Dennis Doney v. Michael Yoder
Claim Number: FA1205001445692
Complainant is Dennis Doney (“Complainant”), Florida, USA. Respondent is Michael Yoder (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kinetitech.info>, <kinetitech.net>, <kinetitech.co>, <kineti-tech.info>, <kineti-tech.net>, and <kineti-tech.co>, registered with GoDaddy.com, LLC.
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.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 24, 2012; the National Arbitration Forum received payment on May 24, 2012.
On May 28, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <kinetitech.info>, <kinetitech.net>, <kinetitech.co>, <kineti-tech.info>, <kineti-tech.net>, and <kineti-tech.co> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 2012 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@kinetitech.info, postmaster@kinetitech.net, postmaster@kinetitech.co, postmaster@kineti-tech.info, postmaster@kineti-tech.net, and postmaster@kineti-tech.co. Also on May 31, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 deficient Response was received and determined to be complete on June 21, 2012. Two other emails were sent by Respondent on 25 and 26 June 2012.
On 27 June 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus Here 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant makes the following assertions:
Complainant owns trademark rights in the KINETI-TECH mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,138,113 filed August 7, 2011, registered May 8, 2012). Complainant has used the mark since July 1, 2011 and deals in the firearms industry, selling firearm accessories.
Respondent owns a competing company, alumaliteusa.com, which sells similar products to those sold by Complainant. Respondent registered the disputed domain names and hosted his own company’s information at the resolving websites. The websites currently display a URL that resolve to a “slander” page, which is used to “punish, defame, and tarnish Complainant’s name.” Respondent is not commonly known by any of the disputed domain names and has not used the domain names in business or personal use. Respondent does not use the disputed domain names for a fair use. Respondent attempts to sell the disputed domain names for $10,000.00 each. Respondent attempts to disrupt Complainant’s business through use of slanderous content on the resolving websites. Respondent’s previous use of the disputed domain names was designed to cause Respondent’s business to achieve a higher ranking in search engines.
B. Respondent
Respondent makes the following assertions:
Complainant is not entitled to the <kinetitech.info>, <kinetitech.net>, <kinetitech.co>, <kineti-tech.info>, <kineti-tech.net>, and <kineti-tech.co> domain names simply by way of Complainant owning the KINETI-TECH mark.
Complainant does not use the KINETI-TECH mark on its own website.
In respect of the content at the resolving website linked to the disputed domain names, Respondent has a constitutional right, protected under the First Amendment, to voice his opinion regarding Complainant’s business.
Complainant is welcome to buy the disputed domain names.
Complainant is engaged in reverse domain hijacking.
The Panel notes that Respondent registered the: <kinetitech.info>, <kinetitech.net>, <kinetitech.co>, <kineti-tech.info>, <kineti-tech.net>, and <kineti-tech.co> domain names on or about April 2, 2012.
The Panel finds that the disputed domain names are identical or confusingly similar to a mark in which Complainant has rights; that Respondent lacks of rights or legitimate interests in respect of the disputed domain names; and that Respondent registered and has used the disputed domain names in bad faith.
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."
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.
The Response was received via e-mail on June 21, 2012, after the deadline to file a response. The Response is thus deemed deficient in compliance with ICANN Rule 5. However, since the Panel, at its discretion, may choose whether to accept and consider this Response, the Panel has chosen to consider the Response since it provides statements that ultimately help resolve the dispute (Moneytree, Inc. v. Ascent Info Claim Number: FA0712001122981 Nat. Arb. Forum February 7, 2008), See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the response is solely in the discretion of the panelist); see also Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a response which was one day late, and received before a panelist was appointed and any consideration made); see also Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum July 2, 2002) (“In the interest of having claims decided on the merits and not by default and because Complainant has not been prejudiced in the presentation of its case by the late submission, Respondent’s opposition documents are accepted as timely.”).
Complainant asserts that he owns trademark rights for the KINETI-TECH mark through registration of the mark with the USPTO (Reg. No. 4,138,113 filed August 7, 2011, registered May 8, 2012). The Panel notes that the filing date for the KINETI-TECH mark was August 7, 2011. In Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007), the panel concluded that the complainant’s rights in its trademark date back to the filing date of the trademark application with the USPTO. The panel in Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007), stated that the complainant’s registration with the USPTO and its subsequent use of the mark demonstrate rights in the mark. The Panel finds that Complainant secured rights in its KINETI-TECH mark by registering the mark with the USPTO pursuant to Policy ¶ 4(a)(i), dating back to August 7, 2011.
The Panel observes that Complainant does not allege that any of the <kinetitech.info>, <kinetitech.net>, <kinetitech.co>, <kineti-tech.info>, <kineti-tech.net>, and <kineti-tech.co> domain names are confusingly similar or identical to the KINETI-TECH mark. However, the Panel notes that the <kinetitech.info>, <kinetitech.net>, and <kinetitech.co> domain names use the KINETI-TECH mark in its entirety, while removing the hyphen. The Panel finds that the <kinetitech.info> and <kinetitech.net> domain names include the generic top-level domains (“gTLD”) “.info” and “.net” and the <kinetitech.co> domain name includes the country-code top-level domain (“ccTLD”) “.co.” The Panel finds that, by removing the hyphen from the mark and adding a gTLD or ccTLD, the kinetitech.info>, <kinetitech.net> and <kinetitech.co> domain names are confusingly similar to the KINETI-TECH mark under Policy ¶ (a)(i). See Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see BEA Systems v. Ahmed Bouras, FA 105951 (Nat. Arb. Forum Apr. 26, 2002) (stating that adding the gTLD “.info” to a mark does not create a distinct mark to defeat a claim of confusing similarity); see also Kohls Dep’t Stores, Inc. v. Dhukka, FA 1360851 (Nat. Arb. Forum Jan. 10, 2011) (stating that the <kohls.co> domain name is identical to the complainant’s KOHLS mark because the apostrophe is removed ant the ccTLD “.co” is added).
The Panel also notes that Complainant does not make allegations that the <kineti-tech.info>, <kineti-tech.net>, and <kineti-tech.co> domain names are identical to its mark; however, the Panel observes that the disputed domain names use the KINETI-TECH mark in its entirety, and include the gTLD “.info” and “.net,” and the <kineti-tech.co> domain name includes the ccTLD “.co.” The Panel determines that the addition of a gTLD or a ccTLD to the end of Complainant’s mark nonetheless renders the <kineti-tech.info>, <kineti-tech.net>, and <kineti-tech.co> domain names identical to the KINETI-TECH mark pursuant to Policy ¶ (a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the respondent’s <honeywell.net> domain name to be identical to the complainant’s HONEYWELL mark); see also Microsoft Corp. v. Zournas, FA 1093928 (Nat. Arb. Forum Dec. 10, 2007) (“the Panel finds that Respondent’s <windows.info> domain name is identical to Complainant’s WINDOWS mark as the addition of a gTLD is a necessary addition in the creation of any domain name and therefore an indistinguishing characteristic under Policy ¶ 4(a)(i).“); see also Sensient Techs. Corp. v. Kolcak, FA 1355265 (Nat. Arb. Forum Nov. 22, 2010) (stating that attaching the ccTLD “.co” does not prevent the disputed domain name from being identical to the complainant’s mark).
The Panel finds that Complainant satisfied ICANN 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 he 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 alleges that Respondent has not used the KINETI-TECH mark or the term “Kinetitech” personally or in business prior to registering the disputed domain names. The Panel notes that Complainant’s exhibit shows that the WHOIS information identifies “M Yoder” as the registrant. The panel in Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), held that the WHOIS information, which identified the registrant as “Andrew Kaner c/o Electronatic a/k/a Electromatic Equip’t,” and the respondent’s failure to come forward with supporting evidence attest to the fact that the respondent was not commonly known by the disputed domain names. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel concluded that the respondent could not be commonly known by the disputed domain name, based on the WHOIS information as well as other evidence on the record. The Panel finds that the WHOIS information provides evidence that Respondent is not commonly known by any of the domain names at issue pursuant to Policy ¶ 4(c)(ii) and consequently lacks rights or legitimate interests in the disputed domain name.
Complainant argues that no evidence suggests that Respondent is making a fair use of the disputed domain names, and Complainant contends that Respondent is holding Complainant’s KINETI-TECH mark hostage. The Panel finds that Complainant’s exhibit shows the webpage to which the disputed domain names previously resolved displays photographs and descriptions marketing Respondent’s products. The Panel concludes that offering similar products for sale as those sold by Complainant does not demonstrate 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)(ii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Diners Club Int’l Ltd. v. Car in Won Australia pty Ltd, FA 338427 (Nat. Arb. Forum Nov. 10, 2004) (“Since Complainant and Respondent both offer credit card accounts for sale, the Panel finds that Respondent is using the domain names to offer strictly competing services with Complainant, which would be legitimate had Respondent not incorporated Complainant’s mark in a confusingly similar domain name to accomplish this end.”).
Complainant alleges that Respondent’s current use of the disputed domain names consists of providing a link at each of the domain names that resolves to a webpage that displays “defamatory rambling” regarding Complainant’s company. Complainant argues that Respondent intends to punish, defame, and tarnish the KINETI-TECH mark through the content on the resolving websites. The Panel determines that Respondent’s disparaging remarks directed toward Complainant’s business on the resolving website does not demonstrate a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii). See Sovereign Bank b. Karpachev, FA 1068750 (Nat. Arb. Forum Oct. 18, 2007) (holding that Respondent’s website, which disparaged the complainant and accused the complainant of negligence in its business practices, was not a bona fide offering of goods or services, or a legitimate noncommercial or fair use); see also CRS Waner Kugel Pty Ltd v. Cunningham, FA 1370367 (Nat. Arb. Forum Mar. 8, 2011) (stating that it was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name when the respondent “virtually duplicat[ed]” the complainant’s website, then posted defamatory comments about the complainant).
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent offers the <kinetitech.info>, <kinetitech.net>, <kinetitech.co>, <kineti-tech.info>, <kineti-tech.net>, and <kineti-tech.co> domain names for purchase for the price of $10,000 per domain name. The Panel finds that Respondent’s attempt to sell the disputed domain names and Respondent’s request of a sum in excess of out-of-pocket registration costs in exchange for the disputed domain names, justifies a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
Complainant argues that Respondent’s registration of the disputed domain names to post “inflammatory” content related to Complainant’s company was for the purpose of disrupting Complainant’s business. The Panel finds that Policy ¶ 4(b)(iii) deals with the disruption of a complainant’s business by a competing use and the Panel concludes that Complainant failed to present any evidence of a competing use accompanying the criticism found on the resolving websites. While Respondent and Complainant are competitors, the Panel nevertheless determines that Respondent’s conduct in posting criticism of Complainant’s business constitutes a disruption, which demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant contends that Respondent initially registered the disputed domain names using Complainant’s KINETI-TECH mark in order to boost Respondent’s rank in search engine results. The Panel finds that Respondent’s use of the disputed domain names could cause Internet users to become confused as to the sponsorship of the resolving website and that boosting Respondent’s rank in a search engine is likely to lead to more sales at Respondent’s website. The Panel consequently finds that such activity at the resolving website provides evidence that Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Domtar Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (stating that the respondent’s use of a domain name identical to the complainant’s mark, and operating a website using that mark is likely to lead to confusion to Internet traffic regarding the complainant’s affiliation with the resolving website).
Complainant alleges that Respondent owns a competing company that sells products similar to those marketed by Complainant and that Respondent’s registration of confusingly similar or identical domain names increases Respondent’s rank in search engines. The panel in Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000), stated that when the respondent used the disputed domain name to link to a website offering similar services to those offered by the complainant, Internet users were likely to be confused into believing that the complainant sponsored the services found at the resolving website. In Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006), the panel found that the respondent’s disputed domain name contained the complainant’s mark in order to attract consumers to the respondent’s website, which offered competing services in violation of Policy ¶ 4(b)(iv). The Panel determines that Respondent’s prior use of the disputed domain names, to divert Internet consumers to its own website in order to sell similar products to Complainant’s products and receive a profit, is evidence that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(iii).
Since the Panel finds that Complainant has satisfied all of the elements of Policy 4(a), the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kinetitech.info>, <kinetitech.net>, <kinetitech.co>, <kineti-tech.info>, <kineti-tech.net>, and <kineti-tech.co> domain names be TRANSFERRED from Respondent to Complainant.
Nathalie Dreyfus, Panelist
Dated: July 11, 2012
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