CRS Warner Kugel Pty Ltd v. Julie Cunningham
Claim Number: FA1101001370367
Complainant is CRS Warner Kugel Pty Ltd (“Complainant”), represented by John Aidan Breene of Breene & Breene, Solicitors, Australia. Respondent is Julie Cunningham (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crswarnerkugel.com>, registered with NAMESECURE.COM.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2011; the National Arbitration Forum received payment on January 31, 2011.
On February 1, 2011, NAMESECURE.COM confirmed by e-mail to the National Arbitration Forum that the <crswarnerkugel.com> domain name is registered with NAMESECURE.COM and that Respondent is the current registrant of the names. NAMESECURE.COM has verified that Respondent is bound by the NAMESECURE.COM registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2011 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@crswarnerkugel.com. Also on February 2, 2011, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <crswarnerkugel.com> domain name is identical to Complainant’s CRS WARNER KUGEL mark.
2. Respondent does not have any rights or legitimate interests in the <crswarnerkugel.com> domain name.
3. Respondent registered and used the <crswarnerkugel.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, CRS Warner Kugel Pty Ltd, is an Australian corporation that uses its CRS WARNER KUGEL mark in connection with accounting, corporate insolvency, and personal insolvency services it provides.
Respondent, Julie Cunningham, registered the disputed domain name on March 6, 2010. The disputed domain name resolves to a website that attempts to pass itself off as Complainant’s official website, but displays content that defames and disparages Complainant.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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; and
(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.
Complainant does not submit any evidence that its CRS WARNER KUGEL mark is registered with a governmental trademark authority. The Panel notes that a federal trademark registration is not required for Complainant to establish rights in the mark, provided that Complainant can establish common law rights in the mark with sufficient evidence of acquired secondary meaning. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); 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 submits a variety of evidence in support of its claim that it has common law rights in the CRS WARNER KUGEL mark. Complainant contends that it is a company incorporated pursuant to the laws of the Commonwealth of Australia and that it was incorporated by the Australian Securities and Investments Commission on September 20, 2007. Complainant asserts that it has traded under the CRS WARNER KUGEL mark since that date. Complainant is the proprietor of the business name “CRS Warner Kugel” within the jurisdiction of the State of New South Wales, within the Commonwealth of Australia. Complainant registered the business name with the New South Wales Office of Fair Trading on about February 1, 2008 and has traded under the registered business name of CRS Warner Kugel since that time. Complainant indicates that it currently maintains offices under the CRS WARNER KUGEL mark in the Australian states of New South Wales, Victoria, Queensland, South Australia, and Western Australia. Complainant also indicates that it operates its official website at the <crswarnerkugel.com.au> domain name. Complainant states that from September 20, 2007 to the present, Complainant has undertaken significant work in promoting its business using the CRS WARNER KUGEL mark, and that as a result of that work, Complainant is well-known throughout the Commonwealth of Australia. Complainant asserts that it has also established a significant web presence in connection with its CRS WARNER KUGEL mark. The Panel finds that Complainant has submitted sufficient evidence to establish common law rights in its CRS WARNER KUGEL mark, pursuant to Policy ¶ 4(a)(i), dating back to September 20, 2007. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years).
Complainant alleges that Respondent’s <crswarnerkugel.com> domain name is identical to Complainant’s CRS WARNER KUGEL mark. The disputed domain name merely deletes the spaces between the terms of Complainant’s mark and adds the generic top-level domain (“gTLD”), alterations which previous panels have concluded do not properly distinguish a disputed domain name from a mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Accordingly, the Panel finds that Respondent’s <crswarnerkugel.com> domain name is identical to Complainant’s CRS WARNER KUGEL mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must first make a prima facie showing in support of its allegation that Respondent do not have any rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie showing. The burden now shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain names. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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.”). Respondent failed to submit a Response to these proceedings which allows the Panel to infer that Respondent lacks rights or legitimate interests in the disputed domain names. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). Nevertheless, the Panel will examine the record to determine whether Respondent has any rights or legitimate interests in the disputed domain names pursuant to the Policy ¶ 4(c) factors.
Complainant asserts that Respondent does not carry on a business under the CRS WARNER KUGEL mark and that Respondent is not commonly known by the CRS WARNER KUGEL mark. The WHOIS information for the disputed domain name indicates the registrant is “Julie Cunningham,” which the Panel finds has no nominal connection to the disputed domain name. Therefore, based on the lack of evidence to the contrary, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant indicates that Respondent’s disputed domain name resolves to a website that attempts to pass itself off as Complainant, by virtually duplicating Complainant’s official website, and then posts disparaging and defamatory comments about Complainant. The Panel finds that Respondent’s attempt to pass itself off as Complainant is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
The Panel notes that the examples of bad faith registration and use prescribed in Policy ¶ 4(b) are intended to be illustrative and not exhaustive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith) Thus, the Panel may find bad faith beyond the perimeters of Policy ¶ 4(b). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Complainant alleges that Respondent’s disputed domain name attempts to pass itself off as Complainant, by displaying a website nearly identical to Complainant’s official website, and then posts derogatory comments about Complainant. The Panel finds that Respondent’s attempt to pass itself off as Complainant is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <crswarnerkugel.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 8, 2011
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