Barbara Kingsolver v. Kingsolver Computer
Solutions
Claim Number: FA1003001313077
PARTIES
Complainant is Barbara Kingsolver (“Complainant”), represented by Robert S. Meitus, of Meitus Gelbert Rose
LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kingsolver.com>,
registered with
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 12, 2010.
On March 13, 2010, Hebei Guoji Maoyi (
On March 17, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of April 6,
2010 by which Respondent could file a Response to the Complaint, via e-mail to
all entities and persons listed on Respondent’s registration as technical,
administrative, and billing contacts, and to postmaster@kingsolver.com by
e-mail. Also on March 17, 2010, the
Written Notice of the Complaint, notifying Respondent of the email addresses
served and the deadline for a Response, was
transmitted to Respondent via post and fax, to all entities and persons listed
on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March
22, 2010.
On March 30, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed John J. Upchurch as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. The subject domain name, <kingsolver.com>, is identical, or confusingly similar, to
Complainant’s Kingsolver mark under Policy
¶4(a)(i).
2. Respondent lacks rights and legitimate
interests in the disputed domain name under Policy ¶4(a)(ii).
3. Respondent’s registration and use of the
disputed domain name is in bad faith under Policy ¶4(a)(iii).
B. Respondent
1. The domain name was purchased from a Hong
Kong Company trading in domains for $1,888
2. Respondent has never heard of Complainant.
3. The page to which the domain resolves was
authored by Respondent’s predecessor.
4. Ms. Kingsolver is not famous.
FINDINGS
The Panel finds the Complainant has
established a sufficient basis to receive the requested relief.
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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Preliminary Issue: Non-UDRP Legal Argument
Complainant, Barbara Kingsolver,
argues various legal points pursuant to 15 U.S.C. § 1125(d) and Virginia’s Fair
Trade Act § 59.1-92.15 as they may apply to Complainant’s argument that it has
established rights in its KINGSOLVER mark even though the mark is not
registered with a federal trademark agency.
The instant dispute is governed by the UDRP and not 15 U.S.C. § 1125(d)
or
Accordingly, the following analysis
is strictly confined to an analysis under the UDRP and does not address any
arguments made by either party with respect to 15 U.S.C. § 1125(d) or
Complainant has not registered the KINGSOLVER mark with a federal trademark agency. Previous panels have determined that a federal registration is not required to establish rights in a mark under Policy ¶ 4(a)(i) so long as the complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark and this Panel may agree. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant claims that she has used the KINGSOLVER mark since 1987 in
connection with Complainant’s novels.
Complainant argues that Complainant’s KINGSOLVER mark is her last
name. According to Complainant,
Complainant published her first novel that year and since that time has
utilized her KINGSOLVER mark to identify her other thirteen nonfiction and
fiction novels. Complainant alleges that
she has received publicized awards for her work, such as the Patterson Fiction
Prize and the Los Angeles Times Book Prize.
Complainant contends that she and her books have been featured in
numerous newspapers, including the New York Times, Washington Post, Chicago
Tribune, and other publications.
Complainant alleges that she was interviewed on The Oprah Winfrey Show
when her book, The Poisonwood Bible, was selected to be Oprah’s Book
Club book of the month. Complainant
asserts that she originally registered the <kingsolver.com> domain name in November of 1998 but
inadvertently failed to renew the domain name registration. Complainant contends she has
established common law rights in the KINGSOLVER mark through continuous and
extensive commercial use predating Respondent’s registration of the disputed
domain name under Policy ¶ 4(a)(i). The Panel finds accordingly. See
Jagger v. Hammerton, FA 95261 (Nat.
Arb. Forum Sept. 11, 2000) (the complainant held common law trademark rights in
his famous name MICK JAGGER); see also
Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark
registration was not necessary and that the name “Julia Roberts” has sufficient
secondary association with the complainant that common law trademark rights
exist).
Complainant alleges that the <kingsolver.com> domain name is identical to Complainant’s
KINGSOLVER mark. Complainant contends
that the disputed domain name simply adds the generic top-level domain (“gTLD”)
“.com” to Complainant’s mark. The Panel
finds that the addition of a gTLD does not change the fact that the disputed
domain name is identical to Complainant’s mark. See Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to the complainant’s mark because the generic top-level domain (gTLD)
“.com” after the name POMELLATO is not relevant); see also W. Union Holdings, Inc. v. XYZ,
D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name WUIB is part of the Internet address and does not add source-identifying
significance). Therefore, the Panel concludes that Respondent’s <kingsolver.com> domain name is identical to Complainant’s
KINGSOLVER mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and then
the burden shifts to Respondent to show it does have rights or legitimate
interests. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show
that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima
facie showing that Respondent does not have rights or legitimate interest in
the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
Complainant claims that, while the WHOIS
information identifies Respondent as “Kingsolver Computer Solutions,” there is not information in the record
that would support a finding that Respondent is commonly known by the <kingsolver.com> domain
name. Complainant contends that the
content on the website resolving from the disputed domain name does not provide
information about Respondent or identify Respondent as “Kingsolver Computer
Solutions.” Complainant asserts that an
Internet search for Respondent did not provide any information about
Respondent. Complainant argues that
Complainant has not authorized or licensed Respondent to use the KINGSOLVER
mark. The Panel finds that although
Respondent appears to have listed its name as the disputed domain name,
Respondent is not commonly known by the <kingsolver.com>
domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v.
Arpita, FA 155461 (Nat. Arb.
Forum June 17, 2003) (finding that the
respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”); see also AOL LLC v. AIM Profiles, FA
964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent
listed itself as “AIM Profiles” in the WHOIS contact information, there was no
other evidence in the record to suggest that the respondent was actually
commonly known by that domain name).
Complainant argues that Respondent uses the <kingsolver.com> domain name to
resolve to a website offering hyperlinks to other websites which contain
information about Complainant and Complainant’s novels. Complainant alleges that Respondent profits
from the hyperlinks from the receipt of click-through fees. The Panel finds that Respondent’s use of the <kingsolver.com> domain name is
not a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use of the domain name under Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409
(Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to
offer any goods or services on its website other than links to a variety of
third-party websites, it was not using a domain name in connection with a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v.
balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that
“using the confusingly similar <viaggidea.com> domain name to operate a
website that features links to various commercial websites from which
Respondent presumably receives referral fees….is neither a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate
non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
According to Complainant, Complainant was
the prior registrant for the <kingsolver.com> domain name.
Complainant alleges that an agent, acting on Complainant’s behalf,
inadvertently allowed the registration of the disputed domain name to
lapse. Complainant claims that it first
did not realize the registration had lapsed until recently when Respondent
changed the content of the website. The
Panel finds that Complainant’s prior registration of the disputed domain name
provides further evidence that Respondent lacks rights or legitimate interests
in the <kingsolver.com> domain
name pursuant to Policy ¶ 4(a)(ii). See Zappos.com, Inc. v.
Turvill Consultants, FA
404546 (Nat. Arb. Forum Feb. 28, 2005) (“[T]he fact that
Complainant had previously held the <wwwzappos.com> domain name
registration and has mistakenly allowed it to expire is further evidence that
Respondent lacks rights and legitimate interests in the domain name under
Policy ¶ 4(a)(ii).”); see also Am. Anti-Vivisection Soc’y v. “Infa
dot Net” Web Servs., FA 95685
(Nat. Arb. Forum Nov. 6, 2000) (finding that the complainant’s prior
registration of the same domain name is a factor in considering the
respondent’s rights or legitimate interests in the domain name).
Complainant contends that
Respondent utilizes the
<kingsolver.com> domain name to resolve to a website
containing hyperlinks to information about Complainant and Complainant’s
novels. The Panel finds that Complainant
is not in control of these third-party websites and therefore does not have
control of their content. Therefore, the
Panel finds that Respondent use of the disputed domain names to resolve to
third-parties that provide information about Complainant may disrupt
Complainant’s book business, which constitutes bad faith registration and use
under Policy ¶ 4(b)(iii). See
Complainant further alleges that Complainant formerly owned the <kingsolver.com> domain name. Complainant argues that the third-party agent responsible for the disputed domain name inadvertently allowed the domain name registration to lapse. The Panel finds that Complainant’s prior registration of the disputed domain name is evidence that Respondent’s subsequent registration of the disputed domain name constituted bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”); see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where the respondent took advantage of the complainant’s failure to renew a domain name).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kingsolver.com>
domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated:
April 13, 2010
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