Kite Solutions, Inc. v. Brandon Abbey / Escrow.com
Claim Number: FA1503001609855
Complainant is Kite Solutions, Inc. (“Complainant”), represented by Matthew J. Ladenheim of TREGO, HINES & LADENHEIM, PLLC, North Carolina, USA. Respondent is Brandon Abbey / Escrow.com (“Respondent”), represented by Jeffrey M. Rosenfeld of Kronenberger Rosenfeld, LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kite.com>, registered with Godaddy.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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 16, 2015; the Forum received payment on March 16, 2015.
On March 18, 2015, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <kite.com> domain name is registered with Godaddy.Com, Llc and that Respondent is the current registrant of the name. 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 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2015 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@kite.com. Also on March 20, 2015, 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 timely Response was received and determined to be complete on April 9, 2015.
A timely Additional Submission was received from Complainant on April 14, 2015.
A timely Additional Submission was received from Respondent on April 20, 2015.
On April 24, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant
Complainant owns the KITE mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,514,396, registered April 15, 2014). Complainant uses the KITE mark in connection with its business in which it provides software as a service platform through which parties can identify opportunities to collaborate, find solutions, and implement advertising and marketing campaigns. The <kite.com> domain name is identical to Complainant’s KITE mark, because it fully incorporates Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent has never been licensed or authorized to use Complainant’s KITE mark. Respondent has not provided a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Respondent has failed to make an active use of the disputed domain name. The resulting webpage hosts a “kite coming soon” message and then provides biographical information for the “Team” members and provides its supposed investors.
Respondent has engaged in bad faith registration and use. Respondent approached Complainant requesting permission to use the KITE mark—to which Complainant refused—indicating Respondent had actual knowledge of Complainant’s rights in the mark.
Respondent
Respondent’s identity, as listed, is incorrect. Carl D. Crowell (“Crowell”) registered the disputed domain name 20 years ago, and has retained ownership of the domain name since that time. Respondent leased the disputed domain name to Manhattan Engineering Incorporated (“MEI”) with an option to purchase in January 2018. If MEI does not choose to purchase the domain name at that time, Crowell will retain ownership, thus making Crowell the correct Respondent. During the pendency of this lease agreement, all rights, title, and interest in the disputed domain name will be held in escrow by Escrow.com.
Respondent concedes that the disputed domain name is identical to the KITE mark, and that Complainant has registered rights in this mark. However, Respondent has been using the disputed domain name long before Complainant filed for its trademark registration, and the USPTO erroneously granted Complainant the KITE mark. The domain name comprises a common and descriptive term to which Complainant could never acquire exclusive rights. Complainant’s action is frivolous at best, and more realistically, an intentional effort to reverse hijack the Domain.
Respondent has rights or legitimate interests in the disputed domain name because it plans to use it in connection with Respondent’s KITE mark, a mark which Respondent has prior and superior rights in. Respondent also has rights or legitimate interests in the disputed domain name because it consists of generic terms. Respondent has leased the domain name, and the domain name was registered before Complainant acquired rights in the KITE mark.
Respondent has not engaged in bad faith registration or use. Because the domain name’s registration predates Complainant’s rights in the mark, bad faith cannot be shown. Also, the disputed domain name consists of a generic term, further negating a finding of bad faith.
Additional Submission from Complainant
Carl Crowell is not the present owner of the disputed domain name (as Respondent contends), and Brandon Abbey/Escrow.com are the proper respondents, as Carl Crowell assigned his entire right, title and interest in the disputed domain name to Respondent.
Respondent’s claim for reverse domain name hijacking is unfounded and without merit.
Additional Submission from Respondent
Escrow.com is not the proper respondent in this proceeding. The domain name purchase agreement clearly points out that Mr. Crowell is the owner of the disputed domain name until MEI makes the final payment.
Because Carl Crowell is the correct Respondent, Respondent’s registration of the disputed domain name predates Complainant’s rights in the mark.
A finding of reverse domain name hijacking is proper, because Complainant filed its trademark application with the USPTO while fully aware of CircleSquare’s prior use of the KITE mark and Complainant falsely certified in its trademark application that no other person or business had the right to use the KITE mark in commerce.
Preliminary Issue: Identity of Respondent
Complainant has alleged that the entity which controls the domain name at issue, and is the proper respondent, is Brandon Abbey / Escrow.com. The submissions in response to the complaint were on behalf of Carl D. Crowell, an individual; Escrow.com, a Delaware corporation; and Manhattan Engineering Incorporated, a Delaware corporation. Respondent claims that ownership of the disputed domain name belongs to Carl D. Crowell, who leased the domain name to Manhattan Engineering Incorporated (“MEI”). Respondent argues that while MEI maintains sole control over the disputed domain name, Carl D. Crowell is still the owner of the disputed domain name until the final payments are made, at which point MEI has the option to buy the disputed domain name, and MEI would not become the actual owner of the disputed domain name until 2018. During the pendency of the lease, title to the domain name is held by an escrow agent, Respondent Escrow.com. In its additional submission, Complainant argues that this argument is legally and factually flawed, and alleges that Carl D. Crowell completely assigned his entire right, title and interest in the disputed domain name to the WHOIS registrant of record: Brandon Abbey at Escrow.com, the proper Respondent.
Domain Name Purchase Agreement
As an attachment to the response, Respondent submitted a document entitled Domain Name Purchase Agreement between MEI as Purchaser and Crowell as Seller, dated July 25, 2014. Paragraph 4 of the document provides that, upon execution of the agreement, Seller will transfer title of the domain name to the Escrow Agent as set forth in the Escrow Agreement. Upon payment of the full purchase price, the domain name is to be transferred by the Escrow Agent to the Purchaser.
Escrow Agreement
Respondent also submitted a document entitled Escrow Instructions and Agreement (“Escrow Agreement”) with the same date of July 15, 2014, between MEI and Crowell and Escrow.com, a Delaware corporation, which provides that Seller will transfer title of the domain name to the Escrow Agent to be held in trust for the benefit of Purchaser. The Escrow Agreement further provides that upon the receipt of initial payment, the Seller shall complete the transfer of the registration of the domain name with a registrar, so that the WHOIS information will be registered in the Escrow Agent’s name for the duration of the escrow. The Escrow Agreement further provides for conditions under which the change in registration of the owner can be effectuated. The Escrow Agent is responsible for the maintenance and renewal of the domain name while it is held by the Escrow Agent. If the Purchaser makes all of the payments, the Escrow Agent shall transfer the registration of the domain name to Purchaser. If Purchaser defaults in payments and fails to timely cure those defaults, the agreement provides for the Escrow Agent to deliver the escrow items to Seller.
Brandon Abbey is the Proper Respondent
The Rules states “‘Respondent’ means the holder of a domain name registration against which a complaint is initiated.”
The Supplemental Rules states “‘The Holder of a Domain Name Registration,’ as used in The Rules (Rule 1), means the single person or entity listed in the WHOIS registration information at the time of commencement.”
The WHOIS record provides that the domain name Registrant’s name is Brandon Abbey, and the registrant organization is Escrow.com. The Panel determines that Brandon Abbey / Escrow.com is the proper Respondent in the proceedings.
On January 15, 1995, Carl D. Crowell registered the <kite.com> domain name with Godaddy.Com, Llc.
From 1995 to 2014 Crowell continued to use the <kite.com> domain name to operate a website, first a website focusing on kite design and construction, and later a website focusing on his law practice.
On January 22, 2013, Complainant was incorporated in Delaware. This information was obtained from the Delaware Department of State: Division of Corporations online information.
Complainant’s stated first use of its KITE mark was September 1, 2013.
On April 15, 2014, Complainant registered the KITE mark with the USPTO (Reg. No. 4,514,396).
On July 25, 2014, Crowell leased the disputed domain name to MEI with an option to purchase, and transferred ownership of the <kite.com> domain name to Escrow.com.
For the reasons set forth below, the Panel finds that Complainant is not entitled to the relief requested.
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.
Complainant has registered the KITE mark with the USPTO (e.g., Reg. No. 4,514,396, registered April 15, 2014). The mark is used on or in connection with its business in which it provides software as a service platform through which parties can identify opportunities to collaborate, find solutions, and implement advertising and marketing campaigns. Registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant alleges that due to the lease agreement between Crowell and Respondent, Respondent is deemed to have “registered” the disputed domain name as of the date that Respondent acquired the domain name. See BWR Resources Ltd. v. Waitomo Assoc. Ltd., D2000-0861 (WIPO Oct. 4, 2000) (finding that registration refers to the date when the respondent acquired the name from the person who first registered it). Thus, Complainant claims that Respondent acquired the disputed domain name on or about July 25, 2014 when the disputed domain name was assigned to Respondent pursuant to the lease agreement.
Respondent argues that its registration of the disputed domain name predates Complainant’s alleged rights in the KITE mark, however the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
While Respondent contends that the <kite.com> domain name is comprised of a common and generic term and as such cannot be found to be confusingly similar to Complainant’s mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Complainant argues that the <kite.com> domain name is identical to Complainant’s KITE mark, because it fully incorporates Complainant’s mark and adds the gTLD “.com.” Past panels have found that domain names are identical to the mark at issue where the domain name differs only by the addition of “.com.” See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Thus, the Panel finds that the disputed domain name is identical to the KITE mark.
Complainant has proven this element.
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.”).
The Panel finds that Respondent has rights or legitimate interests in the disputed domain name because use of the KITE mark and the original registration of the domain name predate Complainant’s rights in the mark. Past panels have denied the transfer of a domain name where respondent’s use of a mark precedes complainant’s use. See Parachute, Inc. v. Jones, FA 94947 (Nat. Arb. Forum July 12, 2000) (denying transfer of the domain name because the respondent’s use of the PARACHUTE mark and the domain name in question preceded any use of the service mark by the complainant).
Past panels have held that a new registrant of a domain name does not get the benefit of having the registration date of a prior registrant so as to defeat a Complainant’s rights acquired after the date of the original registration but before the new registration. However, the facts of this case compel a different result. Mr. Crowell had rights or legitimate interests in the disputed domain name, a valuable asset which he had the right under the facts of this case to sell or transfer. The disputed domain name had been in continuous use since 1995, almost 18 years before Complainant was incorporated. The original owner, although having transferred title to an escrow agent, retains the right to have the ownership again upon the failure of MEI to make timely payments.
Complainant has not proven this element.
While Complainant does not make contentions that neatly fall within the articulated provisions of Policy ¶ 4(b), these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances. 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); Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Since the Panel has concluded that Respondent has rights or legitimate interests in the <kite.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent also claims that because the registration of the disputed domain name predates Complainant’s rights in the KITE mark, Complainant cannot make a showing of bad faith. The WHOIS record shows that the disputed domain name was registered on January 18, 1995. The Panel finds there certainly was no bad faith registration at the time of the original registration, and it can not be said to be bad faith registration for an escrow agent to acquire title pursuant to the terms of an escrow agreement entered into as part of an agreement for the sale of a domain name. Therefore Respondent has not acted in bad faith. See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark).
Complainant has not proven this element.
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the disputed domain name, of its rights to use the disputed domain name. Respondent claims Complainant must have been aware of Respondent’s rights in the KITE mark, and Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the disputed domain name and that Respondent registered and is using the disputed domain name in bad faith. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).
Although Complainant was not successful in this proceeding, it did establish its rights in the KITE mark and the current registration of the disputed domain name after Complainant’s registration of the mark.
Respondent has not proven Reverse Domain Name Hijacking.
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is ORDERED that the <kite.com> domain name REMAIN WITH Respondent.
Hon. Karl V. Fink (Ret.), Panelist
Dated: May 4, 2015
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