REDCATS USA, L.P. v. Kiansu Thoi
Claim Number: FA1205001446418
Complainant is REDCATS USA, L.P. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Kiansu Thoi (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kingszedirect.com>, <kingsizedirec.com>, <kingsizedirrect.com>, <kingsizeditect.com>, <kingsizedrect.com>, <kingsizedriect.com>, <kingsizeirect.com>, <kingsizrdirect.com>, <kingsizwdirect.com>, <kingssizedirect.com>, <kinsizedirect.com>, <kngsizedirect.com>, and <knigsizedirect.com>, registered with Domain.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 30, 2012; the National Arbitration Forum received payment on May 30, 2012.
On May 30, 2012, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <kingszedirect.com>, <kingsizedirec.com>, <kingsizedirrect.com>, <kingsizeditect.com>, <kingsizedrect.com>, <kingsizedriect.com>, <kingsizeirect.com>, <kingsizrdirect.com>, <kingsizwdirect.com>, <kingssizedirect.com>, <kinsizedirect.com>, <kngsizedirect.com>, and <knigsizedirect.com> domain names are registered with Domain.com, LLC and that Respondent is the current registrant of the names. Domain.com, LLC has verified that Respondent is bound by the Domain.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 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 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@kingszedirect.com, postmaster@kingsizedirec.com, postmaster@kingsizedirrect.com, postmaster@kingsizeditect.com, postmaster@kingsizedrect.com, postmaster@kingsizedriect.com, postmaster@kingsizeirect.com, postmaster@kingsizrdirect.com, postmaster@kingsizwdirect.com, postmaster@kingssizedirect.com, postmaster@kinsizedirect.com, postmaster@kngsizedirect.com, and postmaster@knigsizedirect.com. Also on May 30, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 22, 2012 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions:
1. Complainant has rights in the KING SIZE DIRECT mark which it uses in connection with online and mail-order services featuring mens’ apparel, footwear, and accessories;
2. Complainant registered the KING SIZE DIRECT mark (Reg. No. 2,751,981 filed December 26, 2001; registered August 19, 2003) with the United States Patent and Trademark Office (“USPTO”);
3. The <kingszedirect.com>, <kingsizedirec.com>, <kingsizedirrect.com>, <kingsizeditect.com>, <kingsizedrect.com>, <kingsizedriect.com>, <kingsizeirect.com>, <kingsizrdirect.com>, <kingsizwdirect.com>, <kingssizedirect.com>, <kinsizedirect.com>, <kngsizedirect.com>, and <knigsizedirect.com> domain names; are confusinlgy similar to Complainant’s KING SIZE DIRECT mark.
4. Respondent is not commonly known by the <kingszedirect.com>, <kingsizedirec.com>, <kingsizedirrect.com>, <kingsizeditect.com>, <kingsizedrect.com>, <kingsizedriect.com>, <kingsizeirect.com>, <kingsizrdirect.com>, <kingsizwdirect.com>, <kingssizedirect.com>, <kinsizedirect.com>, <kngsizedirect.com>, and <knigsizedirect.com> domain names;
5. The disputed domain names all resolve to inactive websites;
6. Respondent has no rights or legitimate interests in the disputed domain names.
7. The disputed domain names were registered and used in bad faith.
8. Respondent has engaged in typosquatting.
9. Respondent has developed a pattern of bad faith registration of disputed domain names;
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a successful United States company that is a leader in web-driven home shopping with numerous well-known brands in its portfolio. Complainant has rights in the KING SIZE DIRECT trademark which it uses in connection with its online and mail-order services featuring mens’ apparel, footwear, and accessories;
2. Complainant registered the KING SIZE DIRECT mark (Reg. No. 2,751,981 filed December 26, 2001; registered August 19, 2003) with the United States Patent and Trademark Office (“USPTO”);
3. Respondent registered the disputed domain names on the following days:
a. The <kingszedirect.com> domain name on July 26, 2003;
b. The <kingsizedirec.com> domain name on June 21, 2003;
c. The <kingsizedirrect.com> domain name on December 8, 2003;
d. The <kingsizeditect.com> domain name on January 25, 2004;
e. The <kingsizedrect.com> domain name on December 8, 2003;
f. The <kingsizedriect.com> domain name on January 25, 2004;
g. The <kingsizeirect.com> domain name on July 26, 2003;
h. The <kingsizrdirect.com> domain name on February 18, 2004;
i. The <kingsizwdirect.com> domain name on December 8, 2003;
j. The <kingssizedirect.com> domain name on October 23, 2003;
k. The <kinsizedirect.com> domain name on July 26, 2003;
l. The <kngsizedirect.com> domain name on July 26, 2003; and
m. The <knigsizedirect.com> domain name on January 25, 2004.
4. The disputed domain names do not resolve to active websites.
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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that it has rights in the KING SIZE DIRECT mark which it uses in connection with the mail-order and online sale of mens’ apparel, footwear, and accessories. Complainant provides the Panel with evidence of its registration owned with the USPTO for the KING SIZE DIRECT mark (Reg. No. 2,751,981 filed December 26, 2001; registered August 19, 2003). Panels have found that the registration of a mark is evidence of rights in a mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a) (i)). Panels have also held that when reviewing USPTO registrations for trademarks, the relevant date of rights in the mark is the filing date of the registration. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Further, these rights satisfy Policy ¶ 4(a) (i) regardless of the location of the parties. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the KING SIZE DIRECT mark under Policy ¶ 4(a) (i).
The second question that arises is whether the disputed domain names are identical or confusingly similar to the KING SIZE DIRECT mark.
Complainant contends that the <kingszedirect.com>, <kingsizedirec.com>, <kingsizedirrect.com>, <kingsizeditect.com>, <kingsizedrect.com>, <kingsizedriect.com>, <kingsizeirect.com>, <kingsizrdirect.com>, <kingsizwdirect.com>, <kingssizedirect.com>, <kinsizedirect.com>, <kngsizedirect.com>, and <knigsizedirect.com> domain names are confusingly similar to the KING SIZE DIRECT mark. Complainant argues that the disputed domain names only differ from Complainant’s mark by the deletion of spaces between words, the addition of the generic top-level domain (“gTLD”) “.com,” and the slight misspelling by virtue of the deletion or addition of a letter or the transposition of two letters. The Panel finds that the deletion of spaces and the addition of a gTLD are irrelevant changes when making a Policy ¶ 4(a) (i) determination. 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)). The Panel finds that the addition or deletion of a single letter fails to make a disputed domain name distinct from a mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). The Panel also finds that the transposition of two letters is similarly insubstantial and does not negate a finding of confusing similarity. See Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name was confusingly similar to the complainant’s DELTA mark). The Panel therefore finds that the <kingszedirect.com>, <kingsizedirec.com>, <kingsizedirrect.com>, <kingsizeditect.com>, <kingsizedrect.com>, <kingsizedriect.com>, <kingsizeirect.com>, <kingsizrdirect.com>, <kingsizwdirect.com>, <kingssizedirect.com>, <kinsizedirect.com>, <kngsizedirect.com>, and <knigsizedirect.com> domain names are confusingly similar to the KING SIZE DIRECT mark pursuant to Policy ¶ 4(a) (i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well-established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).
The Panel finds that Complainant has made out a prima facie case and that it arises from the following considerations:
(a) Respondent has chosen to take Complainant’s KING SIZE DIRECT mark and to use it in its domain names, making only minor and inconsequential spelling changes, thus retaining the confusing similarity that arises between the domain names and the trademark.
(b) Respondent has then decided to retain the disputed domain names without using them for any legitimate purpose use and not linking them to websites;
(c) Respondent has engaged in this activity without the consent or approval of Complainant.
(d) Complainant also submits that Respondent is not commonly known by the <kingszedirect.com>, <kingsizedirec.com>, <kingsizedirrect.com>, <kingsizeditect.com>, <kingsizedrect.com>, <kingsizedriect.com>, <kingsizeirect.com>, <kingsizrdirect.com>, <kingsizwdirect.com>, <kingssizedirect.com>, <kinsizedirect.com>, <kngsizedirect.com>, and <knigsizedirect.com> domain names. Complainant alleges that it has not authorized Respondent to use the KING SIZE DIRECT mark and Respondent is not sponsored by or legitimately affiliated with Complainant. Additionally, Complainant provides the Panel with the WHOIS record for each of the disputed domain names which all list “Kiansu Thoi” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names 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).
(e) Complainant also contends that Respondent does not have rights or legitimate interests in the disputed domain names. Complainant asserts that all of the disputed domain names resolve to inactive websites. Panels have held that the non-use of a disputed domain name does not qualify as either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a) (ii).”). As such, the Panel finds that Respondent’s non-use of the <kingszedirect.com>, <kingsizedirec.com>, <kingsizedirrect.com>, <kingsizeditect.com>, <kingsizedrect.com>, <kingsizedriect.com>, <kingsizeirect.com>, <kingsizrdirect.com>, <kingsizwdirect.com>, <kingssizedirect.com>, <kinsizedirect.com>, <kngsizedirect.com>, and <knigsizedirect.com> domain names is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent registered and is using the <kingszedirect.com>, <kingsizedirec.com>, <kingsizedirrect.com>, <kingsizeditect.com>, <kingsizedrect.com>, <kingsizedriect.com>, <kingsizeirect.com>, <kingsizrdirect.com>, <kingsizwdirect.com>, <kingssizedirect.com>, <kinsizedirect.com>, <kngsizedirect.com>, and <knigsizedirect.com> domain names in bad faith. Complainant argues that Respondent is a “recalcitrant, serial cybersquatter” and has developed a pattern of bad faith registration of domain names. Complainant contends that Respondent has been party to multiple previous USDP decisions where the disputed domain names at issue were transferred to the respective complainant. See Hotwire, Inc. v. Kiansu Thoi, FA 733605 (Nat. Arb. Forum Aug. 18, 2006); see also J. C. Penney Corp., Inc. v. Kiansu Thoi, D2007-0133 (WIPO Apr. 24, 2007); see also Charming Shoppes, Inc. v. Kiansu Thoi, FA 1347369 (Nat. Arb. Forum Nov. 2, 2010). Therefore, the Panel finds that Respondent registered and is using the <kingszedirect.com>, <kingsizedirec.com>, <kingsizedirrect.com>, <kingsizeditect.com>, <kingsizedrect.com>, <kingsizedriect.com>, <kingsizeirect.com>, <kingsizrdirect.com>, <kingsizwdirect.com>, <kingssizedirect.com>, <kinsizedirect.com>, <kngsizedirect.com>, and <knigsizedirect.com> domain names as part of a pattern of behavior of bad faith pursuant to Policy ¶ 4(b) (ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Secondly, Complainant contends that Respondent’s registration and non-use of the disputed domain names further demonstrates bad faith. Complainant asserts and provides supporting evidence, that the <kingszedirect.com>, <kingsizedirec.com>, <kingsizedirrect.com>, <kingsizeditect.com>, <kingsizedrect.com>, <kingsizedriect.com>, <kingsizeirect.com>, <kingsizrdirect.com>, <kingsizwdirect.com>, <kingssizedirect.com>, <kinsizedirect.com>, <kngsizedirect.com>, and <knigsizedirect.com> domain names all resolve to inactive websites. The Panels in Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000), and DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), held that the registration and non-use of a disputed domain name is evidence of bad faith. Therefore, the Panel finds on the evidence submitted that Respondent’s registration and holding of an inactive website demonstrates bad faith under Policy ¶ 4(a) (iii).
Thirdly, Complainant contends that Respondent’s bad faith is further evidenced by the fact that Respondent engaged in typosquatting. Complainant asserts that the only change from the KING SIZE DIRECT mark, save the required deletion of spaces and addition of a gTLD, is the deletion or addition of a single letter or the transposition of two letters. The Panel finds that this epitomizes typosquatting and that Respondent therefore registered and is using the <kingszedirect.com>, <kingsizedirec.com>, <kingsizedirrect.com>, <kingsizeditect.com>, <kingsizedrect.com>, <kingsizedriect.com>, <kingsizeirect.com>, <kingsizrdirect.com>, <kingsizwdirect.com>, <kingssizedirect.com>, <kinsizedirect.com>, <kngsizedirect.com>, and <knigsizedirect.com> domain names in bad faith pursuant to Policy ¶ 4(a) (iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a) (iii)).
Fourthly, having regard to the submissions of Complainant and the evidence submitted on its behalf, the Panel finds that in addition to the manner in which the disputed domain names fall within the provisions of Policy ¶ 4(b), Respondent has registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kingszedirect.com>, <kingsizedirec.com>, <kingsizedirrect.com>, <kingsizeditect.com>, <kingsizedrect.com>, <kingsizedriect.com>, <kingsizeirect.com>, <kingsizrdirect.com>, <kingsizwdirect.com>, <kingssizedirect.com>, <kinsizedirect.com>, <kngsizedirect.com>, and <knigsizedirect.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: June 25, 2012
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