. Cologne Zone,
D2000-1809 (WIPO Feb. 22, 2001) (finding that use of Complainant’s mark to sell
Complainant’s perfume, as well as other brands of perfume, is not bona fide
use); see also Am. Online Inc. v.
Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000)
(finding that Respondent’s operation of website offering essentially the same
services as the Complainant and displaying the Complainant’s mark was
insufficient for a finding of bona fide offering of goods or services).
Complainant contends that Respondent is
not “known by any name that is similar to the subject domain names.” Complainant also states that Respondent is
not authorized to use Complainant’s marks in any manner. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the domain name in question).
In its Additional Submission, Complainant
asserts that Respondent is not an authorized dealer of Complainant’s products
as Respondent claims to be, because Complainant never explicitly authorized
Respondent to sell its products.
Complainant contends that, even if Respondent were an authorized dealer,
Respondent would not acquire an absolute right to use Complainant’s marks. Complainant notes that authorized dealers
are allowed to use trademarks to advertise but not in a way that is deceptive
or confusing.
Respondent asserts
that Complainant did not prove that Respondent has no rights or legitimate
interests in the disputed domain name.
Respondent claims to be a retail seller of Complainant’s products but
Respondent did not produce documentation to support that claim. Complainant insists unequivocally that
Respondent has no such rights.
Were Respondent an
authorized agent of Complainant, some authorities suggest that Respondent would
have a right to use the marks as advertising tools in order to efficiently sell
the Complainant’s products. Respondent
urges that “[b]ecause Respondent’s [sic] is a bona fide, authorized distributor
of Complainant’s products, there is an absolute right to use the trademark in
the marketing and sale of Complainant’s products.” Under Weber-Stephen Prod. Co. v. Armitage
Hardware, D2000-0187
(WIPO May 11, 2000) the Respondent was an authorized dealer of the
Complainant’s WEBER GRILL products, and had rights and legitimate interests in
use of and promoting domain names including the mark because it was using the
domain names in order to make a bona fide offering of Complainant’s goods and
services. The same is true under Oki Data Americas, Inc. v. ASD Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (an authorized dealer of Complainant’s goods may
use Complainant’s trademark in its domain name if Respondent is 1) actually
selling the goods or services at issue; 2) selling only Complainant’s products;
3) accurately disclosing the relationship between Complainant and Respondent;
and 4) has not attempted to corner the market in all domain names incorporating
Complainant’s mark and thereby prevented Complainant from reflecting its mark
in its own domain name). Respondent has
not refuted Complainant’s strong statement that Respondent is not authorized or
licensed to use Complainant’s mark as a representative.
The
Panel accordingly finds that ICANN Policy ¶
4(a)(ii) relative to “no rights or legitimate interests” has been satisfied.
Registration
and Use in Bad Faith
Complainant
urges that Respondent uses the disputed domain names as a means to divert
Complainant’s customers to Respondent’s own website, which offers Complainant’s
goods for sale and uses Complainant’s logo, along with other product
identifying features. Complainant
contends that Respondent’s use creates consumer confusion as to Complainant’s
affiliation or sponsorship of the website.
Therefore, Complainant argues that Respondent registered and used the
domain names in bad faith under Policy ¶ 4(b)(iv). See Busy Body, Inc.
v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith
where Respondent attempted to attract customers to its website,
<efitnesswholesale.com>, and created confusion by offering similar
products for sale as Complainant); see also Fanuc Ltd v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar.
13, 2000) (finding that Respondent violated Policy ¶ 4(b)(iv) by selling used
Fanuc parts and robots on website <fanuc.com> because customers visiting
the site were confused as to the relationship between the Respondent and
Complainant).
Complainant
also asserts that Respondent has evidenced a pattern of registering multiple
domain names reflecting Complainant’s marks and that this permits a finding of
bad faith under Policy ¶ 4(b)(ii). See
Harcourt, Inc. v. Fadness, FA 95247
(Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of
several infringing domain names satisfies the burden imposed by the Policy ¶
4(b)(ii)); see also Caterpillar
Inc. v. Miyar, FA 95623
(Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple
domain names in a short time frame indicates an intention to prevent the mark
holder from using its mark and provides evidence of a pattern of conduct).
Evidence
from Respondent’s objective conduct should be given more weight than
Respondent’s subjective claim that Complainant did not provide “proof or
evidence to support the allegation that Respondent acted in bad faith.”
The Panel finds that ICANN Policy ¶ 4(a)(iii) relative
to “bad faith” has been satisfied.
DECISION
Having determined that all three required elements
under ICANN Policy have been established, the Panel concludes that the
requested relief should be granted.
Accordingly, it is ORDERED that the disputed domain names <knfiltercharger.com>,
<knnairfilters.com>, <goknfilters.com>, <goknairfilter.com>, and <goknairfilters.com>
are hereby transferred from
Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: July 25, 2002.
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