Kenneth Calvert v. Domain Strategy, Inc.
c/o Richard Mandanice
Claim
Number: FA0306000162075
Complainant is Kenneth Calvert, Riverside, CA
(“Complainant”) represented by Nicholas
C. Vasels. Respondent is Domain Strategy, Inc. c/o Richard Mandanice, Delson, Quebec, Canada (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <kencalvert.com>, registered with Dotster,
Inc.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on June 10, 2003; the Forum received a hard copy of the
Complaint on June 16, 2003.
On
June 10, 2003, Dotster, Inc. confirmed by e-mail to the Forum that the domain
name <kencalvert.com> is registered with Dotster, Inc. and that
Respondent is the current registrant of the name. Dotster, Inc. has verified
that Respondent is bound by the Dotster, Inc. registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
June 25, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 15, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@kencalvert.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
July 21, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Louis E. Condon 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."
Therefore, the Panel may issue its decision based on the documents submitted
and in accordance with the ICANN Policy, ICANN Rules, the 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.
A. Complainant makes the following assertions:
1. Respondent’s <kencalvert.com>
domain name is identical to Complainant’s common law KEN CALVERT mark.
2. Respondent does not have any rights or
legitimate interests in the <kencalvert.com> domain name.
3. Respondent registered and used the <kencalvert.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
U.S. Congressman and uses the disputed domain name for his campaign website. The <kencalvert.com> domain
name was originally registered to and used by the Ken Calvert for Congress
Campaign Committee. Complainant
inadvertently allowed the registration for the domain name to expire.
On May 23, 2003,
Respondent registered the <kencalvert.com> domain name after
Complainant’s registration for the domain name had expired. The disputed domain name resolves to an
adult oriented website. Respondent has
created metatags that direct Internet users to the disputed domain name when
searching for KEN CALVERT on search engines.
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."
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.
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
asserts that it has trademark rights in the KEN CALVERT mark because
Complainant has established secondary meaning as associated with the KEN CALVERT
mark. Respondent did not provide the
Panel with a Response in this proceeding.
See McCarthy on Trademarks and Unfair Competition, § 13:1 (4th
ed. 2002) (stating that the basic rules pertaining to the protection of
personal names require actual proof of secondary meaning for protection). See also Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that
ICANN Policy does not require that Complainant have rights in a registered
trademark and that it is sufficient to show common law rights in holding that
Complainant has common law rights to her name). Thus, the Panel may accept all reasonable allegations and
inferences in the Complaint as true.
Therefore, the Panel concludes that Complainant has established common
law rights in the KEN CALVERT mark. See
Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum
June 17, 2002) (finding that in the absence of a Response the Panel is free to
make inferences from the very failure to respond and assign greater weight to
certain circumstances than it might otherwise do); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence).
Respondent’s <kencalvert.com>
domain name is identical to Complainant’s mark because the domain name
fully incorporates the KEN CALVERT mark and causes Internet user
confusion. Internet users could
mistakenly associate Respondent’s website with the Complainant because the
disputed domain name is identical to Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Wembley Nat’l Stadium Ltd. v.
Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name
<wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent’s use
of the <kencalvert.com> domain name does not constitute a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate or fair use pursuant to Policy ¶ 4(c)(iii) because the disputed
domain name resolves to an adult oriented website. See MatchNet plc. v. MAC Trading,
D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of
goods or services to use a domain name for commercial gain by attracting Internet
users to third party sites offering sexually explicit and pornographic material
where such use is calculated to mislead consumers and to tarnish Complainant’s
mark); see also Brown &
Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding
that infringing on another's well-known mark to provide a link to a
pornographic site is not a legitimate or fair use).
Furthermore,
Respondent is not affiliated with Complainant and the evidence fails to
establish that Respondent is authorized or licensed to register or use domain
names or marks containing the KEN CALVERT mark. In addition, the WHOIS information for the disputed domain name
lists Respondent, Domain Strategy, Inc. c/o Richard Mandanice, as the
registrant; however, it fails to establish Respondent as an “individual,
business, or other organization” commonly known by the <kencalvert.com>
domain name. Therefore, Respondent
has no rights or legitimate interests in the disputed domain name. See Tercent, Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where Respondent was not commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
Moreover, due to
Respondent’s failure to dispute the allegations in the Complaint, the Panel may
presume that Respondent lacks rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii).
See Pavillion Agency, Inc.
v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names); see also Canadian Imperial Bank of Commerce v. D3M
Virtual Reality, Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel presumes that Respondent registered the disputed domain name
with the knowledge of Complainant’s mark because Respondent registered the same
domain name that Complainant once used and neither Respondent’s name nor the
content of Respondent’s website are remotely related to the KEN CALVERT
name. Registration of a domain name,
despite knowledge of Complainant’s rights, is evidence of bad faith
registration pursuant to Policy ¶ 4(a)(iii).
See Entrepreneur
Media, Inc. v. Smith,
279
F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an
alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration).
In addition, Respondent’s registration and use of the disputed domain name
constitutes bad faith because Respondent registered the disputed domain name
after Complainant’s registration for the same domain name expired. See InTest Corp. v.
Servicepoint, FA 95291
(Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been
previously used by Complainant, subsequent registration of the domain name by
anyone else indicates bad faith, absent evidence to the contrary); see also
BAA plc v. Spektrum Media Inc.,
D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took
advantage of Complainant’s failure to renew a domain name).
Furthermore,
Respondent’s disputed domain name fully incorporates Complainant’s mark and
resolves to an adult oriented website.
Respondent’s tarnishing of Complainant’s name by creating an illicit
association between the adult oriented content on Respondent’s website and
Complainant’s mark constitutes bad faith pursuant to Policy ¶ 4(a)(iii). Also, the Panel presumes that Respondent
attempted to commercially benefit from the goodwill associated with
Complainant’s mark by providing commercial services through the disputed domain
name. Respondent’s attempt to
commercially benefit from Internet confusion associated with Complainant’s mark
is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Six Continents Hotels, Inc. v. Nowak,
D2003-0022 (WIPO March 4, 2003) (stating that “whatever the motivation of
Respondent, the diversion of the domain name to a pornographic site is itself
certainly consistent with the finding that the Domain Name was registered and
is being used in bad faith”); see also G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <kencalvert.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
August 1, 2003
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