KERING v. Kane Christopher
Claim Number: FA1404001552405
Complainant is KERING (“Complainant”), represented by Cabinet SANTARELLI, France. Respondent is Kane Christopher (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <keringgroup.us>, registered with 1API GmbH.
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 April 3, 2014; the National Arbitration Forum received a hard copy of the Complainant on April 3, 2014.
On April 4, 2014, 1API GmbH confirmed by e-mail to the National Arbitration Forum that the <keringgroup.us> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 7, 2014, the Forum served the Notification of Complaint and Commencement of Administrative Proceedings (the “Commencement Notification”), setting a deadline of April 28, 2014 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 30, 2014, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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.
Complainant
a) Complainant is a world leader in apparel and accessories, developing a powerful ensemble of brands including Gucci, Brioni, Serio Rossi, Dodo, and more.
b) Complainant has rights in the KERING mark, used in connection with apparel and accessories. Complainant owns a registration for the KERING mark with France’s National Institute of Industrial Property (“NIIP”) (Reg. No. 123920561 registered September 7, 2012).
c) Respondent’s <keringgroup.us> domain name is confusingly similar to Complainant’s KERING mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the term “group” and the country-code top-level domain (“ccTLD”) “.us.”
d) Respondent does not have any rights or legitimate interests in the <keringgroup.us> domain name.
a. Respondent is identified as “Christopher Kane,” which is the name of a famous designer that works for Complainant; however, Respondent’s identity is false. See Complainant’s Exhibit 10. The address listed for Respondent is not connected to anyone named Christopher Kane, and after Complainant made contact with Respondent requesting transfer of the disputed domain name there was no reply from Respondent. See Complainant’s Exhibit 11. Further, Complainant has not authorized Respondent to use its KERING mark in any way.
b. The <keringgroup.us> domain name is not being used to host a website.
e) Respondent registered or is using the <keringgroup.us> domain name in bad faith.
a. The disputed domain name is currently nonoperational.
b. Prior to shutting down the <keringgroup.us> domain name, Respondent was using the disputed domain name to intentionally attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s KERING mark. The disputed domain name used to resolve to a webpage featuring sponsored links to third-party websites. See Complainant’s Exhibit 12.
c. Respondent had knowledge of Complainant’s KERING mark prior to registering the <keringgroup.us> domain name, which is evidenced by the fact that the disputed domain name was registered only a few weeks after it was announced that Complainant was changing its name to “Kering” and that Complainant’s mark has achieved notoriety and fame.
f) Respondent registered the <keringgroup.us> domain name on May 30, 2013.
Respondent
Respondent did not submit a response in this proceeding.
1. Respondent’s <keringgroup.us> domain name is confusingly similar to Complainant’s KERING mark.
2. Respondent does not have any rights or legitimate interests in the <keringgroup.us> domain name.
3. Respondent registered or used the <keringgroup.us> domain name 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 or is being used in bad faith.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as
applicable in rendering its decision.
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(f), 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 contends it has rights in the KERING mark, used in connection with apparel and accessories. Complainant states it owns a registration for the KERING mark with France’s NIIP (Reg. No. 123920561 registered September 7, 2012). Therefore, the Panel finds that Complainant has rights in the KERING mark within the meaning of Policy ¶ 4(a)(i) because Complainant owns a registration for the mark with NIIP. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its trademark registrations).
Complainant alleges that Respondent’s <keringgroup.us> domain name is confusingly similar to Complainant’s KERING mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the term “group” and the ccTLD “.us.” First, the Panel finds that the addition of a generic or descriptive term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under [UDRP] Policy ¶ 4(a)(i)). Next, the Panel finds that the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a [UDRP] Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <keringgroup.us> domain name is confusingly similar to Complainant’s KERING 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 USDRP ¶ 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 notes that there is no evidence in the record indicating that Respondent owns any service or trademarks that reflect the <keringgroup.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interest pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 0113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also PepsiCo, Inc. v. Becky, FA 0117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant contends that Respondent does not have any rights or legitimate interests in the <keringgroup.us> domain name. Complainant notes that Respondent is identified as “Christopher Kane,” which is the name of a famous designer that works for Complainant; however, Complainant asserts that Respondent’s identity is false. See Complainant’s Exhibit 10. Complainant explains that the French address listed for Respondent is not connected to anyone named Christopher Kane, and after Complainant made contact with Respondent requesting transfer of the disputed domain name there was no reply from Respondent. See Complainant’s Exhibit 11. Further, Complainant states it has not authorized this Respondent to use its KERING mark in any way. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the KERING mark, and Respondent has not shown itself to properly illustrate its identity, the Panel finds that Respondent is not commonly known by the <keringgroup.us> domain name under Policy ¶ 4(c)(iii).
Complainant observes that the <keringgroup.us> domain name is not being used to host a website. The Panel notes that Complainant has not included a screenshot of domain name, and the Panel may request additional evidence from Complainant pursuant to Rule 12. Nevertheless, past panels have found that a respondent who has failed to show any demonstrable preparations to use a disputed domain name is not making a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(ii) and it is not a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iv) because Respondent has failed to make any demonstrable preparations to use the <keringgroup.us> domain name.
Complainant alleges that Respondent registered or is using the <keringgroup.us> domain name in bad faith. Complainant asserts that, prior to shutting down the <keringgroup.us> domain name, Respondent was using the disputed domain name to intentionally attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s KERING mark. Complainant states that the disputed domain name used to resolve to a webpage featuring sponsored links to third-party websites. See Complainant’s Exhibit 12. The Panel notes that these links include “Group Icebreakers,” “Group Tours,” and “Group Tickets.” Id. Past panels have held that using a confusingly similar domain name to operate a web directory of links unrelated to the complainant constitutes bad faith via attraction for commercial gain under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). Therefore, the Panel registered or is using the <keringgroup.us> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the <keringgroup.us> domain name is being used to host commercial third-party links.
Complainant alleges that the <keringgroup.us> domain name is currently nonoperational. In previous cases panels have found that a respondent who fails to make an active use of a disputed domain name tend to prove that the respondent registered the disputed domain name in bad faith. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith) Therefore, the Panel finds that Respondent registered the <keringgroup.us> domain name in bad faith under Policy ¶ 4(a)(iii) because the disputed domain name is not being used.
Complainant asserts that Respondent had knowledge of Complainant’s KERING mark prior to registering the <keringgroup.us> domain name, which is evidenced by the fact that the disputed domain name was registered only a few weeks after it was announced that Complainant was changing its name to “Kering” and that Complainant’s mark has achieved notoriety and fame. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, the Panel determines Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name, and concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <keringgroup.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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