KCD IP, LLC v. Zhichao Yang
Claim Number: FA1303001488265
Complainant is KCD IP, LLC (“Complainant”), represented by Guy W. Barcelona of McAndrews, Held, and Malloy, Ltd., Illinois, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <craftsan.com>, <craftsmsn.com>, <kenmire.com>, <kenmoren.com>, <kenomore.com>, <kermore.com>, and <knmore.com>, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2013; the National Arbitration Forum received payment on March 1, 2013.
On March 4, 2013, Godaddy.Com, Llc confirmed by e-mail to the National Arbitration Forum that the <craftsan.com>, <craftsmsn.com>, <kenmire.com>, <kenmoren.com>, <kenomore.com>, <kermore.com>, and <knmore.com> 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 March 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2013 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@craftsan.com, postmaster@craftsmsn.com, postmaster@kenmire.com, postmaster@kenmoren.com, postmaster@kenomore.com, postmaster@kermore.com, and postmaster@knmore.com. Also on March 7, 2013, 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 April 4, 2013, 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.
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.
i. Respondent is not known by any of the disputed domains.
ii. Respondent’s use of Complainant’s trademarks and registration of the disputed domains consists of webpages providing links to third-party websites, presumably for the purpose of receiving referral fees.
i. Respondent has been recognized as a serial typosquatter who registers domains in bad faith in order to mislead consumers into believing they have reached a legitimate site.
ii. Registering a confusingly similar domain name to provide a commercial search engine confuses Complainant’s customers and disrupts Complainant’s business.
iii. The use is clearly in bad faith and for the commercial benefit of Respondent.
Respondent has not submitted a Response to this case.
1. Respondent’s <craftsan.com>, <craftsmsn.com>, <kenmire.com>, <kenmoren.com>, <kenomore.com>, <kermore.com>, and <knmore.com> domain names are confusingly similar to Complainant’s CRAFTSMAN and KENMORE marks.
2. Respondent does not have any rights or legitimate interests in the <craftsan.com>, <craftsmsn.com>, <kenmire.com>, <kenmoren.com>, <kenomore.com>, <kermore.com>, and <knmore.com> domain names.
3. Respondent registered or used the <craftsan.com>, <craftsmsn.com>, <kenmire.com>, <kenmoren.com>, <kenomore.com>, <kermore.com>, and <knmore.com> 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.
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.”).
Complainant, KCD IP, LLC, contends that it and its network of licensed service providers have used the CRAFTSMAN and KENMORE marks since at least 1927 and 1945. Complainant argues that it owns a family of registrations for its CRAFTSMAN trademarks for use in association with a wide variety of goods, including hand tools, power-operated tools, motors, portable drills, saws, sanders, polishers, soldering irons, hand grinders, riding lawn mowers, garden tractors, garden carts, wheelbarrows, hand trucks, clothing, and footwear. Complainant claims that it owns a family of registrations for its KENMORE trademarks for use in association with a wide variety of goods, including dishwasher machines, washing machines for clothes, sewing machines, small kitchen appliances, clothes dryers, cookware, freezers, refrigerators, air conditioners, dehumidifiers, and the repair of home appliances. Complainant asserts that it is the owner of trademark registrations with the USPTO for the CRAFTSMAN mark (e.g., Reg. No. 576,891, registered July 7, 1953) and the KENMORE mark (e.g., 517,739, registered November 22, 1949). See Complainant’s Annex C. Although Respondent appears to reside in China, the Panel finds that Complainant does not need to register its mark in the country that Respondent operates in. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Thus, the Panel finds that Complainant’s registration of the CRAFTSMAN and KENMORE marks with the USPTO demonstrate Complainant’s rights in the marks under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant asserts that Respondent’s <craftsan.com>, <craftsmsn.com>, <kenmire.com>, <kenmoren.com>, <kenomore.com>, <kermore.com>, and <knmore.com> domain names have been chosen for their confusingly similar appearance to Complainant’s CRAFTSMAN and KENMORE marks and the domains <craftsman.com> and <kenmore.com>. Complainant argues that all of the disputed domains incorporate misspellings and variations of the famous CRAFTSMAN and KENMORE marks. The Panel determines that Respondent’s misspelling of Complainant’s marks does not distinguish the domain names from the marks under Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). The Panel notes that some of Respondent’s disputed domain names add a letter to Complainant’s marks. The Panel finds that the addition of a letter does not differentiate the disputed domain names from the marks under Policy ¶ 4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). Complainant also contends that typographic errors, removing spaces present in a trademark, and adding “www” or “.com” have all been soundly rejected as insufficient to distinguish disputed domain names from Complainant’s mark. The Panel finds that the removal of spaces and the addition of the generic top-level domain (“gTLD”) “.com” is inconsequential to Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel determines that Respondent’s <craftsan.com>, <craftsmsn.com>, <kenmire.com>, <kenmoren.com>, <kenomore.com>, <kermore.com>, and <knmore.com> domain names are confusingly similar to Complainant’s CRAFTSMAN and KENMORE marks under 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 contends that Respondent is not known by any of the disputed domains. Complainant asserts that the WHOIS information lists “Zhichao Yang” as the registrant. See Complainant’s Annex E. Complainant argues that it has never authorized, either explicitly or implicitly, Respondent to use any of Complainant’s trademarks, and Respondent is not a licensee of Complainant. The Panel notes that Respondent fails to provide additional evidence that it is known by the disputed domain names. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant claims that Respondent’s use of Complainant’s trademarks and registration of the disputed domains consists of webpages providing links to third-party websites, presumably for the purpose of receiving referral fees. The Panel notes that Respondent’s disputed domain names feature competing and unrelated links titled “Printable Paper Crafts,” “Cheap Riding Lawn Mowers,” “Washing Machine Repair,” “Nissan Moreno,” “Play Free Games for Money,” “Whirlpool Washers,” “Iron Ore Price,” and others. See Complainant’s Annex A. The Panel finds that Respondent’s use of the disputed domain names to feature competing or unrelated hyperlinks is not a bona fide offering of goods and service under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Complainant claims that Respondent has been recognized as a serial typosquatter who registers domains in bad faith in order to mislead consumers into believing they have reached a legitimate site. See Wells Fargo & Company v. Zhichao Yang, FA 1477756 (Nat. Arb. Forum Feb. 7, 2013); Capital One Financial Corp. v. Zhichao Yang, FA 1473336 (Nat. Arb. Forum January 9, 2013); State Farm Mutual Automobile Insurance Company v. Zhichao Yang, FA 1461251 (Nat. Arb. Forum October 16, 2012). Accordingly, the Panel finds that Respondent’s prior UDRP proceedings that resulted in findings of bad faith and transfer evidences bad faith use and registration under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant argues that Respondent’s registration of a confusingly similar domain name to provide a commercial search engine confuses Complainant’s customers and disrupts Complainant’s business. Complainant contends that Respondent’s sites consist of links under a “Related Searches” title for various terms. Complainant asserts that many of the searches performed return results which lead Complainant’s customers to the pages of its competitors. The Panel notes that Respondent’s disputed domain names feature competing and unrelated links titled “Printable Paper Crafts,” “Cheap Riding Lawn Mowers,” “Washing Machine Repair,” “Nissan Moreno,” “Play Free Games for Money,” “Whirlpool Washers,” “Iron Ore Price,” and others. See Complainant’s Annex A. The Panel finds that Respondent’s use of the disputed domain names disrupts Complainant’s business and shows bad faith use and registration pursuant to Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant contends that Respondent’s use is clearly in bad faith and for the commercial benefit of Respondent. The Panel notes that Respondent’s disputed domain names feature competing and unrelated links titled “Printable Paper Crafts,” “Cheap Riding Lawn Mowers,” “Washing Machine Repair,” “Nissan Moreno,” “Play Free Games for Money,” “Whirlpool Washers,” “Iron Ore Price,” and others. See Complainant’s Annex A. The Panel finds that Respondent is using the disputed domain names for its own commercial benefit, demonstrating bad faith use and registration under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <craftsan.com>, <craftsmsn.com>, <kenmire.com>, <kenmoren.com>, <kenomore.com>, <kermore.com>, and <knmore.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 16, 2013
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